H. L. Judd & Co. v. Fowler

SHIPMAN, Circuit Judge. This appeal calls in question the correctness of a decree of the circuit court for the southern district of New York, which sustained the validity of letters patent No. 466,940, dated January 12, 1892, and issued to the complainants Eowler and Lingley as inventors, and to the complainant Samuel Fowler as assignee, for an improvement in curtain rods, and which also adjudged that the defendant had infringed the first claim of the patent. On July 12, 1889, the inventors, Fowler and Lingley, and Carroll W. Dodge, applied for letters patent for an improved curtain rod, which, numbered 468,987, was issued on February 16, 1892. This patent is for a tube sliding telescopically over the end of a curtain rod, the tube carrying at one end a tip or head to receive an elastic disk which bears against, the window casing, and having a spring inclosed within the tube, one end of the spring bearing against the end of the rod. The tension of the spring forces the tube away from the end of the rod, and thus enables the elastic disk to be held firmly against the casing. Previous devices of this sort were either fastened to the woodwork, or the ends of the rod were made to press against the casing by a screw thread. The novelty of the invention consisted in holding the rod in place solely by the outward push of a spring. The patentees began to manufacture curtain-rod tips of this sort in June, 18S9, and ceased the manufacture during the next month. The device was defective because the pressure of the spring was exerted directly against the head, and pushed it out of the tube, unless it was solid and soldered into the tube,—a construction which made the manufacture too expensive. Fowler and Lingley, the two inventors named in the patent in suit, thereupon sought for, and invented, an improvement .which should obviate the defect, and applied, on May 8, 1890, for a patent therefor, which was issued as No. 466,940, and was, by its terms, made subordinate to the Fowler, Lingley, and Dodge application then pending in the patent office. As the decision of the case depends entirely upon the construction to be given to the first claim, and as the construction depends upon an examination of the claim in connection with the specification, and with the history of the application in its progress through the patent office, it is important to quote the specification with substantial completeness. The material portion is as follows: “B is a rod forming the central section of our improved rod, and can be of metal or other material, as wood, or of wood covered with metal, or it can consist of a piece of tubing. Upon each end of the central rod, B, we place the telescopic sliding tubes, C, 0, with their inner ends ground or turned down to an edge in order to allow the rings or the hem of a curtain to slide freely [825] over them. The outer ends of the sliding tubes, O, 0, are compressed or reduced in diameter by compression or upsetting. On the reduced outer ends of the sliding tubes, O, O, are placed the tips, i), D, which are either tubular in form, as represented in Fig. 4, or flaring or bell-moutlied, as represented in Fig. 3, the special form of the tip itself being immaterial. Within the tip, D, and resting upon the ends of the sliding tubes, G, are the disks, E, and upon the disks, 10, are placed the rubber disks, F, F. Springs, G, G, are inclosed within the sliding tubes, 0, the outer diameter of the springs being larger than the internal diameter of the sliding tubes, 0, at their reduced ends, O', O'. The springs are large enough to require considerable pressure to cause them to enter the ends, O', O', and they are held in xflace by the pressure' of the springs against the inner surface of the sliding sleeves at their reduced ends, O', O', and kept from falling out of the tubes when they are removed from the ends of the rod, B. The opposite ends of the springs, G, G, rest against the ends of the rods, B, and as the entire length of the curtain rod, with the ends as applied, is longer than the space between the sides of the casing, so that, when it is applied to the casing, the springs, G, G, are compressed, their tension exerts a pressure against the sides of the casing, which serves to hold the rod firmly in position. (The ends, O', O', are sufficiently contracted in diameter to prevent the spring, G, from being jmslied through the end of the tube, 0, and crowding the disks, E and F, out of the tip, I), as the spring, G, is being compressed hy the sliding motion of the tube, C, on the rod, B, in the operation of apx>)ying the curtain rod to the window casing. The compression of the lube, 0, is thus made to serve a, double purpose,—in holding the spring, G, from falling out of the tube, 0, when the tube is removed from the rod, B, and also in x>revonting the end of the spring from being pushed through the end of the tube, and against the disk, E, as the spring is compressed against the end of the rod, B. Tills latter purpose can obviously be secured by turning over the end of the tube, O, thereby coniract’ng the opening, and forming an internal flange, by which the end of the si>ring will be held from contact with the disk, E, or the end of the tube, 0, which is held in the tip, D, can be indented so as to reduce its internal diameter, and hold the outer end of the spring from longtitudinal movement when it is being compressed.)” The pari; of the specification inclosed in parentheses was introduced by amendment. The first claim is as follows: “(1) In a curtain rod, the combination, with a rod, B, of a tube, 0, having one end inclosing and sliding on said rod, and having its opposite end reduced in diameter, a spring inclosed in said tube, and held from longitudinal movement by said reduced end of the tube, and a shell or tip carried by the reduced end of the tube, and adapted to bear against the -window casing, substantially as described.” The invention consisted in reducing in diameter the outer ends of the sliding tubes, whereby they received the force of the outward thrust of the springs, which, were thus prevented from being pushed through the ends of the tube, and, as the tips no longer needed solidity to withstand the pressure of the springs, they were placed over the reduced outer ends of the tubes. The compression of the tube, in addition to its preventing the end of .the spring from being pushed through the end of the tube, also kept the spring in position by friction, and thus prevented it from falling out when the tube was removed from the rod. In order to accomplish the first and main object