CIMIOTTI UNHAIRING CO v. AMERICAN FUR REFINING CO(1905)
This action was begun in the circuit court of the United States for the district of New Jersey for the purpose of enjoining the alleged infringement of certain letters pattent of the United States, issued to John W. Sutton, and bearing date of May 22, 1888, number 383,258, for a certain new and useful invention or improvement upon machines for plucking furs. [198 U.S. 399, 400] In the circuit court a decree was rendered granting an injunction ( 120 Fed. 672); upon appeal to the circuit court of appeals for the third circuit this judgment was reversed, and the cause was remanded to the circuit court with directions to dismiss the bill. 59 C. C. A. 357, 123 Fed. 869.
The case was brought here upon writ of certiorari to review the judgment of the circuit court of appeals.
Messrs. Louis C. Raegener and John W. Griggs for petitioners.
Mr. Henry Schreiter for respondents.
Mr. Justice Day delivered the opinion of the court:
The patent in controversy has been frequently sustained in the Federal courts (95 Fed. 474; 108 Fed. 82; 53 C. C. A. 2301, 115 Fed. 498; and 53 C. C. A. 161, 115 Fed. 507), and its validity is not contested here. The question presented to us is one of infringement. The invention which is the subject-matter of the controversy relates to machinery for unhairing pelts, and particularly, and perhaps, exclusively, so far as practical use is concerned, sealskins or 'coney' skins. The latter are skins of French or Belgian rabbits, which, under the name of 'electric' sealskins, have been put upon the market, and have been largely sold and used as substitutes for the genuine sealskin. It is said that only an expert can tell the difference between the finished coney and the genuine sealskin.
It is disclosed in the testimony that sealskins, before they are fit for the market, are required to be submitted to a process by which the long hairs, sometimes called 'water hairs,' are separated from the fur, and clipped or plucked from the pelt. Up to about the year of 1881 the removal of such hairs was effected by hand, the pelt being stretched over the finger, by blowing down on the fur a part was made, and the hairs were clipped out by means of scissors. This was necessarily a slow [198 U.S. 399, 401] and laborious process. An improvement was made in this art by the Cimiottis, predecessors of the petitioner, by the introduction of an air blast for the purpose of separating the fur, which invention was the subject of a patent to them, number 240,007, under date of April 12, 1881. In 1888 the Sutton patent in suit was issued, in which was introduced a rotating brush apparatus for the purpose of separating the fur, as will be hereinafter more particularly shown. Of his invention, Sutton said in the specifications;
The invention was illustrated by certain drawings, some of which are here given, which, together with the description, illustrate the operation of the machine, so far as necessary for the purposes of this case.
Referring to the drawings, the inventor says (in part):
The operation of the machine is thus described.
The great merit of this invention is said to consist in the use of the brush, applied by means of the mechanism shown, so as to brush down the fur, and permit the long hairs, which should be removed, and which rise at the edge of the stretcher bar, when the pelt is drawn over it, to be acted upon by the knives when the fur is brushed away, so as not to be injured.
In determining the construction to be given to the claim in suit, which is alleged to be infringed, it is necessary to have in mind the nature of this patent, its character as a pioneer invention or otherwise, and the state of the art at the time when the invention was made. It is well settled that a greater degree of liberality and a wider range of equivalents are permitted where the patent is of a pioneer character than when the invention is simply an improvement, may be the last and successful step, in the art theretofore partially developed by other inventors in the same field. Upon this subject it was said by this court ( Westinghouse v. Boyden Power Brake Co. 170 U.S. 537 , 42 L. ed. 1136, 18 Sup. Ct. Rep. 707, quoted with approval in Singer Mfg. Co. v. Cramer, 192 U.S. 265 , 48 L. ed. 437, 24 Sup. Ct. Rep. 291): [198 U.S. 399, 407] 'To what liberality of construction these claims are entitled depends to a certain extent upon the character of the invention, and whether it is what is termed in ordinary parlance a 'pioneer.' This word, although used somewhat loosely, is commonly understood to denote a patent covering a function never before performed, a wholly novel device, or one of such novelty and importance as to mark a distinct step in the progress of the art, as distinguished from a mere improvement or perfection of what had gone before. Most conspicuous examples of such patents are: The one to Howe of the sewing machine; to Morse of the electric telegraph; and to Bell of the telephone. The record in this case would indicate that the same honorable appellation might safely be bestowed upon the original air- brake of Westinghouse, and perhaps also upon his automatic brake. In view of the fact that the invention in this case was never put into successful operation, and was, to a limited extent, anticipated by the Boyden patent of 1883, it is perhaps an unwarrantable extension of the term to speak of it as a 'pioneer,' although the principle involved subsequently and through improvements upon this invention became one of great value to the public.'
