NATIONAL CASH REGISTER CO. V. AMERICAN CASH REGISTER CO.

367

the state in adjudicating these liens, and will rigidly scrutinize'aUsllch claims. '. . . I cOIne, therefore, to the examination of the claims of the libel· ants and petitioners in the three cases at bar. In the case of the schooner Elexena there are two claims of material men. That of S. F. Hastings for $36.63, for sails and repairs of sails, etc., is stale as to $23.63; only $13 is therefore allowed. That of Crockett & Connorton for $62.36, for supplies furnished within six months before the seizure of the vessel by the state of Virginia, is allowed. Decree will be entered for these sums. As to the claims of seamen filed in this case, amounting to $126.03, it appears from the imperfect papers presented in their behalf that they were on board of the Elexena at the time of her capture in delicto, presumably participating with the vessel in her vidlations of the laws of the state. These claims are therefore disallowed. As to the case of the schooner Alice J. Venable. The claim of the libelant, J.T. Gibbons, is for sails and repairs of sails, furnished within' six months before the seizure of the' vessel, amounting to $68.59, Which is allowed That of Prendergast & SOllS, for sails and other Inaterials furnished within six months before the seizure of the vessel, amounting to $346.35, is allowed. As to the claims of seamen preferred in this case, am:ounting to $100.81, it is almost a necessary presumption, from the papers evidencing the claims, that the seamen were on board the offending ves$el at the time of her seizure, and they a:re therefore disallowed. In the case of the schooner Samuel T. White, the claim of the libelant for sails and tackle, amounting to $168, furnished within six months before seizure, is all(f\ved. 'fhat of Ernest Parsons, amounting to $208.70, is disallowed in part and allowed in part. Items to the amount of $60.70 are disallowed as stale. Items to the amount of $13, for sails furnished after the seizure of the vessel, are disallowed, as not within the cognizance of the court. Of this claim the sum of $135 is allowed. Decree will be entered accordingly.

NATIONAT, CASH REGISTEU CO. et aI. v. Al\IERICAN CASH REGISTER CO.

(Circuit Court of Appeals, Third Circuit. December 23, 1892.)
No.1.

1.

CIRCUIT COURT OF ApPEALS-PATENT CASES-DECISIONS

The rule which requires a circuit court to folloW the deCision of another circuit court in relation to the same patent, When the question and the evidence are the same, does not extend to the circuit court of appeals; and that conrt will exercise its independent judgment, giving attentive consideration, however, to the judgments of the circuit courts in other circuits.

m

OTHER CIRCUITS.

2.

PATENTS FOR INVENTIONS-COMBINATIONS.

In order that a combination of old elements may be patentable, it is not neCeSS<'1lj' that all the constituents shall so enter into the combination that each changes the mode of action of every other, and that each not only performs its own part, but is also in some way directiy concerned in the per-

368

FEDERAL REPORTER ,vol.

58.,

formance ofthel.r respective .parts by all the oj;her elements; but it is sufficient that the combination produces a new and useful result, and not a met"eaggregate of several results. Pickering v. M;cCollough, 104 U. S. 310, explained.
8. SAME-CONSTRUCTION Oil' CLAIM-INVENTION-CASa: REGISTERS. The thirll rillim of letters patent No. 253,506,issued February 14, 1882, to Michael Oampbell, covering, in a cash apparatus, a series of keys to designate !)ertain amounts, combined with the cash drawer and drawer holder mediately connected with said keys, and a spring to throw the drawer open whenre1eased by the 'drawer holder, is a claim, not for details of melJ'hax$m,but for the combination of the keys with the drawer to result, and was II: .pioneer invention, although none of the mecJ;1fi.ntl:'m 'byw,hich this rpsult wll,s obtained was new. 47 Fed. Rep. 212, reversed; and National CushRegister Co. v. Boston Cash Indi' :cator & Recorder Co.,·· 45 Fed. Rep. 481, disappro\"cd. 4.. SAME"-INFRIN'GEMENT-EQUIVALENTS· .In.: this claim one 01, ,elements is "mediate connection" itself, and not the details thereof, a.'ld the patent is infringed. by a cash register in which the drawer is .released by pressing the keys, although the particular D1e<Jhanism of the 'connection between the keys and the drawer is not the , same as that of the patl·nt;' and it is immaterinl that in the infringing machine t.he drawer is releaSed. wilen the finger leaves the key, instead of on the downward pressure ot. the key, as in the patent. 47 Fed. Rep. 212, reo vel'llell, and National Cash Rel,1ster Co. v. Boston Cash Indicator & Recol.'der Co., 45 Fed. Rep, :481, disaPPl·oved.