of the improvement, the specification states three ways in which the ends can he reduced in diameter: First, by compressing them; secondly, by turning over the end, thereby forming an internal flange which will hold the end of the spring [826] away from the disk; or, thirdly, by indenting the end of the tube. The defendant’s expert says that in its curtain-rod tips “the outer end of the tube is turned inward slightly at its extreme end, and has ears bent in from a point or short distance back from the end. These in-turned ears form a stop to prevent the end of the spring from being-pushed through the outer end of the tube,” and that “the result is that a’spring of uniform diameter simply abuts against the stops formed by these inturned ears, and is not held fromlongitudinal movement by the reduced end of the tube.” It is further said that the reduced ends do not hold or retain the springs, but that they are kept from falling out by being bent or bpwed outwardly, so as to bear against the interior of the tubé and create friction with it, and consequently that the defendant’s reduced ends perform only one function of the patented method of construction. A further distinction is said to exist between the two structures, in that whereas, in the complainants’ patent, the reduced outer ends of the tubes form a neck or seat for receiving the tip, in the construction of the defendant’s articles the tip goes over the reduced end, and is forced upon that portion of the exterior of the outer end of the tube which is not reduced in diameter. The attempt to avoid infringement rests mainly, if not entirely, upon such a construction of the first claim as to limit it to one mode of reducing the end of the tube, viz. by compression, and to exclude the modes named in the amended specification,—“by turning over the end of the tube,” or by indentation. The theory of the defendant is that the claim, as finally allowed by the patent office, was so reduced in scope as to limit it to that feature of construction which would prevent the spring from longitudinal movement in either direction. The original application contained three claims which were properly rejected as “incomplete and vague.” The amendment included in parentheses was then made, and three new claims were written, the first of which is as follows: “In a curtain rod, the combination with a rod, B, of a sliding tube, 0, having its outer end reduced to hold an inclosed spring from longitudinal movement, a spring held in said sliding tube, and a tip carried by said sliding tube, and adapted to bear against the window casing, substantially as described.” The second and third claims referred to particular features of the device, and are not important in this case. The first and second claims were rejected “on the patent to La Dow, in connection with patent to Smyth, both of record.” The patent to Charles La Dow— No. 297,136, dated April 22, 1881—was for a suspensory rod, which consisted of a rod provided at one end with a socket button, and at the opposite end with a nut upon the screw-threaded end of the rod. The frictional contact with the opposing surfaces of the window casings was effected by the rotation of the screw-threaded rod.' The patent to James B. Smyth—No. 192,663, dated July 13, 1877— was for an improvement in a rotating window-shade roller, so that the roller could be made longer or shorter. The only part of the device which seems to have any relation to the patented device of the patent in suit is that the axle of a pulley wheel at the end of [827] Hie roller is held against, the bearing, which is attached to the casing. and by which the roller is supported, by the tension of a spiral spring, and thus the roller is prevented from being detached from its hearings. The roller is not held between the two casings by frictional contact. These two references seem to have little connection with, the invention of the patent. But the real imperfection of the claim was that it did not clearly and with precision express how the various parts co-operated with each other. Thus, by “a sliding tube reduced to hold an inclosed spring from longitudinal movement',” the draughtsman obviously meant that the reduced end was the means which held the spring from longitudinal movement; but the operative character of the combination was much better expressed by the language subsequently employed. The defendant insists that the language of the claim, as finally amended, which was that the spring was held from longitudinal movement bv the reduced end of the tube, requires that the reduced tube should prevent the spring from moving longitudinally in either direction, and that such requirement compels the reduction to take place by compression. If this construction was necessary, in view- of the state of the art, or of the limitations in the specification, or of the requirements of the patent office, it would merit favor; but it is not required by either of those considerations. The specification was coextensive with the actual invention, and described three ways in which the,, spring could he prevented from being pushed through the end of the tube,—by compression, or by forming an internal flange, or by indenting the end so as to hold the outer end of the spring from longitudinal movement. The claim requires the end to he reduced in diameter, and specifies that the spring was to be held from longitudinal movement by the reduced end, the specification having particularly described three ways in which, the end of the spring could be thus held. The claim does not limit the invention to such means of reducing the infernal diameter as shall entirely prevent the spring from movement. The defendant, took one of the methods of construction described in the specification, and included in the claim. It is not of importance that it did not take the best method which was-so described. The defendant’s remaining answer to the charge of infringement1 is that, by a proper construction of the claim, ibe reduced end is to form the entire seat for the neck of the tip, whereas, in the defendant’s device, the tip is said to be carried or have its seat by that portion of the end of the tube back of the reduced portion, which is of full diameter. The point seems too wire-drawn to require discussion. The specification said that “on the reduced outer ends of the sliding tube, O, O, are placed the» tips, D, D.” This part of the patented invention consisted in the fact that the reduced end of the sliding tube received or carried, or upon it was placed, the neck of the tip. The decree of the circuit court is affirmed, with costs,