While it may be admitted that the Sutton patent was a distinct step in the art, and is entitled to protection as a valuable invention, nevertheless it cannot be said to be a pioneer patent in any just sense. In the English Lake patent of 1881, of which more will be said hereafter, there is doubtless a suggestion of the use of brushes for the purpose of separating the fur from the long hair to be removed. And so in Covert patent of 1884, which was the subject of consideration by Judge Wheeler in the case of Cimiotti Unhairing Co. v. Mischke, 98 Fed. 297. In that case it was said that Covert's patent had been mechanically, but not commercially, successful, and that in lieu of a rotating separating brush, shown in Sutton's patent, Covert used a revolving cloth-covered cylinder, and it was held that this was not equivalent to the separating brush, and Sutton's invention was an advance upon anything [198 U.S. 399, 408] theretofore shown. Of the Covert patent Judge Coxe, in the course of an able opinion sustaining the Sutton patent (Cimiotti Unhairing Co. v. American Unhairing Mach. Co. 53 C. C. A. 230, 234, 115 Fed. 498, 502), said:
In the same case, Judge Wallace (p. 237, Fed. p. 508), in his concurring opinion, says:
Furthermore, it appears that while the Cimiottis acquired an exclusive license under the Sutton patent in 1888, the same was not put into commercial use until the introduction of coney skins as a substitute for sealskins, about the year 1890. During this time the Cimiottis were unhairing a large number of skins, and preferred to continue to use the air-blast machine of their own invention while paying tribute to Sutton. It was the introduction of the coney industry, in 1890, that gave stimulus to the use of such mechanisms as those used by the Cimiottis and the respondent in this case. We think it fair [198 U.S. 399, 409] to say that this record discloses an invention of merit, entitled to some range of equivalents in determining the question of infringement, but it is not one of those broad, initiative inventions where original thought has been embodied in a practical mechanism, which the courts have been ever zealous to protect, and to which a wide range of equivalents has been accorded.
Due weight is given to the Sutton patent when it is given credit for dispensing with the plate which Covert had in addition to the brush, and which he supposed would carry down the fur away from the cutting mechanism, but which Sutton has accomplished in giving, in a measure, at least, this added function to the brush of not only parting the fur, but carrying it down and away in preparation for the clipping by the knives. Any one who accomplishes the same purpose by substantially the same mechanism, using the elements claimed in Sutton's patent, may be held to be an infringer.
Sutton has taken the step which marks the difference between a successfully operating machine and one which stops short of that point, and that advance entitles him to the protection of a patent.
The argument here is confined, as to the alleged infringement, to the eighth claim of the Sutton patent, which is as follows:
The elements of this claim are five in number: 1, a fixed stretcher bar; 2, means for intermittently feeding the skin over the same; 3, a stationary card above the stretcher bar; 4, a rotary separating brush below the same; 5, mechanism whereby the rotary brush is moved upward and forward into a position in front of the stretcher bar, 'substantially as set forth.' [198 U.S. 399, 410] In making his claim the inventor is at liberty to choose his own form of expression, and while the courts may construe the same in view of the specifications and the state of the art, they may not add to or detract from the claim. And it is equally true that, as the inventor is required to enumerate the elements of his claim, no one is an infringer of a combination claim unless he uses all the elements thereof. Shepard v. Carrigan, 116 U.S. 593 -597, 29 L. ed. 723, 724, 6 Sup. Ct. Rep. 493; Sutler v. Robinson, 119 U.S. 530 -541, 30 L. ed. 492-495, 7 Sup. Ct. Rep. 376; McClain v. Ortmayer, 141 U.S. 419 -425, 35 L. ed. 800-802, 12 Sup. Ct. Rep. 76; Wright v. Yuengling, 155 U.S. 47 , 39 L. ed. 64, 15 Sup. Ct. Rep. 1; Black Diamond Coal Min. Co. v. Excelsior Coal Co. 156 U.S. 611 -617, 39 L. ed. 553-555, 15 Sup. Ct. Rep. 482; Walker, Patents, 349. This principle is particularly important when we come to consider the 'stationary card above the stretcher bar,'-an element of the eighth claim.
The anticipating mechanism set up in this case is the so-called English Lake patent of October, 1881. This patent has been the subject of much adverse comment in the cases involving a consideration of it. And it appears to have lapsed for nonpayment of taxes in June, 1885, and not to have been a successful machine. It may be the fact that the patent is not distinctly worded, and that the drawing and specifications are somewhat confused. It does appear, however, without contradiction in the record, that the machine now used by the respondents was made in a large measure from the drawings of the Lake patent. Mischke, one of the respondents, was put upon the stand by the petitioners, and testified that he made the changes in a short time from the Lake patent, which resulted in the alleged infringing machine. The Lake patent showed two brushes, whereas the respondents' machine has dispensed with one and changed the position of the other. He also admits to have changed the position of the cam and shortened the crank arm as shown in the Lake machine. It seems to be the position of the petitioners' expert that Mischke made the changes in the Lake patent necessary to convert it into an operative machine by adopting the controlling features of the Sutton patent. But whatever are the defects of the [198 U.S. 399, 411] Lake patent, the question here is, Does the machine of the respondents infringe the eighth claim of the Sutton patent? One of the respondents' machines is in evidence, and we have carefully examined it. Its general outline may be seen in the annexed copy of the photograph in evidence: ( see opposite page.) [198 U.S. 399, 412] The operation of the alleged infringing machine is such that when the power is applied for moving the stretcher bar, it is carried forward to the revolving brush, and after the brush has separated the fur from the hair, carried upwardly, to be acted upon by the cutting knives. The reciprocating motion of the stretcher bar from the brush to the knives is produced by the action of the crank (operating with the cam) on the main shaft, as shown in the photograph. At the same time the mechanism for feeding the machine is in operation, actuated by the same application of power. This mechanism (shown in the photograph at the side of the respondents' machine) consists of the pawl (attached to the main frame) and the ratchet wheel (attached to the moving frame), turning when the pawl engages therein, and acting with the worm gearing shown, to turn the roll which is part of the feeding mechanism. The operation is such that when the stretcher bar is carried from the knives to the brush in the return motion, the action of the pawl upon the ratchet wheel, with the worm gearing, causes the roll to turn and the pelt to be carried forward, the extent of the feed being regulated by the adjustment of the pawl. By this means the necessity of an independently acting mechanism for the feeding apparatus is avoided and the operation simplified.
