46a

,EDERAL RE£ORXER.

LULL v. CLARK and others.

(Circuit Court, N. D. New York. 1882.)

PA.TENTS FOR INVEN1'IONS-FoRMA.L VARUTION-IliFRINGEMENT.

Where the mechanism used by defendant's shutter hinge is & merl' variation from that of plaintiffs' invention, having the same mode \1.1. it is an infringement of the patent.

fonn&l

In Equity.

Livingston Gifford, and Philip J. O'Reilly, for plaintiff. George J. Sicard, for defendants.

Justice. This suit is brought on letters patent No. 10,477, granted to Harvey Lull and Richard Porter, on the invention of Lull, January 81, 1854, for 14 years from January 2, 1854, for an "improvement in shutter hinges," extended for seven years 'from January 2,1868, and "again extended for seven years from April 29, 1876, under the provisions of a special act of congress approved on that day. The specification says:
BLATCHFORD,

.. Figure 1 represents the hinge as opened and locked; figure 2 represents the hinge in its position when the shutter is drawn from the wall sufficiently far to unlock it; and figure 3 represents the hinge when the shutter is closed. There are several varieties of shutter and door hinges, the greater portion of which, in being opened, bring two inclined planes in action, causing the shutter or door to rise, the object being to cause doors especially to swing clear of the carpet. Some of these are provided with a fastening which is formed of a separate piece. Another method is to make a series of planes, which admits of the door rising and falling several times in the act of swinging it open and shut. I do not lay claim to any of these hinges, for they are almost useless for shutter hinges, for which purpose my hinge is especially designed. It is well known that window shutters must swing into the frames several inches before they come to their seats, and to use either of the class of hinges before mentioned would cause the shutter to rise up against the frame and bind, or else it must be cut away, which would admit rain, snow, etc. My hinge allows the shutter to swing around horizontally until it almost reaches the wall, when it drops and locks. This is one distinguishing feature of mine over other hinges. Again, my hinge is c<1mposed of but two pieces, each entirely of cast metal, while the others which are self-locking are composed of three or more; and, indeed, many of those which work upon the planes use a friction roller to aid in causing one half of the hinge to rise on the other half, which is expensive and very liable to become disarranged, as well as adding another piece to the hinge. This constitutes a second difference. B.ut the most essential point of difference between my hinge and those heretofore essayed consists in my being able Lo use a cast-iron spindle with

LULL V. CLARK.

457

perfect safety, from the fact that, when the shutter is opened and locked, the force of the wind tending to close the shutter is taken entirely off the spindle and thrown upon two cast arms, and, in opening or closing the shutter, its weight is partially taken upon two Ilquare shoulders, thusrelieving.the spindle, which is really but a directrix to the other parts, without taking the weight of the shutter upon it. For this reason I can safely rely upon the cast-iron spindle. I do not contend, however, that cast-iroll spindles have llOt been used, but I do contend that. they are liable to be broken by any sUt1den slamming of the shutters, as they heretofore had to sustain its entire weight. I do not assert that my invention consists of three distinct differencesbetweeu what has heretof{)re been done and what I have dqne,'but I claim so COlphiniug these differences as to produce in a hinge of two pieces a verycheil:V, strong, and effective self-locking hinge, which has not been done before. of my invention, therefore, consists in the so forming of a self-locking hinge, cast in two pieces, as that a shutter hung thereon may swing open ol'shut on a horizontal plane, and lock when opened to its limit, andaothat, when ICXlked open, the strain shall be taken off the spinill,ean,d' thrown on to cam arms, and thus effectually relieve the spindle from the force, of the winds. " To enable others skilled in the art to make and use my invention, I will proceed to describe the same with reference to the drawings. My hinge is cast in two pieces of iron, or any other suitable metal, each piece being identical in form, with the exception that one carries the spindle, the other the socket. Instead of forming the inclined planes on the shoulder oftlw.lling'e. as is heretofore done, I place them outside of the shoulder, and as remote from the center of the hinge as possible, placing one, b, figure 3, on the arm or shank of the hinge extending from the shoulder to the wing or plate, and projecting from two-thirds to three-fourths of its inclination frOm the face of the hinge. The other, a, figure 3, is placed directly opposite, and extends the same distance from the center·of the hinge, and faces in the opposite direction to that, b. The inclination of the planes should be about 45 degree.ll at .tlle extreme outer end, and approach the vertical as they come the c!,\nter of the hinge. is formed with the half next t1:le al'!ll standingeven with the top of the planes, and the other half cut down level with the bottom of the planes; The bottom half of the hinge inverted makes the top half, by substituting the hole for the pivot. When a shutter hung on these hinges is thrown open; resting on the shoulders of the hinges, it neither passes over notches nor up inclined planes, but swings freely around to a position nearly parallel with the wall. where the support of the shutter passes from the shoulders,c, d, figure 2, to the inclined planes, and the bottom of the as shown il). figure 2, planes, A, A, are brought to thetop Of the planes, H, and the shutter is carried to the wall by its 'gravity on these Inclined planes, and the hinge is locked, as shown in figure 1, ,one-half having dropped below its general position. In closing the shutter a forceonly;isnecessary, four or five inches, t,o force it up wben viz., to draw the the support of the shu,tter is the ,c.d"on and swings horizontally to its seat, entirely preventing'theplanea coming in contact as it 'closes. as shown in figure 3." . " . '.

