Appeal from the District Court of the United States for the Eastern District of New York.
Before MANTON, SWAN, and AUGUSTUS N. HAND, Circuit Judges.
This suit involves patent No. 1,115,795 for an aeroplane, granted November 3, 1914, on an application filed January 16, 1908, to a citizen of France. It relates to a mechanical structure in three alternative embodiments, all of which are "heavier-than-air" machines. The patent discloses and originally claimed particular forms of distortable wing, movable tail construction of an aeroplane. None was ever put into commercial use.
This application is asserted to relate back to two French improvement patents filed January 19 and 22, 1907. The basic patent to these two was applied for in France December 19, 1906. The court below held properly that its subject-matter was dedicated to the public in this country because of the failure to file here within a year. Ely Norris Safe Co. v. Mosler Safe Co., 62 F.2d 524 (C.C.A. 2); U.S. Code title 35, § 32 (35 USCA § 32). The patent in suit claims the improvements of 1907; that is, a vertical arrangement of two control levers the horizontal arrangement of which, to effect the same controls in the same way appellee says, constituted dedicated subject-matter.
The appellant prepared an application for a patent in the United States based on the French patent No. 372,753 and its improvements, patents Nos. 373,763 and 373,818, but filed it more than one year after filing application for the first French patent. He contends, however, that, since the applications for the two French improvement patents, on which the patent in suit was based, were filed before the French patent No. 372,753 was delivered, there is here, by virtue of title 35, § 32, U.S. Code (35 USCA § 32), an application for a patent which should have the same effect as if the application had been filed here on the dates on which the applications for the French improvement patents were made, and, the argument proceeds, No. 372,753 is not prior art. But section 32 provides:
"No person otherwise entitled thereto shall be debarred from receiving a patent for his invention or discovery, * * * unless the application for said foreign patent was filed more than twelve months * * * prior to the filing of the application in this country, in which case no patent shall be granted in this country."
Under the provisions of section 32, the appellant's failure to file an application for a patent in this country, based upon No. 372,753, resulted in a loss of the right to a monopoly for the invention or discovery of that patent, and he may not now succeed, even though such invention be described and claimed in the two French patents, on which the patent in suit is based, as an invention and discovery of the last-mentioned patents. The French law (article 18 of the Patent Law of France dated July 5, 1844, as amended) permits the patentee to claim improvements on his patent within a year. The French patents, on which the patent in suit is based, are admittedly improvements on the French patent No. 372,753. It is only for the invention and discovery of such patents, over the invention of the first French patent, to which was attributed two levers, one for directional control and the other for lateral and fore and aft stability and instinctive movements, for which appellant could legally secure a patent in this country.
Patent to the Wrights, No. 821,393, granted in 1906, shows the basis of the practical art of flying heavier-than-air machines. See Wright Co. v. Herring-Curtiss Co., 211 F. 654 (C.C.A. 2); Wright Co. v. Paulhan (C.C.) 177 F. 261. There are three fundamental movements executed by an aeroplane while flying, and three controls are required. First, there is the up and down movement, called "pitch." The Wrights controlled this movement by their elevator. The pilot lay face downward in a cradle with his head toward the front of the machine, his hands grasping a roller, and, by twisting it, he could tilt the elevator to make the plane go up and down. Second, there is the movement in a horizontal plane called "yaw" as in a boat. This movement was accomplished by the Wrights by a vertical rudder at the back of the plane. Third, there is the roll or banking of the plane about a longitudinal horizontal axis. That keeps the plane on an even keel laterally, or tilts one wing higher than the other when desired to bank the plane, as in turning. This the Wrights accomplished by distorting or warping the tips of the wings. Wing warping has been superseded by ailerons or small hinged flaps at the rear of the wings. The second and third movements were controlled by the Wrights simultaneously by sidewise movement of the cradle, to the right or left as the pilot wished to turn. A shift to the right turned the steering rudder right by means of a cable and simultaneously warped the tips of the wings to bank to the right. A left movement steered and banked to the left. The Wrights' patent is fundamental in the principles of flight which are used in aeroplanes to-day -- that is, it discloses the three movements mentioned.
In December, 1903, the Wrights made the first flight with an engine. The flight accomplishment was made possible, as one of the experts testified, "purely and simply by reason of this fact that they had under their control means for manipulating the horizontal elevator surface, means for controlling the wing warping, and means for controlling the vertical rudder."
In 1905, the Wrights employed a separate control for the directional rudder, so that they had one lever for operating the elevator, and a separate lever for operating the wing warping with an independent control for the steering rudder. The plane was unstable, requiring constant manipulation of the controls to maintain equilibrium.
In the basic French patent (granted February 28, 1907), the aeroplane shows the arrangement of horizontal control levers. The stabilization producing lever (called the joystick by appellant) is shown and is operated by the pilot with his right hand. Moving the end of the stick up caused the plane to go up, and moving it down caused the plane to go down. Moving the stick left distorts the wings and causes the plane to roll or tip left, and moving it to the right causes the plane to move to the right. Sidewise movement of a similar stick with the left hand steers the plane to the left or right in a horizontal direction by operating the steering rudder. These two levers control the three fundamental movements of the plane -- pitch, steering and roll. The first two movements are controlled by the right lever and the third by the left lever.
The patent in suit discloses three forms of aeroplane, two of which have never been built, ring tail and tandem wing monoplane, and the third, the bird tail, which was built. The control levers of the patent are vertical instead of horizontal as in appellant's 1906 patent. Figs. 6 and 10 show the control of the ring tail and bird tail modifications respectively. In Fig. 6 the right-hand lever is the same in function and operation as the right-hand lever of appellant's 1906 French patent. Moving the lever to the left rolls the plane to the left, and moving it to the right rolls the plane to the right. Moving the same lever forward causes the plane to nose down, and moving it backward causes the plane to nose up. The left-hand lever is moved forward to turn right and backward to turn the plane to the left in a horizontal plane. This steering is accomplished by twisting the ring with which the left lever is connected by a rod. The ring is ...