The Sutton device, as we have seen, has a stationary stretcher bar; the respondents' mechanism has a movable stretcher bar. The fixed stretcher bar, about which the other mechanism acts, is made a distinct feature of the eighth claim. It is not present in the respondents' mechanism, unless it is true, as argued, that the one is substantially the equivalent of the other. It is said to make no difference whether the knife and brush are carried to the stretcher bar or the stretcher bar is carried to the knife and brush. This might be true if the mechanisms were substantially the same, and there was a mere transposition or substitution of parts. Such changes would amount to an infringement. But in determining infringement we are entitled to look at the practical operation [198 U.S. 399, 414] of the machines. The other elements of the eighth claim are to be used in connection with the apparatus shown in the Sutton patent, substantially as described. If the device of the respondents shows a substantially different mode of operation, even though the result of the operation of the machine remains the same, infringement is avoided. Brooks v. Fiske, 15 How. 212, 221, 14 L. ed. 665, 669; Union Steam-Pump Co. v. Battle Creek Steam-Pump Co. 43 C. C. A. 560, 104 Fed. 337, 343. In the latter case Judge Severens, who delivered the opinion of the court, after recognizing the doctrine that mere change of the location of parts, if the parts still perform the same function, did not take the structure without the bounds of the patent, said:
And see Kokomo Fence Co. v. Kitselman, 189 U.S. 8 , 47 L. ed. 689, 23 Sup. Ct. Rep. 521, in which case it was held that where the patent does not embody a primary invention, but only an improvement on the prior art, and the defendant's machines can be differentiated, the charge of infringement is not sustained.
In the case under consideration the respondents have dispensed with the fixed stretcher bar and have adopted a movable one, operated by an entirely different mechanism, capable of accomplishing a much larger amount of work within a given time. In the circuit court of appeals it was said to result in a double working capacity and product. It does not seem to us to be a mere transposition or substitution of parts; in the Sutton patent, the stretcher bar being stationary, there are several mechanisms used for operating the movable brushes and the clipping knives; a different mechanism is used for operating the different parts which are to be brought to the fixed stretcher bar in carrying out the operation intended. In the respondents' machine the same application of power moves the stretcher bar and, by the co-operation of the feeding ap- [198 U.S. 399, 415] paratus as above outlined feeds the machine by bringing the pelt forward, at the same time actuating the knives, in practically one operation. This seems to us to be a distinct mechanical departure, as well as an advance upon the Sutton machine, when considered in view of the results accomplished.
Moreover, if infringement could be otherwise sustained, the decree must be affirmed, because the eighth claim has made the stationary card, shown at 'E' in the drawing, an essential part of the mechanism described. It may be that this card is unnecessary, and that it was dropped from the later patents issued to Sutton (but it is in this claim, and as was said by Judge Wallace in his dissenting opinion in Cimiotti Unhairing Co. v. Nearseal Unhairing Co. 53 C. C. A. 161, 115 Fed. 507, 509, 'the patent industriously makes the stationary card, substantially as described, an element of the claim.' Of this card the inventor said:
He also says: 'The card is set back from the edge of the stretcher bar to a distance a little more than one half of the length of the fur, for the purpose of holding the fur and preventing it from moving forward until the forward motion of the skin takes place.'
While it is said that the card does not touch the surface of the skin so that the hair and fur are both straightened as the skin is fed forward, it is true that the teeth of the card in some measure hold down the fine fur, and it is insisted that the mechanical equivalent of this card is found in respondents' [198 U.S. 399, 416] machine in the compression bar, which also acts to hold down the fur before it is carried to the separating brush. But this bar has no carding feature to it, and cannot be made to perform the functions of a card; it has no separate teeth, and is not a card or the mechanical equivalent of one shown and described and made a part of the eighth claim.
We think the Circuit Court of Appeals was right in the conclusion that the mechanism of the respondents was so materially different from the Sutton patent as to avoid the infringement alleged; and that an essential element of the eighth claim of the Sutton patent was not used by the respondents.