Lovell Manufacturing Co. v. Cary

delivered the opinion of the court.

This is a suit in equity, brought March 14, 1885, in the Circuit Court of the United States for the Western District of Pennsylvania, by Alanson Cary and Edward A. Moen against the Lovell Manufacturing Company, Limited, an association under the laws of the State of Pennsylvania, to recover for the alleged infringement of letters patent No. 116,266, granted to Alanson Cary, June 27, 1871, for an improvement in modes of tempering springs.

The specification of ' he patent is as follows: “ Be it known that I, Alanson Car , nf city, county, and State of New York, have invented a new and useful improvement in furniture springs; and Í do herehv declare that- the following is a full, clear, and exact description thereof, which will enable others skilled in the art to make and use the same. This invention relates to spiral springs, usually made in a conical form, of steel wire, and extensively used in upholstering sofas and chairs and for bed bottoms, etc:, and consists in subjecting the spring to a tempering process after it has been completed in the usual manner, whereby its strength, elasticity, and durability are greatly increased. The ordinary- furniture spring is made of hard-drawn wire, coiled and forced to the proper shape, and when this is done the spring is considered finished, without having been subjected to any tempering process other than what is incidental to the drawing of the wire. To give them a finished appearance, however, copper or other material is frequentty applied by suitable means. The metal being greatly condensed and hardened in the process of drawing the wire, a good degree, of elasticity, is given the wire thereby;

The claim is as follows: “ The method of tempering furniture or other coiled springs, substantially as hereinbefore described.”

The answer set tip various defences, and among' them want of novelty and noninfringement. . It averred that, the process set forth in the specification of the patent was merely a method of increasing the elasticity of steel, applicable not only to furniture springs and other coiled springs, but also springs and other articles made of steel, whether coiled, bent, twisted or straight; that the same was old, well known and in common use or practice for many years prior to the alleged invention by Cary, and for more than two years before, he filed his application for the patent; .that said process or method had been so practised on coiled springs, uncoiled,

Prior to the filing of the bill in this suit, the patent had been sustained' by a decision made by Judge .Wheeler, on February 7, 1885, in the Circuit Court of the United States for the Southern District of New York, in Cary v. Wolff, 24 Fed. Rep. 139 . On the basis of that decision a preliminary injunction was granted in the present suit by Judge Acheson, on June 12, 1885, 24 Fed. Eep. 141. In Cary v. Domestic Spring-Bed Co.f in the Circuit Court for the District of New Jersey, on July 28, 1885, in a suit on the same patent, Judge Nixon, following Judge Wheeler and Judge Acheson, granted a preliminary injunction, 27 Fed. Eep. 299. On| January 6, 1886, 26 Fed. Eep. 38, Judge Nixon dissolved the injunction in the New Jersey suit, on the presentation of new affidavits relating to the novelty of the invention, and on February 2,

After the proofs were taken in the present suit, it was brought to a final hearing before Judges McKennan and Acheson, and they sustained the patent, following Judge Wheeler’s decision. Their opinions are reported in 31 Fed. Kep. SÍÍ, 317. On August 3, 1887, thb court entered an interlocutory decree, holding the patent to be valid and to have been infringed,' awarding to the plaintiffs a recovery of profits and damages, with costs, referring it to a master to take the account of profits and damages, and granting a perpetual injunction. The master reported six cents damages and costs in favor of the plaintiffs. The plaintiffs excepted to his report, and the court, oh a hearing of the exceptions, entered a final decree, on February 16, 1889, awarding to the plaintiffs a recovery of $8715.31, and costs. The opinion of the court on the exceptions is found in 37 Fed. Rep. 651 . The defendant has appealed to this court.

