Where the patents sued on are not pioneer patents and do not
embody a primary invention, but are only improvements on the prior
art and defendants' machines can be differentiated, the charge of
infringement cannot be maintained.
In view of the state of the art and what passed in the Patent
Office, this Court cannot regard the Kitselman patent of January
18, 1887, for wire fabric machines, as a pioneer patent, but its
claims must be limited in their scope to the actual combination of
essential parts as shown, and cannot be construed to cover other
combinations of elements of different construction and
arrangement.
The same rule applies to the other patents in suit, and, tested
by it, infringement was not made out.
This was a suit in the Circuit Court of the United States for
the district of Indiana for infringement of claims 1, 2, 3, 9, 10,
11, 15, and 20 of letters patent No. 356,322, issued January 18,
1887, to Alva L. Kitselman and Davis M. Kitselman for an
improvement in wire-fabric machines; of claims 1 and 2 of letters
patent No. 289,507, issued December 4, 1883, to W. J. Davisson for
an improved machine for making wire fabrics; of claims 2, 3, and 4
of letters patent No. 357,067, issued February 1, 1887, to Theodore
M. Connor for improvement in machines for forming netted wire
fabrics, and of claims 1 and 10 of letters patent No. 505,607,
issued September 26, 1893, to John C. Pope, for wire-fabric
machines.
Defendants denied patentable novelty of each of the patents, and
also denied infringement, and alleged that they constructed their
wire fabrics as licensees under and pursuant to letters patent No.
502,025, issued to W. D. Whitney December 24, 1895, for
improvements in wire-fabric machines.
The cause was heard by District Judge Baker, who held
Page 189 U. S. 9
that the claims of the four patents sued on were for specific
constructions which defendants did not use, and that there was no
infringement of either of the letters patent, and dismissed the
bill. The case was carried to the United States Circuit Court of
Appeals for the Seventh Circuit, and that court, one of its members
dissenting, reversed the decree, and held that the defendants had
infringed the first, second, eleventh, and fifteenth claims of the
patent issued to the Kitselmans. 108 F. 632.
The writ of certiorari was granted on the petition of the Kokomo
Fence Company, and afterwards the cross writ on the petition of the
Kitselmans. The machine company alleged error in the judgment of
the court of appeals sustaining and finding infringement of the
Kitselman patent, and the Kitselmans alleged error in that court in
not sustaining and finding infringement of the Davisson, Connor,
and Pope patents.
MR. CHIEF JUSTICE FULLER delivered the opinion of the Court.
The circuit court was of opinion that neither of complainants'
patents was a pioneer invention; that they were all merely
improvements on the prior art, and to be construed in that light;
that complainants could not be treated on the basis that they or
their assignors were the first to make a portable machine for
weaving wire fencing fabric in the field, which claim had been
distinctly made by complainants, rejected by the Patent Office, and
the claim thereupon withdrawn. In its judgment, complainants and
defendants contended as to infringement on an equal field, the
presumption of the validity of complainants' patents being met by
the presumption of the validity of the patent to Whitney. And,
taking up complainants' patents
seriatim, the circuit
court held that the differences between their machines and
defendants' machine were not
Page 189 U. S. 10
mere colorable invasions by the latter, and that the identity of
means and of operation essential to infringement were lacking.
The circuit court of appeals concurred with the circuit court
that the case turned upon the question whether the patents sued on
embodied a pioneer invention; that, if complainants' invention was
not of a primary character, a substantial departure from the
machines of the prior art, defendants' machine was so sufficiently
differentiated that the claim of infringement could not be
maintained, while, on the other hand, if complainants' patents
"were the first to give to the world a workable portable machine
for weaving wire fences in the field -- a machine distinctly
creating a new product -- and aptly embody in their specifications
and claims the mechanical arrangements that bring about such a
result, the decree below is erroneous."
The opinion was preceded by an extended statement of facts,
which gave the specifications of the Davisson patent of December 4,
1883, and certain of the accompanying figures, together with the
second and third claims, alleged to be infringed; also "the
pertinent drawings and specifications of the Kitselman patent," and
the claims alleged to be infringed, which were as follows:
"1. In a wire fabric machine, a series of sectional twisters,
each of which comprises a central section for carrying a warp wire,
and having rotary movement imparted thereto, and the shifting
sections for carrying the weft wire, and receiving rotary motion
from the central section to form the twist, substantially as and
for the purpose herein described."
