There is no obligation on the part of courts in patent causes to
follow the prior adjudications of other courts of coordinate
jurisdiction, particularly if new testimony be introduced varying
the issue presented to the prior court. Comity is not a rule of
law, but one of practice, convenience and expediency. It requires
of no court to abdicate its individual judgment, and is applicable
only where, in its own mind, there may be a doubt as to the
soundness of its views.
Patent No. 433,031, granted to Mast, Foos & Company upon the
application of Samuel W. Martin, for an improvement in windmills
was anticipated by prior devices, and is invalid. Under the state
of the art, it required no invention to adapt to a windmill the
combination of an internal toothed spur wheel with an external
toothed pinion for the purpose of converting a revolving into a
reciprocating motion.
Where a case is carried by appeal to the circuit court of
appeals from an order granting a temporary injunction, it is within
the power of that court to dismiss the bill if there be nothing in
the affidavits tending to throw doubt upon the existence or date of
the anticipating devices, and, giving them their proper effect,
they establish the invalidity of the patent.
This was a writ of certiorari to review a decree of the circuit
court of appeals dismissing a bill in equity brought for
Page 177 U. S. 486
the infringement of a patent, and appealed to that court from an
order of the Circuit Court for the Northern District of Illinois
granting a preliminary injunction. The bill was filed by the
petitioner, Mast, Foos & Company, an Ohio corporation, and was
founded upon letters patent No. 433,531, granted to the petitioner,
upon the application of one Samuel W. Martin, for an improvement in
windmills.
In his specification, the patentee states that the
"invention consists essentially of an improved back gear
organization involving an external toothed pinion, and an internal
toothed spur gear, the pinion being mounted on the wheel shaft and
the gear having formed on or connected with it the wrist pin, to
which the operating pitman is attached, whereby the speed of the
main shaft as applied to the wrist pin and pitman is reduced, and
whereby also all pounding and lost motion is prevented as the
pitman connection passes over the center and changes from a pushing
to a pulling action. This object is accomplished by the fact that a
plurality of the pinion teeth are always engaged with the internal
spur gear, resulting in giving a perfectly uniform and smooth and
noiseless reciprocating motion to the actuating rod, thereby
prolonging the life of the machine by saving it from constant
jarring and preventing wear and tear."
"
* * * *"
"The freedom of the organization from lost motion and sudden
jerks as the wrist pin passes over the center renders the operation
of the pump smooth and regular. This increases the effectiveness of
the pump and prevents undue wear and tear."
The following diagram illustrates the patented combination:
image:a
Page 177 U. S. 487
Petitioner sought a recovery only upon the first claim:
"1. The combination, with a windmill driving shaft and a pinion
thereon, of an internal toothed spur wheel mounted adjacent to the
said shaft and meshing with said pinion, a pitman connected with
the spur wheel, and an actuating rod connected with the
pitman."
Almost immediately upon filing the bill motion was made for a
preliminary injunction, which was granted, largely upon the
authority of an opinion of the Circuit Court of Appeals for the
Eighth Circuit in the case of
Mast, Foos & Co. v. Dempster
Mill Manufacturing Co., 82 F. 327. An appeal was taken from
that order to the circuit court of appeals, which not only reversed
the order for the injunction, but dismissed the bill. 89 F.
333.
Whereupon petitioner applied for and was granted a writ of
certiorari from this Court.
Page 177 U. S. 488
MR. JUSTICE BROWN delivered the opinion of the Court.
1. Plaintiff complains of the action of the circuit court of
appeals in refusing to follow the opinion of the Circuit Court of
Appeals for the Eighth Circuit in a case of this same plaintiff
against the
Dempster Mill Manufacturing Company, 82 F.
327, and in reversing the order of the circuit court, which, upon
the ground of comity, followed the judgment of that court with
respect to the validity and scope of the patent. Its contention is,
practically, that the circuit court of appeals should have been
governed by the prior adjudication of that court, and, so far at
least, as concerned the interlocutory motion, should have accorded
it the same force and dignity as is accorded to judgments of this
Court. Premising that these considerations can have no application
in this Court, whose duty it is to review the judgments of all
inferior courts, and in case of conflict to decide between them, we
think the plaintiff overstates somewhat the claims of comity.
