Lane v. Park

49 F. 454, 1892 U.S. App. LEXIS 1629

• Court: U.S. Circuit Court for the District of Western Pennsylvania
• Decided: February 11, 1892
• Status: Published

Opinion

Acheson, Circuit Judge.

Waiving the question whether the plaintiff’s application of soft center steel, a material confessedly old, to the manufacture of plows and cultivators involved anything more than the exercise of good mechanical judgment, and assuming that his specification disclosed a patentable invention, we proceed at once to the question of infringement. And here we have first to notice that the claim of the patent is so awkwardly expressed as to give rise to controversy whether it is for the method of making plows and cultivators out of the described material, or for the product or manufacture made in the defined manner. The plaintiff takes the latter view, and we adopt it as the better opinion. But w'hat, as now articles of manufacture, does the claim cover? The plaintiff contends that it embraces the flat pieces of metal plate cut to pattern by the steel manufacturer upon the order of the purchaser, — the mere blanks out of which the mould-boards and plow-shares and the cultivator teeth are made by the person ordering the material. But assuredly these blanks are not in terms within the claim, which, as we have seen, is in these words;

“The improvement herein described in the manufacture of plows and cultivators; that is to say, the making of them of metal plates, having a central layer of soft Iron or steel, with exterior layers of cast-steel, substantially as and for the purposes described.”

According to the letter of the claim, the pronoun “them” plainly relates to this “plows and cultivators” previously mentioned. But, if we look beyond the claim itself, into the specification, we find nothing therein to countenance the broad construction upon -which the plaintiff insists. The method of cutting the steel plates in prior use into pieces of proper size and form to make the mould-boards, plow-shares, and cultivator tooth is described as old, as is also the after-treatment of these pieces, namely, the shaping, tempering, grinding, and polishing thereof. It is shown that the difficulty sought to be overcome did not arise until after the blank pieces had been bent and formed into mould-boards, plow-shares, and cultivator teeth; that it is in the still later process of tempering or hardening these formed parts that the difficulty existed. To prevent these completely formed parts from warping during the process of tempering or hardening is the very essence of the described invention. The specification declares that “the invention consists in constructing the mould-boards and shares of metal plates, having a central layer of iron,” etc. And again: “By having the steel on both sides of the iron, the mould-boards and shares, after being bent to the required form, can be tempered without warping or changing their form.” By no allowable reading of the specification can the invention be held to exist in the bare metal blanks cut from the admittedly old soft center steel plates. Again, we have seen that in his second application, which became merged in his third one, the plaintiff addressed the commissioner of patents thus: “My claim is for a mould-board made of steel, with iron center. I do not claim the method of making the steel. * * * It is the result only — the mould-board — I claim; and, if necessary, I would disclaim expressly everything except that.” Then he intentionally and very deliberately canceled and abandoned his claim for the blanks for making cultivator teeth. The restricted claim, as finally formulated by the plaintiff and allowed by the office, after repeated rejections of broader claims, is strictly binding upon the plaintiff, and he is precluded from insisting upon a construction which would so broaden the claim as to take in the mere flat metal blanks in their rough state. Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. Rep. 1021; Shepard v. Carrigan, 116 U. S. 593, 6 Sup. Ct. Rep. 493.

But the plaintiff further contends that, if the patented invention was not embodied in the metal blanks, so as to constitute a direct infringement of the claim of the patent, still the defendants are liable, by reason of their contributory act in cutting the blanks, as joint infringers with the manufacturers, who used them in making plows and cultivators; and to sustain this position Wallace v. Holmes, 5 Fish. Pat. Cas. 37, is cited. But between that case and the one in hand there is no real analogy. In Wallace v. Holmes the defendants made and sold the completed burner, which contained the distinguishing feature of the invention, and which was entirely useless without the lamp chimney; so that, as the court said, every sale of a finished burner was a proposal to the purchaser to supply the chimney, and every purchase was a consent that this should be done. Moreover, the acts of the defendants there were clearly indicative of the intention to infringe, and actual concert with others to do so was a certain inference from the proofs. The case here is rather within the principle of the case of Keystone Bridge Co. v. Phoenix Iron Co., 5 Fish. Pat. Cas. 468, where, the patent being limited to the use of the described chords in bridge structures, it was held by Judge McKennan that the defendants might lawfully make the chords, and were not responsible for the infringing act of the bridge builders in using them. Now, indisputably the right'to manufacture soft center steel plates was open to everybody, and the mere cutting them, according to order, into convenient patterns or shapes, to suit the purposes of the plow-maker or manufacturer of the cultivators, was no encroachment upon the exclusive rights of the plaintiff. The defendants were not bound to inquire whether or not the purchasers from them were licensed by the plaintiff to use the invention; and, having done no wrong themselves, they are not answerable for the unlawful acts of others.

In the facts of this case we discover no ground whatever for imputing infringement to the defendants. And now, February 11, 1892, upon the facts found, the court finds in favor of the defendants.