"2. In a wire-fabric machine, the combination of a series of
sectional twisters geared together for simultaneous rotation, and
each comprising a central portion movable only on its axis and side
portions capable of a compound movement -- that of rotation on
their taxes -- and of a shifting longitudinal movement,
substantially as described, for the purpose set forth."
"9. In a wire-fabric machine, the series of sectional twisters,
comprising the central and side sections, the central section of
each twister being geared to the twister adjacent thereto for
simultaneous operation, substantially as described, for the purpose
set forth. "
Page 189 U. S. 11
"10. In a wire-fabric machine, the combination of a series of
twisters geared directly together for simultaneous operation, and
each comprising a central section and the side section, each side
section carrying a spool or reel for the wire, substantially as
described, for the purpose set forth."
"11. In a wire-fabric machine, a series of twisters connected
for simultaneous operation, and each consisting of a central
section and the side section, in combination with the spools
carried by the side sections, the central section of each twister
being provided with a longitudinal opening for the passage
therethrough of the warp wire, substantially as described."
"15. In a wire-fabric machine, the combination of a series of
rotary twisters geared directly together for simultaneous
operation, each twister having a central section capable of rotary
movement only, and two side sections which are capable of a
shifting movement independently of the central section in opposite
directions simultaneously, whereby the said shifting sections of
one twister are adjusted to register with the central sections of
twisters on opposite sides of the same, substantially as described,
for the purpose set forth."
"20. In a wire-fabric machine, a series of sectional twisters,
each comprising a central section, the central sections being
geared together to be simultaneously rotated on their axes, and the
shifting side sections adapted to align with the central sections
to be rotated therewith, substantially as described, for the
purpose set forth."
The drawings and specifications of the Connor and Pope patents
were not set out, because unnecessary in the view taken of the
case. Both these patents were issued subsequently to the Kitselman
patent.
The drawings and specifications of the patent to Whitney of
December 24, 1895, were then given.
The statement further set forth
"the essential drawings and specifications of letters patent No.
10,743, granted John Nesmith April 4, 1854, and referred to in the
opinion as most adequately representing one branch of the prior
art"
-- namely, as stated by the court, loom machines by which wire
netting was made in the factory, and then transferred to the field,
and
Page 189 U. S. 12
also figure 2 of the drawings of the Middaugh and Wilcox patent
of December 23, 1884, that patent being regarded as "the best
example of the second branch of the prior art," field machines
which constructed the fence
in situ.
The statement is given in full, with eleven pages of drawings,
in the report of the case, 108 F. 632.
The Kitselman and Pope patents described portable machines. The
Davisson and Connor patents described stationary machines. The
Kitselman and Pope patents were intended to be operated by hand.
And the Davisson and Connor patents were intended to be operated by
power. But the essentials of the mechanism were not dependent upon
the circumstance of their being embodied in either a stationary or
a portable machine or in a power or a hand machine. Complainants'
leading expert testified that
"the essentials of the invention described in the several claims
here in suit are not dependant on their use in a stationary or
portable machine, or in a power or hand machine, or upon their
capacity to weave a fabric in which slats may or may not be used,
or upon their capacity to weave a fabric of any special size of
mesh."
In the specification of the Kitselman patent, the inventor
said:
"The primary object I have in view in my invention is to provide
a simple and easily operated machine of the class named which can
be adapted for use in the open field or other place for the
construction of fences, as well as a stationary or fixed machine
for the manufacture of wire fabric."
And also:
"I may either construct a portable machine as shown in the
accompanying drawings, to work in the open field or other place or
dispose the parts in a horizontal instead of a vertical position,
and mount the same on suitable bearings and legs to provide a
stationary machine for indoor use."
The Middaugh and Wilcox patent of December 23, 1884, was a
patent for a "portable fence machine," described in the claims as
"a portable machine for constructing wire-and-picket fences," and
"a portable fencing machine." Longitudinal pairs of wires were
intertwisted with vertical slats inserted between the twists, the
wires passing through tubes or spindles in the frame of the
machine, which moved along the wires as the fence was formed.
