The opinion of the court was delivered by: DOOLING
The facts have been separately found and will not be repeated. It has been concluded that certain claims of Saxl patent No. 2,591,724 read on the accused device sold by defendant when the claims are interpreted as embracing slidable mounting as an equivalent of pivotal mounting, and it has also been concluded that plaintiff is not estopped to assert that equivalency by anything done in the course of the prosecution of the patent application. It has, however, been concluded that Claims 2, 3, 5, 6, 7, 8, 10 and 11 of the Saxl patent No. 2,591,724 are invalid under 35 U.S.C.A. § 103.
The patent is for a three-roller tension meter useful to measure the tension of standing or moving filaments. One class of such three-roller meters measures tension in a filament by recording on a dial or scale the extent to which a calibrated spring yields when it urges one roller (the "sensing" roller) down against the filament as the filament courses over two other ("reference") rollers. Such are the devices of Holt, British Patent No. 199,152, Floyd U.S. Patent No. 1,647,287 and Sturgess, U.S. Patent No. 2,285,471 (using pivoted blocks and a riser block instead of rollers). Plaintiff's Saxl patent presents means of facilitating the positioning of a moving filament in a clearance established between the reference rollers and the sensing roller, and of restricting the use of the calibrated spring to the measurement of tension. Saxl mounted the reference rollers on an arcuate guide plate affixed to one end of a pivoted lever, provided a slot in the guide plate midway between the reference rollers and wide enough to be the movement path of the sensing roller, and mounted the sensing roller on a second pivoted lever that permitted it to move up and down in the guide plate slot. Both levers were pivotally mounted in a casing, and the ends of the levers bearing the rollers extended from the casing. Any movement of the sensing roller on its pivot was resisted by a calibrated flat spring; the inner end of the sensing lever was gear-toothed and engaged a gear that turned a dial pointer, registering the filament's deflection of the sensing roller in a scale determined by the flat spring's calibration. The reference-roller lever was held by a strong spring against a stop in the casing, and the lever had a trigger extension by which it could be pivoted against its spring resistance; the strong spring urged the reference lever in a direction opposite to that in which the flat spring urged the sensing roller. When the trigger was pulled, the reference rollers moved away from the sensing roller, engaged the filament and, as the trigger was released, thrust the filament against the sensing roller; the yielding of the sensing roller to that thrust was indicated by the dial pointer.
While Saxl illustrated his invention only in terms of pivotally mounted levers and framed his claims in terms of pivotally mounted reference rollers and of a movably mounted (or pivotally mounted) sensing roller, the idea of his invention is not concerned with modes of motion but with establishing clearance for the accurate measuring of tension by making the two sets of rollers movable both with respect to each other and with respect to their casing. The restricted, arcuate movement caused by pivotal mounting derives all its value, in Saxl, from the bare fact that it is movement and establishes a clearance, and it derives none of its value from the fact that the path of displacement is an arc. Clearance and only clearance is established by each mode of moving the rollers, the clearance is obtained by manual displacement in each device, and displacement is made against the resistance of a spring that urges the bearing member to a fixed position in the casing. In the small displacement useful to establish clearance for inserting a test filament the curvilinear displacement of the pivoted lever is only immaterially different from the pure translatory displacement of the slide movement of the accused device. On these facts the equivalency of that slide movement to Saxl's pivotal movement is made out. Union Paper Bag Machine Co. v. Murphy, 1878, 97 U.S. 120, 24 L. Ed. 935; Sanitary Refrigerator Co. v. Winters, 1929, 280 U.S. 30, 41-42, 50 S. Ct. 9, 74 L. Ed. 147; Graver Tank & Mfg. Co. v. Linde Air Products Co., 1950, 339 U.S. 605, 608, 70 S. Ct. 854, 94 L. Ed. 1097; Cf. Gould v. Rees, 1872, 15 Wall. 187, 82 U.S. 187, 192, 194, 21 L. Ed. 39; Gill v. Wells, 1874, 22 Wall. 1, 89 U.S. 1, 28-29, 22 L. Ed. 699.