458

FEDERAL REPORTER.

The c]/tim,. is in these words:

"The so forming of a self-locking shutter hinge, cast in two pieces, as that the blind or shutter hung thereon may Ilwing open or shut on a horizontal plane, and lock when opened to its limit, and so that, also, when locked open, the strain shall be taken off from the spindle and thrown on to cam arms, and thus effectually relieve the spindle from the weight or strain of the shutter, substantially as described."

In order to construe properly the claim of the Lull patent it is necessary to understand what preceded it. The defendants have introduced two English patents to David Redmund,-one of 1821, No. 4,607, and one of .1872, No. 9,454. The Redmund hinge is in two and has inclined planes on the shoulder, and also horizontal planes. But it is arranged to be so applied to a door that the door will, when it begins to open, rise up, because the inclined planes come immediately into action, and, as the door is further opened, the inclined planes go out of action, and horizontal shoulders come into action, so that the door goes on opening without rising any more. If the horizontal shoulders are left at rest the door will remain at rest. If the door is pushed so that the horizontal shoulders lap by each other it will drop, because the socket, being unsupported, .drops on the spindle and the hinge is locked, 80 that the entire door must be raised in order to unlock the hinge. If, when the door is supported by the horizontal shoulders, it is pushed to close so far as to bring the inclined planes into action, it will close by their action and its weight without further pushing. The inclined planes face in opposite directions, and the two parts are identical in I3hape,'except that one carries the spindle and the other the socket. It is clear that this structure does not ltnti<lipate Lull's hinge. It, is uselessa,s a e,hutter hinge, for that must open horizon· tally at first and the,ndrQp and be lucked, and not rise at first in opening and then move horizontally and be locked; and it would require the moulding of the window to be cut away; and it could not be unlocked by merely pulling t,he shutter. It is plainly referred to in Lull's specification, and distinguished his inven.tion. substantially like Re4mund's. Inclinedplanes come into actionfirstja.nd horizontal plan,es·. There is no lock· ing when-the' gatelOl' door is open. To say :that Redmund's and Cryer's hihgElS <lan he made to operate on a shutter by sO arranging planes will act before £he inelined planes,'is merely lo say that' Lull's invention might have been made by Red. mund and Cryer if they had made it. "

LULL V; CLAR!.