Page 189 U. S. 13
In the Kitselman specifications and drawings, plans of picket
and slat fencing and of the common form of wood fence held together
by wires, as made by that machine, were shown. The Middaugh and
Wilcox machine made wire-and-picket fence. The Kitselman machine
made diamond mesh, and wire-and-picket, fence. But the diamond mesh
fabric was old, as shown not only in the Davisson patent, but in
many others antedating those in suit, as, for instance, that of
Nesmith of April 4, 1854.
The diamond mesh fabric had been woven while the machine was in
a standing position. The Middaugh and Wilcox patent made
wire-and-picket fence in the field. Kitselman converted the
stationary into a portable machine by setting it on end and
mounting it on a truck, and he converted the portable machine, as
he himself says, by disposing the parts "in a horizontal instead of
a vertical position," and mounting "the same on suitable bearings
to provide a stationary machine for indoor use." The mechanism and
operation were the same. Whatever its merits, it was not, in
itself, primary invention to mount a machine for making diamond
mesh fencing on a truck, and use it in the field, as the old
machine had been used to make wire-and-picket fences. The getting
up and walking was not new, though the machine may have gone at a
better gait and made a better fence.
When Kitselman made his original application, his nineteenth
claim read:
"In a wire-fabric machine, the combination of a track, a
carrying frame geared to the track and having the twisting devices
and the reels, and pawl and ratchet mechanism for feeding the frame
and its devices, substantially as described, for the purpose set
forth."
This claim was rejected by the Patent Office on reference to the
Fultz patent of May 13, 1884, and the Watson patent of July 21,
1885.
Fultz's was a patent for
"an upright machine for making or weaving fence composed of wire
and pickets, and may be used, movably, along the line where the
fence is to be made, or stationary."
Watson's was a patent for a wire-fence machine, the invention
relating "to that class of fence machines in which the pickets and
wires are bound together and the fence put up in one
operation."
Page 189 U. S. 14
Kitselman acquiesced in the rejection and withdrew his
nineteenth original claim, and cannot now reasonably claim a
construction which would protect his machine as a pioneer field
machine.
The first, second, eleventh, and fifteenth claims of the
Kitselman patent were held by the circuit court of appeals to be
infringed. We repeat these claims as follows:
"1. In a wire-fabric machine, a series of sectional twisters,
each of which comprises a central section for carrying a warp wire,
and having rotary movement imparted thereto, and the shifting
sections for carrying the weft wire, and receiving rotary motion
from the central section to form the twist, substantially as and
for the purpose herein described."
"2. In a wire-fabric machine, the combination of a series of
sectional twisters geared together for simultaneous rotation, and
each comprising a central portion movable only on its axis and side
portions capable of a compound movement -- that of rotation on
their axes -- and of a shifting longitudinal movement,
substantially as described, for the purpose set forth."
"11. In a wire-fabric machine, a series of twisters connected
for simultaneous operation and each consisting of a central section
and the side section, in combination with the spools carried by the
side sections, the central section of each twister being provided
with a longitudinal opening for the passage therethrough of the
warp wire, substantially as described."
"15. In a wire-fabric machine, the combination of a series of
rotary twisters geared directly together for simultaneous
operation, each twister having a central section capable of rotary
movement only, and two side sections which are capable of a
shifting movement independently of the central section in opposite
directions simultaneously, whereby the said shifting sections of
one twister are adjusted to register with the central sections of
twisters on opposite sides of the same, substantially as described,
for the purpose set forth."
It is obvious, as said by complainants' expert,
"that the terms 'sectional twisters,' 'twisters,' and 'rotary
twisters,' used in the several claims under consideration, refer to
the same three-part twister devices. "
Page 189 U. S. 15
In Kitselman's original application, the first claim called for
"a series of sectional twisters geared directly together;" the
second for "a series of sectional twisters capable of sliding
movement with relation to each other and geared for simultaneous
rotation;" the third for
"the series of sectional twisters comprising the central hub
section and the two side sections disposed on opposite sides of the
central section, the hub section being stationary, while the side
sections are capable of shifting movement;"
the fourth for "the series of sectional twisters, each of which
comprises a longitudinally immovable section and two sections which
have longitudinal movement;" the fifth, for
"the series of sectional twisters, each of which comprises the
central portion carrying the warp-wires and the shifting side
sections which carry the weft-wires."
