Hartshorn v. Saginaw Barrel Co.

delivered the opinion of the court.

This is an appeal from a decree of the Circuit Court dismissing the complainant’s bill, which was a bill in equity for the purpose of enjoining the alleged infringement of three several letters-patent for improvements in shade rollers, desig- ■ nated as follows : 1st. Reissued patent No. 1370, dated October 31, 1876, granted to the complainant, called the Hartshorn reissue. 2d. Reissued patent No. 7367, dated October 31,1876, granted to the complainant as assignee of "William Campbell, called the Campbell reissue. 3d. Patent No. 69,189, dated

The questions in the case involve the validity of the reissued , patents' and the alleged infringement of the David patent;.' The Hartshorn reissue was the reissue of original letters-patent No. 68,502, dated September 8, 1867. The Campbell reissue was the reissue of' original letters-patent No. -69,176, dated - 'September 24, 1867. In each case there was, therefore,. a. . delay of about nine years in -obtaining the reissue.-

In ordel to understand and resolve the questions arising in the case it will be necessary to consider the state of the art at ' the time of the issue of the patents. This may be briefly stated as follows: The inventions in question are in that class of shade rollers which are rolled up by the unwinding of a coiled spring; the roller was hollow and the spring placed . within it, ,one end being attached to the roller and the other end to the shaft ■ or rod on which the roller revolved. Sometimes this rod passed entirely through the roller, and sometimes only partially through. As the curtain was drawn down the spring was wound up, and when the tension upon the cur- ■ tain was released and the curtain allowed to roll up, the spring was unwound, thereby producing the desired result. The'up- • ward movement of the curtain was controlled by a pawl and ratchet at one end of the roller, the pawl or the ratchet being-attached to the bracket; ' The pawl might be operated by'a' cord hung at the side of the w;indow; by pulling down on this cord- the pawl was disengaged from the ratchet and the curtain immediately rolled up under the action of the spring. Harts- - horn, the appellant, obtained a patent, not in controversy in this suit, but to be considered in reference to the state of the - art, dated October 11, 1864. The invention described in that-patent consisted in the application of a pawl and ratchet or . notched hub arranged in such a manner that the shade maybe stopped and retained at any desired height or point within. - the scope of its movement by a single manipulation of' the'' shade, the usual cord for operating or turning the .shade roller being dispensed with entirely, as well as counterpoises, which had in some instances been employed, in connection with spring

. Such was the condition of the art when Campbell obtained his original patent dated September 24, 1867. He. described his invention as having “for its-object to furnish an improved device, by means of which the spring roller of a window-shade -may be made to hold the shade stationary at - any desired elevation, and yet allow the same to be drawn down or run up, without obstruction or stoppage, as far as may be desired; and it consists in the combination of the loose or sliding pins Or bolts, having heads formed upon them, with the flattened shaft of the roller, as hereinafter more fully described.” The description, as contained, in the specifications, is as follows, having reference to the annexed drawings: “A is the window-shade. B is the hollow roller, one end of which is pivoted to the bracket C, and the other end of which revolves upon the shaft D, that carries the coiled spring, and the' projecting end of which is secured in the jaws of the bracket E, so that, by drawing down the shade A, and thus revolving the roller B, the coiled spring may be wound closer around the shaft D. In the block, or part of the roller B that closes or forms the end of the said hollow roller B, and forms its bearing upon the shaft D, are formed two holes leading, upon opposite sides, fro'fti its outer or convex surface to a little at one side of its centre, as shown in Fig. 2. The outer ends of these holes are countersunk, as shown. The two opposite sides of the shaft D within the block or part V are flattened or notched, as shown in Fig. 2. F are two pins or bolts, the bodies of 'which fit into the holes in the block V, and their heads fit into the coun: tersunk parts'of said holes.- The bolts or pins F are of such a

“ Having thus described my invention, I claim ás new and „ desire to seeure by letters-patent —

“ The combination of the loose or sliding pins or bolts F, having heads formed upon them, with the flattened or notched shaft D, substantially as herein shown and described, and for the purpose set -forth.”

