The opinion of the court was delivered by: GALSTON
This is a patent infringement suit in which infringement is alleged of letters patent No. 1,813,940 for a ruling machine granted July 14, 1931, on an application filed on September 17, 1921, and of patent No. 1,609,648 for a ruling apparatus granted December 7, 1926, on an application filed August 3, 1923. The inventor of these devices is Harmon E. Lindbladh, plaintiff's assignor.
The inventions covered by these patents relate to improvements in duplex ruling machines, in which sheets, after having parallel lines drawn, parallel to one another and to the edges of the sheets, are delivered to a second apparatus to produce intersecting lines upon the sheets.
The novelty of letters patent No. 1,813,940 is said to consist in the device which enables lines ruled by the second-acting apparatus to begin or terminate in definite controlled relation to the lines of the first-acting apparatus.
The specification is very detailed. Two ruling machines are arranged in the form of an L, having their frames extenging substantially at right angles to each other and joined by an intermediate mechanism referred to as the transferring mechanism. This mechanism is so organized as to receive the sheets ruled by the first-acting apparatus and to deliver them to the second-acting apparatus, so that they are thereby provided on the same side with lines intersecting those produced by the first apparatus. Feed rolls journaled upon the frame of the first apparatus form a part of the sheet-advancing system by which the sheets are carried to pens or other ruling devices, movably mounted and governed through levers from actuating cams. The time of delivery of the sheets to the ruling devices is controlled by an oscillatory gate member and a cam. Cams governing the pens and gates are carried upon a shaft journaled transversely of the frame and are driven through change-speed gearing from one of the rolls rotated by a motor mounted upon the frame. An endless conveyor or cloth operates at its forward extremity upon a roll rotatable in bearings at opposite sides of the lower portion of the frame. This conveyor delivers sheets to a second endless conveyor.
As the sheets travel forward, they are received by the transferring devices. the devices of the transferring mechanism are driven at a constant speed through equal ratio gearing from the cam shaft of the first machine. The specification says:
"As a result of this connection, the pen and gate-controlling cams of apparatus A and the transferring devices 50 operate in never-changing synchronism."
The second machine is provided with the same sort of apparatus as the first. There is a cam shaft whch carries the cams that govern the operation of the gate and which also govern the operation of the pens which are set down on the sheet in the second machine. The specification describing the second apparatus sets forth:
"This apparatus, like that already briefly described, has mounted upon its frame 146 feed-rolls 148, over the lower of which operates a cloth 150, which is a portion of the conveying system. Its movable ruling devices or pens 152 and its gate 154 (Fig. 1) are controlled by cams 156 and 158, respectively, upon a shaft 160 arranged in a similar position to that in apparatus A. Levers 150 actuate the pens in accordance time relation is maintained between this cam-shaft and the shaft 54 of the transferring mechanism by constant-speed gearing 162, which may be of the sprocket type, directly connecting said shafts. The consequence of this is that the transferring devices 50 and the cam-shaft 160 operate synchronously, so there is also synchronism existing between the cam-shafts of the two ruling apparatus, since, as already pointed out, the transferring shaft 54 is rotated in definite and unvarying time-relation with the cam-shaft 24. * * * To allow the rate of advance of the conveying system of apparatus B to be altered to provide for the operation of the ruling devices upon sheets of different dimensions, there is interposed between this shaft 172 and the shaft of the lower roll 148 change-speed gearing 174."
This patent has been referred to throughout the trial as the synchronizing drive patent; and it is contended that for the first time in the art a system of driving connections between the two halves of an L ruling machine makes double striking practicable, that is, striking in two directions, horizontal and vertical, on the same side of a sheet of paper at one operation and with one feeding of the sheets.
As known in the art, the term "striking" refers to ruling lines so that the lines begin and end at predetermined points on the sheet. "Feint-lining" means the ruling of lines which extent continuously from one end of the sheet to the other.
Claims 6, 8, 10, 32, 40, 44, 47, and 81 of the patent are in issue.
The alleged infringing device is one used by this defendant, having been purchased from, and manufactured by, W.O. Hickok Manufacturing Company. It may be noted that the manufacturer has controlled the defense of this suit.
Invalidity of the patent arising from want of invention and alleged inoperativeness and lack of novelty is the defense urged. It is also contended that the claims of the patent are obscure and vague and that they do not comply with the patent statutes.
