Devlin v. Paynter

AOHESON, Circuit Judge. The appellants, who were the defendants below, complain of the decree of the circuit court, sustaining as valid, and adjudging them to have infringed, the first claim of letters patent No. 367,725, for improvements in unions for steam pipes, e,tc., granted on August 2, 1887, to Edward P. Paynter, Jr., the inventor, and John K. Moore, his assignee of a part interest. The claim in question is in these words: “(1) A union for steam pipes, comprising a threaded, ring or nut, a member having a seat of soft metal with a concave face, and an opposing member with a rounded or convex end, substantially as shown and described.” The declared object of the invention is to provide a construction whereby the joint of the union of steam and other pipes >. ’I be [399] made more tight than heretofore, and in which the danger of injury by indentation to the soft-metal seat of such union will be avoided. The specification states: ‘•The concavo-convex character of the joint juevents tile seat from being indented, even if the two members of tlie coupling should not be exactly-aligned, thereby avoiding the difficulty hitherto encountered with the flat, soft-metal seats and‘straight ends of unions as heretofore! constructed.” The specification describes and shows a uuion, one of the members of which is provided with an internal seat of soft metal, the face of which is made concave, and the opposing part of the union formed with a convex, end, so as to conform to the concavity of the seat, against which it; rests, thus making a perfectly tight joint therewith. A pipe union is a complete and independent contrivance made and sold by itself, consisting of head and tail members, and a fastening ring or nut drawing the two members closely together. The purpose of the device is to join together the adjacent ends of two sections of pipe through which steam or water or other liquids or gases how, Such unions are not designed to be fixed and permanent couplings, but they are used where the pipes are to be repeatedly disconnected and again joined, and thus it is intended that the unions shall he taken apart and put together again and again. It is of supreme importance that the union should form and constantly maintain a perfectly tight joint,-and it is also very desirable that it should be so constructed as to provide for the nonalignment of the pipes which it connects. These ends are attained by the device of the patent in suit. The patented improvement consists in having one of the two opposing members of the union formed with a concave abutting face, and the oilier with a convex abutting face, one of these meeting faces being composed of soft metal. The evidence is convincing that this improvement effectively overcomes difficulties incident to and inseparable from all the expedients of this general character previously in use. It meets the practical difficulty arising from want; of exact axial alignment of the two pipes which are to be connected; and it not only secures complete contact between the meeting faces of the head and tail members, when they are first put together, but permits, without impairing the efficiency of the joint, the repealed use of the same union as the pipes are disconnected and again united. We have attentively examined all the earlier patents, and the exhibits illustrative of the prior state of the art, in evidence. To discuss these at length, and point out the distinctions between them, respectively, and the Pnynter-Moore device, we deem unnecessary. It is enough to declare that in our judgment they do not, taken singly or considered together, anticipate the invention in question. They fail to show a union made in accordance with the patent in suit, or possessing its peculiar advantages. We are entirely satisfied with the conclusion of the court below that the first claim of the patent in suit covers a union patent-ablv new and useful. The differences between the union shown by the patent in suit and the appellants’ union are these: In the latter the convex face is [400] on tbe bead member, and tbe concave face is on tbe tail member, reversing tbe arrangement of tbe patent; and in tbe appellants’ union tbe convex face is composed of soft metal, whereas in tbe union described in tbe patent it is tbe concave face wbicb is of soft metal. Tbe appellants bave transposed tbe position of tbe soft-metal face. Do they escape infringement by tbe transposition of parts? We think not. Tbe essence of tbe invention embodied in the first claim of tbe patent is a union in which one of tbe two opposing members has a concave abutting face, and tbe other a convex abutting face, one of these faces being of soft metal. The appellants, therefore, bave appropriated tbe gist of tbe invention. The changes found in their device do not at all affect either the principle of operation or tbe result. There is a substantial identity between the two unions. Now, in tbe sense of tbe patent law, tbe substantial equivalent of a thing is tbe same as tbe thing itself. Winans v. Denmead, 15 How. 330, 342; Machine Co. v. Murphy, 97 U. S. 120. Tbe changes wbicb tbe appellants bave made are immaterial, and, indeed, are but a subterfuge. Made, evidently, for tbe mere purpose of evading tbe wording of tbe claim, they are unavailing. Hoyt v. Horne, 145 U. S. 302, 308, 12 Sup. Ct. 922. Nor do we find anything in tbe proceedings in the patent office requiring us to read tbe first claim of tbe patent as subject to the limitation upon wbicb tbe appellants insist. Tbe reasons urged by tbe appellees’ solicitors before tbe patent-office officials in favor of tbe grant of tbe patent, if entitled to consideration here at all, do not, we think, regarded as a whole, support tbe contention that tbe patentees, when in tbe patent office, placed such a narrow construction upon tbe claim as would exclude from its scope tbe appellants’ device. We do not see that they take here any position inconsistent with their position when in the patent office. There is nothing to bring this case within the rule that, where a patentee has modified bis claim in obedience to tbe requirements of tbe patent office, be cannot bave for it an extended construction wbicb has been rejected by tbe office. Tbe only amendment of the first claim ever made was tbe introduction of the “threaded ring or nut” as an element of tbe combination, and that addition does not affect tbe question now before us. We are of tbe opinion that tbe decree of tbe circuit court was right, and accordingly it is affirmed.