Appeal :from the Oircuit Court of the United States for the East· ern District of Pennsylvania, In Eq.riity:.· .Bill by the National Oash Register Oompany, Michael Oampbell, and Maria G. Wellbrock against the American Oash Reg· isterConipany for· infringement of a patent. Theeircuit court, fol· lowing the decision of ,the. circuit court for the district of :Massachusetts in National Cash Register 00. v. B08ton Oash Indicator & Recorder: Oa., ,liS Fed. Rep. 481, held that there was no infringement, and dismissed the bill 47 Fed. Rep. 212. Oomplainants appeal. Reversed. EdwardUector and Lysander llm,for appellants. Hunter and John R Bennett, for appellee. Ernest. Before DALLAS, Oircuit Judge, and ""-ALES and BTJFFINGTON, District Judges. DALLAS,Oircuit Judge. This is an appeal from a decree dis· missing al1ill.for alleged of patent No. 253,500, for an improvement in cash registering apparatus, granted to Michael Oampbell, and dated February 14, 1882. The only claim involved is:
"(3) In a casli registering apparatus, a series of keys to designate certain umolmts,combined with the drawer, the drawer holder, D, mediately connected with said keys, and tbespring-to throw the drawer open when released by the i}rawer holder, substantially as described."

The defenses are that this claim is invalid, and that, even if valid, it is not infringed. It is insisted that it discloses no patentable invention whatever, but that, if it should be sustained, and as for a combination, 'the appellee's machine would not be an infringement, because itnot.Qnly does not contain any of the specific devices of the appellanta' apparatus, but also does not employ the combination al-

NATIONAL CASH REGISTER CO. V. A)iERICAN CASH REGISTER CO.

369

leged. i'he appellants, on the other hand, admit that all the specific devices were old, singly and in other combinatioIl!'J. but assert that what Campbell invented and claimed is a combination, and nothing else. Accordingly, their counsel contend that the cll:lim in question is valid, as disclosing a patentable invention of a new and useful combination, and that the appellee's machine is an infringement, not because of any real or suppoliled identity or equivalence of elements, but because it accomplished the same result as is accomplished by the Campbell machine, by substantially the same mode of operation. We have, then, no issue as to novelty or infringement of details, and therefore the only questions to be considered are: :First. Is the claim for it combination, supported by invention? Second. Haa the appellee infringed? 1. claim is, in terms, for mechanism "combined with" other mechanism. It is true that certain particular mechanism is men· tioned, but it does not necessarily result that the patentee intended to limitthe claim to any special devices, or that the law will so reo strict it. The question is one of construction; and as we are of opinion, upon grounds to be hereafter stated. that Campbell's iu\'ention was· 8. primary one, it follows that the language of this claim should be aa liberally interpreted as its fair import will allow, to tbe end that his conception sball be justly protected to its true extent, and in its broad and actual scope. The invention, says tbe specifica· tion. "relates to a cash registering apparatus to be employed in con· nection with a cash drawer," and the claim is for (in such apparatns) a series of keys to designate different amounts,combined with a drawer for receiving cash; a drawer holder, for holding the drawer closed against the tension of the spring, (preselltlJ' mentioned;) a mediate connection (of some kind, not designated) between the scrips of keys and the drawer holder, by which the latter will be disen· gaged from the dra\Yl'r upon the operation of anyone of the and a spring to tbrow the drawer open when so disengaged. By this contrivance the cash drawer, which when closed is always locked, is, by the operation of anyone of the keys of the series, thrown Opell by the spring; and none of the devices by which this object is accom· plished, so far as they are designated in the third claim, were new. The series of keys, the cash dt'awer, awl the spring were unques· tiona'bly old: and the drawer holder is but a pivot lever, differing from other levers of the same class in nothing but in form, and in the use to which the patentee applied it. Of any particular mechanism of mediate connection, nothing need be said at this point. };"one is specifically mentioned in the claim with which, alone, we are concerned; and for the present purpose it may be taken for granted tbat none which was new was contemplated. It is deal', then, that so to construe this claim as to confine it to specific details would be to invalidate it for lack of novelty: A consequence which certainly ought not to be accepted when, according to the natural and ordinlJ,ry memuug of its language, it plainly appears to be a claim for a new combination of old devices,-a well·known series of keys combined with the other familiar mechanism melltiollPd, .and mediately can· nected, in some way not mentioned, with the drawer holder included v.53F.no.3-24

