Kansas City Hay-Press Co. v. Devol ( 1897 )

THAYER, Circuit Judge,

after stating the case as above, delivered the opinion of the court.

The circuit court found that the complainant below, who is the appellant here, had not established its title to patent No. 495,944, issued April 18, 1893; and it accordingly dismissed the bill without considering the other patents, upon the theory, no doubt, that there could be no recovery unless the complainant established its right to an injunction and an accounting as to each patent counted upon in the complaint. Hay-Press Co. v. Devol, 72 Fed. 717, 723. This was an error. The bill charges, and it is also obvious, that the devices covered by the several patents were capable of embodiment and conjoint use in a single hay press. Indeed, only one hay press made by the defendants was produced for the purpose of establishing an infringement of all the patents. Under these circumstances the bill was not multifarious because it sought a recovery in a single suit for the infringement of all the patents. Moreover, a failure of the complainant either to establish its title to one of the patents, or to show an infringement of one or more of the patents, would not affect its right to an injunction and an accounting with respect to the other patents, provided the proof showed that they had been infringed. Nourse v. Allen, 4 Blatchf. 376, 18 Fed. Cas. 459; Gillespie v. Cummings, 3 Sawy. 259, Fed. Cas. No. 5,434; Horman Patent Manuf'g Co. v. Brooklyn City R. Co., 15 Blatchf. 444, Fed. Cas. No. 6,703; Seymour v. Osborne, 11 Wall. 516, 559; Hayes v. Dayton, 8 Fed. 702.

The patent of chief value which is involved in the present controversy is the one first described in the statement, Ho. 394,623, issued December 18, 1888, and it will be referred to hereafter as the “power patent.” The other patents cover different parts of the baling press, and, while they may be useful devices, the successful operation of the machine is not so vitally dependent thereon as it would seem to be on the mechanism described and claimed in the power patent. An attempt was made at the trial to show that the device covered by claims 1 and 2 of the power patent is disclosed substantially by several prior patents, and for that purpose reference was made more especially to the following patents, to wit: Patent Ho. 361,764, issued to J. B. Johnson April 26, 1887; patent Ho. 354,517, issued to H. Purrier December 14, 1886; and patent Ho. 367,539, issued to G. McCarn August 2, 1887. Certain drawings, forming a part of the specifications of these patents, which will suffice to show the alleged anticipatory devices, have been incorporated into the foregoing statement. By reference to these drawings it will be observed that in the Johnson patent the pitman was driven forward by means of a cam attached to a revolving drum or wheel, which meshed into cogs on the side of the pitman bar, and thus moved the pitman forward ; that in the Purrier patent a forward motion was given to' the pitman by a revolving triangular plate, in the three corners of which antifriction rollers were inserted, which rollers, as the triangular plate revolved, came successively in contact with the end of the pit-man and forced it forward; and that in the McCarn patent three lugs were placed at intervals on the periphery of a revolving drum, which lugs, as the drum revolved, came successively in contact with the end óf the pitman and moved it forward substantially in the same manner that the pitman was moved by the triangular plate in the Purrier patent. Heither of these devices made use of pressure upon an inclined plane for the purpose of moving the pitman, while the complainant’s invention described in the power patent embodies the principle of giving the pitman a forward motion — First, by bringing the antifriction rollers of the cranks into contact with an inclined plane on the side of the pitman; and, second, bjr bringing said antifriction rollers into contact with the end of the pitman, thus increasing the power and giving the pitman a powerful forward thrust at the moment the greatest force is required to compress the hay. It cannot be said, we think, that the complainant's invention is disclosed or anticipated by either of the patents aforesaid to which reference has been made, (in the trial of the case a model of a hay press was introduced in evidence by the defendants which was said to be a correct model of a hay press that was constructed by the defendant W. S. Livengood during the year 1888, or prior thereto. The model was offered for the purpose of showing that Livengood had made a hay press, either during or prior to the year 1888, which anticipated the device covered by the complainanti’s power patent. With reference to this model, it is sufficient to say that it was proven on the trial of the case that it was not an original model of the press which it purported to represent, but was made by the defendant Livengood about six months after the institution of the suit at bar for the purpose of being used as evidence to invalidate the claims of the power patent. It was so1 made merely from the witness' recollection of the structure of the press that it purported to represent, which he had not seen for eight or ten years, and the fact that it was not an original model was not disclosed when it was offered in evidence, but was intentionally concealed until the fact was developed on cross-examination. Under the circumstances, we cannot accept the model in question as sufficient evidence to invalidate the claims of the power patent.. Moreover, even if we were able to find that it was a correct model of a hay press constructed by the defendant Livengood, we should be of the opinion that in the hay press in question the power was wholly applied to the very end of the pit-man, and that the principle embodied in the complainant’s power patent of applying pressure to the incline on the side of the pitman was neither conceived nor applied in the older press which the model purports to represent.