Saxl presented to the Patent Office claims that read directly on the accused device and, after they were rejected, obtained his present claims, which read on the accused device only by resort to equivalency, for the reference rollers of the accused device are slidably and not pivotally mounted. The cancelled claims were not, however, rejected because they claimed too broadly movability for the lever supporting the reference rollers. Cf. Exhibit Supply Co. v. Ace Patents Corp., 1942, 315 U.S. 126, 136, 62 S. Ct. 513, 86 L. Ed. 736. Apart from grounds of rejection that, in general, revolved around failure to define sufficient structure for operability and failure to define operating relation between structural elements, the basic ground of rejection was that the claims were fully met by Holt, British patent No. 199,152 or were not patentable over Holt. Saxl's only successful differentiation of Holt was that Holt's reference rollers were not movable with relation to the casing of Holt's meter. Saxl did not seek to differentiate Holt or any other prior art by narrowing his broadly framed descriptions of the reference rollers as pivotally mounted, and narrowing the description of the movability could not have helped to exorcise Holt, which presented both pivotally and slidably mounted sensing rollers in alternative embodiments of his invention. There is no basis in the file history for an argument that Saxl won allowance of his claims only by acquiescing in a rejection based on his claiming movable mounting of the reference-roller member.
Nonetheless Saxl gave up the quest for claims that included "movable mounting" rather than pivotal mounting. Cf. Schriber-Schroth Co. v. Cleveland Trust Co., 1941, 311 U.S. 211, 220-221, 61 S. Ct. 235, 85 L. Ed. 132, as amended 312 U.S. 654. That, in the circumstances of Saxl's prosecution of his application, does not mean that Saxl's claims are blocked from all resort to the doctrine of equivalency. He certainly cannot claim what could only be reached by the claims he gave up. He can claim what he was granted and its equivalents. The doctrine of equivalents operates in terms of what is in the claim. Yet it would not exist as a doctrine if it did not extend the claim but only read it indulgently. Cf. Keith v. Charles E. Hires Co., 2d Cir. 1940, 116 F.2d 46, 48. That the patentee here may have given up the idea of getting a claim as broad as all means of moving a member and sought rather a claim on a specific mode of moving exhibited by his preferred embodiments does not deprive him of the equivalents of what he sought and was allowed; he cannot claim what he gave up - all modes of movement - but he can treat as an infringer anyone who uses that mode of movement which is - singularly, perhaps - genuinely an equivalent of his specific mode of movement. Cf. Borg-Warner Corp. v. Paragon Gear Works, Inc., 1st Cir. 1965, 355 F.2d 400. There is no "file wrapper estoppel" because the patentee here is not reviving a claim to what he surrendered but is claiming what he was granted in its remedial extension under the doctrine of equivalency. It is not a sufficient test for estoppel that claims not allowed plainly read on the accused device while all allowed claims require resort to an equivalent to show infringement where, as here, the use of the narrower language was not elected as a means of disposing of grounds of rejection advanced by the Patent Office. Cf. International Mfg. Co. v. Landon, Inc., 9th Cir. 1964, 336 F.2d 723, 727; Exhibit Supply Co. v. Ace Patents Corp., 1942, 315 U.S. 126, 136, 62 S. Ct. 513, 86 L. Ed. 736. And the present case is dissimilar in principle to Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 222-223, 61 S. Ct. 235, 85 L. Ed. 132, amended 312 U.S. 654 where only the claim surrendered contained the particular element the addition of which provided patentable novelty.
It is on validity that plaintiff's case fails. Saxl's use of movable mounting for both sensing and contact rollers has the evident utility he claims for it, at least in some degree. It presents at best, however, an additional way of accomplishing what Floyd and Sturgess accomplish. Given Floyd, Sturgess and Holt in the prior art, Saxl's patent discloses a workmanlike organization of familiar components and techniques of the tension meter art to make an instrument that employs without increasing the technical resources of the field. Cf. Dempster Brothers, Inc. v. Buffalo Metal Container Corp., 2d Cir. 1965, 352 F.2d 420, 422-423.
