Petition for Writ of Certiorari — New York Scaffolding Co. v. Chain Belt Co.

TS EARS I og caer ae me eeeed

Petition for Writ of Certiorari ......... 2

Brief in Support of Same ...............

IN THE

Supreme Court of the Gnited

States.

5

New York Scarrotpinc CoMPany,

Petitioner and Plaintiff below,

Vs.

>

Cuarn Bett Company and Eopert |

WHITNEY,

Respondents and Defendants below.

—=_é

Parkinson & Lane, Esqs.,

Marquette Building,

Chicago, Ill.

Sirs:

You WILL PLEASE TAKE Notice, that on Tuesday,

October 2, 1917, at the opening of the court on

that day, we shall present to the Supreme Court

of the United States, in its court room, at the

Capitol Building, in the City of Washington,

D. C., the annexed petition for writ of certiorari

and brief accompanying the same, copy of which

petition and brief is herewith served on you.

Yours, etc.,

C. P. Gorpe,

Frank Case Somes,

Counsel for Petitioner.

The foregoing notice is hereby accepted and

delivery of a copy thereof and of a petition for

writ of certiorari and brief accompanying the

same is hereby acknowledged, this

day of , 1917.

Counsel for Respondent.

_7~7~—VW*7"—

3

IN THE SUPREME COURT OF THE

UNITED STATES,

Octoser TERM.

New York Scarrotpinc CoMPaNy,

Plaintiff-Petitioner,

vs. ‘

Cuan Bett Company and Eopert

WHITNEY,

Defendants-Respondents.

Z

Petition for Writ of Certiorari to the U. 8. Court

of Appeals for the Seventh Circuit.

To the Honorable, the Chief Justices and Asso-

ciate Justices of the Supreme Court of the

United States:

Your petitioner, New York Scaffolding Com-

pany, a corporation organized and existing under

the laws of the State of New York, respectfully

represents :

Fist: That in the case at bar, the plaintiff

brought suit on U. S. Letters Patent No. 959,008,

to E. H. Henderson, in the District Court for the

Eastern District of Wisconsin, against the Chain

Belt Company, for infringement of said Letters

Patent by the defendants for making scaffolding

machines known as ‘‘ Whitney Scaffold Hoist Ma-

chines” and ‘‘Little Wonder’’ machines. Before

the trial of the cause, the real and instigating de-

fendant, Egbert Whitney, intervened (U. S. Su-

4

preme Court, Rule No. 3), and after trial in open

court, His Honor Judge Geiger (opinion, Tr., p.

310), held the patent valid and infringed by both

of these machines when used in the Henderson

combination. Appeal was taken by the defend-

ants to the Court of Appeals for the Seventh Cir-

cuit, and this Court of Appeals thereupon held

the patent valid, and infringed by the ‘‘ Whitney

Scaffold Hoists’? machine, and not infringed by

the ‘‘ Little Wonder’’ machine. In arriving at this

conclusion, the Court of Appeals for the Seventh

Cireuit had before it the opinion of the Circuit

Court of Appeals for the Eighth Circuit on the

‘Whitney Scaffold Hoist’’ machine, holding the

patent valid and infringed by the ‘‘ Whitney Seaf-

fold Hoist’’ machine, reported in 224 Fed., 452

(petition by defendant for writ of certiorari de-

nied in 239 U. S., 640), and its later opinion as

yet unreported holding the patent valid but not

infringed by the ‘‘ Little Wonder’’ machine (this

later opinion is found in the transcript of record

forming the basis of a petition for a writ of cer-

tiorari to the Court of Appeals for the Eighth

Cirenit in the case of New York Scaffolding Co.

v. Egt rt Whitney), as also the opinion of the

Circuit Court of Appeals for the Third Circuit

(opinion as yet unreported, but forming part of

the transcript of record forming the basis for the

petition for a writ of certiorari to the Court of

Appeals for the Third Circuit, in the case of

New York Scaffolding Co. v. Liebel-Binney Con-

struction Co. and Egbert Whitney).

