Home/N.D. Illinois/Borland v. Northern Trust Safe Deposit Co.

Borland v. Northern Trust Safe Deposit Co.

212 F. 178, 1914 U.S. Dist. LEXIS 1022
CourtDistrict Court, N.D. Illinois
DecidedMarch 24, 1914
DocketNo. 29,771
StatusPublished
Cited by1 cases

This text of 212 F. 178 (Borland v. Northern Trust Safe Deposit Co.) is published on Counsel Stack Legal Research, covering District Court, N.D. Illinois primary law. Counsel Stack provides free access to over 12 million legal documents including statutes, case law, regulations, and constitutions.

Bluebook
Borland v. Northern Trust Safe Deposit Co., 212 F. 178, 1914 U.S. Dist. LEXIS 1022 (N.D. Ill. 1914).

Opinion

SANBORN, District Judge.

Suit for infringement of patent No. 940,300, applied for June 14, 1905, issued November 16, 1909, to the plaintiff, on a safety deposit box lock. Defendant’s locks were made under the Roche patent of July 23, 1907, No. 860,940. While the Roche patent was issued more than two years before Borland’s, it was applied for June 1, 1906, nearly a year later.

The devices in question are changeable key locks, used chiefly upon safety deposit boxes, and are “double-nosed” locks; that is, the two or three keys go in separate keyholes. They are designed to be [179]*179opened by the use of two keys, one held by a person in charge of the safety deposit vault, known as the guard, and the other by the person who rents the box. Neither can open the door of the box-compartment without the co-operation of the other, or without the possession of both keys. When the box owner rents a box he is supposed to receive two duplicate keys, one or both of which he carries with him. When he wants access to his box, he' goes to the vault, and either asks the guard to help him open the lock, or to lend him his key. The guard’s key is a master key, which will unlock a dog so placed as to prevent the movement of the main bolt. When this dog is unlocked, the box owner may insert his key and slide back the bolt, while the 'guard’s key remains in the lock.

So long as the same person retains a box, the simple double-nosed lock affords due protection to whatever securities or other valuable papers or property he may have placed in his box. But he may lose one or both his duplicate keys, or give up the box, or mistrust that the guard has in some way obtained a copy of his key, so it becomes desirable to change the lock-combination, to enable the box. to’ be either rented to a new customer or retained by the former one, with a new key in place of the one lost. In tumbler locks, such as those in question here, in which the tumblers are normally held firmly together, the change is made by disengaging them, and then inserting a new renter’s key to line them up so that the bittings or irregular edges of the key, if a flat one, will not only place the tumblers in a new position to. be locked together, but will operate them in such new position. This disengaging operation is done by pivoting one set or part of the tumblers on an eccentric. Turning the eccentric one way pulls them apart, so their relative position iriay be changed by the new key, and turning it back joins or locks them in their new relation.

This resetting or changeable key mechanism, however desirable or necessary it may be, subjects the lock to the danger of surreptitious resetting by a dishonest guard. To avoid this a third or supplemental lock, governed by a third key, is provided, by which the resetting mechanism is locked and unlocked. This key is placed in the custody of the manager of the vault, thus making a criminal conspiracy between manager and guard necessary in order to change the renter’s key and get the new one into his hands in place of the old one without his knowledge. This supplemental lock feature is Borland’s sole claim to invention in this case, apart from the specific form of his device. The supplemental lock is old in the art, and was known as “St. Peter’s lock,” because, as explained by the witness Warren H. Taylor:

“St. Peter was supposed to carry the keys guarding the gates of Heaven; the name St. Peter was adopted as the name for this lock, as this guarded the securities. or the opportunities of manipulating the tumblers in the combination of this lock, which was supposed at the time it was brought out to be one of the best and most secure locks that had ever been produced.”

[1] The Borland device is a double-nose, three key lock, very highly organized for the purpose of making it unpickable, and to prevent irregular resetting. The feature of safety wfis made the chief consid[180]*180eration in its construction. Tubular keys .are employed, to avoid picking and easy duplication, and the lock contains 15 tumblers. The most important feature of this lock, however, which distinguishes it from others, including defendant’s, is the co-operation of all its parts, each with the other; the resetting mechanism being part of the unlocking and lock mechanism in daily use. This lock, as a combination of old elements, comes more nearly within Justice Matthews’ definition of a patentable combination than is usually found in combinations which are sustained. In Pickering v. McCullough, 104 U. S. 310, 26 L. Ed. 749, Judge Matthews said.

‘'in a patentable combination of old elements, all the constituents must so enter into it as that each qualifies every other.”

The different elements in this lock are operatively tied together. To open the safety box door part of the supplemental lock mechanism must be used, while in other locks it is not. In defendant’s lock no use of the supplemental lock feature is made in ordinary opening and closing, except to idle a disc in a nonfunctional way. The supplemental' lock may be taken off entirely without affecting the everyday use of the locking and unlocking, while in Borland the whole lock would be destroyed.

It is urged by defendant that Borland did not bring forward the supplemental lock feature in his patent application, nor until some two years later, so that the Roche application of 1906 antedates him. But the fact is that Borland fully described his supplemental lock in his first specification. In fact, he could not explain his invention without doing so, by reason of the complete co-operation of parts, and the co-operative law which governs the whole device. His original figure 4 shows the resetting mechanism on the back of the lock, and figure 14 the manager’s key. On June 8, 1905, Borland fully describes his resetting mechanism shown in figure 4, and other cuts, including the third or manager’s key, shown in figure 14. He closes this description as follows:

“Then, both the new key” (meaning the fourth key, or new depositor’s key) “and the manager’s key may be withdrawn, the withdrawal of the former returning the locking tumblers and associated gears to their locking positions, while upon the withdrawal of the manager’s key ‘ the dog 84 is .thrown back into engagement with the disk to hold the post 80 agáinst movement.”

The supplemental lock is thus fully described by Borland at the outset.

Original claim 21, filed June 14, 1905, also covers the supplemental-lock in a blind way. It is true that Borland did not 'elaborate the notion of a supplemental lock until long after Roche had filed his application for a patent on what is now defendant’s lock. But such is the nature of Borland’s invention that he could not describe the resetting operation without also ipsissimis verbis describing the supplemental lock.

[2] There could be no invention in merely adding a supplemental lock to the permutation or resettable lock of the earlier art. This is [181]*181so far beyond controversy as to justify only a bare mention of a few of the prior devices. Speaking generally, all that Borland added to the Roche 1901 lock was a supplemental lock for the resetting mechanism, and to put that lock on the inside of the lock-case, so as to effectually guard against fraudulent resetting.

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Related

Borland v. Northern Trust Safe Deposit Co.
228 F. 1019 (Seventh Circuit, 1915)

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Bluebook (online)
212 F. 178, 1914 U.S. Dist. LEXIS 1022, Counsel Stack Legal Research, https://law.counselstack.com/opinion/borland-v-northern-trust-safe-deposit-co-ilnd-1914.