Comity is not a rule of law, but one of practice, convenience,
and expediency. It is something more than mere courtesy, which
implies only deference to the opinion of others, since it has a
substantial value in securing uniformity of decision, and
discouraging repeated litigation of the same question. But its
obligation is not imperative. If it were, the indiscreet action of
one court might become a precedent, increasing in weight with each
successive adjudication, until the whole country was tied down to
an unsound principle. Comity persuades, but it does not command. It
declares not how a case shall be decided, but how it may with
propriety be decided. It recognizes the fact that the primary duty
of every court is to dispose of cases according to the law and the
facts -- in a word, to decide them right. In doing so, the judge is
bound to determine them according to his own convictions. If he be
clear in those convictions, he should follow them. It is only in
cases where, in his own mind, there may be a doubt as to the
soundness of his views that comity comes in play and suggests a
uniformity of ruling to avoid confusion, until a higher court has
settled the
Page 177 U. S. 489
law. It demands of no one that he shall abdicate his individual
judgment, but only that deference shall be paid to the judgments of
other coordinate tribunals. Clearly it applies only to questions
which have been actually decided, and which arose under the same
facts.
The obligation to follow the decisions of other courts in patent
cases, of course, increases in proportion to the number of courts
which have passed upon the question, and the concordance of opinion
may have been so general as to become a controlling authority. So,
too, if a prior adjudication has followed a final hearing upon
pleadings and proofs, especially after a protracted litigation,
greater weight should be given to it than if it were made upon a
motion for a preliminary injunction. These are substantially the
views embodied in a number of well considered cases in the circuit
courts and circuit courts of appeals.
Macbeth v.
Gillinder, 54 F. 169;
Electric Mfg. Co. v. Edison Electric
Light Co., 61 F. 834;
Edison Electric Light Co. v. Beacon
Vacuum Pump & Electrical Co., 54 F. 678, and cases cited;
Beach v. Hobbs, 82 F. 916, 92 F. 146;
see also Newall
v. Wilson, 2 De G.ex, M. & G. 282.
Comity, however, has no application to questions not considered
by the prior court, or, in patent cases, to alleged anticipating
devices which were not laid before that court. As to such, the
action of the court is purely original, though the fact that such
anticipating devices were not called to the attention of the prior
court is likely to open them to suspicion. It is scarcely necessary
to say, however, that when the case reaches this Court, we should
not reverse the action of the court below if we thought it correct
upon the merits, though we were of opinion it had not given
sufficient weight to the doctrine of comity.
2. The principal mechanism of an ordinary pumping windmill is
directed to the conversion of the rapid rotation of the wind wheel
into the perpendicular reciprocating movement of an ordinary
pumping shaft. This is accomplished in much the same way that the
revolution of a water wheel is made to operate an upright saw --
namely by means of a pitman -- of different
Page 177 U. S. 490
forms, but always with the object of converting one motion into
another. In doing this, the revolving wheel, during one-half of a
complete revolution, pulls, and during the other half pushes, upon
the pitman. This change from a pulling to a pushing motion is
accompanied, as the pitman rod passes over the center of motion, by
a bounding, which not only produces a peculiar noise, but a strain
upon the mechanism, resulting in frequent breakages. These
poundings naturally increase in force as the mechanism becomes
worn, and are sometimes heavy enough to strip the cogs from the
wheels. Before the Martin patent, the device usually employed was a
small external toothed wheel or pinion mounted upon the shaft of
the wind wheel, the cogs of which interlaced with the teeth or cogs
of a large spur wheel, also externally toothed and revolving at a
greatly reduced speed, to which the pitman bar was attached. As
both wheels were fitted with teeth on the outer edge of the rim,
the consequence was that as each wheel presented its convexity to
the other, but one or two teeth or either wheel engaged with the
corresponding teeth of its fellow, and fractures of the teeth were
frequent. There was also a tendency of the two wheels to draw
apart. Martin obviated this by providing the large or spur wheel
with teeth fitted on the inner side of the rim, whereby the
concavity of the rim was opposed to the convexity of the pinion,
and a greater number of teeth on each wheel engaged with the
corresponding teeth of the other, and the strain occasioned by the
change of motion was greatly reduced. That the invention was a
useful and popular one is shown by the fact that it went into
immediate use, and over three thousand windmills containing the
combination are said to have been manufactured and sold since
1890.
Prior to Martin's patent, windmills of this class had been
driven by externally toothed spur wheels, interlacing with
externally toothed pinions, and hence were subject to the pounding
motion which proved so destructive to the mechanism, and which it
was the object of the Martin patent to obviate. The defense to this
case is largely based upon the fact that the prior art had shown a
large number of instances of spur wheels, provided with teeth on
the inner side of the rim, operated by external
Page 177 U. S. 491
toothed pinions. They are shown to have existed as early as
1841, in a patent to Perry Davis, No. 2,215, for an improvement in
windmills, in which cogs fixed upon the inner periphery of the rim,
interlaced with an external toothed pinion, although for a
different purpose, of keeping the wheel in the wind. They are shown
in several other patents for windmills, and also in a large number
of other patents for harvesters, hay tedders, churns, mowing and
sewing machines, and other mechanical movements for the conversion
of motion. It would appear from the opinion and dissenting opinion
in the case against the Dempster Mill Manufacturing Company, 82 F.