Seconp: That the Cireuit Court of Appeals for

the Seventh Circuit failed to apply the doctrine

of equivalents when considering the ‘‘Little

5

Wonder’’ machines, since had it not overlooked

to do so, it would have been lead to the conclu-

sion that the hoisting mechanism of the ‘Little

Wonder’? machine and the hoisting mechanism

of the Henderson machine are equivalents. The

Henderson patent in suit, held to be valid by the

Honorable Court of Appeals for the Seventh Cir-

suit, expressly says:

“While I have shown my invention in the

particular embodiment herein described, I do not,

however, limit myself to this construction, but

desire to claim any equivalent that will suggest

itself to those skilled in the art.”

The Honorable Court, therefore, went counter

to the settled law of this court as expressed in

one of its latest cases:

“We have seen DeBange describe what he con-

ceived to be the best form of his invention, and

contemplated that it could be represented in other

forms and proportions. This, however, was un-

necessary, for the law would secure him against

imitation by other forms and proportions.” (U.

S. v. Societe Anonyme, 224 U. S., 309, 328, 56

L. Ed., 778, 787, 32 Sup. Ct., 479, 487.)

Tuirp: The Henderson claims being combina-

tion claims, and, therefore, if valid, are entitled

to a fair scope of equivalents of each of the co-

operating elements constituting the life of the co-

operative law underlying the combination, and

especially that element which is least important

in novelty is entitled to the greatest range of

equivalents. This presents on this statement a

novel question of patent law not as yet passed on

by this Honorable Court.

Fourtu: That the Court of Appeals for the

Seventh Circuit held that certain prior use

evidence was sufficiently proven (though the

trial court who heard and saw the witnesses who

testified on memory only, without the production

of an actual and old machine, held it to be in-

sufficient), and thus overlooked the requirements

as to proof as stated in The Barbed Wire Pat-

ent, 143 U. S., 275, 283; 36 L. Ed., 154, 158; 12

S. C., 443, 446.

Firra: That the Court of Appeals for the

Seventh Cireuit followed the decision of the

Court of Appeals for the Eighth Circuit, filed

April 2nd, 1917, which passed on the ** Little

Wonder’? machine, which opinion is based on

the error of fact pointed out in the petition

and brief for a writ of certiorari to the Court

of Appeals for the Eighth Circuit.

Sixtu: That in the face of the decision of

this Court of Appeals for the Seventh Circuit,

holding the patent in suit valid and infringed

by the ‘‘Whitney Scaffold Hoist’’ machine, and

in the face of the two decisions of the Court of

Appeals for the Eighth Circuit (one reported in

994 Fed., 452, 140 C. C. A., 138, and the other

as yet unreported, but found in the transcript

of record of the case of N. Y. Scaffolding Co. ».

Whitney, submitted in this court on a petition

for a writ of certiorari) holding the Hender

son patent valid, the Court of Appeals for the

Third Cireuit declared the Henderson patent

invalid. That in each of these litigations, the

same Egbert Whitney was a co-defendant, and in

ee

7

view of these conflicting decisions, decrees will

result having contrary effects.

If the decree in favor of Egbert Whitney in

the Third Circuit controls, and is effectual

‘“‘everywhere’’ (Kessler v. Eldred, 206 U. S.,

285, 51 L. Ed., 1065, 27 Sup. Ct., 611) the de-

crees against this same defendant, Egbert Whit-

ney, of the Seventh and Eighth Circuits will

have no force and effect against him. If, on

the other hand, the decrees of the Seventh and

Eighth Cireuits, or either ot them, control, they

will do violence to this decree of the Third

Cireuit, unless made barren by exempting claims,

as in Cor’ Midated Rubber Tire Co. v. Diamond

Rubber ~-<, 162 Fed. 892, 89 C. C. A, 582,

affirmed in Diamond Co. v. Consolidated Co.,

290 U. S., 428, 55 L. Ed., 527, 31 S. C., 444,

in which event great confusion will also re-

sult.

But in the case at bar the defendant Egbert

Whitney is one and the same defendant in these

three litigations, so he could not be restrained

and excluded in the same decree. In the Rub-

ber Company case, Rubber Tire Wheel Co. v.