It follows that defendant is entitled to judgment. It is, however, concluded that an award under 35 U.S.C.A. § 285 is not warranted by the nature of the case.
The following are the findings of fact and conclusions of law herein:
1. Plaintiff is a corporation organized under the laws of the Commonwealth of Massachusetts; its principal place of business is at Harvard, Massachusetts.
2. Defendant David Bromley is a citizen and resident of the State of New York and resides in and conducted business at the times in question as Electromatic Equipment Company, in Nassau County in the Eastern District of New York.
3. Hans Schmidt & Company was not served with process and did not appear in the action.
4. Erwin J. Saxl on October 24, 1945, applied for a patent on improvements in a Tension Meter; on about January 26, 1950, Saxl had reasonable assurance that Claims 1 and 7 through 11 of the patent ultimately issued would be allowed; on or about June 11, 1951, Saxl had assurance that all the claims of the patent ultimately issued would be allowed; the formal Notice of Allowance of the patent application issued July 11, 1951.
5. The patent in suit, No. 2,591,724 was issued to Erwin J. Saxl on April 8, 1952.
6. Saxl assigned the patent to his wife by an instrument in writing signed and acknowledged June 1, 1952.
7. By a further unacknowledged instrument in writing dated August 1, 1952, Saxl assigned to his wife and one Frank Leslie Fenwick, Jr., his interest in his United States and foreign patent rights, including U.S. Patent No. 2,591,742, British Patent 663,899, French Patent No. Proisoire 624,596 and pending Canadian and German applications.
8. An agreement made January 12, 1953, signed by Saxl, his wife, Fenwick and the attorney who prosecuted the application for the patent in suit provided for a transfer of the patent to the plaintiff corporation, for Saxl's continuing development work on the patent, and granting Saxl a three year option to buy enough of the stock of the plaintiff so that he and his wife would hold 65% of the stock.
9. Plaintiff was incorporated under Articles of Incorporation executed by Fenwick, Mrs. Saxl and the patent attorney on January 12, 1953; the Secretary of the Commonwealth of Massachusetts received and approved the Articles of Incorporation on February 25, 1953, and issued his Certificate of Incorporation on that day.
10. An involuntary petition in bankruptcy was filed against Saxl in the United States District Court for the District of Massachusetts (No. 99-53) on February 24, 1953, and Saxl was thereafter adjudicated a bankrupt.
11. Saxl did not list the patent in suit as an asset in his bankruptcy proceeding.
12. There is no evidence and no finding is made respecting the disclosure in the bankruptcy proceedings of the matter referred to in findings 6 through 9.
13. Saxl was discharged in bankruptcy on April 21, 1954.
14. By instrument in writing signed and acknowledged July 1, 1957, Saxl assigned to plaintiff the patent in suit and the assignment was recorded in the Patent Office on July 18, 1957 (35 U.S.C. § 261); no other assignment of the patent, earlier or later, was recorded in the Patent Office.
15. During trial Mrs. Saxl signed and acknowledged a confirmatory assignment to plaintiff of all her interest in the patent in suit and in any causes of action for infringement.
16. Except in the present case, and then as a result of the disclosure of data at variance with Saxl's testimony in a pre-trial deposition, the title of plaintiff to the patent and plaintiff's exclusive right to make, use and vend the articles of the patent have not been questioned.
17. Defendant Bromley made commercial sales in the United States commencing in 1958 or 1959 of the accused tension meters (Exhibit 2); such tension meters were manufactured in Germany by Hans Schmidt & Company; defendant Bromley continued to make sales of such tension meters after the present action was commenced.
18. Defendant Hans Schmidt & Company has been advised of the pendency of the present suit; it has consulted its own counsel in Germany about the suit; it has communicated and advised with defendant Bromley about the suit, its merits, and its settlement.