327, and from the opinion of the circuit court of appeals in this
case, that, while the combination of an external toothed pinion and
internal toothed spur wheel was common in other mechanisms, the
only windmill patent in that case offered as an anticipation of
Martin's was one granted to Edward Williams, September 19, 1876,
No. 182,394, which showed a pitman actuated by two eccentric
external toothed gear wheels, and that the majority of the court
was of opinion that the transfer of the Martin device to windmills
for the purpose named in the patent involved invention within the
cases of the
Western Electric Co. v. La Rue, 139 U.
S. 601;
Crane v. Price, Webster's Pat.Cas. 393,
and
Potts v. Creager, 155 U. S. 597. In
the present case, however, not only are there a large number of
patents shown containing this combination, but several in which the
combination is used for different purposes in the construction of
windmills: for instance, in patent No. 254,527, to George H.
Andrews; in patent No. 500,340, to S.W. Martin; in patent No.
271,635, to William H. and Clifford A. Holcombe; in patent No.
273,226, to Peter T. Coffield; in patent No. 317,731, to Coleman
& Turner, and in patent No. 346,674, to Henry G. Newell, in all
of which the system is employed for different purposes in
connection with windmills -- generally to keep the wheel in the
direction of the wind.
It is admitted that in none of the instances in which an
internal toothed wheel is employed in windmills in connection with
an external toothed wheel, is the combination used for the purpose
specified in the Martin patent of converting the revolving
Page 177 U. S. 492
motion of the wind wheel shaft into the perpendicular motion of
the pump shaft, though what is known as the Perkins mill presents
the closest analogy. This mill is shown, by indisputable proof, to
have been manufactured at Mishawaka, Indiana, as early as 1885, and
to have been sold in considerable numbers. It does not appear to
have been a pumping mill, and the upright shaft, instead of having
the reciprocating perpendicular movement of a pumping shaft,
revolved, and furnished, by means of a bevelled gear at the lower
end of the shaft, a revolving motion to a horizontal shaft used for
various purposes upon farms. A large internal toothed wheel was
placed on the outer ends of the arms of the spider to which the
windusheel arms were bolted, the internal gearing of which wheel
engaged with a small gear wheel or pinion placed on an independent
shaft at the other end of which shaft a bevelled pinion was placed,
interlacing with a corresponding bevel on the upper end of the
upright revolving shaft. As there was no conversion or change of
motion, the strain was uniform, and there was no interruption of a
continuous motion or a pounding to be provided against. This is
undoubtedly a different use from that to which the Martin
combination was put, but the question is whether there is not such
an analogy between the several uses in which this combination was
employed as to remove its adoption, in the use employed by Martin,
from the domain of invention.
The case, then, reduces itself to this: the Martin combination
had previously been used in a large number of mechanical
contrivances for the purpose of converting a rotary into a
reciprocating motion, as is notably shown in patent No. 421,533, to
John Wenzin, for a reciprocating gearing; in patent No. 399,492, to
Edward Burke, for a means of converting motion; in patent No.
89,217, to E. R. Hall, for a wood sawyer; in reissue patent No.
2,746, to Christopher Hodgkins, for a sewing machine; in patent to
Krum and Brokaw, for harvesters, and in what is known as Filer
& Stowell Company's lath bolter, a sketch of which is given in
the record. The combination had also been used in windmills, but
not for the purpose of converting rotary into reciprocating motion,
although in the Perkins mill it was
Page 177 U. S. 493
used in connection with the shaft of the wind wheel to transfer
power from a horizontal to an upright rotating shaft, which at its
lower end, transferred its own motion by a bevelled gearing to
another horizontal shaft. The combination of two externally toothed
wheels had also been used in windmills for the purpose of
converting rotary into reciprocating motion.
Having all these various devices before him, and whatever the
facts may have been, he is chargeable with a knowledge of all
preexisting devices, did it involve an exercise of the inventive
faculty to employ this same combination in a windmill for the
purpose of converting a rotary into a reciprocating motion? We are
of opinion that it did not. The main advantage derived from it
arose from the engagement of a large number of teeth in each wheel.