The first and second claims were rejected, and thereupon erased,
and others substituted, which were likewise rejected (the Nesmith
patent of 1854 being cited), were withdrawn, and the numbers of
original claims 3, 4, and 5 were changed to 1, 2, and 3. The latter
were then rejected on reference to the Smith British printed
publication of 1876, withdrawn, and claim 1 as it now stands
submitted. That publication, which was a provisional specification,
described a two-part twister, and added:
"Or I divide the twisting wheels into three parts, my extra wire
passing through the central division, and the two side segments
travel to and fro to form the twist, leaving the central division
in position with my supplementary wire therein maintained."
The two substituted claims above mentioned as rejected on
reference to Nesmith, and withdrawn, read as follows:
"1. In a wire-fabric machine, a series of rotary twisters geared
directly together for simultaneous rotation, and each having two
sections which are capable of a sliding movement, substantially as
described, for the purpose set forth."
"2. In a wire-fabric machine, the combination of a series of
rotary twisters geared directly together, substantially as
described, for the purpose set forth."
The Nesmith patent described a machine comprising two separate
but simultaneously operating parts, termed in the
Page 189 U. S. 16
patent the "feeder" and the "twister." It was a loom machine, so
called, and adapted to produce the wire netting and wrap it about
suitable rolls. The feeder was a complete device for supporting the
warp wires, and supporting, rotating, and shifting the woof wires,
provided with a take-up roll mounted on the front end of the
"twister." It comprised a rectangular frame, together with
operating mechanism supported thereon. At the front and rear were
five gears in successive engagement, and means were provided for
simultaneously rotating both series.
The specification stated that the border wires of the netting
were placed on reels supported on the frame of the machine, and
these passed through holes drilled in the center of the outside
gears, and also showed that the gears, other than the outermost
ones, were perforated for the passage of wires in case it was
desired to make a narrower fabric. Each of the outside gears was
formed with two opposite radial slots, extending inward from the
margin sufficient to form recesses which received the ends of
spool-carrying frames, each carrying a woof-wire spool, the front
end of each frame being seated in the marginal slot of one of the
gears, and the rear end in the corresponding slot of the
corresponding gear. When all the gears on their spindles or hubs
were so adjusted as to bring the slots into the same horizontal
line, any spool carrier might be transferred from its supporting
gears to the gears next adjacent to those which supported its front
and rear ends. When the spool carriers of the machine were arranged
in pairs on the alternate gears, the rotation of all the gears
rotated each pair of spool carriers about a common axis, and when
the two spool carriers on one pair of gears were shifted in
opposite directions to the two pairs of gears on the opposite sides
of the pair previously forming the support of the spool carriers, a
remating of the spool carriers was effected, and the next rotation
of the gears rotated each newly formed pair of spool carriers about
a common axis coincident with the axis of the supporting gears. As
a means of transferring the spool carriers, the machine was
provided with "shippers," together with means for sliding them
vertically, one of the "shippers" being adapted to transfer
Page 189 U. S. 17
the spool carriers in one direction and the other being adapted
to transfer them in an opposite direction or back to their
position. Each of the shippers consisted in a series of wedges
supported in a suitable frame and having inclined faces adapted to
impinge upon the side faces of the end portion of the
spool-carrying frames, the corresponding faces of the wedges being
oppositely inclined in order to impart to them the reverse
movement.
There were in effect five rotating centers, each gear in the
front series with the corresponding gear in the rear series acting
as a single rotating part or center. The number of spool carriers
was one less than the number of centers in use, the number of
rotating centers being five and the number of spool carriers being
four. In the rotation of the centers, the two outermost centers
would each support a single spool carrier, and the central rotating
center would support two spool carriers. The rotation of the gears
when the spools had the first arrangement would wrap the outer woof
wires about the marginal warp wires and intertwist the other two
warp wires at the center of the machine, and the rotation of the
gears after the spool carriers had been shifted to the second and
fourth rotating centers intertwisted the first and second wires in
front of the second center and the third and fourth wires in front
of the fourth center. The repetition of this operation formed the
fabric.
The circuit court of appeals pointed out that, in the Davisson
patent, the supplemental mechanism of Nesmith was dispensed with,
and that the diamond mesh was made by a shifting of the reels
instead of the wires.