Milwaukee Co., 154 Fed., 358, 363, 83 C. C. A,

336, 341, Judge Baker said:

“The case in the Court of Appeals for the

Sixth Cirenit was not a proceeding in rem. The

defendant in that particular sutt has a decree on

which, if he were again sued for infringement

- of the Grant patent, he could have a plea of res

adjudicata. That plea would be as good in the

other circuits as in the Sixth. No other member

of the public could plead that decree in any cir-

cuit. The right conclusion of law from the facts

found is that, so far as the parties to the con-

8

tract in suit are concerned, the patent is valid

throughout the United States, and is enforce

able against everyone who is not able to shield

himself behind an erroneous decree. If any in-

ference of fact (or prophecy) was to be drawn

from the facts found, it should have been that

the Court of Appeals for the Sixth Circuit will

not exempt other members of the public from

the monopoly of the Grant patent.”

If Judge Baker’s ruling in this Rubber Com-

pany case is correct, then the decrees of the

Seventh and Eighth Circuits have no force and

effect against Egbert Whitney in the Third Cir-

cuit.

In Kessler v. Eldred, 206 U. S., 285, 51 L. Ed,

1065, 27 S. C., 611, this Honorable Court said:

“It may be that the judgment in Eldred ».

Kessler will not afford Breitwieser, a customer of

Kessler, a defense to Eldred’s suit against him.

Upon that question we express no opinion.

Neither it nor the case in which it is raised are

before us.”

But this court, as is seen, did not pass on this

point.

In the later case of Diamond Rubber Co. v. Con-

solidated Rubber Tire Co., 220 U. S., 428, 445, 55

L. Ed., 527, 536, 31 S. C., 444, 451, this Honorable

Court said:

“The final contention of the rubber company

is that, the Grant patent having been declared in-

valid by the Cireuit Court of Appeals of the

Sixth Cireuit and by the Circuit Court for the

District of Indiana in the Seventh Circuit, the

rubber company should not have been enjoined

from the handling or sale of tires manufactured

9

in the sixth and seventh circuits, and cites Kess-

ler v. Eldred, 206 U. S., 285, 51 L. Ed., 1065,

27 Sup. Ct. Rep., 611.”

But this Honorable Court did not decide this

point.

In the case at bar, this point is squarely before

this Honorable Court. Egbert Whitney is held

by the Cireuit Courts of Appeals for the Seventh

and Eighth Circuits, an infringer by his ‘‘ Whit-

ney Scaffold Hoist’? machine. By this, this

judgment is good ‘‘everywhere and always,”’ but

Whitney, the same defendant, will claim that the

Third Cireuit excludes him. The question is: Do

the Seventh and Eighth Circuits control, or does

the Third Circuit control this defendant, Egbert

Whitney, the same defendant in all three litiga-

tions?

We respectfully urge that the case at bar pre-

sents directly the issue undecided by this Honor-

able Court in either the Kessler v. Eldred or the

Grant Tire cases, and, as the case at bar presents

novel points of patent law, it should induce this

court to allow this petition.

Seventu: The subject matter of this litigation

is of great importance to the building trade, and

the entire industry is interested in the definite and

final decision of this litigation over the Hender-

son patent in issue.

WHEREFORE, your petitioner respectfully prays:

That a writ of certiorari may be issued out of and

under the seal of this Seventh Cireuit, command-

ing the said court to certify and send to this court,

on a certain day to be therein designated, a full

and complete transcript of the record of all pro-

10

ceedings of the said Court of Appeals in the same

ease therein, entitled, New York Scaffolding Com-

pany v. Liebel-Binney Construction Company and

Egbert Whitney, and decided August 10, 1917, to

the end that the said case may be reviewed and

determined by this court, and that your petitioner

may have such other or further relief as to this

Honorable Court may seem proper and appro-

priate.

New York Scarrotpine Company,

Petitioner.

By C. P. Goepet,

F. C. Somes.

I hereby certify that I am solicitor and of coun-

sel for the petitioner herein, New York Scaffold-

ing Company; that in accordance with the request

of said petitioner, the foregoing petition has been

prepared; that the allegations contained in said

petition are true, to the best of my knowledge and

belief; and that said petition is, in my opinion,

well founded in law, as well as in fact.

C. P. Gorpet,

F. C. Somgs,

Counsel for Petitioner.

————

11

IN THE SUPREME COURT OF THE

UNITED STATES,

Octroser TERM.

New York ScaAFFOLDING Se

Plaintiff-Petitioner,

‘

Cuaws Bett Compayy and EGBERT

WHITNEY,

Defendants-Respondents.