The invention claimed, as appears from the specification, is a method of restoring steel wire which has been mechanically strained, by subjecting it to a temperature of 600°, more or less, whereby its' disturbed and disarranged molecules are allowed to assume their normal relation. The claim limits the method to its application to “furniture or other coiled springs;” but it appears from the evidence that the process,: as applied to those springs, is in no respect different, in method or effect, from the same process when applied to any mechanically strained wire, or to steel made in straight pieces or strips, or otherwise. The claim covers broadly the described method of tempering, applied to any coiled springs as well as coiled springs for furniture, and if the evidence shows that, prior to Cary’s invention, the method had been used for the restoration 'of any springs of strained steel, or other articles of strained steel having the resiliency which is a well-known property of steel, the claim is substantially anticipated. Particularly, if the method claimed had been used by others to restore articles of coiled spring steel, even though they were not used for-furniture springs, the claim is anticipated.

The date of Cary’s alleged’invention is December, 1870, and the question is, what was the state of the art -at that date. Mr. Brevoort explains “the ordinary tempering process” as follows: “ Steel is ■ ordinarily tempered substantially in the following way: The steel is first best heated to a cherry red; it is then suddenly cooled either in water or oil; it is then in a very brittle and exceedingly hard condition and is extremely liable- to be warped or bent during the hardening as well as during the heating. The next step is to reheat the article carefully and gradually and watch the appearance of a bright portion of the surface of the article, when certain colors will be noticed following one another in succession; first a very light yellow, then a deeper yellow, shading into purple, then a deeper purple, until, finally the purple merges into blue, and lastly-a blue color, yellow, purple and blue being the three prominent colors; the colors indicate different degrees of hardness in the steel and act as guides, telling when the proper degree of temper has been reached for any desired article; thus, for example, when the.yellow just begins to shade into the purple the proper degree of hardness for a penknife has been reached, and the

Higgins, a witness for the defendant, thus describes the way in which wire clock-bells were made, prior to Cary’s alleged invention. ■ He says that “ the untempered steel wire was taken from the hank and straightened by machinery, cut off at the proper length, and then tumbled in sawdust to clean the oil from it; Then the brass collet was driven on to one end, a small coil of silver was put on for the purpose of brazing the steel and brass together, then borax and water were • put on, and they were brazed together, and then were tumbled in sawdust to clean off the borax, and then was wound on a wooden block, then turned by a pair of plyers to the proper shape, then was blued and oiled, and then they were ready for use.” He also says that the method of “blueing” wras this: “ They were put in piles of a hundred each, and then spread on to a sheet-iron pan, and then put into an oven and there kept until the heat blued them, and then taken out and oiled ready for use. They were cooled in the air; ” that the object of the winding was to put them into a “ bell” form; that the effect of the winding was to make the vibration — to give them the sound; that the blueing stiffened them and gave them the tone; and that the bell, when struck by a clock hammer before blueing had no sound, while after blueing it had a good tone.

Horton, a witness for the defendant on the same subject, says that he used to make bells of untempered steel wire, although some of it was drawn harder than others; that some of it was hard-drawn steel wire; and that the object of heat

. Andrews, a witness for the defendant, gives testimony to the same effect, and says that the coiling of the wire, to give it the shape of a “ bell,” weakens the spring and causes it to lose its elasticity, while subjecting it to heat makes it more springy and elastic.

Thomas, a witness for the defendant, states that he had known the wire clock-bells for forty years; that they were made from hard, untempered steel wire, straightened, cut into lengths, then wound on a form, and subjected to the blueing process to,make the spring; and that there was no spring to the wire until it was blued.

Warner, a witness for the defendant, states that’ the wire was steel wire, used just as it was drawn ; that the coiling of the wire upon, a block to give it the form of a wire bell-stretched the outside and upset the inside, and weakened the wire; and that the blueing process restored it-and gave it more elasticity.

Broomhead,- a witness for the defendant, states that as early as about 1863 he saw hard-drawn steel wire used in the manufacture of clock-bells.

Higgins also testifies that he discovered, as early as 1866, that the blueing process made the steel stiffer than it was before ; and that he bad known since 1866 that the tendency of the spring to keep its shape, and to restore itself to its proper shape when the coils were drawn apart or pressed together, was increased by the blueing process.