On the 3d of • September, 1867, Hartshorn, the appellant, also obtained his original patent foi\an improved shade fixture! In that specification he describes his invention as relating' “ to a new and useful improvement in that class of shade fixtures in which the shade roller is provided with a spiral spring for automatically winding up the shade. The present invention-is an improvement on a shade fixture of this class, for which letters-patent were granted to me, bearing date October 11, 1861-, and is designed to obviate an objection attending the original device, which consists in the unwinding, of the spring ■whenever the shade roller is removed from its brackets or bear- ■ ings, a contingency which involves the necessity of winding up 'the spring previous to the replacing of the roller in its bearings, and which cannot be done by an unskilled person without considerable' difficulty.” He then proceeds to- describe in the specification, by reference to the illustrations, the device which

The principle embodied in the Hartshorn patent of 1864 Avas that of an automatic pa\Ad and ratchet, ór a paAAd so constructed and arranged, with respect to the ratchet, that the paAvl would be caused to engage Avith the ratchet to stop and. hold the shade at any desired height or point, or would be prevented from engaging with the ratchet by merely varying the speed of the revolution of the roller, Avhich Avas effected through the simple manipulation of the shade alone by the hand of the operator, the paAvl engaging with the ratchet Avhen the roller Avas revolved sloAvly, and not engaging' Avhen the roller was made to revolve quickly. He thus dispensed entirely Avith cords for operating'the roller, and Avith counterpoises, and Avith the old spring pawl and ratchet which required the use of both hands in manipulating the roller and controlling the shade in its ascent under the force of the spring, as by its use the shade could be raised or loAvered by the manipulation of the shade alone in the hands of the operator. In what was previously knoAvn as the coach fixture, it-

It will, therefore, bé perceived that the Hartshorn patent of September 3, 1861, and the Campbell patent of September 24, 1867, are for improvements upon the invention described in the Hartshorn patent of 1864, and in any comparison between the two former the invention embodied in the original Hart-shorn patent of 18.64 must be eliminated as common to both. The circumstances relied upon to justify and make valid the reissues in 1876 of the Hartshorn patent of 1867, and the Campbell patent of the same year, are conceded to be as 'fol-' lows: In 1873 a suit was brought in the district of Massachusetts upon the David patent by the Salem Shade Roller Company, then the owner of it, against one William G. Harris,

In the.Campbell reissue,of October 31, 1876, the claims aré: stated as follows:

“ 1. In a spring shade roller, having a pawl or detent and a ratchet, or their equivalent, so arranged as to allow the shade to be drawn down or run up without obstruction, and which engage automatically with each other to hold the shade in any .desired position, the arrangement of such pawl or detent on the roller which carries the notched spindle or ratchet, so that, when the roller is removed from its brackets, the tension of the spring will be preserved.

“ 2: In a spring shade roller, having a detent and ratchet, or their equivalent, constructed and arranged to engage auto- . matically with each other for holding the. shade, the combination,- with the ratchet, or its. equivalent, of a loose pawl or detent, moving in a chamber or guide, and adapted to engage with the spindle.

“ 3. The combination of the loose or sliding pins or detents F, constructed as described, with the flattened or notched shaft or spindle, substantially as herein shown and described.”

It thus appears that the third claim of the reissued Campbell patent of 1876 is identical with the entire claim of the original Campbell patent of 1867, the first and second claims in’ the reissued patent being entirely new.

In the original Hartshorn patent of September 3, 1867, he characterizes the invention as an improvement upon that contained in his patent of 1864, in this, that the pawland notched hub, being both connected with the roller, the spring is retained or prevented from unwinding equally as well when the roller is removed from its brackets or bearings as when adjusted in hhem; and he states his claim as follows: “ The attaching of a pawl and a ratchet or notched hub to a window-shade roller provided with a spring, or to parts connected with'Said roller, in such a manner that the tension of the spring will, without any manipulation or adjustment of parts whatever, always be preserved, whether the roller be fitted-in the brackets or bearings or removed therefrom, substantially as set forth.” This claim in the reissued patent of October 31, 1876, is changed so as t¿ read as follows : “In a spring shade roller having a pawl or detent and ratchet, or their equivalent, constructed and arranged so as to engage