4

Brief in Favor of Granting the Petition for Writ

of Certiorari to the U. S. Court of Appeals

for the Seventh Circuit.

To the Honorable Chief Justice, and Associate

Justices of the Supreme Court of the United

States:

First: The Court of Appeals for the Seventh

Circuit held the patent in suit valid.

The claims in suit read as follows:

“1, A scaffold consisting in the combination

of cross beams, floor pieces extending between

such beams, and a hoisting device associated with

each end of each beam, each hoisting device con-

sisting of a continuous U-shaped metal bar ex-

tending 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 seaffold consisting of a plurality of U-

ry

12

shaped bars arranged in pairs, a cross beam laid

in and extending between each pair of such U-

shaped bars, a floor laid upon said cross beam,

a drum rotatably supported between the upwardly

extending side members of each of said U-shaped

bars, and means for controlling the rotation of

said drum.”

They comprise a combination, consisting of

pairs of U-shaped frames, having hoisting mech-

anism, with putlogs or cross beams laid in or

associated with the U-shaped frames, and with

platform planks on the cross beams or putlogs.

p-CABLE CABLE—

BVILDING

The ‘‘entirety’’ or ‘‘combination”’’ consists in

the pairs of U-shaped frames with hoisting

mechanisms, cross beams or putlogs, and _ plat-

13

form planks, whereby a mason’s platform is

formed.

Bowyer’s patent (Tr. p. 332) and Sladek’s

patent (Tr., p. 336) showed a painter’s stage,

not a mason’s scaffold, having U-shaped frames

with platform planks supported thereby, but only

showed, as is the case with painter’s scaffolds,

one pair of frames. These old frames had hoist-

ing mechanism.

The Murray patent No. 854,959 (Tr., p. 384)

is the only platform mason’s scaffold among the

prior art, but this was practically junk. (Tr., p.

191.) It had inverted U frames with their lower-

most free ends secured to cross beams °*r putlogs,

on which platform planks were placed, and which

frames had hoisting mechanism.

cl

a )

14

This is the only pertinent prior art patent,

which attempted to solve the problem of plat-

form machine scaffolding.

Henderson took the inverted U frame of Mur-

ray, turned it upside down,

INVERTED U FRAME

(en

— |

:

1!

IMT

thi

U SHAPED FRAME

MURRAY HENDERSON

and then in one of his embodiments, turned it

at right angles to this position

as -— tH -——,

oe own = 4} yt J

and then placed into the U-shaped frame, now

acting as a ‘‘stirrup,’’ the cross beams or put-

logs, and placed the

16

platform planks on the putlogs.

By the loose connections between the pairs of

U-shaped frame stirrups and the putlogs, Hen-

derson produced a new combination. As said

by the Court of Appeals for the Eighth Circuit,

in 224 Fed., 452, at 458, 140 C. C. A., 138, 144:

“The combinations of Henderson’s first and

third claims were new. No one had made them

before he disclosed them. They were not de

scribed or suggested in the prior art.”

And at page 461, C. C. A., 147:

“The combinations of Henderson are unique in

this: That the principle of his invention is em

bodied in the hoisting devices and their frames

and their appropriate location in the combine

tions to such an extent that any contractor or

17

other person provided with them and taught their

proper location, can readily supply the cross-

pieces and floor pieces and make and use the

patented combinations.”

That a combination is always an entirety

(Schumacher v. Cornell, 96 U. S., 549, 24 L. Ed.,

676), and being such an entirety of a single combi-

nation of old elements is incapable of division or

separate use (Bates v. Coe, 98 U. S., 31, 25 L. Ed.,

68), it imposes as strict a rule on the plaintiff

as on defendant. On the defendant, because such

an entirety cannot be anticipated, except by the

antiquity of the entirety (Parks v. Booth, 102

U. S., 96, 26 L. Ed., 54), and on the plaintiff, in

that he cannot embrace a later structure, unless

that structure embraces the entirety (Paper Bag

Patent Case, 210 U. S., 405, 415, 52 L. Ed., 1122,

1126, 28 S. C., 748, 749). But just when defend-

ant’s device is embraced by the entirety, depends

very often upon the doctrine of equivalents as

applied to any or all of the separate members of

the combination, and it is here wherein the Court

of Appeals for the Seventh Circuit did not apply

any equivalents. The invention, of course, must

be described in the patent, and the mode of

putting it to practical use, but the claims measure

the invention. But in a combination claim, the

principle of the invention is a unit, and invariably

the modes of its embodiment in a concrete inven-

tion may be numerous, and in appearance very

different from each other (Robinson on Patents,

See. 485); the matter of equivalency is de-

termined not by the difference in appearance, but

by the identity of formation.

