The fourth and seventh claims in letters patent No. 325,688,
issued to Albert G. Mead, September 8, 1885, for a "button" are not
infringed by glove fasteners manufactured under letters patent Nos.
359,614 and 359,615, issued to Edwin J. Kraetzer, March 22, 1887,
and though it would be possible to make out a literal infringement
of the sixth claim by construing
Page 150 U. S. 112
the claim broadly, the Court holds that the patentee is not
entitled to such construction.
There is no equity in charging infringement upon a defendant in
a patent suit in consequence of an apparently accidental adoption
of an immaterial feature of the plaintiff's patent.
When costs are unnecessarily increased by the incorporation of
useless papers, costs may be imposed upon the offending party under
Rule 10, Paragraph 9, and they are imposed in this case.
This was a bill in equity originally filed for the infringement
of six letters patent for improvements in glove fasteners, five of
which patents were issued to William S. Richardson and one to
Albert G. Mead.
A plea having been filed upon the ground of multifariousness,
two of the patents were stricken from the bill upon the application
of the plaintiff.
The only patent relied upon at the hearing or covered by the
assignments of error was that the Albert G. Mead, No. 325,688,
issued September 8, 1885, for a "button." In his specification,
patentee states:
"This invention relates to metallic fastenings employed in
securing the separate flaps of any article, such as gloves or other
similar articles of wear, in lieu of the ordinary button and
buttonhole, and pertains especially to that class entitled 'ball
and socket fastenings,' in which a ball is adapted to be enclosed
by, and retained within, the hollow or socket member, when the
fastening is actively employed. I consider my present invention
embraces first, the method of centrally securing the socket portion
of the fastening to the article, whereby the open part or socket of
said member is disposed upon the underside of the flap, and secured
by a rivet extending through the fabric. Thus, in permanently
securing it to the latter, a suitable buttonhead or cap is employed
upon the upper surface of the flap, and can be so formed and
constructed as to form a button finish -- a result much desired
since it gives the article an appearance exactly similar to an
ordinary button, which is the most neat and tasty finish that can
be employed in the class of articles of apparel to which such
fastenings are usually attached; but further, the whole device is
thereby concealed and prevented from becoming caught and broken.
Secondly, in the peculiar method of forming
Page 150 U. S. 113
the ball member of said fastening, as likewise that of the rivet
by which the ball is secured to the fabric, the two parts forming a
unit, and readily used in connection with the socket member,
forming an article very easily manufactured, cheap, and
inexpensive, and one which presents an unusually ornamental
finish."
Defendant was manufacturing under letters patent Nos. 359,614
and 359,615, granted to him March 22, 1887, for improvements in
glove fasteners.
The case was heard upon pleadings and proofs, and the bill
dismissed upon the ground that the defendant had not infringed. 39
F. 700.
No appeal was taken from the decree of the circuit court
dismissing the bill as to the three Richardson patents remaining,
and the appeal only involved the consideration of the 4th, 6th, and
7th claims of the Mead patent. These claims were as follows:
"4. In a fastening device of the nature described, the enclosing
portion composed of a hollow socket centrally secured to the fabric
by a button head, F, and with the enclosing portion disposed upon
the underside of the flap, substantially as stated."
"6. A member of a fastening device consisting of a hollow
socket, in combination with a rivet and button head, whereby it is
centrally attached to the fabric, substantially as set forth."
"7. A member of a fastening device composed of a hollow socket,
D, centrally attached by an eyelet,
l, the latter resting
upon and within an annular depression,
q, formed in a
concave collet or disk, E, substantially for the purpose herein set
forth."
MR. JUSTICE BROWN, after stating the facts in the foregoing
language, delivered the opinion of the Court.
The invention of Mead consists of a glove fastener having on the
button side a knob with a shank to it, which passes
Page 150 U. S. 114
through two washers, one of which washers is above and the other
below the glove fabric, and the shank is upset on the lower side of
the lower washer. The swell of the knob is sufficient to allow of
an engagement with the clasp or spring sides of the buttonhole
member of the fastener. This buttonhole member, which is the one
alleged to be infringed, consists of an imperforate cap or button
head, F, and an elastic socket, D. The buttonhead, F, consists of
three parts, a solid cap, F, an interior disk, E, perforated at the
center, and the attaching eyelet,
l, descending from it. A
modification of this portion of the device is shown in Fig. 12,
wherein the imperforated cap or buttonhead, F, is omitted, the
buttonhead consisting simply of a dished washer, E. In this form,
which is as efficient and much cheaper, the eyelet is made flush
with the exterior surface of the disk, E. In order to present a
more perfect finish, and at the same time to prevent the edges
thereof from catching, the patentee forms an annular depression in
the top of disk E to a depth equal to the thickness of the metal
forming the eyelet. Thus, a smooth exterior surface is secured.
In both forms of his device, illustrations of which are here
given, the dished washer is necessarily present, because it is the
thing which, by being riveted to the spring-mouth socket, serves to
fasten the structure to the glove flap, the leather of which is
squeezed by the exterior of the socket against the interior of the
buttonhead of dished washer, E.
image:a
The socket, D, consists of a cup-shaped washer with spheroidally
curved wings. The cup-shaped washer, with its wings curved slightly
inward at their lower edges, and thus presenting a contracted but
outwardly yielding mouth, constitutes
Page 150 U. S. 115
the spring socket for receiving and holding the knob. The upper
part of this socket is perforated at its center to receive the
rivet or eyelet projecting downward from the upper portion of the
cap. In the application of this fastener to a glove fabric, a hole
is pierced in the fabric large enough for the passage of the
eyelet, and the two hemispheroidal metallic surfaces, one of which
surfaces is the outside of the upper part of the socket and the
other of which is the inside of the cap or exterior piece, are for
some considerable distance parallel to each other, and thus the
fabric of the glove is stretched into a dome shape, by being
compressed or nipped between the back of the socket and the inside
of the cap, and is firmly held by this engagement.