In respect of the differences between Davisson and Kitselman,
the court stated:
"The spindles of the Davisson machine were arranged vertically,
had, with reference to the Davisson machine, a longitudinal
movement, and were alternately forced forward and withdrawn from
the plane of operation by means of a shifting device that was
necessarily bulky and impracticable for field use. The Kitselman
spindles were horizontally placed, had no
Page 189 U. S. 18
longitudinal or lateral movement, and were confined permanently
to the plane of their rotation. In the Davisson machine, as in the
Kitselman, the spindle, with its reels, acts as the twisting agent,
the spindle forming the rotator; but in the Davisson machine, the
spindle, where the warp wire emerges from its hollow center, stands
well back from the reels, thus allowing the warp wire to go
unsupported to the plane of operation, while in the Kitselman
machine, the spindle extends clear forward to the twisting zone, to
which it carries, through its hollow center, the warp wire fully
supported against side pulls. In the Davisson machine, the spool
carriers are transferred to their adjacent spindles by means of an
apparatus previously described as involving a longitudinal and
transverse motion. Kitselman effects the transfer of his spool
carriers by shifting the one to the spindle above the spindle with
which it has just operated, and the other to the spindle below,
this shifting being brought about by a longitudinal motion only,
thus eliminating the necessity of a transverse motion."
"In the Davisson invention, a simple gear is set behind each
spindle, but none of these gears engages another, so that, when the
spool carriers are shifted to adjacent spindles and cross-heads at
each successive twist, they are revolved about a practically new
center. Kitselman provided each twister at its central section with
a spur gear of sufficient diameter to engage the gears of the
adjacent twisters, and by this means imparted a simultaneous motion
to the whole series of twisters. The gear arrangement of the
Davisson machine tends to twist the opposing carriers out of
alignment, subjects the central wire to certain deflection, and
pulls the woof wires somewhat from their intended direction. In the
Kitselman machine, the pull, incident to the twisting operation, is
constantly equalized, the central portions of the twisters
offsetting each other in the plane in which the strain comes."
"These distinctions are, to a certain extent, subsidiary, but
nevertheless important."
In view of what passed in the Patent Office and the state of the
art, we cannot regard the Kitselman patent as a pioneer
Page 189 U. S. 19
patent, but think its claims must be limited in their scope to
the actual combination of essential parts as shown, and cannot be
construed to cover other combinations of elements of different
construction and arrangement.
Passing, then, to the question of infringement, we avail
ourselves of the description of the Kitselman patent by defendants'
expert as sufficiently comprehensive to enable us to indicate our
views on that question. He says:
"The Kitselman machine has a frame made up of three vertical
rigidly connected members forming respectively the front and rear
walls of the frame and an intermediate wall somewhat nearer to the
rear member than to the front. The front and intermediate members
of the frame may each be made of two parallel bars, or may be each
a single bar having a vertical slotted center, and the rear member
may be either open or solid, as may be desired. . . . A series of
rotatable horizontal hollow spindles are mounted in suitable
bearings in the rear and intermediate members of the frame, and are
provided with gears in successive engagement with each other, each
gear being rigidly fastened on its spindle, so that the rotation of
the gear must rotate the spindle. One of the gears of the series is
provided with a bevel gear rigidly fastened to it, and this gear is
in engagement with a beveled opinion mounted on a crank shaft, the
crank shaft in turn being provided with a suitable crank and handle
for its rotation and for the consequent rotation of all the gears
of the series."
"Each of the rotatable spindles is formed with a flat forward
extension in the form of a skeleton frame made up of two transverse
members and two longitudinal members, the whole being formed in a
single piece and being of such length that the transverse members
of each flat extension lie, respectively, one just in rear of the
front member of the frame and the other just in front of the
intermediate member of the frame. These forward extensions, which
are supported by and rotate with the shafts, have their respective
axes coincident with the axes of the hollow shafts, and the two
transverse members of each of the forward extensions are centrally
bored, in line with the bore of the corresponding shaft, so that
warp wires may pass in
Page 189 U. S. 20
horizontal lines through the rotatable shafts and their forward
extensions. The machine is provided with a series of spool
carriers, each of which may carry a woof-wire spool, and each of
these spool carriers is a single-piece casting of the same length
as the forward extension on each of the shafts. Each such casting
consists of a flat longitudinal member adapted to lie side by side
with the flat longitudinal bars of any one of the forward
extensions of the rotatable spindles, and two segmental heads or
ends each adapted to lie with its flat side against the
corresponding transverse member of any one of the forward
extensions of the rotating spindle. The segmental heads of the
spool carrier castings are of such dimensions that, when two of the
castings are placed on opposite sides of any one of the forward
extensions of the rotatable spindles, the two segments and the
intermediate transverse member of the spindle extension between
them form a complete circle at either end of the compound
three-part structure made up of the spindle extension and the two
spool carrier castings. Each of the spool carrier castings is
adapted to receive and support a woof wire, and it is evident that,
if two of the castings, with their spools, be held at any time in
fixed connection with one of the spindle extensions between them,
the rotation of the spindle and its extension must rotate the spool
carrier castings and their spools. The segments at the ends of each
spool carrier casting are similar, but only one of them is
perforated for the passage of the woof wire from the spool, and
this segment is, in use, made the front end of the spool carrier.