The ‘‘Little Wonder’’ machine has a rectangu-

WALL OF

BUILDING

18

lar frame, the lower part of which is U-shaped,

and this U-shaped part supports the cross-beams

or putlogs. On the cross-beams or putlogs, the

platform planks are placed. The frame also sup-

ports hoisting mechanism.

Combination patents would generally be value-

less 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 the particular

art. (Thrall v. Poole, 89 Fed., 718, 721.)

One thing to be an equivalent for another, must

perform the same functions, as that other. (Ma-

chine Co. v. Murphy, 97 U. S., 120, 125, 24 L. Ed,

935, 936; Rowell v. Lindsay, 113 U. S., 97, 103, 28

L. Ed., 906, 908, 5 S. C., 507, 511; Roller Mill pat-

ent, 156 U. S., 261, 271, 39 L. Ed., 417, 421, 15

19

S. C., 333, 337.) One thing may be an equivalent

of another, though it does more than that other

(Bliss v. Haight, 3 Fisher, 621, 626).

Serews and wedges are equally inclined planes,

while a lever is an entirely different elemental

power. But screws and levers can practically be

substituted for each other in a larger number of

machines than serews and wedges can be simi-

larly substituted. When a lever and screw can

be interchanged and still perform the same fune-

tions with a result that is beneficially the same,

they are said to perform the same function in sub-

stantially the same way. (Turrell v. Spaeth, 3

Banning & Arden, 458.) Springs and weights are

generally equivalents. (Imhaeuser v. Buerk, 101

U. S.. 647, 656, 25 L. Ed., 945.) While in most

eases a mere handle is not an equivalent of a lever,

it is such an equivalent when its connections are

such that it performs the same function in sub-

stantially the same way. (Corn Planter Patent,

90 U. S., 23 Wall, 181, 235, 23 L. Ed., 161, 174.)

And in Blake v. Robertson, 94 U. S., 728, 732, 24

L. Ed., 245, 246, this court held a defined column

of water in a cylinder, worked by a pump and

working a piston, to be an equivalent of a com-

bination of vibrating arm, toggle joint, and other

mechanical devices, when used to transmit vibra-

tory power.

Tested by these authorities, the hoisting

clutches of the ‘‘Little Wonder’’ machine, per-

forming the same function as the drum, namely,

to raise or lower the U-shaped frames, and ar-

ranged in the same environment, are the equiva-

lent of the drum of Henderson.

The hoisting mechanism of the ‘‘Little

Wonder”? might be interchanged with the drum

of Henderson.

20

LITTLE WONDER

HENDERSON

5) LITTLE WONDER

HOISTING DEVICE

LITTLE WONDER

U FRAME

JTTLE WONDER

HOISTING— |

HENDERSON

HOISTING

DEVICE

LITTLE WONDER

U FRAME

21

And this test was applied in Miller v. Eagle

Co., 151 U. S., 186, 208, 38 L. Ed., 121, 131, 14 8.

C., 310, 319, and infringement found.

Whether the defendant’s device must have been

known at the time of the invention of the ma-

chine which contains the latter, has not been

passed upon by this court, though cases of this

court seem to infer it. (O’Reilly v. Morse, 15

Howard, 62, 123, 14 L. Ed., 601, 628; Burr

v. Duryee, 68 U. S., 1 Wall, 531, 573, 17 1.

Ed., 650, 658; Mason v. Graham, 90 U. S., 23

Wall, 261, 275, 23 L. Ed., 86, 88; Cochrane v.