370

.(:

vol. 53.

ililitbiat'moohanism. It catiMt,lbe restrieted toaJl' of the dev1aElb the mediate oonnection between tb.eSftrles of keys and tM'drawer holder, not only; because they are not even spooified in the but also are expressly claimed in the sec&lld" elalni, which is:
"(2) IJ:(: cash registering apparatus, a series of keys to designate certain amottiits,"ll. .pawl-carrying bar; o. and a series of toggle level'S, x, intermediate each key and the said pawl-carrying b8.f. the toggle lever. b, aotwited, by the bar. c, combined with the drawer holder, D, and C, substautialij aSidescribed." " ,

a

is nothing upon this record which wO¢d us in attributi:b.g ,to the patentee, the folly of having presented, and to the patent office the improvidence of having allowed, two claims for the sam:e tnmg. The distinction between them must be maintained, that'b6thmay be given effect., , The court; whose decree is, the subject of this appeal, expressetl no independent'opinion, but merely; followed the decision,Jof the circuit court::fofc,the in a suit in which the claim.ibltdbeen in controversy. National Cash Regis1;er ,Oo.v. Boston Cash: Iridicator & Recorder Co;, 45 Fed. Rep, '1;'he course 'thiS regard, :was in conformity well established;in' this' 'circuit, to ifoUow,unless under extraQrdinary circumstances; a prior jUd!l,UlOJlt of any other of the qirc!rlt courts of the United wherever ·the pa:tellt, the quest,ion, and the evidence are thesamein·both suits. '\Yedo not question the propriety of thispraetioe;i,as it has heretofol'e prevaUed;but it. cannot be extended to'rthis court. Thedeoisionlil of the several circuit courts, wheneverpel·tinent, wiUbe attentively conElideredby this tribunal; but becansethey are subject to appeal, and fOll. other ,manifest rea· sons, it is not admissible for a court of review to accord them controlliugeffect.", Accordingly, we· have in this insta,nce carefully exa'mined th.eopinion of the learned circuit judge of the first circuit; bUt,. it with sincere respect, we find ourselves mabIe to concur in it.TIus claim, as we read, it" ,is, distinctly, exclusively, and broadly, fol' a new combination; ,and we know of no authority or principle of law which, so reading· it, would war· rant in converting it,by construction, into a claim for details ' merely. Thns far we have assumed that the actual invention was of a new and useful combination, and also (perhaps without necessity) that it was It prjmary one. We will now state the reasons by which these assumptions are supported. Whether, or not the "connecting mechanism" between the drawer holder and the keys was new with Campbell is, in our opinion, apart from the question. That mechanism, or any part of it, was not, as we have shown, covered by the claim in controversy. The complainants' bill was not founded upon it; and this court is not called upon to deaJ. with it, but solely with an alleged combination, Which it is asserted, but denied, WaH invented by Campbell. Directing our investigation, therefore, to this distinct issue, we have, upon full examination of the proofs, become entirely satisfied that Campbell was in fact the original and first in-

NATIONAL CASH REGISTER CO. 17. AMERICAN CASH REGISTER CO.

