Michigan Stove Co. v. Fuller-Warren Co.

SEAMAN, District Judge (after stating the facts as above). In the mechanical patent, No. 368,770, invention is asserted generally upon Hie following features: In drawing inwardly the wall oí the stove over the fire pot, putting mica in the in-turned wall to permit the passage of heat and light rays, and placing a reflector over the fire in position to catch and reflect the light rays. These features a**e all clearly set forth in the letters patent, especially in the second and fifth claims. The defendant contends that each ot the element'; entering into these claims is an old and well-known feature of stove structure; and the evidence of prior patents, introduced on its helm If, supports that contention. An in-turned section above the fire poi and mica-filled openings appear in several prior patents, notably in the drawings which accompany the following: No. 107,597, fox* a magazine stove, issued to A. O. Corse, September 20, 1870; No. 129,53d, to A. O. Corse, July 16, 1872, for a base-burning stove; No. 8,567, to Philip Rollhaus, Jr., August 6, 1875, for design for fireplace* heater. Eeilectors in various forms are a common structure, and appear in several exhibit patents, although none is shown oí strictly analogous use. The expert on behalf of the defendant places much 'stress on the above-mentioned Corse patents as anticipatory of all [378] the essential features of the patent in question, but they clearly have no reflector, and, in my opinion, do not suggest this combination. The main defense, however, against the second and fifth claims is that they do not present a patentable combination, but are mere aggregations of old elements of stove structure. It is clear that if “the result in this case is a mere aggregation of the several functions of the different elements of the combination, each performing its function in the old way,” there is nothing upon which to base a claim to invention. Richards v. Elevator Co. (on rehearing) 159 U. S. 477, 487, 16 Sup. Ct. 53. Whether these claims fall within such definition was the inquiry which seemed to me, upon the argument, to present the main, if not the only, difficulty in the case. In Loom Co. v. Higgins, 105 U. S. 580, 591, Mr. Justice Bradley, speaking for the court, says: “It may be laid down as a general rule, tbougb perhaps not an invariable one, that if a new combination and arrangement of known elements produce a new and beneficial result never attained before, it is evidence of invention.” The testimony shows that the result obtained by this combination was beneficial, in that it gave an illuminating effect which made the • stoves attractive, and gave them great popularity in the trade; and it is my opinion that this effect is new as the joint product of the in-turned mica-filled section and the reflector. As stated by the complainant’s expert: “It is necessary in a eoal-buming stove of this kind, particularly when hard .coal is used, that the space above the fire pot be inclosed, so that the chimney will draw the air through the fuel instead of over it. It is therefore necessary that the in-turned section, if it permits light and heat rays to pass through it, must have mica placed in the openings of this in-turned section, in order that it may be closed, and at the same time transparent to light and heat rays. The in-turned section, having mica in it, therefore co-operates with the section inclosing the fire pot and with the reflector above the in-turned section, because it permits the heat and light rays to pass from the fire pot to the reflector through the in-turned section, and still maintains a closed space above the fire pot. The mica interposed between the fire pot and reflector serves also to prevent the smoke and dust from the fire pot comiug in contact with the reflector, and obscuring its bright surface, so that the in-turned section filled with mica co-operates with the fire pot and the reflector to prevent the former from destroying the latter.” Althougli the mica and the reflector each performs its old function, it is not in the old way, for they are so positioned that they cooperate, and obtain a result which is joint, and not individual. This distinction is the same noted by Judge Acheson in Stutz v. Armstrong, 20 Fed. 843, 847, that “it is sufficient if all the devices cooperate with respect to the work to be done, and in furtherance thereof, although each device may perform its own particular function only.” In this view the device meets the requirements for a patentable combination, namely, “while every element remains a unit, retaining its own individuality and identity as a complete and operative means, the combination embodies an entirely new idea of means, and thus becomes another unit, whose essential attributes depend on the co-operative union of the elements of which it is composed.” 1 Rob. Pat. § 155. The testimony regarding the popularity of the structure thus obtained is well worthy of consideration to overcome [379] any doubt which may arise because the device comes close to the line of these definitions; and I do not think this testimony should be excluded, as not strictly in rebuttal, under the objection interposed by the defendant. The infringement of the second and fifth cla ims appears to be clear-ly established, and the' complainant is entitled to an injunction thereupon. The other allegations of infringement are unsupported by the evidence. The third claim of the mechanical patent makes the provision of an air space between the reflector and the overhanging section, D, the distinguishing element; and this is neither employed in the defendant’s stove, nor is there any equivalent for it. This omission avoids infringement. The defendant’s stove does not conflict with the design patent, if that is assumed to be valid. In its appearance, either generally or in detail, it does not so far resemble the complainant’s design as to deceive purchaser's or dealers, but, on the contrary, seems to be well distinguished in form and ornamentation. "No proof is furnished under section 4900, Rev. St., and there can be no decree for damages or profits as the case now stands. Decree may be prepared for entry in accordance with the views above indicated.