Deener, 94 U. S., 780, 24 L. Ed., 139; Union

Paper Bag Machine Co. v. Murphy, 97 U. S.,

120, 125, 24 L. Ed., 935, 936; Clough v. Mfg., 106

U. S., 178, 27 L. Ed., 138, 1 S. C., 198; Cantrell

v. Wallick, 117 U. S., 689, 695, 29 L. Ed., 1017,

1019, 6 S. C., 970, 973; Sickles v. Borden, 3

Blatehf., 535; Cahoon v. Ring, 1 Cliff., 592, 620;

Roberts v. Harnden, 2 Cliff., 500, 506; Graham

v. Mason, 5 Fisher, 1, 11; Harwood v. Mfg. Co.,

3 Fisher, 526, 530; Vogler v. Semple, 7 Bissell,

382; Potter v. Stewart, 18 Blatch., 561, 563.)

In the case at bar, the hoisting mechanism of

the two compared combinations is identical in

function. Both raise or lower the frame. Both

the drum and the clamps climb up and down on

the cable. The drum clamps the cable, other-

wise it would slip. The winding of the cable on

the drum after sufficient is clamped to hold and

wind, is immaterial, just as the cable below the

clamps of the ‘‘Little Wonder”’ is immaterial.

Equivalency per se, therefore exists, without

the necessity of giving any liberality to the pat-

ent.

22

Seconp: Especially is this so if the rule an-

nounced in Cazier v. Mackie-Lovejoy, 138 Fed,

654, 656, 71 C. J. A., 104, 106, states the law

correctly. This case holds that the element least

important as to the novelty of the combination

is entitled to the greatest range of equivalents.

It says:

“Tn claim 5, appellant’s whole invention lay, it

must be remembered, in the novel form and fune-

tion of his clamping jaws. Having devised them,

he could go to Killick, say, for the other elements

of the combination, the hook, the suspending arms,

and the locking link—old elements that were ma-

terial only to the putting into use of the real in

vention. Appellant took Killick’s preferred form

of suspending arms—those with a spring instead

of a hinge. May the appellee company appropri-

ate the novel clamping jaws by using with them

the less desirable form of suspending arms? We

think not; most decidedly not. To hold otherwise

would be to rob an inventor by a blind literalism.”

The drum of Henderson is certainly only one

means adapted for hoisting the frame and is only

mentioned in the claim to have an operative

claim and to show the best form. (Grier v. Castle,

17 Fed., 523.) But in U.S. v. Societe Anonyme

Des Anciens Etablissements, 224 U. S., 309, 328,

56 L. Ed., 778, 787, 32 S. C., 479, 487, this court

said a patent is entitled to equivalents whether

so stated or not. And the hoisting jaws are

simply another means adapted for hoisting the

frame.

But this Court has not as yet had this identi-

cal ruling as made in Cazier v. Mackie-Lovejoy;

138 Fed., 654, 71 C. C. A., 104, before it, to wit:

that the least important element is entitled to

EE —

the greatest range of equivalents. Somewhat

to this point are Adam v. Folger, 120 Fed., 260,

at page 263, 56 C. C. A, 540, 543, though not

squarely held therein; as also King Ax Co. v.

Hubbard, 97 Fed., 795, at 803, 38 C. C. A., 423,

431, though also not square to the point. Judge

Taft in this last case cited Sewall v. Jones, 91

U. S, 171, 23 L. Ed., 275; but his case, though

referred to by Judge Baker in the Cazier case,

138 Fed., 654, 71 C. C. A., 104, does not squarely

pass on the rule as enunciated by Judge Baker

in the Cazier case.

In the construction of Henderson, the drum is

simply one form of hoisting mechanism which

he thought best to describe in accordance with

the Patent Act. But the real invention, his prin-

ciple of invention, is in the arrangement of pairs

of U-shaped frames or stirrups from a plurality

of outriggers, along a building, and the placing in

hinge-fashion of his cross beams or putlogs there-

in, and his platform planks on the putlogs. The

operation and functioning of this platform scaf-

fold, giving and yielding to the strains and

stresses due to the workmen on the platform and

the heavy materials thereon, is the same when

using this combination whether the hoisting of

the frames is brought about by the hoisting

drum or the hoisting clamps.

That each element of a combination is entitled

to equivalents was held in Westinghouse v. Cut-

ter Electrical Co., 143 Fed., 966, 75 C. C. A., 152,

3rd, and 169 Fed., 634, 95 C. C. A., 162, 3rd, and

in Westinghouse v. Condit, 167 Fed., 546, 93 C.