871

ventoI' of the combination claimed in his'thiro. claim. It is unnecessary to refer in detail to the several exhibits which were introduced to show the prior state of the art, or to enter upon a discussion of the testimony. It is enough to say t}J.at, upon all the evidence, we do not doubt that Campbell was the first person who combined a series of keys with any other mechanism whatever, so as to attain the object which he proposed and accomplished. It nowhere appears that a combination of a series of keys with a drawer holder and other mechanism had ever before been conceived, by means whereof each key of the series, wMn and as operated, would or could unlock a drawer,in a cash registering apparatus, and permit a spring to open it. .This Campbell effected, not by new mechanism, but by a new combination, and in doing this he made a patentable invention. We have not overlooked the suggestion of appellee's counsel that Campbell's conception and arrangement were merely of an aggregation of known elements, not amounting to a true combination" and that, therefore, he was not entitled to a patent for anything. This suggestion is based upon the allegation that each of the elements associated by Campbell does not qualify every other of them; but this is true only in the sense that each does not modify or change the chara<lteristic mode of action, or method of operation, of the others. In doing· its appointed share towards effecting the single result achieved by the co-operation of all, each element acts, of course, according to the law of its own being; bUt, though of necessity so acting, it is still,none the less, combined with the others, and does "qualify" each and all of them, (not their distinctive methods of operation,) in the sense that each is, by the co-operation of the others, capacitated toO contribute, by acting in its own peculiar way, to the common end, which, without the co-operation of each and every other of the co-ordi· nated elements,it would be powerless to accomplish or advance. Some of the language used by Mr. Justice Matthews in delivering the opinion of the supreme court in Pickering v. McCullough, 104 U.s. 310, has been pressed upon. our attention, as indicating; it is claimed, that in a patentable combination of old elements all the constituents must so enter into it that each changes the mode of action of every other, and that each element must not merely perform its own part in the combination, but must also, in some way, be directly and immediately concerned in the performance of their respective parts by every other of the elements. No such doctrine as is thus claimed to be deducible from the opinion in Pickering v. McCullough appears to have been essential to the judgment in that case, nor do we think it necessary to attribute to the particular language referred to (104 U. S. the meaning ascribed to it by counsel. If, instead of an extract, the whole opinion be read, in connection with the authorities which are cited in it, it may be readily perceived that the subst.ance of the doctrine intended to be affirmed is that a combination, to be patenta,ble, mllst produce a new and useful result, as the product of the combination, and not a mere aggregate of several results, each the complete result of one of the combined elements. There must bea new result produced by their union. That

372

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FEDKRAL ··R1!:POBTER.

vol. 53.

a combination, as, thus defined, we entertain ;no doubt; and that Mr. Justice Matthews should be understooda.sholding that no combination is patentable which does not fulfill the requirement which appellee's counsel insists is requisite, Wf>, cannot suppose. If it were essential to a valid patent for any combination whatever that the mode of action 'of every element included the combination should be changed by each of the others, it would have been impossible to sustain several combination patents wltich have in fact been upheld, as, indeed, it would be difficult to conceive of any mechanical combination wllich would be both possible and patentable. A screw or a lever can act only in one way, yet a screw and a lever may so·act in combination as to prOduce, in new, and useful result. consequence of their combhlation, a Moreover, there is no intimation in the opinion in Pickering v. McCullough of a purpose to overrule the eal'lier decisions with which (upon the' view taken of it by counsel) it would appear to conflict, ,nor has;it in later cases (which, of course, are to ,be followed) prevented.· the' supreme conrt from declaring the -law of this subject in accordanCe ",1th our understanding of it. Blake v; Robertson, 94 U. 13.728; Parks v. Boot14 102 U. S. 96; Loom Oo.v. Higgins, 105 U.S. 580; Clough 'v, Barker, 106 U. S. 166, 1 Sup. Ct. Rep. 188; Lake Shore &"M:.S. Ry. Co. v. National Car Brake Shoe Co., 110 U. 13.229, 4 Sup. Ct. Rep. 33; Lock Co. v. 117 U. S. 536, 6 Sup. Ct. Rep. 934. ' Campbell's invention was a primary one. The proofs establishtlJiat he was the ,first person who succeeded in effeccing, in any manner or form whatever, the opening of an automaticall;y locked cash drawer, in a cash apparatus, upon the operation of anyone or other of the keys of its series. In doing this he did not merely 'improve upon something which had been done before. What he produced walilabsolutely and ent,irely new. The result wbichhe"achieved was a distinct and one, which had not, by any means, been previously attained. He entered upon barren territory in the domain of invention, and was the first ,to occupy and appropriate it. He was a pioneer. Machine CO. Y. Lancaster, 129 U. S. 263; 273, 9 Sup. Ct. Rep. 299. That Campbell's invention was useful, we are also fully persuaded. The evidence of this is so complete as not to require· detailed discussion. Indeed, the ocular proof of its practical utility, manifested by the operation of the apparatus in our presence, would of itself be sufficient to· require us to conclude that it does not lack this essential of patentability. 2. But little need be added with especial reference to the matter of infringement. In National Cash Register.ing Co. v. Boston Cash Indicator &. Recorder Co., supra, it was held that the mechanism specifically designated in the third claim was old, but that the mechanism of mediate connection, which was not designated, was new, and that there was no infringement of the patent, because the defendants used a connecting which'differed from that used by the plaintiffs, As we, however, have been constrained to view this claim as for a combination, the qm'stion of infringement must necessarily be considered by us as related to a subject quite
Campbell's invention wMOf