19. Defendant Hans Schmidt and Company has contributed to the expense of the defense of the present suit by allowing defendant Bromley credit in the open account between them for a part of the expenses incurred through a date preceding trial; the credits allowed equalled about 50% to 60% of such expenses.
20. Defendant Hans Schmidt and Company has not expressly agreed to bear the whole expense of defense or to indemnify defendant Bromley; defendant Bromley expects to ask Hans Schmidt and Company for complete reimbursement of expense; Hans Schmidt and Company did not select and does not control defense counsel, and does not control the defense of the action.
21. The plaintiff's patent in suit (the "Saxl patent" or "Saxl"), U.S. Patent No. 2,591,724 relates to a portable device for measuring mechanically the tension in yarn, cord, wire or other filaments whether standing or in linear movement. Tension meters as such are old. The Saxl patent is addressed to improvements in tension meters that would have as advantages (a) simplicity of operation, principally in ease and rapidity of application of the meter to the filament to be measured, (b) accuracy of measurement, and (c) freedom from intrusions into the measuring elements of dust, lint and other foreign substances.
22. Plaintiff charges the accused device (Exhibit 2) with infringement of Claims 2, 3, 5, 6, 7, 8, 10 and 11; Claims 1, 4 and 9 are not claimed to have been infringed.
23. The Saxl patent, in its figures and specification, visualizes determining the tension of a standing or moving filament by measuring the filament's resistance to deflection when, while the filament is passing between two separated "reference rollers," a third "sensing roller," linked to a calibrated spring, is pressed down on the filament midway between the reference rollers; the resistance of the filament to deflection forces the calibrated spring of the sensing roller to yield and the extent of that yield registers the filament's tension. The construction visualizes that the tension will be registered when the filament is deflected in a shallow V, as thus:
[SEE ILLUSTRATION IN ORIGINAL]
A and B are the reference rollers. C is the sensing roller; the calibrated spring of C forces C downward, and the tension of the filament forces C upward.
24. Saxl's construction as illustrated and described, located the two reference rollers on a guide or shield plate on opposite sides of a slot cut in the plate to accommodate movement of the sensing roller up and down between the references rollers. Both the guide plate and the sensing roller were mounted at the ends of levers that operated on pivots; the levers were at right angles to the filament, the guide plate and the plane of rotation of the three rollers, and the levers' up and down pivoted movement was in a plane vertical to the filament. The lever supporting the guide plate was held against one of its limit points by a spring the strength of which would considerably exceed the tension of any filament expected to be measured. The lever supporting the sensing roller was held against one of its limit points by the calibrated spring. The two springs urged their respective levers in opposite directions. The two levers were mounted in a casing and one end of each of the levers extended through a separate slot in the casing; at its external end one lever carried the guide plate and its reference rollers and the other lever carried the sensing roller. The guide plate and its reference rollers had a trigger grip attached by which the guide plate and rollers could be rotatably moved against heavy spring tension so that the reference rollers were well below the sensing roller; on release of the trigger the reference rollers would be spring urged to a limit point such that the reference rollers passed well above the sensing roller's position when at rest.
25. The Saxl construction, as illustrated and described, contemplated that the user would press the trigger of the tension meter to its limit, place the reference rollers under and just in contact with the filament, and release the trigger so that the reference rollers were pressed to their upward limit of travel by their strong spring. The upwardly urged filament would then engage the underside of the sensing roller and, thrusting upward against it, compress its calibrated spring to a definite point. The lever carrying the sensing roller was geared to a pointer on a dial on the casing; the dial was marked in correspondence with the calibrated spring and as the lever pivoted against the spring in response to the rise of the sensing roller, the pointer would register the amount of the filament's tension on the dial.
26. Claims 1, 4, and 9 are not claimed to have been infringed; Claim 1 is on tension meter in which both the sensing roller and the reference rollers are on pivotally mounted levers and in which the levers have rotation. Claims 4 and 9 include among the elements of the combinations they claim a flange located on the part of the lever carrying the reference rollers that is inside the casing and ...