A very clear and concise statement of the structure and operation of these ruling machines led the defendant's expert, Boyle, to say that five major instrumentalities are involved in machines of this kind:
"There is the speed of the first cloth roller, the speed of the second cloth roller, the rotation of the first cam-shaft, the rotation of the second cam-shaft, and the operation in proper timed relationship of the transfer dog. And so the question is, how will these different instrumentalities be hooked up so that they will operate with precision, because these ruling machines are precision instruments. The pen-beam must strike on a certain definite line, and if it either overstrikes or understrikes one might say a hair's breadth, it affects the accuracy of the machine, and hence the appearance of the lined product."
These five instrumentalities are disclosed in the Lindbladh patent. The two cam shafts operate in synchronism as do the gates and pen beams which they control, as well as the transfer shaft. Each shaft revolves once for each revolution of each of the other shafts. The two cloth rolls rotate in predetermined relationship with each other and with the cam shafts. Provision is made for varying the speeds of the two cloth rolls with suitable changes in the change-speed gears. All of this is sufficiently set forth in the quotations heretofore made from the specification, patent in suit, page 2, lines 67-70, page 2, lines 77-85, page 4, lines 82-104, page 4, lines 113-119, and, in addition, page 6, line 49, and page 7, line 5.
In considering the attack made upon the patent, it will be helpful first to discuss the prior uses.
The Knapp Machine of the George D. Barnard Company.
The construction of this machine was described by the witness Klippel, a paper ruler by trade, employed over fifty years by the George D. Barnard Company:
"First, it was constructed with two shafts on the off side of the ruler, with two long drives to the end of the machine. One was worked from the cloth roller and the cloth roller, that is, the lower one, it drove the one machine by belt drive. The second one was drove by the cam-shaft through the transfer point, up the incline to the second machine."
"As originally constructed, it was possible to "strike" on the first knapp machine, but not on the second. He was referring to a machine operated by the Barnard Company some time in 1890; then, prior to the spring of 1895, according to Klippel:
"We eliminated a lot of these cones, and so forth (witness refers to patent to Knapp No. 430,583 dated June 17th, 1890) because we found out we could go direct, you understand, we could put a shaft on there from cam-head to cam-head to strike on both machines."
That alteration of the machine, to enable striking on both halves on one feeding of the sheets, was effected about thirty-two years ago. The machine was then on the floor of the shop of the George Barnard Company in St. Louis. This witness said that the machine could be adjusted to run different sizes of sheets:
"Well, the size of the sheet controlled what we were going to do. If we had a sheet 17 by 28, which is a standard size, and we put in on the 17 inch way on the first machine, we would get our pattern reduced and then get it down to the transfer point, and set our dogs as Mr. Knapp called them in time, and then we run it up the incline on the tape rollers, up to the gate. Them gates were a trip hammer cam or an eccentric wheel, and we regulated that so it would just catch the sheets so as to stop in long enough for a given part to strike on an accurate point or a specified point."
The transfer device was operated from the main or cam shaft. To change the speed of the cloth on the second machine, a cluster of cones was used. The shaft which ran from the first cam shaft to the second cam shaft drove these speed gears.
This Knapp machine was operated over a period of many years. Its design was sought to be reproduced in a blueprint made by Mr. Broadmeyer, the engineer of the Hickok Company, and also in a model offered in evidence as Defendant's Exhibit H. The machine itself was destroyed some time between 1923 and 1924, but some parts of it were offered in evidence, Exhibits A-4, A-5, A-6, and A-11.
This Barnard machine was made up of two Hickok machines put together. It appeared that though Knapp had applied for a patent for the original machine, and though it is contended that he accomplished striking on both machines in one feeding of a sheet, he did not, so far as any testimony shows, apply for a patent to cover the asserted development of the machine.
But, aside from the testimony, the only physical exhibits in support of this alleged prior use by the Barnard Company consist of certain sheets of paper alleged by Klippel to have been ruled upon it, a cloth roll, a transfer dog, one set of change-speed gears, one pen beam arm, and three shafts. These are not very convincing exhibits. Certainly, the sheets are not, because they could have been ruled on separate single striking machines; and of themselves they, of course, would not justify the inference that they had been made upon a double striking machine. So, too, from the parts produced, one cannot be persuaded that they must have come from a double striking machine.
Only one set of change-speed gears was offered. Pressed in close cross-examination, Broadmeyer admitted that the gears were not on the shafts when he found them in the Barnard plant.
Another significant exhibit is Defendant's Exhibit A-13, disclosing the general layout of the Barnard plant as of 1914. This shows the L machine with two drives from a line shaft in the aisle, the drive to the first half of the machine, and another to the second half. This latter was a separate belt drive. Some significance must be given to its omission on the drawings which Broadmeyer prepared of the Knapp machine under Klippel's guidance.
