The Court notices the earlier form of scaffolding used in the
construction of buildings. P. 254 U. S.
The fact that certain advantages over the prior art asserted for
the patented device here in question were not asserted in the
patent itself held
not to deprive the patent of their
benefit in determining whether the device was an invention. P.
254 U. S.
Patent No. 959,008, Claims 1 and 3, to Elias H. Henderson, for
improvement in scaffold-supporting means, does not involve any
invention over the prior art as displayed in the earlier patent to
William J. Murray, but merely mechanical change, easy to discern
and to make and incidental to the main idea of the Murray patent.
Pp. 254 U. S.
243 F. 577 affirmed.
The case is stated in the opinion.
MR. JUSTICE McKENNA delivered the opinion of the Court.
Suit for infringement by the Construction Company of a patent
dated May 10, 1910, and numbered 959,008, for new and useful
improvements in "scaffold supporting
Page 254 U. S. 25
means," granted to Elias H. Henderson. Petitioner is assignee of
An injunction was prayed, accounting of profits, and
The patent is in the usual form, but a special manner of use of
the invention is alleged. It is alleged that, since the acquisition
of the patent, petitioner has been largely engaged in different
cities of the United States in putting the invention into practice,
and the manner thereof has been to construct and lease for use to
builders and others at a specified royalty or price per week, the
scaffolds embodying the invention, petitioner retaining the
ownership of and title to the scaffolds, they being returned to
petitioner upon the completion by the lessees of the work for which
the scaffolds had been required.
The answer of the Construction Company directly put in issue
certain of the allegations of the petition. It admitted, however,
the use of scaffolds which it purchased from the Eclipse
Scaffolding Company of Omaha, Nebraska, but alleged that such
scaffolds did not contain or embody the invention protected by
patent No. 959,008 in any way or manner.
It is also alleged that petitioner, sometime prior to February
21, 1914, brought suit in equity in the United States District
Court for the District of Nebraska against one Egbert Whitney,
predecessor in title of the Eclipse Scaffolding Company, to the
scaffolds sold by the latter company to the Construction Company,
in which suit infringement of patent No. 959,008 was alleged.
In that suit, a patent of one William J. Murray was pleaded, but
the Scaffolding Company withdrew its case as to that patent, and
relied on Claims 1 and 3 of the patent to Henderson, and the court
decreed that the claims were void for want of invention, and it is
alleged that the Construction Company "is entitled to the
protection of said decree."
Page 254 U. S. 26
On the issues thus made by bill and answer, proofs were taken,
and the court decreed against the patent, saying in its opinion
"the Henderson patent has not supplanted others, nor has the
influence of its owner been exerted to that end. It barely
represents a step in the art. It does not disclose invention."
"In View of the conclusion reached by this Court that Claims 1
and 3 of the patent in suit are invalid, it is unnecessary to do
more than touch upon the matter of infringement. The evidence of
infringement is meager, and yet, if the claims of patent in suit
were to be held valid, with a range of equivalents, infringement
would be found."
243 F. 577. The decree was affirmed by the circuit court of
appeals. 243 F. 577.
The Construction Company pleaded in defense, as we have said,
the decree of the District Court of Nebraska in the suit of
petitioner against Egbert Whitney, but that decree was reversed by
the circuit court of appeals. 224 F. 452. The reversal and the
opinion of the circuit court of appeals thereon are much relied on
in this suit, and, we may say, constituted the inducement to issue
certiorari. It is seemingly antithetical to the opinion and
judgment under review, and the Circuit Court of Appeals for the
Third Circuit felt and expressed the embarrassment of "disturbing
the force of a decision of a court of coordinate jurisdiction,"
"formed upon precisely the same issue and upon substantially the
same facts." The court, however, felt constrained to an "opposite
judgment," and decided that Henderson made but "formal changes" in
the prior art which involved no invention, and affirmed the decree
of the district court.
Necessarily, for an estimate of Henderson's patent, we must
consider the prior art. It is detailed by witnesses, explained by
counsel, and illustrated. Specific descriptions are not necessary.
We may refer to our own observation of the first forms of
scaffolding. To quote
Page 254 U. S. 27
District Judge Orr: "Originally, scaffolding was made to rest
upon the ground and was increased in height as the building of the
structure demanded." The first forms of scaffolding which
constituted the prior art are described by a witness as "the
thrust-out scaffold, the pull scaffold, the timber scaffold; that
they were built right up to the front of the building." In 1900, he
"a new device came on the market, or a new structure, and in
place of building up from the ground, they hung a rigid iron frame
from the upper stories of the building; that could be used on three
or four stories sometimes. It was heavy, inconvenient to handle,
and did not meet with very great success, although it did seem an
improvement over the old poles. Then there came another form of
scaffolding, which was a suspended wire platform scaffold,
suspending the wires from the top of the building. . . . Then there
came the Cavanagh overhead scaffolding machine. . . . That machine
became fairly well used after being introduced, and was apparently
a great improvement over any other. Then Murray came in the market
with his platform machine -- a machine operated from the platform,
the fastening of the wire that supported the platform being from
above, the wire being secured to the outriggers from the upper part
of the building. Then the Henderson machine, supported by cables
from the upper part of the building, and similar in a great many
respects, except that the machines were placed in the opposite
position, enabling you to make a scaffold any width, which would
seem to be the latest."
The Murray patent therefore is the step in the prior art
preceding that made by Henderson, and a comparison of the latter's
patent with it, the Murray patent, is immediately indicated.