It is clear that the rotation of any given spindle and its
extension, with two spool carriers lying on opposite sides of the
extension and in connection therewith, must intertwist the woof
wires from the two spools at a point in front of the front end of
the spindle extension, and it is further evident that, if the
machine is to make the diamond-mesh fabric, means must be provided
for shifting the spool carriers to and fro between the adjacent
spindle extensions or rotating centers which effect the rotation of
the spool carriers."
"For the purpose of holding the spool carrier frames temporarily
in registration or engagement with the rotating spindle
Page 189 U. S. 21
extensions, and for the further purpose of shifting the spool
carriers, in order to remate the woof wires, the machine is
provided with two vertically reciprocating guides or shifters, one
on either side of the vertical plane of the axes of the spindles
and their extensions. Each of these guides is made up of two
rigidly connected vertical bars, one just in rear of the front
member of the frame and the other just in front of the intermediate
member of the frame, each of the bars being provided with a series
of castings, extending inward toward the central plane of the
machine, and each terminating at its inner end in a reentrant
segmental curve adapted to conform to the segmental margin of any
one of the heads of the carrier frames or castings. These castings
lie in the planes of the segmental heads of the carrier frame, and
when the two guides or shifters on opposite sides of the machine
are so adjusted that their castings are directly opposite each
other, the curved edges of any two opposite castings are arcs of a
common circle, and will practically enclose and hold in working
relation, as a complete circle, the two segmental carrier frame
heads lying between them, together with their interposed transverse
member of the spindle extension. The consequence is that the
carrier frames may be arranged in pairs on the alternate spindle
extensions of the machine, and held in place by the curved edges of
the castings on the guides or shifters, the two curved edges of any
opposite pair of such castings forming a circular guide adapted to
hold the three parts of the corresponding circle of the twister in
proper relation to each other while they are rotated, and when the
parts are thus arranged, the rotation of the spindle must evidently
effect the rotation of the three-part twisters with their spools,
and thereby intertwist the wires from the two spools carried by
each spindle extension. Furthermore, the guides on the two opposite
sides of the machine are connected by a walking-beam at the upper
end of the frame, so that, as one of them moves upward, the other
must move downward to an equal extent, and a lever is provided for
effecting this opposite reciprocation of the two guides or
shifters. Before each such movement of the guides or shifters, the
twisters are all rotated into such positions that their flat
central members
Page 189 U. S. 22
(the forward extensions of the spindles) are in the central
vertical plane of the machine, the plane faces of the spool carrier
castings being likewise, of course, in vertical planes. When the
parts are in this relation, the opposite vertical movement of the
two guides or shifters must evidently carry the spool carriers at
one side of the center of the machine downward, and those at the
opposite side upward, and the shifters are given sufficient
movement to transfer each spool carrier from one spindle to the one
next above or below it. It will be understood that, in the use of
this machine, as in that of any of the others under consideration,
only the alternate spindles are provided with spools during any
given rotation of the parts, the intermediate spindles being empty.
By means of the operation of the guides or shifters just described,
the spool carriers, in the intervals between the periods of
rotation, are transferred each time from the full spindles to the
empty ones, and this transfer, as in all other machines, remates
the wires and effects the formation of the diamond mesh."