It remains to be determined whether the defendant’s baling press infringes claims 1 and 2 of the power patent. It will be observed that one element of the combination covered by those claims consists “of laterally extended arms provided with an antifriction roller extending beyond the radius of said cranks.” It is contended by the defendants that this element is wanting in the infringing baling press which was introduced in evidence. iNone of the drawings which form a part, of the power patent disclose the laterally extended arms very dearly, and. for that reason it is necessary to say that these arms extend from (he C-shaped casting, which supports the revolving shaft, at right angles to the shaft, one of the arms being above and one below the pitman; their sole function being to control the vibrating end of the pitman, and keep it in a position to be acted upon at the proper moment by the short cranks ail ached to the revolving shaft. Those amis hold a roller at their outer end, which comes in contact with the outer edge of the pitman as it is pushed forward or rebounds, and thus lessens the friction. In the infringing device, on the other hand, an arm curving outwardly is firmly attached to the bedplate some distance from the revolving shaft, and extends backward in the direction of the shaft, outside ol the radius of the cranks, to a point about as far as the pitman goes when it rebounds. An antifriction roller is pivoted to the bottom of the pitman, which presses against the inner side of the curved arm when the pitman is in motion, and thus controls the movement of the pitman, keeping it always in proper relation to the cranks. In the infringing device the pitman is prevented from moving upward or vertically, when it rebounds, by curved rods attached to the frame holding the revolving shaft, which pass over the pitman, and are attached to the axle which supports the bedplate of the press at a point outside of the radius of the cranks. The curved arm or curved way in the infringing device, against which the antifriction roller presses, which is pivoted to the pitman, undoubtedly performs the same function as the laterally extended arms and antifriction roller of the power patent. We cannot say that, as a means of controlling both the lateral and forward motion of the pitman, it is any improvement upon the mechanism designed for the same purpose in the power patent. It seems to be simply a mechanical deviation from the method of construction described in the latter patent, which neither involves a new principle of operation, nor produces a better or a different result. Our conclusion is, therefore, that the curved arm or way in the infringing device must be regarded as a mechanical equivalent for the laterally extended arms of the power patent. It results from this view that claims 1 and 2 of that patent have been infringed.

We are not able to say that the evidence discloses an infringement of the claims of patents Nos. 363,012 and 386,360, which are referred to. and described in the statement. The only claim of these patents which is alleged to be infringed is the one quoted in the statement, which seems to be based upon a method of constructing the draft pole or sweep whereby it is allowed to spring backward slightly when the strain on the sweep ceases, as the pitman is released. This object is accomplished by putting a link in the rod which re-enforces or strengthens the sweep. In the infringing device it does not appear that the rod supporting the sweep is divided into sections by a link, or that it was designed to permit the sweep to spring backward to any marked extent. The rod in question is rigidly attached at one end to the sweep, and at the other to the yoke by which the shaft is turned. Its sole function would seem to be to strengthen or re-enforce the sweep. If it has any other function, it is not disclosed by the model of the infringing device which was offered in evidence.

We have also reached the same conclusion last announced with reference to the charge of infringement, in so far as it respects complainant’s patents Nos. 358,898 and 456,239. Without going into the subject in detail, as these patents do not seem to be of much value or importance, it will suffice to say that the means employed by the defendants in the infringing device to permit the frame attached to the outer end of the baling chamber to expand or contract are so essentially different from the means described to accomplish the same object in complainant’s patent No. 358,898 that the claim of infringement as to the latter patent cannot be sustained. In the complainant’s device a coiled spring is interposed between the nuts of tho crossbars which hold the frame together, and the lugs through which the crossbars pass. In this way the end of the delivery chamber is-made to expand or contract as occasion requires. In the defendants’ device no such coiled springs are employed. Besides, we entertain fiu-ii grave doubt as to whether the device covered by claim 1 of patent No. 358,898 possesses patentable novelty that in any event the patentee should be limited' to the precise form of construction described in his patent.