Gardiner testifies that he knew that heating of strained bell steel stiffened it, making it stronger and more elastic, and that he would have known that the process of blue-heating steel wire in the form of furniture springs would have increased its stiffness and elasticity in'a measure.

As to the hair-springs, .they are used in marine clocks, to control the balance, and are steel springs made of steel wire,

Wright, a witness for the defendant, describes the use of the same process by him on hair-springs for seven years-following 1848; and says that the steel wire was untempered, just as it came from the wiremaker; and that the’ blueing increased its elasticity.

Testimony to the same effect was given by the witness W. B. Barnes, who said that the steel wire was hard-drawn and imtempered; and that the blueing had the effect of keeping the spring near the shape of the snail, and also giving it temper .or elasticity.

Hendrick, another witness for the defendant, testified to the same effect.

It is contended for the plaintiffs that the bell-making process wak for a different purpose from that contemplated by > Cary in his specification; that the results were not analogous; and that, therefore, the patent was not anticipated. But we are of opinion that in the Cary process and the bell-making

The difference contended for by the plaintiffs, between the process of blueing wire clock-bells and the process of blueing furniture springs, in that one deals with spiral articles and the other with articles of a helical form, is not a difference in the process, but is at most a difference in the articles to which the process is applied. If the straining of furniture springs is peculiarly aggravated because of their shape, the difference is merely one of degree, not of kind. Moreover, the_ Cary claim describes-the process as applicable to the manufacture of furniture springs “ or other coiled springs.” A coiled wire bell, although not a furniture spring, is a coiled spring; and it appears from the evidence that any wire drawn through dies, although not coiled, is, when heated to a blue color, stiffened and its elasticity increased.

In rebuttal of the defendant’s evidence as to wire clockbells and hair-springs, it is admitted that the plaintiffs show that

In Smith v. Nichols, 21 Wall. 112 , it was held that a mere carrying forward, or new or more extended application, of the original thought, a change only in form, proportions, or degree, the substitution of equivalents, doing substantially the same thing in the same way, by substantially the same means, with better results, was not such invention as would sustain a patent ; and in Roberts v. Ryer, 91 U. S. 150 , it was held that

It is contended, as against the wire bells, that the evidence does not show the application of the patented process to an ■article designed to be used as a spring. But the clock hair-• springs are quite as truly springs as the furniture springs, for they require the exercise and use of the resiliency of tempered steel. Both are subjected to the same strains in coiling ; both for the same reasons need restoration ; and in both the application of a blue heat produces the same desirable results.

Within the rule laid down by this court in Hollister v. Benedict Mfg. Co., 113 U. S. 59 , there was nothing more than mechanical skill in arriving at the alleged invention, in view of the state of the art. Cary says, in his specification, .that “ in bending or coiling the wire into the proper shape, the metal is unavoidably, weakened; ” that “ this greatly reduces the elasticity, strength, and durability of the spring; ” that “ being a manufacturer of furniture springs, and aware of this difficulty,” he had made many experiments with a view to restoring the wire, after being bent or formed into springs, to its normal condition; and that he had discovered that that could be done “ by subjecting the spring to a degree of heat known as ‘spring-temper heat,’ which-is about 600°, more or less, and that a subjection to this temperature for about eight minutes is sufficient to produce the result desired.”

It is contended, however, by the plaintiffs that the applicability of the former processes is contradicted by the fact that no one had used, them for the manufacture of furniture springs, and that as soon as Cary’s process Avas made known the art of making furniture springs Avas revolutionized. But, it was said by this court in McClain v. Ortmayer, 141 U. S. 419 , 428: “ That the extent to Avhich a patented device' has gone into use is an unsafe criterion even of its actual utility, is .evident from the fact that the general introduction of manufactured articles is as often effected by extensive and judicious1 advertising, activity in putting the goods upon the

In' the present case, it appears that it was not until a short time before 1870 that furniture springs began to be commonly made of steel wire. It was not until 1868, when the general introduction of Bessemer steel and open-hearth steel afforded a cheap substitute for iron, that the use of steel became general in the art in question. It was then natural that there should be introduced into that art methods of ■ treatment which were well known as applied in allied arts. The method of the patent, already in use, thus occurred to Cary; büt he was appropriating' a method which was common property. When steel was adopted for the first time in any art, it was natural that existing methods of treating it should be applied to its new use in the given art. The case is merely one of a double use. Nor is it of force that experts expressed surprise that the process in question was applicable to furniture springs.

