Bourke v. Buegeleisen

THACHER, District Judge (after stating the facts as above). There is nothing in the claims not found in the prior art, except the “integral rocking means at the fulcrum of said lever”; that is, the integral side pro [210] jeetions which support the lever upon the plate, and the integral rounded projections at its fulcrum which allow it to turn in the socket. Bourke’s device intrinsically, is no better than the devices of the prior art. AE that is claimed for it is that it costs less to manufacture, and there is no doubt that the elimination of the pivot pin substantially reduced the cost of manufacture. To eliminate the pin without eliminating its function, it was only necessary to notch the lever, so as to support it in the base plate, and sHghtly round its edges, so as to permit it to turn in the socket. The only mechanical ingenuity disclosed was in the method devised for cutting and assembling the two parts automatically. But the method of cutting and pressing the metal is not covered by any of the claims. Notching the lever, in order to support it, and rounding its edges, in order to permit it to turn on its fulcrum, were means within the knowledge and experience of any person possessing ' the shghtest mechanical skill. Indeed, it is fair to say that they are hardly beyond the ken of almost any boy, who has whittled a stick or constructed a figure 4 trap. The fulcrum provided in the place of the pivot pin is so simple and rudimentary as to be utterly lacking in invention, and Bourke’s improvement falls within the rule in Atlantic Works v. Brady, 107 U. S. 192, at page 200, 2 S. Ct. 231 (27 L. Ed. 438): “The design of the patent laws is to reward those who make some substantial discovery or invention, which adds to our knowledge and makes a step in advance in the useful arts. Such • inventors are worthy of all favor. It was never the object of those laws to grant a monopoly for every trifling device, every shadow of a shade of an idea, which would naturally and spontaneously occur to any skEled mechanic or operator in the ordinary progress of manufactures. Such an indiscriminate creation of exclusive privileges tends rather to obstruct than to stimulate invention. It creates a class of speculative schemers, who make it their business to watch the advancing wave of improvement, and gather its foam in the form of patented monopolies, which enable them to lay a heavy tax upon the industry of the country, without contributing anything to the real advancement of the arts. It embarrasses- the honest pursuit of business with fears! and apprehensions of concealed liens and unknown liabiEties to lawsuits and vexatious accountings for profits made in good faith.” This is not the case of an inventor who discovers a simple solution of a problem, which many others have long vainly sought to solve. It is, on the contrary, a case where, until the plaintiff’s entry into the field of the art, there was no reason for sacrificing strength to cheapness of construction. The result which Bourke accompEshed was never before attained, because (never before sufficiently desired to overcome the inertia of habit foEowing the old methods, which were quite good enough, and perhaps better than the new, until competition demanded cheaper costs. Novelty under these circumstances is of Ettie probative value in determining the question of invention. There being a very simple and obvious explanation of the fact that this improvement was not adopted before by those engaged in the manufacture of such devices, such cases as Loom Co. v. Higgins, 105 U. S. 580, 591, 26 L. Ed. 1177, Krementz v. S. Cottle Co., 148 U. S. 556, 559, 13 S. Ct. 719, 37 L. Ed. 558, and Potts v. Creager, 155 U. S. 597, 608, 15 S. Ct. 194, 39 L. Ed. 275, are not controUing. Neither Bourke nor any one else had any difficulty in substituting for the pivot pin an integral fulcrum, as soon as it became desirable to do so. It may be assumed, but not decided, that the proof in support of the defense of prior invention is insufficient, because aE of the witnesses might possibly have been mistaken as to dates; but this testimony remains to demonstrate the fact that Hafelfinger, without instruction from the patent in' suit, found no difficulty in eliminating the pivot pin, and it is quite obvious that the reason why the improvement was hot' adopted long before is ‘that the old device was the best, and there was sufficient margin of profit in its sale to warrant the additional cost involved in its manufacture. As soon as competitive conditions arose, which for the first.time made the cost of the pivot pin construction a matter of material importance, neither Bourke nor the manufacturers of the alleged infringing devices had the slightest difficulty in solving the problem of lower costs in substantially the same way, but quite independently of each other. Under these circumstances, invention should not be inferred from novelty and utility alone, and the question remains whether what Bourke did was an exercise of the inventive faculty. Shaping and fitting the lever and socket, so as to hold the lever in place under the tension of the string, involved nothing but the application of ordinary mechanical skill, and cannot be said to rise to the dignity of invention. Hollister v. Benedict Mfg. Co., 113 U. S. 59, 5 S. Ct. 717, 28 [211] L. Ed. 901; Atlantic Works v. Brady, snpra; Railroad Supply Co. v. Elyria Iron Co., 244 U. S. 285, 37 S. Ct. 502, 61 L. Ed. 1136; Burgess Battery Co. v. Novo Mfg. Co. (C. C. A.) 262 F. 972; Harvey Hubbell, Inc., v. Fitzgerald Mfg. Co. (D. C.) 283 F. 790, 793. It follow's that the patent in suit must be held invalid for lack of invention, and the complaint dismissed, with costs.