Murray describes his invention to be of "new and useful
improvements in adjustable scaffolds." The object of it, he said,
was to provide such a scaffold as would
Page 254 U. S. 28
"permit of adjustment at any height during the construction of a
building or the repair thereof." And he claimed:
"The combination, with two bars having means for detachably
securing them to a building, of a platform, frames on said platform
carrying means operable from the platform, and having connections
adapted to be connected to one of said bars for raising the
platform, and supporting means on said frames extending above the
said bar, when the platform has been fully raised and adapted to
detachably engage said bar and rigidly support the platform
therefrom, whereby the platform may be connected to one bar by the
raising means and raised to a level to engage the supporting means
with said bar, and may then remain supported by said bar, while the
other bar is placed at a higher level and the raising means secured
to the latter, the bars thus becoming alternately points of raising
support and of rigid support for the platforms."
The following is the illustrative diagram of the claim:
Henderson describes his invention as "certain new and improved
scaffold supporting means," and further says it relates "to an
improved means for supporting scaffolds used in connection with the
construction of buildings and their repair." In other words, the
patent is, as the Murray patent is, for improvement of scaffold
supporting means. And the details given by Murray, or necessarily
implied by him, and the inevitable adjuncts "of crossbeam and floor
piece" are made elements in the combinations claimed in three
claims. There is a change from the Murray hoisting device, and it
is described to consist "of a continuous U-shaped metal bar
extending around the under side of and upward from the associated
beam. . . ." The continuity of metal is the novel element asserted.
Counsel emphasize it not so much for itself as for what it permits.
It permits, according to counsel, a
"hinged or loose jointed connection between the putlog [called
in the claims 'crossbeams'] and the
Page 254 U. S. 29
frames that support the putlog and the hoisting mechanism,"
and counsel say that this is a "separate and distinct entity
from the elements of the Murray patent, differing in structure,
function, and result produced." And of this it is insisted there
was no suggestion in the Murray patent. it containing but a single
claim and a single idea, "the idea of supporting the scaffold to
outriggers by means of auxiliary bars or rods," so that the
platform or scaffold by the lengthening of the cables can be raised
to a greater height than before. In other words, the assertion is
that Murray invented nothing and saw nothing in his device but
means of raising the scaffold, and, to use counsel's word, all
other "functions" were
Page 254 U. S. 30
beyond his vision. Or again, and to bring out clearly counsel's
"Henderson did not do what Murray did. Murray provided means for
supporting a platform temporarily on one set of outriggers while
the cables were being adjusted to a higher set of outriggers. That
is all Murray did, and that was embodied in the one claim of the
patent, and that is what Henderson did not do. Murray, on the other
hand, never suggested the idea of making a hinge or flexible
connection between the putlogs and their supporting frames."
The utility of this construction is the final assertion, and
that the continuity of metal of the stirrup adds strength, and the
loose jointed connection of the putlogs with it gives "flexibility
longitudinally and transversely of the platform" and
"enables the operator to raise the scaffold machines one at a
time, allowing the putlogs to tip or hinge over the support of the
U-frame, leaving the machine to stand erect at all times."
The advantage of this is emphasized in various ways, and the
construction, it is insisted, quoting the patent "secures the
greatest possible amount of security."
Claims 1 and 3 are inserted in the margin. *
The following is
an illustration of them taken from brief of counsel:
It is further contended that the arrangement of the hoisting
device parallel to a building, instead of at right angles
Page 254 U. S. 31
to it, as in the Murray patent, gives more room to the working
masons and mechanics, and therefore contributes to their security.
This advantage was asserted in the patent; the others were not, nor
displayed or counted on. They, however, may be conceded. The fact
of nondisplay in the patent, while it does not militate against his
claims for the advantages, causes surprise, at least, considering
the emphasis that is now put upon them, and the assertion that they
distinguish and make superior his mechanisms to all that preceded
them. However, we may concede to counsel, for the sake of the
argument, all of the uses and excellencies of the patent, even
though not discerned by Henderson; but his pretensions, whether at
first hand or second, his or those of his counsel, must be
subjected to the test and estimate of the prior art, and, so
subjecting them, we can discern no exercise of invention. The
changes were simply mechanical, easy to discern and as easy to
make, incidental entirely to the main idea of Murray, which was as
was declared by him to provide a scaffold that would "permit of
adjustment at any height during the construction of a building or
the repairing thereof" -- a scaffold which might "be readily moved
Page 254 U. S. 32
position to another by the workmen thereon without interfering
materially with the work being performed," and one "in which
different supports are employed," and "in which the shifting from
one set of supports to another set" might "be accomplished without
interfering in any degree with the workmen thereon, or their work."
A glance at the diagram which we have given will show that he
accomplished his purpose and the way he accomplished it; a glance
at the diagram we have given of the Henderson device will show that
it is a substantial imitation of Murray's scaffold, the variations
being only mechanical. The chief difficulty we have found in the
case is the plausibility of the arguments of counsel, and that it
secured the assent of the Circuit Court of Appeals for the Eighth
Circuit and other courts, and strength from such assent.
"1. A scaffold consisting in the combination of crossbeams,
floor pieces extending between such beams, and a hoisting device
associated with each end of each beam, each hoisting device
consisting of a continuous U-shaped metal bar extending around the
under side of and upward from the associated beam, and a hoisting
drum rotatably supported by the side members of such bar."
"* * * *"
"3. A scaffold consisting of a plurality of U-shaped bars
arranged in pairs, a crossbeam laid in and extending between each
pair of such U-shaped bars, a floor laid upon said crossbeam, a
drum rotatably supported between the upwardly extending side
members of each of said U-shaped bars, and means of controlling the
rotation of said drum."