C. A., 224, C. C. A., 2nd, but the rule as an-

nounced in the Cazier case, 138 Fed., 654, 71

C. C. A., 104, is not so evident therein.

24

In the case at bar, this least important ele-

ment is the well known drum, inserted into the

claims to make them operative only, and the

hoisting clamps of the ‘‘Little Wonder’’ are in

all respects the equivalent of the drum _ per-

forming the same function in the same manner,

and when interchanged with the drum, serve to

fulfill the same co-operative law underlying the

claims.. And it will be seen that the hoisting

mechanism is the least important of the ele-

ments of the combination in respect to novelty,

and should, therefore, have been given the great-

est range of equivalents. Henderson’s inven-

tion is, it must be remembered, the novel form

and function of pairs of U-shaped frames con-

necting with crossbeams or putlogs in hinge-

fashion. Having devised these, he added the

other elements, the hoisting mechanism, the old

element, that is material only to the putting into

use of the real invention, and to make an opera-

tive claim. (Cazier v. Mackie-Lovejoy, 138 Fed,

654, 656, 71 C. C. A., 104, 106, 7th; also King

Axe Co. v. Hubbard, 97 Fed., 795, 38 C. C. A,

423, 6th; Adam v. Folger, 120 Fed., 260, 56 C. C.

A., 540, 7th). In so failing to apply equivalents

to the separate elements of the combination,

the Hon. Court of Appeals for the Seventh

Cireuit, enumerates a principle of patent law,

contrary to the law as construed in the Second

and Third Circuits (see Westinghouse v. Cutter

Electrical Mfg. Co., 143 Fed., 966, 75 C. ©.

A., 152, 3rd, and 169 Fed., 634, 95 C. C. A., 162,

and Westinghouse v. Condit, 167 Fed., 546, 93

C. C. A., 224, 2nd), wherein these courts have

ruled that separate elements of combination

aE

25

claims are entitled to a range of equivalents,

and counter to its own decision, in Cazier v.

Mackie-Lovejoy, 138 Fed., 654, 656, 71 C. C. A.,

104, 106, wherein it held that the least important

elements, the elements that were important only

to putting in use of the real invention, are entitled

to a large range of equivalents. The doc-

trine underlying this case—that elements of

a combination are each entitled to equiv-

alents, with the least novel element en-

titled to the greatest range, held squarely th

Cazier v. Mackie-Lovejoy Mfg. Co., 138 Fed.,

654, has not, as yet, been squarely before this

court. When the ideas necessary to success are

made known, and a structure embodying those

ideas is given to the world, it is easy for a skill-

ful mechanic to vary the form, by mechanism

which is equivalent, and is, therefore, in a case

of this kind, an infringement.

Tarp: The trial court, His Honor Judge

Geiger, when this case came on for trial in open

court, heard and saw the witnesses called to tes-

tify about prior use. He held that their testi-

mony did not have that convincing force to es-

tablish a prior public use of the device testified

about, following the well settled law of this

court. (The Barbed Wire Patent, 143 U. S., 275,

293, 36 L. Ed., 154, 161, 12 S. C., 443.) But the

Court of Appeals for the Seventh Circuit

thought that ‘‘The evidence fairly establishes

that in 1908, prior to Henderson’s invention

date, appellee who owns the Murray and other

patents for scaffolds, and had built up a large

business in the supplying of scaffolds for the -

erection of high buildings had furnished for the

26

erection of the Blackstone Hotel at Chicago, scaf-

folds in which there was the U-shaped bar frame

similar to that of Henderson, but with putlogs

composed of two angle irons bolted together, the

U frame extending down between them and the

connecting bolts resting on the top of the under

web of the U, the floor boards of the scaffold

being, as in Henderson, laid parallel to the build-

ing.’’? But in so holding the Court of Appeals

must have overlooked the law as stated in the

Barbed Wire case.

Fourra: The fact that the Court of Appeals

for the Eighth Cireuit thought that the holes in

the ‘‘Little Wonder’’ putlog were edgewise of

the plutog as in:

pole Axle *

—-o--8— i

Aa

|

H+

Putlog

Holes for Zagewise Arrangement

instead of broadside as the facts in the case

showed:

ae ae

an t-9 ‘cat :. fee -<_

foe — ) Putlog —e

|

Holes For Droadsiae Arrangement

led that court to consider the ‘‘Little Wonder”

machine as an edgewise arrangement, instead of

broadside, and so it permitted the ‘*Little Won-

der’? to be free of infringement. The proven

facts in the case at bar show that the defendant

uses the ‘‘Little Wonder’? broadside—an at-

——

tempt to use them edgewise proved a failure, and

the user returned to the broadside arrangement.