The Stewart hinge; April ,184:7, but it has no inclined planes, and ];las more than two parts, and cannot be unlocked by pulling or pushing the shutter. Whatever there is in the Baker patent of April 13, 1852, it is shown that Lull made his invention before June 6, 1851. The Reed patents of 184:8 and 184:9 are of no moment, and may be passed without observation; and so may the Robison patent of 1848, and the Peck patent of 184:7, and the Palmerpa,tent of 184:3. None of these prior hinges accomplished the object attained by Lull. One feature may be found in one structure, and another in another. But no one before Lull made a shutter hinge, cast in two pieces, which would swing open horizontally and then come to a selfshutter through locking position by the action of the weight pf. inclined planes, allowing the shutter to drop, and then permit the shutter to rise by pulling it so as to bring the inclined planes into action aud elevate the shutter so as to admit of its closing horizontally as it opened. In the Lull hinge, also, the strain is taken off of the spindle and is thrown onto the arms as far as possible by having the inclined planes on the arms and as far from, the spindle 'as pos!'lible', , and by having these planes face in having risk of breakthe two parts alike, so as to re4uce to a ing a cast-iron spindle. The defendants' hinge is of the form described in lett.ers patent No. 156,277. granted to Charles B. Clark, 09tober 27,1874. The specification of that patent says: '
.. My invention relates to that class of bUnd.ht'nges which or those which fasten the blind,when by half oftpe binge to which the blind is,attached sliding down an incline on the half attached to the house, and it has for its object the effeqtually to secure the blind when in an open positioD. and prevent· its being ;Closed by the wind or other accidental cause, and yet admit of its ready by hand when required; and it consists in the combination, with a gravity-locking hinge provided with gravitating locking inclines, of Ii projecting catch or stop' formed upon the pin of the hinge, which. when the blind is Bwung open and the male portion descends, the inclines of the knuckle on the female portion of the hinge drops into a notch formed in the eye of the femal!! haIf,and acta in conjunction with and auxiliary to the locking inclines. to increase the resistance, and thus serve to hold tile blind securely in an open position'. Figure 1 of the accompanying drawings is a perspective view of my improved hinge when closed; figure 2 is a plan and part section of the saine when open; and figure, 3 a plan of the parts detached, in which .A represents the: inverted, and B the, female portion of the .. the tlrawingaA reprtl7 sents the male portion of the hinge provided' with tbe pin, c, and B the female

460

FEDERAL BEP9RTEB. , -

portion having the eye, e. The pin, c, is. surmounted by the knuckle, k, and the flange. d, on which are formed the inclines, m',n'. CorresJlonding inclines, m; n,' are also formed on the proximate side of the knuckle, h. The part A being rotated upon the part B, the weight of the blind is borne by the under surface of the lower part of the flange, d, bearing against the upper surface of the higher part of the knuckle, h, until the blind is nearly open, bringing the double machines, m, m', n, n', coincident, when the blind gravitates to the bottom of the' inclines, in which position it rests, being fully opened and locked against accidental causes. When desired to close it, it is disengaged by steadily pulling, the force of the hand overcoming the resistance caused by the inclines. The pin, c, and socket, e, are preferably formed cylindrical on one side, 'and angular on the opposite one, as seen in figure 3, leaving, however, suffiCient room in the socket to admit of the pin tqrning freely. In gravity-locking blind hinges, constructed with inclines which engage by the gravitation or descent of. one-half upon the other, when the blind is open, to lock: it in tllat position, it is found that, although the locking inclines offer sufficient resistance to ordinary winds toprevent the closing of the blind, yet they wUryield;to UnllSUll.Hy strong winds, and it is hence desirable to provide sueh hinges with a means w.hich will increase the resistance to UIlintentional the sat:ge" ;To this end I prOVide the hinge with closing, and effectually f, aT) the circular side of the situated so as to come into action a when the blind gravitates' down the'inclines. The stop, f. projects radially beveled, and its outer face inclined to correon one side. Its other spond'with the inclines, m';n', and its base joined with the flange, d. The female portion has a cotrespondiug'recess,g, formed in the eye next the bearing surface of the knuckle, h. One side of which is abrupt, and the other bevTbepositlons of this projection and its receSl;lare such eled like the that when the blind is opened to the fullest extent their abrupt sides approximate, and the blind is so firmly held by the engagement of this stop, aided by the inclines and -the pin bearing against the side of the eye, that it is secure against accidental ca\lses, s,uch as sudden gusts of wind, etc., unlocking yet It yields tc) the effort of the hand, the steady lateral puU of which raises' the stop,f, out of the recess by the movement of the inclines, m, in.', n, each,?thkr. ,It will be observed that the stop and. recess offer no resistance to, t1l.is'niovement, as they are formed parallel with or with the same inciinationas tMtnetines. m: n. m" n', so that the blind may thus be closed by tll'e han,d much ease as if the stop were not' The construction is such that,tile blind may be, thrown Violently 0llen without straining theliinge, and it, may he moulded and cast as readily as the old . -, form,"

as

The claim of the Cla.rk patent is this:
"In combinatiOll.with the,locking inclines m, n, m', n', the lopk. 'fig stops, J. and recess, g, said, inclines, stop, and recess, arranged and operating illconjPIlct\on with eacll other, aS,and for the purposes herein set copy in the printed record, oftheapecifica-

of

'there are some

errors,

are

LULL V. CLA,BK.

