Thrall v. Poole

SHOWALTER, Circuit Judge (after stating the facts). Defendants’ counsel do not seem to me to seriously contest the validity of the patent in suit. They insist that the patentee has so far limited his monopoly by the words of his claims that their client does not infringe. By striking out the word “metal” and the word “flexible,” the claims appear as presented by the patentee in the patent office. The examiiun- cited three patents as against the claims in form as so presented, dwelling especially on the patent to Arnold. Each of the references showed a metal straightedge, against which the ticket: strip was to be torn or severed, but in each the case inclosing the ticket, was a rigid case. The patent office did not insist that the word “metal’’ should be inserted before (he word “straightedge.” In avoiding the references, and in making more specific the description of the invention, the attorney for the patentee inserted the word “flexible,” so that the “folding cover, A,” of the first claim, and the “folding cover, A,” [720] of the second claim, became the “flexible folding cover, A,” and “the folding ticket cover, A,” of the third claim, became “the flexible folding ticket cover, A.” This change of phraseology was" necessary to meet the references, and to distinguish the invention. But in the same connection, and as part of the same amendment, the “straightedge” of each claim was amended to “metal straightedge.” When the word “flexible” was thus used, indicating a cover of leather, or paper board, or some such material, it became necessary, in order to show distinctly the invention described in the specification, to emphasize the fact that the straightedge must be not a straightedge formed merely by the soft yielding material of which the flexible cover was to be made, but a straightedge of hard and sharply-defined material, against which the ticket could be accurately severed. When read in the light of the specification and of what took place in the patent office, the word “metal,” as used in the claims, becomes descriptive of the qualities of that straightedge which would answer the function of that factor in the claim, as contrasted with the soft material of the cover. Straightedges of hard and compact material, for the severance of paper on a line, were common in the art. They were not necessarily of metal, but they must necessarily have had the qualities of metal for the purpose mentioned. If there had been any reference by the patent office showing the device of this patent, but with a straightedge of celluloid, for instance, these claims would not have been allowed. The edge of the flexible cover itself could be thought of as a straightedge. It would serve, for instance, to steady a pencil in drawing a straight line. It would indicate irregularities or variations from a true plane in an apparently flat surface, etc. But the straightedge which constitutes the factor in these claims is one against which the ticket slip could be torn in a straight line, and at a desired or designated subdivision. This is the function of the straightedge as it figures in the invention of the patent. When the word “flexible” was expressed as indicating, in connection with the specification, the quality of the cover, then some qualifying word became necessary to indicate a straightedge upon which the ticket could be severed. The word “metal” was inserted evidently for this purpose. The statute requires the patentee to “particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery.” Rev. St. IT. S. § á88S. The invention here claimed was not any one factor or the factors as unrelated to each other, but the combination specified. With respect to any one factor, the qualities necessarily claimed are those which obviously enabled that factor to combine with the other factors. The patentee says in his specifications: “To enable the desired portion of said strip to be readily detached without danger of tearing the same irregularly, and thus injuring- the ticket, I so construct said cover that the top may form a straightedge. This is accomplished by riveting or otherwise attaching flexible strips of metal, b, b', Figs. 1 and 8, to the top of said cover, or by placing flexible metallic sheets between the folds of the material forming- the outside of said cover, as shown in Fig. 5, in which b' represents the metallic sheet, while a' indicates the covering glued or otherwise attached thereto.” [721] It was no part of any “invention” of this patentee that the straightedge should he of metal rather than celluloid, or any other material well known at the time as suitable for the severance of the ticket. The “invention,” as such, is not divisible ^o that a metal straightedge, as distinguishable from a celluloid straightedge, could be an essential factor in one form, as distinguished from other possible forms. I cannot hold here that this patentee, by the use of the word “metal,” has intentionally parted one portion of his invention from the remainder, thus monopolizing the one portion and giving the remainder to the public. Section 350, Walk. Pat., contains the following statement: ‘•Tlie doctrino of equivalents may be invoked by any patentee, whether lie claimed equivalents in his claim, or described any in liis specification, or omitted to do either or both of those things. But whore (he patentee states in his specification that a. particular part of his invention is. to be constructed of a particular material, and states or implies that he does not contemplate any other material as being suitable for the purpose, It is not certain that any other material will be treated by a court as an equivalent of the one recommended in the patent. Combination patents would generally be valueless, In the absence of a. right to equivalents; for few combinations now exist, or can hereafter be made, which do not contain at least one element, an efficient substitute for which could readily be suggested by any person skilled in a particular art.” This patentee did not state, nor does Ms specification imply, that the straightedge “to enable the desired portion of said strip to be readily detached without danger of tearing the same irregularly, and thus injuring tlie ticket,” could not he of celluloid, or of hard rubber, or of wood, or of some other hard, hut nonmetallic, substance. In view of 1he text quoted from Walker, and of such cases as Beece Button-Hole Mach. Co. v. Globe Button-Hole Mach. Co., 10 C. C. A. 3.94, (Si Fed. 958, wherein the opinion was by Judge Putnam in the court of appeals of the First circuit, it would he a mistake, as it seems to me, to hold that the doctrine of equivalents is not here applicable. I think the injunction should go as prayed in the bill, and it is so ordered.