Complainant’s patent No. 450,239 is not infringed by the defendants, for the reason that the combination covered by the claims of that patent which are said to have been infringed embrace, as one element 1 hereof, “a curved spring plate upon the vibrating end of said pitman”; í sid there is no pretense that the hay press manufactured by the deÓ ndants employs such a spring plate on the end of the pitman, or anything equivalen t thereto.

This brings lis to a consideration of patent No. 495,944, which was issued on April 18, 1893, to James E. Knight, Edward Kelly, and William A. Alderson, as assignees of Winfield S. Livengood et al. The trial court held that the complainant company had no title to this patent which would enable it to complain of an infringement thereof. The hay press which is being manufactured by the defendants discloses a combination such as is covered by the fifth claim of patent No. 495,-944, consisting of “the traverser, pitman, means for operating the pit-man, and a folding apron formed in sections pivoted to each other, and connecting the traverser with a stationary portion of the press.” The defendants are therefore guilty of an infringement of the fifth claim of this patent, and the only question to be considered is whether the complainant company has a title thereto. Its alleged title was thus derived: Livengood, 'Chadbourne, and Gibbons, the inventors, prior fo the issuance of the patent conveyed the invention to a corporation, the Midland Manufacturing Company. The. Midland Manufacturing' Company conveyed the same to Edward Kelly by a written assignment which was signed by W. H. Chadbourne as president of the company, and attested by tbe signature of P. I). Myers, its secretary, with the corporate seal attached. Kelly then transferred a two-thirds interest in the invention to James E. Knight and William A. Alderson, and Kelly, Knight, and Alderson subsequently sold and assigned the patent, after it was issued to them, to the complainant, the Kansas City Hay-Press Company. It is the conveyance from the Midland Manufacturing Company to Kelly which is supposed to be defective, for the reason that it was not executed in pursuance of a resolution of the board of directors of the company. When the last-mentioned assignment was made, Chadbourne, the president of the company, and Myers, the secretary, were the owners of all the capital stock of the Midland Manufacturing Company. Livengood, it seems, had a lien on certain shares of the stock that were held in pledge for his benefit to secure a debt in the sum of about $1,000 which Chadbourne owed Mm. The corporation to whom the invention belonged has never as yet questioned the validity of the assignment to Kelly, although that assignment was executed on 'March 23, 1893, and the patent was subsequently issued to parties who derived their right to the patent under that assignment. Moreover, as we understand the evidence contained in the present record, the consideration received for the assignment of the invention to Kelly was the satisfaction of a certain indebtedness which the Midland Manufacturing Company owed Kelly, and which that company also owed Knight and Alderson for professional services that had been, rendered for and in behalf of the company. It also appears from the testimony that, although the assignment was not formally authorized by the board of directors, yet that Chadbourne and Myers, who owned all the stock of the company, after a full consideration of the condition of the company concluded to execute the assignment, as the company was at the time insolvent and unable to further prosecute its business. In view of these facts, we are constrained to hold that the defendants in this suit cannot successfully challenge the complainant’s title to patent No. 495,9áá. We are of opinion that the Midland Manufacturing Company is alone entitled to question the validity of the assignment which was executed by its president and secretary, and that none of the defendants occupy such a relation to that company as entitles them to complain of a sale of a corporate asset of which the company itself does not see fit to complain. It may be conceded that the sale of the patent in question to Edward Kelly was not within the scope of the ordinary powers of the president and secretary, but the act in question was not ultra vires, and it was clearly subject to ratification by the corporation. Inasmuch as four years have elapsed since the assignment was executed, and the corporation has shown no disposition to question its validity, and inasmuch as the assignment under which the complainant derives title is good and sufficient in form to transfer a legal title to the patent, we think that no third party — not even a person who has a lien on certain stock of the corporation- — should be permitted to challenge the validity of the assignment in a collateral proceeding. 2 Mor. Oorp. §§ 619, 626, 631, and cases there cited.

It results from these views that the decree dismissing the bill of complaint was erroneous. The decree of the circuit court is accordingly reversed, and the case is remanded to that court, with directions to enter a decree dismissing the bill at complainant’s cost as to patents Nos. 358,898, 363,012, 386,360, and 456,239, and with further directions to enter a decree establishing the validity of patents Nos. 394,623 and 495,944 and the complainant’s title thereto, with costs; also, with directions to award an injunction restraining the defendants from infringing claims 1, 2, and 3 of said patent No. 394,623, and claim 5 of patent No. 495,944; and also with directions to order an accounting as to the profits realized by the defendants and the damages sustained by the complainant in consequence of the infringement of the above-specified claims of the two patents last described.