In the case of Hartshorn v. The Eagle Shade Roller Company & Others, 18 Fed. Rep. 90 , decided in the Circuit Court of th§ United States for the District of Massachusetts, the validity of the Campbell reissue of 1876 was questioned and affirmed. It appears also in that case that the original-patent of Hartshorn of 1864 had been surrendered and a reissue obtained, No. 2756, August 27, 1867, being the same in evidence in this cause, for the purpose of showing the state of the art at that time. This reissue, No. 2756, was also questioned in the case just referred to, and held to be invalid on the ground that the reissued patent extended the'claim of the original patent, so as to cover a shade roller where the pawl and the ratchet are both affixed to the roller, so that thé roller might be detached from the bracket without unwinding; and that within the decision of Miller v. Brass Company, 104 U. S. 350 , there had been an unreasonable delay in obtaining the reissue amounting to laches. That reissue was accordingly held void, but the Campbell reissue of 1876 was held valid, notwithstanding the admitted enlargement of the claim and the delay in- obtaining the reissue for nearly ten years-. The ground of the decision was that the patentee did not discover until in 1874 that he was entitled to a priority of invention over Hartshorn, whose patent of 1867 covered the same claim. His solicitor, who was also the solicitor for Hartshorn, in obtaining the two patents had assumed that Hartshorn was the first inventor, because his application was received first, and had framed the application of Hartshorn accordingly, and caused that of Campbell, to correspond, limiting his claim to ■ the particular form of the device, and granting to Hartshorn the broad claim now found in the Campbell reissue. This mistake seems to have been discovered, as already stated, by the taking of the testimony of the parties in the case of the

We are not satisfied, however, with either this reasoning or the conclusion. . Campbell’s acquiescence in Hartshorn’s claim must be regarded, so far as he is concerned, as an abandonment of any right on his part to a patent for the same invention, and, having deliberately rested in that acquiescence for a period of between nine and ten years, it is too late, according to the settled course of decisions in this court, to resume his rights. It is, accordingly, no answer to this view to say that, in the meantime, the invention was not dedicated to the public by Campbell’s abandonment, because it was covered by Harts-horn’s claim; for, according to the supposition, Hartshorn’s rvas a false claim, and though it may not be regarded as fraudulent, but founded upon an honest mistake, nevertheless the validity of, his patent must have -failed Avhenever called in question and the facts were made known, as they did become known, in the suit against Harris. The mutual mistakes of the tAvo parties cannot be considered! as correcting each other. Hartshorn claimed an invention to which he now confesses he was not entitled, and for that reason his original patent AAras

The question of laches is perhaps immaterial, for the reissue of the Campbell patent was not for the same. invention described and claimed in the original. This does not rest merely on the enlargement and change in the nature of the claim. The specification itself was substantially altered. • The alterations, it is said in argument, had the effect only of giving a more full, complete, and accurate description of the same mechanism; .but, in point of fact, the alterations changed the shape of the specification in such a way as to admit the new and enlarged claim in a manner in -which it could not have been made upon the original description. A comparison between the original and reissued patents shows that the specification of the latter has been materially changed so as to cover, as the invention of the patentee, that function of the structure by which the spring will be locked when the roller as a whole is removed from the brackets, in respect to which the original patent is entirely silent. "We are, therefore, of the opinion that the first claim of the Campbell reissue, the only one alleged to be infringed in this case, is void.

¥e are also of opinion that the Hartshorn reissued patent, No. 7370, of October 31, 1876, is void on a different ground. That reissue disclaims what was claimed in the original patent, viz.: The arrangement of both the pawl and the ratchet upon or in connection with the roller, so that the roller can be removed from its brackets without permitting the spring to unwind, for the reason that such an arrangement had been previously invented by Campbell; and, instead of that claim, the feissued patent is confined to claiming “the combination with a ratchet, or its equivalent, upon the stationary spindle

It remains now only to consider the question of the alleged infringement of'the David patent, No. 69,189. The invention is claimed to have been made in December, 1866, though the patent was granted on September 24, 1867.- It is for an improvement upon-the original invention of Hartshorn, as described in his patent of 1864, and must be construed with reference to that. It seems to have had for its object,to do away with the noise produced in the Hartshorn roller by the contact of the pawl with the ratchet. That objection to the Hartshorn roller, David says in his testimony, was what incited him “to invent something that would do away with the noise.” He gave a new form to the pawl and ratchet used, and also shifted the ratchet from the roller and made it a part of the bracket, which was a stationary part of the fixture, and applied the pawl or engaging'part to the revolving roller. His pawl was “ an arm or detent,” hinged or pivoted in a radial slot in,

<£ 1. The arm or detent k, arranged upon tbe roller in such a manner that it moves toward and away from tbe centre or axis of tbe roller a by tbe action of gravity and centrifugal force, substantially as described.

“ 2. Tbe combination and arrangement, at tbe same end of a shade roller, of a spring <?, rod d, and arm or detent 7&, or their mechanical equivalents, substantially as described.”

Tbe device is illustrated by drawings accompanying tbe specification- of tbe patent, as follows:

We hold, therefore, upon this part of the case, there was no infringement.

The decree below was, therefore, right, cmd is affirmed.