It is admitted that Mead did not invent this spring socket, nor
the perforation at its center, and while he did not invent the
attachment of that socket to the fabric by a flat washer, the
surface of which lay in a line parallel to the tangent line of the
upper surface of the dome of the socket, it is claimed that he did
invent the application of a curved or cup-shaped cap in the place
where the flat washer had previously been.
image:b
In the Kraetzer patent, the buttonhole member, of which an
illustration is given above, consists of a perforated top shell or
cap, A, with a central opening, B, which is surrounded by an
annular depression to countersunk cavity. The opening, B, is
adapted to receive the upper end of a spring shell, which has an
annular shoulder, E, at its base, and contracted neck at its top.
The spring which engages the buttonhole member of the Kraetzer
fastener is a coiled-wire ring, split on one side, so as to expand
as the button passes through it. This spring ring is loosely held
in its chamber. The spring chamber is
Page 150 U. S. 116
composed of two pieces of metal united around their edges, one
of which has a tubular extension which passes through the fabric
and is engaged with a cap or buttonhead on the other side of the
fabric.
In the Mead socket, the resiliency of the buttonhole member is
in the socket itself, which is directly attached to the fabric. In
the Kraetzer fastener, the part which engages the buttonhead or
stud serves no other purpose whatever, but rests loosely in the
chamber of its holder. This holder or shell is clamped permanently
and firmly to the fabric, and is never expanded or contracted, as
in the Mead socket. In engaging and disengaging the fastener, the
wire ring alone expends and contracts.
From this statement of the construction of the two devices,
which can be made more apparent by a comparison of the drawings, it
is very evident that they are constructed upon different principles
and operated in a wholly different manner.
But it is claimed that an elastic mouth, combined with and
firmly united to a dome, the mouth and dome being situated wholly
on the underside of the flap and secured by a buttonhead wholly
upon the upper side of the flap, was not known in the art prior to
the Mead patent, and that the effect of this is, taken in
connection with the fact that the hole in the flap need not be any
larger than the diameter of the rivet, as stated by the plaintiff's
expert, "that the spring socket presses the glove leather upward
into the buttonhead and squeezes the leather against the inner
surface of the buttonhead." If this feature be an advantage, as now
claimed, it is strange that no allusion is made to it in the
specifications, and in his testimony the patentee stated directly
that in describing his invention as set forth in his patent, in the
attachment of the fastener to the fabric, he did not contemplate
any stretching of the leather, or that the hole in the fabric
should be of any particular size, or any other effect than is
produced when two parts are fastened together by an eyelet. On the
contrary, it would appear that this squeezing of the leather could
only take place where the dished washer or cap was used, and in his
specifications the patentee states that
"the disk, E, may
Page 150 U. S. 117
be a flat plate, but in the present instance, I have shown its
outer edge or circumference bent in order to approximate to the
general shape of the buttonhead when the latter is pressed into its
finished form,"
and thus it strengthens said cap. This would indicate that the
advantage now claimed, of a tighter compression of the leather, was
not originally within the contemplation of the patentee, but is an
afterthought, suggested by his inability to make out a case against
the defendant of an infringement of the spring portion of the
socket.
Applying these considerations to the different claims of the
patent, it is quite evident that there is no infringement of the
fourth claim, which includes as an element the imperforated
buttonhead, F, which is not found in the Kraetzer patent.
It is equally clear that there is no infringement of the seventh
claim, since the Kraetzer device has not "the hollow socket, D,"
but a socket of a wholly different construction, operating in a
different manner and depending for its elasticity not upon the
peculiar inwardly projecting wings of the Mead socket, but upon a
ring concealed within its walls. Neither has it the eyelet,
l, unless the tapering upper end of the spring shell of
the Kraetzer patent can be regarded as an equivalent.
The charge of infringement must rest, then, upon the sixth
claim, which is for "a member of a fastening device consisting of a
hollow socket in combination with a rivet and buttonhead, whereby
it is centrally attached to the fabric, substantially as set
forth." While, by construing the "hollow socket" broadly, as
including every kind of a hollow socket appropriate for that
purpose, and by construing the upper part of such socket as
equivalent to the rivet,
l, of the Mead patent, it would
be possible to make out a literal infringement, yet we do not think
the patentee is entitled to such a broad construction of his claim
in view of the fact that the only function obtained by the
defendant in the use of his combination is that of squeezing the
leather upward into the buttonhead, a function of very doubtful
advantage, and apparently of no value to the Kraetzer device, and
one never contemplated by Mead or alluded to in his specification.
We think it too frail
Page 150 U. S. 118
support to hang a charge of infringement upon. When the
essential operation of the two devices is so different, there is no
equity in charging infringement upon the defendant by an apparently
accidental adoption of an immaterial feature of the plaintiff's
patent.
We are therefore of opinion that the court below committed no
error in its disposition of the case; but in view of the fact that
the appellee has seen fit to encumber the record with copies of
some fifty immaterial patents, we think it a proper case for the
application of the tenth rule, which authorizes us (paragraph 9) to
impose costs upon an appellee guilty of requiring unnecessary parts
of the record to be printed, and that he should be charged with
half the cost of printing the record in this case. "Care should be
taken that costs are not unnecessarily increased by incorporating
useless papers, and that the case is presented fairly and
intelligently."
Railway Co. v. Stewart, 95 U. S.
279,
95 U. S. 284.
With this qualification, the decree is
Affirmed.