BAUMER

v.

WILL.

373

distinct from that to whieh the same question was directed in the de· cision of the case to which we have referred The correct inquiry, from our point of view, is not whether this appellee uses, in its mechanism of mediate connection, the same which are used by the appellants, or equivalents thereof, but whether the mediate connection employed by the appellee is not itself an equivalent of the mediate connection of the Campbell combination. It may be can· ceded that there are marked differences in the details by which this connection is made, and its purpose accomplished, in the one ap· paratus and in the other; but the manifestly well-founded expert testimony is that "a mediate connection," not the details thereof, is included among the elements of the Campbell machine. This element, as well as all others of the patented invention, are found in the appellee's apparatus. We attach no importance to the fact that in the appellants' machine the drawer is released upon downward pressure of the key, while i,n that of the appellee it is released as the finger leaves the keytowhicl;:t. the pressure is applied. In both, the drawer is opened by what is snbstl1ntially one and the same act,the operation of a key of the series. Though some of the correspond· ing parts the machinery are not the same, and, separately .comddered, could not be regarded as identical or conflicting, yet, having the same purpose in the cOIubination, and effecting that purpose in substantially the same manner, they are the equivalents of each other in that regard. Cochrane v. Deener, 94 U. S. 780. We are of opinion that the combination here claimed is infringed by the apparatus used by the appellees. The decree of the circuit court is reversed, with costs, and it is ordered that this cause be, and the same is hereby, remanded to the said circuit court for further proceedings to be there taken in pur· suance of this determination and judgment of this court, and in COIl"formity with this opinion.

of

BAUMJiJR v.

WILL

et at December 21l, 1892.)

(Circuit Court, N. D. New YorK. No. 5,88l.

:1.

PATENTS FOR INVENTION-LIMITATION OF CLAIM-PRIOR ART-CANDLE-SIUPING MACHINE.

Letters patent No. 330,200, issued November 10, 1885, to Anton F. Baumer, co\"c:r an apparatus for candles, comprising a tubular holder with a die at one end and a plunger at the other, whereby thp. Jin:ll shape and finish 3re given both to the ends of the candles and to the exterior circumference of its body. Held, that if the patent is sustainable at all, in view of the fact that similar candle;; had been before made, and that machines for molding and llressing plastic material by means of a die and plunger were well known, it is entitleli ouly to a narrow construction, and tlle patentee is not entitled to invoke the doctrine of equivalents. The patent is not infringed by a machIne having a single die for molding the foot of a candle, the tip being meanwhile held firmly by a cushion which prevents the canIDe from slipping, but does not impart any form or finish to the tip, and in which the holder embraces only a part of the candle, and is not adapted to smooth or finish the exterior thereof.

-.2.

SAME-INFRINGEMENT.