Cary was not the first to discover the process described in his specification, for the restoration of steel. He claims only the process; and the use made of the article after it is subjected to the process does not affect the nature of the process itself. As a process, there is nothing new in the subject-matter of. the claim. The claim does not cover an improvement in furniture springs or other coiled springs, as a new article of manufacture; and the “ coiled springs,” to which, by the claim, the method of tempering is to be applied, include all such springs, irrespective of the use to which they are to be applied'. The method Or process claimed is substantially the old method of restoring mechanically strained steel.

The present case is covered by the cases of Vinton v. Hamilton, 104 U. S. 485 ; Stow v. Chicago, 104 U. S. 547 ; Locomotive Truck Case, 110 U. S. 490 ; Blake v. San Francisco, 113 U. S. 679 ; Thompson v. Boisselier, 114 U. S. 1 ; Miller v. Foree, 116 U. S. 22 ; Dreyfus v. Searle, 124 U. S. 60 ; Brown v.

In the- case of Cary v. Wolff, 24 Fed. Rep. 139 , Judge Wheeler remarked that the discovery of Cary was that the ápplication of heat would restore the lost strength and elasticity of the wire, consequent on the displacement of its particles ; that the application of heat for that purpose was not known until it was applied to that kind. of springs in their peculiarly weakened state; that the discovery was of a néw application of an old process, which produced a new and highly useful result; that wire bells for clocks were made to have sonorous properties by the same process in kind, but for a .different purpose and with a-different result; that what seemed to be the nearest to it was the method- of shaping and spacing the coils of hair-balance-springs for marine clocks, by coiling thé wire into a .-mould of the required shape, called a snail,

In the present case, in the opinion of Judge Acheson granting the preliminary injunction, 24 Fed. Eep. 141, the court cited and followed the decision of Judge Wheeler.

In the opinion of Judge Nixon in Cary v. Domestic Spring-Bed Co., 26 Fed. Rep. 38 , he stated that, in ordering the preliminary injunction, he had followed the decision of Judge Wheeler; and that is shown also by his opinion granting such injunction. 27 Fed. Eep. 299.

In the opinion of Judge Acheson in the present case, on final hearing, 31 Fed. Eep. 344, concurred in by Judge McKennan, 31 Fed. Eep. 347, it is stated that the process of the patent is based on the fact that the evils resulting from the distortion of hard-drawn steel wire, in the ordinary operation • of coiling it into springs for furniture, can be removed by a single application of heat, as set forth in the specification, so- as to result in a greatly improved spring; that furniture springs so treated came into immediate and very general use, on their introduction into the market, largely superseding springs not subjected to that treatment; and that experts and others practically familiar with the treatment and behavior of steel were greatly surprised at the result effected by the patented process, it being contrary to all their previous conception and experience. The opinion then cites and quotes from the opinion of Judge Wheeler, and states that the latter opinion held that the Cary process was new and patentable, although previously, in the

■ But we are of opinion-that the same principle set forth in the patent was developed in the manufacture of the wire bells for clocks and of the hair-balance-springs; that there was no patentable invention in applying that principle to the. spring's mentioned in the specification, and that the case is merely one of a double use.

It results that the decree of the Circuit Court must be

Reversed, and the ease he remanded to that court with a direction to dismiss the hill, with costs.

Mr. Justice Brewer did not sit in this-'case or take any par£ in its decision.