Now if the Barnard machine is to be considered as an anticipation, the proof should be convincing that the second machine was driven from the first half of the machine through connections between the cam shaft of the first machine and the cam shaft of the second machine and change-speed gearing between the cam shaft of the second machine and the cloth roll of the second machine, and not by a separate belt drive, as indicated in Defendant's Exhibit A-13. Certainly, both drives could not be used at the same time. Of course, it may be contended that the machine as originally built had a separate belt drive, and that, when the new driving connections were installed, the old drive, though no longer necessary, happened not to be removed. Such an explanation does not quite fit in with the testimony given by Klippel:
"XQ209. You did take out the cone pulleys and substitute another form of drive to the second half of the machine direct from the outside source of power? A. Yes, they were very combersome, them cone pulleys were.
"XQ210. When was that change made, substituting for the cone pulleys the drive to the second half of he machine from the line shaft down through the whole of the building? A. October, 1895"
for that change was subsequent to the alleged installation of the drive from cam shaft to cam shaft, which Klippel said took place in the spring of 1895. There is some argument raised that, even so, the belt drive was used when it was desired only to feint line on the second half of the machine; but Broadmeyer, when sorely pressed in cross-examination, admitted that, unless the machine was run practically all the time for feint lining on the second half, the belt drive from the outside to the second half of the machine would not have been employed.
Added to the infirmities heretofore referred to, there is not sufficient corroboration of Klippel. Klippel, referring to the defendant's model and drawings, testified that there was a connection from the cam shaft of the first machine to the cam shaft of the second machine; whereas in the deposition given by Lambur, also a paper ruler, at one time employed by the George D. Barnard Company, he did not testify so, nor did Ehrmann, another paper ruler employed by the same company.
Clearly, then, the proof in respect to the construction and operation of the Knapp machine fails to meet the test as to establishing prior uses beyond a reasonable doubt. Washburn & Moen Mfg. Co. v. Beat 'Em All Barbed Wire Co., 143 U.S. 275, 12 S. Ct. 443, 450, 36 L. Ed. 154; Deering v. Winona Harvester Works, 155 U.S. 286, 15 S. Ct. 118, 39 L. Ed. 153; Eibel Co. v. Paper Co., 261 U.S. 45, 43 S. Ct. 322, 67 L. Ed. 523; Block v. Nathan Anklet Support Co., Inc. (C.C.A.) 9 F.2d 311.
This was a machine installed at the plant of the High Art Ruling & Binding Company, also in St. Louis, some time in 1918. The testimony was taken concerning this machine in the public use proceedings which were instituted in the interference declared between the Lindbladh application for letters patent 1,813,940 and the application to Broadmeyer. Testimony was taken in March, 1927, and in May, 1927; and the Law Examiner of the Patent Office held that the alleged public use had not been established. Broadmeyer filed a petition to reopen the public use proceedings for the purpose of taking additional testimony of Fred Hoffman and Elizabeth Hoffman. The petition was denied by the Acting Commissioner of Patents on February 9, 1929, on the ground, as shown by their affidavits, that their testimony would not have changed the decision. An appeal was taken to the United States Court of Customs and Patent Appeals, which court affirmed the decisions of the Patent Office. Broadmeyer v. Lindbladh, 47 F.2d 381, 382. Strictly speaking, that was an appeal in the interference proceeding from the decision of the Board of Appeals affirming the decision of the Examiner of Interferences awarding priority of invention to the plaintiff herein. But the decision is not without interest so far as the High Art machine is concerned, for the court said:
"The evidence submitted by appellant to establish that he conceived the invention prior to appellee's filing date, September 17, 1921, is not very satisfactory. Appellant filed an amended preliminary statement alleging that he reduced the invention to practice in 1918 by the construction of a machine embodying the invention for the High Art Ruling Company, of St. Louis, Mo. On his direct examination he testified that this statement was incorrect and that the machine referred to did not embody the invention."1
Now the invention referred to is that defined in the courts of the interference. Count 1 is claim 6 of the patent in suit and reads as follows:
"6. In a duplex ruling machine, a plurality of ruling devices arranged to produce intersecting lines, means for moving a ruling device into and out of contact with the work at points definitely located with respect to an intersecting line produced by a previouslyacting ruling device, means for presenting the work to the ruling devices, and means arranged to vary the rate at which the work is acted upon by the ruling devices."
Thus there would seem to be an admission by Broadmeyer that the High Art ruling machine does not embody the invention. The evidence adduced at ...