This peculiarity, however, inured to the advantage of every machine
in which the combination was used for the purpose of converting
motion, although the jar produced by the change of motion may not
have been sufficient to endanger a small machine. So, too, a
reduction of speed is involved wherever the cogs of a small wheel
engage with the cogs of a large one. Martin therefore discovered no
new function, and he created no new situation except in the limited
sense that he first applied an internal gearing to the old
Mast-Foos mill, which was practically identical with the Martin
patent except in the use of an internal gearing. He invented no new
device; he used it for no new purpose; he applied it to no new
machine. All he did was to apply it to a new purpose in a machine
where it had not before been used
for that purpose. The
result may have added to the efficiency and popularity of the
earlier device, although to what extent is open to very
considerable doubt. In our opinion, this transfer does not rise to
the dignity of invention. We repeat what we said in
Potts v.
Creager, 155 U. S. 597,
155 U. S.
608:
"If the new use be so nearly analogous to the former one that
the applicability of the device to its new use would occur to a
person of ordinary mechanical skill, it is only a case of double
use."
The line between invention and mechanical skill is often an
exceedingly difficult one to draw, but in view of the state of the
art as heretofore shown, we cannot say that the application of this
old device to a use which was only new
Page 177 U. S. 494
in the particular machine to which it was applied was anything
more than would have been suggested to an intelligent mechanic who
had before him the patents to which we have called attention. While
it is entirely true that the fact that this change had not occurred
to any mechanic familiar with windmills is evidence of something
more than mechanical skill in the person who did discover it, it is
probable that no one of these was fully aware of the state of the
art and the prior devices, but, as before stated, in determining
the question of invention, we must presume the patentee was fully
informed of everything which preceded him, whether such were the
actual fact or not. There is no doubt the patent laws sometimes
fail to do justice to an individual who may, with the light he had
before him, have exhibited inventive talent of a high order, and
yet be denied a patent by reason of antecedent devices which
actually existed, but not to his knowledge, and are only revealed
after a careful search in the Patent Office. But the statute (sec.
4886) is inexorable. It denies the patent if the device were known
or used by others in this country before his invention. Congress,
having created the monopoly, may put such limitations upon it as it
pleases.
The case in the Eighth Circuit was evidently decided upon a
wholly incomplete showing on the part of the defendant.
3. One of the principal questions pressed upon our attention
related to the power of the court of appeals to order the dismissal
of the bill before answer filed, or proofs taken, upon appeal from
an order granting a temporary injunction.
This question is not necessarily concluded by
Smith v.
Vulcan Iron Works, 165 U. S. 518,
since in that case the interlocutory injunction was granted after
answer and replication filed, a full hearing had upon pleadings and
proofs, and an interlocutory decree entered adjudging the validity
of the patent, the infringement and injunction, and a reference of
the case to a master to take an account of profits and damages. In
that case, we held that if the appellate court were of opinion that
the plaintiff was not entitled to an injunction because his bill
was devoid of equity, such court might, to save the parties from
further litigation, proceed to consider and decide the case upon
its merits and direct a final decree dismissing the bill.
Page 177 U. S. 495
Does this doctrine apply to a case where a temporary injunction
is granted
pendente lite upon affidavits and immediately
upon the filing of a bill? We are of opinion that this must be
determined upon the circumstances of the particular case. If the
showing made by the plaintiff be incomplete; if the order for the
injunction be reversed, because injunction was not the proper
remedy, or because under the particular circumstances of the case,
it should not have been granted; or if other relief be possible,
notwithstanding the injunction be refused, then, clearly, the case
should be remanded for a full hearing upon pleadings and proofs.
But if the bill be obviously devoid of equity upon its face, and
such invalidity be incapable of remedy by amendment, or if the
patent manifestly fail to disclose a patentable novelty in the
invention, we know of no reason why, to save a protracted
litigation, the court may not order the bill to be dismissed.
Ordinarily, if the case involve a question of fact, as of
anticipation or infringement, we think the parties are entitled to
put in their evidence in the manner prescribed by the rules of this
Court for taking testimony in equity causes. But if there be
nothing in the affidavits tending to throw a doubt upon the
existence or date of the anticipating devices and giving them their
proper effect, they establish the invalidity of the patent, or if
no question be made regarding the identity of the alleged
infringing device, and it appear clear that such device is not an
infringement, and no suggestion be made of further proofs upon the
subject, we think the court should not only overrule the order for
the injunction, but dismiss the bill.
Gardt v. Brown, 113
Ill. 475. This practice was approved by the Chief Justice in a case
where the bill disclosed no ground of equitable cognizance, in
Green v. Mills, 69 F. 852, and by the Circuit Court of
Appeals for the Sixth Circuit in
Knoxville v. Africa, 77
F. 501, where the question involved was one of law and was fully
presented to the court. The power was properly exercised in this
case.
There was no error in the action of the circuit court of
appeals, and its decree is
Affirmed.