And such broadside arrangement brings the

‘‘Little Wonder’? machine within the full scope

and spirit of the opinion of the Court of Ap-

peals for the Eighth Circuit, as reported in 224

Fed., 452, 140 C. C. A., 138, which the Court of

Appeals for the Seventh Cirenit followed, in

| holding the patent valid and infringed by the

| ‘Whitney Scaffold Hoist’? machine. But the

Court of Appeals for the Seventh Cireuit also

followed the later opinion of the Court of Ap-

peals for the Eighth Cireuit, which was based

on the error of fact as to the edgewise arrange-

ment instead of the broadside arrangement, as

above pointed out. The broadside arrangement

of the ‘‘Little Wonder’? machine in the Hen-

derson combination, brings about an exact equiv-

alency of the mode of operation and function-

ing of the parts, with the clamps of the ‘‘Little

Wonder’’ performing the identical function, as

above pointed out, as the drums of Henderson.

Firrx: The contrary decisions of the Seventh

and Eighth Circuits holding the patent valid,

on the one hand, and that of the Third Circuit

holding it invalid, on the other hand, bring up

a novel point in patent law. This point has not

been decided by this Court, and is of great im-

portance to the jurisprudence relating to patents.

It is this:

With one decision of one Cireuit Court of Ap-

peals holding the patent valid and infringed by a

defendant, and another decision holding the same

patent on the same issues invalid in favor of the

same defendant, which decision controls ?

Ts the decision holding the patent valid control-

28

ling, to bar further infringement by this defendant

or, is the decree of dismissal a bar in favor of this

same defendant to allow him “everywhere and al-

ways’ to infringe?

The nearest cases in answer to these ques-

tions are Kessler v. Eldred, 206 U. S., 285; Dia-

mond Co. v. Consolidated, 220 U. S., 428; but

both of these cases expressly say they do not

decide this point.

In Kessler v. Eldred, 206 U. S., 285, 51 L. Ed,

1065, 27 S. C., 611, it was said by the Hon. Court:

“It may be that the judgment in Eldred ».

Kessler will not afford Breitwieser, a customer of

Kessler, a defense to Eldred’s suit against him,

upon that question we express no opinion. Nei

ther it nor the case in whieh it is raised are before

us.”

In Diamond Co. v. Consolidated, 220 U. S., 428,

55 L. Ed., 527, 31'S. C., 444, it was also said:

“The final contention of the rubber company is

that, the Grant patent having been declared in

valid by the Circuit Court of Appeals for the Sixth

Cirenit and by the Cireuit Court for the District

of Indiana in the Seventh Circuit, the rubber com-

pany should not have been enjoined from the han-

dling or sale of tires manufactured in the sixth and

seventh cireuits, and cites Kessler v. Eldred, 206

U.S., 285, 51 L. Ed. 1065, 27 Sup. Ct. Rep., 611.”

We respectfully ask, therefore, that this peti-

tion be granted to enable this important point

in patent law to be finally settled.

29

Conclusion.

We respectfully ask for the granting of this

petition, for the reason that,

(a) A new point of patent law has not been

heretofore adjudicated by this court, and we

urge it as follows:

That in a combination claim, each element is en-

titled to equivalents to embrace another combina-

tion embodying the same co-operation law, and the

least important element in novelty is entitled to the

greatest range of equivalents, (Cazier v. Mackie-

Lovejoy, 138 Fed., 654, 656.)

(b) A further new point in patent law has not

been heretofore adjudicated by this court, and

it is:

In case of conflicting decrees of different circuit

courts of appeals against the same defendant on

the same issues, which decree against the defend-

ant should be controlling ¢

Respectfully submitted,

C. P. Gorpet,

F. C. Somes.

30

/nterchargeability of Horstirg Devices

Henderson whitney Scat fold Zettle Wonder”

Howse

Sa a ee ee

31

_ Henderson Whitney Scatlold Little Wonder”

U-/rame Vruist Lachine Frame l/- Frame