461

corrected in the foregoing copy. Whenever the knuckle, h, on the to be mentioned, which is female portion of the hinge, is three times, it is misprinted k, which i$the designation, in the drawings, of the knuckle on the male portion of the hinge. So also "the double inclines" are called on the print "the double inclines, m, m' j" but it should read, "the double inclines, m, m', n, n'." And in regard to raising the stop out of the recess, the print reads, "the movement of the inclines, m, m', upon each other," whereas it should read, "the upon each other." , movement of the inclines, m, m', n, It is contended for the defendl,tnts that the Clark hinge does not infringe the Lull patent for these reasons:
(1) The two parts of the Clark hInge are not identical in form, except as to spindle socket; (2) the inclined planes on it are formed on the shOulder of the binge, and not outside of it; (3) it does not have two inclined planes placed diametrically opposite alld facing in opposite directions, but, the two inclined planes on each shoulder face in the same direct.ion, &Ild there is no inclined plane on the same shoulder which faces in an (4) the strain is not taken off the spindle and thrown upon calli arms, there being no cam arms nor anything taking their place. '

The claim of the Lull patent must be construed as a claim for mechanism. It is awkwardly drawn. It isa claim to the so formfollow in ing of a hinge cast in two pieces f!,S that certain the use of the hinge on a shutter "substantially as described." ,It a claim to the "so forming" "substantially as described." This is a claim to mechanism. The description must be looked to to ascertain, what the mechanism is, and the results named in. the claim must be tf!,ken into consideration in ascertaining w4a,t parls of the mechanism described enter into the claim. The claim is not one for the results mentioned in the claim. It is very clear that the Clark hinge is a self-locking shutter hinge cast in two pieces j that it swings open on a horizontal plane, by the bearing of horizontal shoulders on each other, until the horIzontal shoulders cease to bear on eachother, and the shutter descends by gravity, by meanS of inclinedplapes in the hinge, and the hinge is locked in that position against ordinary movements j that the shutter may be shut by ptilling it and bringing the inclined planes into action firllt, and then the horizental. planes; and. that, when the. shutter is locked open, the operati,on of the inclines bearing againsteac4 other, the wind Of otherwise, is in case of a movement Qf the shutter .are. such as to throw the strain on the knuckles to

462

FEDE1u.L BEPOBTlllB.

attached, to an extent' sufficieilt to make the strain on the spindle less than it would be if the inclines were not arranged as they are. Lull, in his specification; describes the two parts of his hinge as like each 'Other. They are so constructed. But this is not of the essence of the invention. It is undoubtedly the best form, and, with the two planes on each arm facing in opposite directions, and of the same size, and in the same relative position, their coaction with the other two planes gives the most perfect relief to the spindle. But a departure from these features to some extent, while producing an inferior hinge, in respect to relieving the spindle, still relieves it to some extent, and constitutes no departure from the invention of Lull, all the other features of .his claim being used. Still it cannot be said that Clark's inclined planes are not on the shoulder of the hinge, or are outside of the shoulder, or are. on cam arms such as the Lull patent has.· But a fair construction of the Lull patent is that it really makes two claims. In stating the nature of the invention, the specification says that it consists "in the so forming of a self-locking cast in two pieces, as that a shutter hung thereon may swing open or shut on &horizontal plane, and lock when open to its limit." This is a construction involving certain features and parts. It involves those parts whiehcause the shutter to swing open on a horizontal 'plane, and then to lock by the operation of inclined planes, and then to' shut by being pulled and rising, through the return action of the inclined planes, until it is raised far enough to shut on a horizontal plane. This operation of mechanism is independent of any relief of the spindle,' Then the specification goes on to sa.y, "and 80' that, also, when locked open, the strain shall be taken off the spindle and thrown onto cam arms, and thus effectually relieve the spindle from the force of the winds." The specification thus states that the nature of Lull's invention consists in the so forming of a self-locking hinge cast in two pieces, as that, when it is locked open, the result named, as to strain, will take place, in addition to the so forming of suoh hinge as that it will have the operation as to swinging open or shut and locking when open. The features of mechanism which provide for the horizontal swinging and the after locking may'fully exist without being in such form as to produce the effect as to strain spoken of by' LulL The language of the specification is to be taken distributively, and not as for·& combination of all the 'fellitures. So, too; with the claim. It is, in effect, by its strllcture, and by reference to the descriptive part of the specification, two claims-one for such of the described mechanism as il!