Defendants' machine as described in the Whitney patent of
December 24, 1895, consisted of a vertical upright bar or support;
a series of horizontal tubes set rigidly therein; a series of
intermeshing gears mounted and rotating on the tubes and provided
with two projecting studs at the opposite sides of their centers; a
set of plates loosely journaled on the tubes and connected to and
rotating with the intermeshing gears and provided with two
projecting spring pins at opposite sides of their centers, a small
distance from the forward projecting studs on the gears; a set of
spool carriers, each mounted on a plate having inclined notches at
the diagonal corners on one side, and inclined grooves at the
opposite diagonal corners on the other side, so that, when one side
of the plate is inserted between a gear and its plate, one of the
studs may pass along a groove on one side, and a spring pin or stud
pass into and catch against the notch on the opposite side, and
thus retain and support the spool carrier as long as the parts are
rotated in the same direction, spools for the woof wires mounted in
the spool carriers, and means for imparting rotation to the
intermeshing gears. To transfer the spool carriers, the parts are
rotated until the
Page 189 U. S. 23
carriers are between the stationary spindles when the direction
of rotation is reversed. This causes a pin and stud on the adjacent
gear to enter the empty or unoccupied groove in the carrier plate
and to lift it out of connection with the gear plate with which it
had been rotating and to carry it around in its new relation as
long as rotation is continued in that direction. To shift it again
to bring it into relation with another gear and plate, the
direction of rotation is again reversed.
Considering the complainants and Whitney as alike having
improved on the prior art, the question is whether the specific
improvements of the one actionably invaded the domain of the other.
The presumption from the grant of the letters patent is that there
was a substantial difference between the inventions.
The circuit court found these differences between the two
machines: that, in the Kitselman machine, the spool carriers were
shifted from one section to another by sliding them in a straight
path; that all the spool carriers at one side of the spindles were
attached together and moved from one section to another by means of
a common bar; that the spindles were fastened to the pinions and
rotated with them; that the spool carriers were shifted from one
section to another by a hand lever provided for that purpose; that
the spool carriers were required to be supported at both ends; that
the spool carriers could readily be taken out, turned end for end,
and reinstated in place again; that the hollow spindle could not be
made stationary without destroying the capacity to operate; that
the segmental ends of the side sections of the twisters made, with
the lateral end pieces of the central sections, wheels at both ends
of the twisters, resting in supports, permitting their rotation,
and that the spool carriers could not be transferred except when
the parts had been brought to a position of rest and the pinions
were stationary.
That, on the other hand, in defendants' machine, the spool
carriers rotated through a curvilinear path; that the spool
carriers were each separate from, and moved independently of, the
others; that the spindles were fastened to the frame and had the
pinions loosely mounted on them, and not rotating with the
spindles; that the spool carriers were shifted without any
Page 189 U. S. 24
lever by reversing the direction of the rotation of the crank;
that they were only required to be supported at one end, and could
not be taken out, turned end for end, and reinserted; that the
spool carriers could be made rotative, instead of stationary; that
the ends of the central spindles and the spool carriers formed no
wheels, and were received in no bearings, and that the spool
carriers could only be transferred when they were rotated. Finally,
that the spool carriers in the two machines were so different and
mounted and operated in such different ways that they could not be
interchanged or transferred from one to the other without
reorganization.
We perceive no reason to decline acceptance of these findings of
the circuit court, and agree with that court in the conclusion that
the machines lack that identity of means and identity of operation
which must be combined with identity of result to constitute
infringement.
As we have before stated, the circuit court of appeals concurred
with the circuit court that, unless the patents sued on embodied a
pioneer invention, the defendants' machine was so differentiated
from either of the others that the charge of infringement could not
be maintained. The circuit court held all complainants' patents to
be only improvements on the prior art and dismissed the bill on the
ground of noninfringement.
The circuit court of appeals held that the Kitselman patent was
entitled to be treated as embodying primary invention, and to such
liberal construction as brought defendants' machine within it. The
decree of the circuit court was therefore reversed because, in the
opinion of the circuit court of appeals, certain claims of the
Kitselman patent were infringed.
For the reasons given in treating of the Kitselman patent, we
think that none of complainants' patents embodied primary
invention, and we concur with both the courts below that, this
being so, the differences in means and operation between
defendants' machine and the others were such that there was no
infringement.
It does not seem necessary for us to enumerate these differences
in respect of the other three patents. This was well done in the
circuit court, and the circuit court of appeals accepted
Page 189 U. S. 25
the view of that court as to the absence of infringement if
primary invention did not exist. We are content with that
conclusion.
Decree of the circuit court of appeals reversed; decree of
the circuit court affirmed, and mandate to that court
accordingly.