Brown v. Huntington Piano Co.

LACOMBE, Circuit Judge (after stating the facts). The field of invention is a limited one, and the patent, which is for a minor improvement in connecting mechanism to make the adjustment of the music desk automatic, must be confined closely to the precise combination shown. Nevertheless, despite the three prior patents relied on— Bourne, Eelldin, and Harper & Hoover, each being for connecting mechanism effecting such adjustment — -we are of the opinion that the patent is valid. The improvement is of no great importance. It was not necessary to the development of the piano as a musical instrument. It covers only a minor feature, which might, as the patentee expresses it, be “a good selling point, or, as they say in the trade, ‘talking point,’ and something that appealed to the purchaser, making the piano a better ‘seller.’ ” But its utility is undisputed. The facts of infringement and defense concede that much. The reasons why conclusion is reached that the three prior patents neither anticipate nor restrict the field sufficiently to negative patentable invention are found in the history of the art as testified to by complainant’s witnesses. No one familiar with that art was called by defendant to controvert their statements. The first record of a fall-board, substantially E-shaped in cross-section, and hinged to the frame at the angle of the E (a in the cuts, supra), is found in patent to Baker (165,699), July 20, 1875. In that patent the section of fall-board which covers the keys was not in two parts hinged together, but was a single piece. The ensuing year — October 31, 1876 — produced the Neill (183,773) fall-board, also known as the “Chickering fall-board,” which is substantially identical with the one shown in the patent in suit. It may be that there were other varieties of fall-board at that time, though the record does not disclose them; but the evidence conclusively shows that continuously since 1876 the substantially E-shaped, lower-pivoted folding fall-board making a quarter turn backward when opened has commended itself to the trade, and the “Boston fall-board,” as it is called (presumably after the Chickering establishment, which introduced it or made it popular), has been and now is the most universally used of all. The defendant’s expert suggested that “it was doubtless observed by the first users of pianos like that shown and described in the Neill patent that there was no object in pulling out the music desk unless the fall-board was open, and it would have been very surprising if the skilled mechanics employed in piano manufacture had not contrived simple connections by which the movement of the fall-board was accompanied automatically by the proper movement of the music desk.” Certainly it seems a reasonable assumption that workers in the art undertook to provide such connections, but it was. five years before any result was achieved, and that result was embodied in the Bourne patents, September 27, 1881 (Nos. 247,473, 247,474). Bourne, however, did not effect an operative connection between the Boston fall-board and the music desk. He devised an entirely new fall-board, not E-shaped in cross-section, and not pivoted at the angle of the E. There is not a scintilla of evidence to show, as appellant seems to intimate, that fall-boards like the one shown in Bourne existed before he devised the mechanism of his patent. The complainant’s, expert points out that the Bourne fall-board cannot be readily removed [739] from the instrument because the links, D, which form a part of the connecting mechanism of his patent, would have to be disconnected from the fall or from the frame, and are in a very inaccessible position, so that it would be a matter of considerable difficulty to disconnect them, and to insure that they were properly reapplied when the fall-board was put back. A close study of the patent shows the correctness of this statement. Now, it is desirable to have the fall-board easily removable without the aid of special skill, so as to allow of such slight repairs and adjustments as are commonly made from time to time by piano tuners. Therefore it appears that Bourne established his automatic connection only by substituting an undesirable for a desirable fall-board. And despite his improvement the trade continued to call for Boston fall-boards in preference to any other, even although such fall-boards had no operative connection with the music desk. It must be assumed that the Bourne improvement, however, did show that automatic connection was a good “talking point,” and the inventive abilities of those who produced pianos with Boston fall-boards must have been stimulated to introduce a similar feature in their instrument. Three years, however, elapsed before the appearance of the next device —that of Felldin, November 11, 1884, No. 307,933. Felldin, like Bourne, devised a new form of fall-board. It was so arranged that it could be readily removed, thus obviating the defect above referred to; but it was not a Boston fall-board, and, despite its appearance, the trade continued to demand Boston fall-boards, although the instruments containing them were without the automatic connection, for the problem of establishing such connection between music desk and Boston fall-board had not yet been solved. It must be assumed that the intelligent manufacturers of pianos with Boston fall-boards appreciated the fact that automatic connection would be a “selling point” in their favor, and that they undertook to devise such connection. Nevertheless, it was not until November 1, 1887, that Harper & Hoover showed such a connection in their patent No. 373,616. It seems unnecessary to go into the details of the elaborate and complicated chain of mechanism by which this is accomplished. The criticism of complainant’s expert is sound: “Its link connection introduces features which are objectionable, and are-entirely eliminated by the [Brown] construction with its disconnected lever. These objections are that the link construction involves the necessity of disconnecting the fall-board and music rack operating mechanism if the fall-board has to be taken off the piano, and the reconnection of the said parts in proper working relation when the fall-board is put back if the rack-operating mechanism is to perform its work; also that the introduction of jointed parts of this character is liable to cause rattling or jar when the piano is being-played upon, and there is always liability of such joints working loose, and possibly coming wholly disconnected.” Patentable novelty may be found in an improvement which simplifies a complicated train of mechanism by eliminating some of its elements, with the result that defects due to presence of those elements are ■ done away with. We are entirely satisfied that Brown was the first to devise a suitable connection between the Boston fall-board and the music desk, which connection does the work without introducing some objectionable element or feature which would neutralize the benefit. [740] of having the music desk operated automatically, and find patentable invention in his simple and effective combination. The patent was issued only after repeated rejections, after much solicitation, and several amendments both of specification and claims. It must be confined strictly to the precise language ultimately agreed upon. But upon the closest construction of claims 1 and 2 the defendant infringes, its mechanism being a Chinese copy of that shown in the patent. It is suggested that in defendant’s device the lower arm of the lever when the instrument is closed is in contact with the part of the fall-board which operates it, but the language of the claims does not call for a separation in space between those parts; and when it is borne in mind that at one time the patentee proposed to amend his claims by inserting a statement that, when the fall-board is closed, the lower end of the lever is "free, and out of engagement with the fall-board,” but subsequently, on rejection by the Patent Office, struck such statement out, the contention that infringement is not shown by reason of such lack of engagement is unpersuasive. The decree is affirmed, with costs.