4&8
necessary to secure the described swinging and locking, and the other for such of the described mechanism as is necessary to secure the result described as to strain. A reissue with a division of the claim into two claims wouldhav'e been sustainable; the patent as it is is fairly capable of the foregoing construction. The Clark hinge embodies the swinging and locking mechanism of Lull, which is a material part of his invention, and is thus separately -claimed. Having the inclines on the shoulder or outside of the shoulder, on cam arms 'or not on cam arms, is not a matter affectingthe swinging and locking, but affecting only the relief of the spindle. The feature which Clark has added, of the additional stop,is a feature not concerned with the swinging and locking through the action of the horizontal planes and inclined planes, but is something added to the locking. ,The' Olark patent is granted for the auxiliary locking stop and recess added to and combined with the four inclines which '8.11ow the blind to descend by gravity, and be locked after it has oOpened horizontally. The mechanism used in the Clark hinge to .ause it to open horizontally and then lock, is a mere formal variation from that of Lull, having the same mode of operation. In opening, the shutter swings freely on horizontal shoulders, and'then the support passes to inclined planes, and the shutter is carrie,d by gravity down such planes and is locked, and then is pnlled'by the hand up the inclined planes, and the support is returned to the .horizontal shoulders and the shutter is swung' shut. There must be the usuald.eoree for the plaintiff, for an injunction :and an account, with costs.

464
HOLT

FEDERAL BEPOBTlm.

and others v.

KEELER

and another.

(OirlJuit Oourt, D. New York. August 1, 1882.)
PATENT-VALIDITY OF REISSUE.

In the descriptive matter in the speciflcation in the original patent for an improvement in making wheels, granted January 23, 1866, it was said that "the type wheel is provided with yielding rims or flanges, made of India rubber or other elastic material, so that the types can be depressed on the surface to be marked with the requisite force to produce the desired impression. "" '" * This type wheel >II< >II< >II< is provided with projeeting flanges, b, made of India rubber or other soft and elastic material, so that by pressing the wheel down upon the surface to be marked the types are brought into contact with said surface with the requisite force to produce the desired impression;" and claim No.2 was as follows: "(2) The.yielding flanges, b, on type wheel, A, constructing and operating substantially as and for the purp!>,s'e described." October 26, 1875, a reissue was granted, and in the sp,,>cification the descriptive matter -was altered to the following: "The type wheel is provided with rims or flanges, preferably made of India rubber or other elastic material, so that the types can be depressed on the subject to be marked with the requisite force to produce the desired impression. The rims or flanges seem to keep the surface of the type in 'a plane parallel with the surface to be marked, which is otherwise often difficult, owing to the different lengths of lines of type, or the position of the type at the side of the surface of the type wheel. >II< >II< >II< This type wheel .. .. .. is provided with projecting flanges, b. n The claims of the reissue were these: "(2) The combination with a handle of a type wheel provided with flanges for keeping the plane of the type paralled with the surface of the article to be marked; (3) a type wheel provided with yielding flanges, constructed and operating substantially. as and for the purpose described." The wheels used by the defendants would not have infringed claim 2 or 3 of the original patent, but would infringe claim No. 2 of the 'reissue. because they have a handle and rigid flanges which keep the plane of the type parallel with the surface of the article to be marked. Held, that if there was any error in the original patent in not setting forth and claiming rigid flanges, or in stating that the flanges were to be elastlC, and were to be so arranged that the types were to be out of contact with the surface to be marked until by the yielding of the flanges through pressing down the wheel the types were to be brought in contact with such surface, the error was a plain one, apparent at onCe to the patentee, and as capable of being promptly corrected then as by a reissue after a lapse of more than nine years, during whieh the manufacture of wheels substantially the same as those of the defendants had heen entered upon, there being no infringement <,>f any claim of the original patent in respect to flanges, and that claim No.2 of the reissue could not be upheld as covering any flanges but such as were shown in the original patent, consequently the bilI must be dismissed, with costs.

George W. Hey, for plaintiffs. James A. Allen, for defendants. BLATCHFORD, Justice. This is a suit in equity brought on reissue of letters patent No.6, 714, granted to Horace Holt, one of the