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

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## Record

- **Collection:** Supreme Court brief
- **Document type:** Petition for Writ of Certiorari
- **Published:** January 1, 1920
- **Citation:** 254 U.S. 32

## Text

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

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Source: Frix Law Library, https://www.frixlaw.com/law-library/documents/brief%3Amicro_IA40386004_0344%3A02. Public record. Not legal advice.