Appeal from the District Court of the United States for the Eastern District of Pennsylvania; William H. Kirkpatrick, Judge.
Before BUFFINGTON, DAVIS, and THOMPSON, Circuit Judges.
BUFFINGTON, Circuit Judge.
In the court below Charles B. Gray brought an action at law against the Eastman Kodak Company, charging infringement of patent No. 1,314,867 granted to him September 2, 1919, for a power transmitting mechanism. On trial the jury found a verdict for the plaintiff of $153,553.18. Thereafter the trial judge, feeling there was error in the trial, set the verdict aside. Thereupon the parties, by stipulation filed in court, waived a trial by jury and agreed "that the case shall be submitted to the Court for decision upon the record already made * * * both parties to have the right of appeal as in other cases." In substance, the trial was a quasidemurrer. No witnesses were examined. On final hearing neither party asked for any special findings of fact, for there were no disputed facts. The trial judge, holding the patent did not involve invention, directed "judgment may be entered for the defendant." Thereupon the plaintiff took, and the court sealed, "this bill of exceptions to the ruling, opinions and action of said Court," and thereafter granted the appeal the parties had stipulated.
The case concerns kodaks, or small hand carried photographic outfits, which, by rapid shutter action, turn off or on light from its chamber (for the Latin word for a chamber is "camera") and makes possible the instantaneous taking of what are fittingly termed "snap shots." It will thus be seen that the nonmoving or nonjarring of the camera and the dependable action of its shutter are vital elements in the kodak art. The shutter actuating mechanism of such art, prior to Gray's patent, consisted of a hollow rubber bulb, held by the operator in the hand and connected by a small tube with the shutter-controlling mechanism. Pressure of the bulb or release of pressure moved the shutter. In the large cameras of photographic studios the rubber bulb is still in use. In the kodak art, where it was once universally used, it is now seldom seen, and not at all on new cameras.
Now while the rubber bulb on the shutter mechanism was flexible, nonkinking, and sprang back to place when bulb pressure was released, it nevertheless was subject to deterioration; the rubber lost its spring, and replacement was required. The proofs show a consequent effort by the art, both here and abroad, to get away from pneumatic pressure, or an air pressure column, and substitute therefor a metallic or what is termed a "cable release" plunger pressure. This cable release or plunger consisted, in the first effort to get away from the rubber tube, of a small wire cable, and later of a noncompressible or closewound spring. As this transition from a pneumatic to a metallic thrust has been eventually perfected, we now see that the goal to be reached, in order to make a satisfactory mechanism, was a unitary structure which coupled together the different elements of rigidity of the plunger, the flexibility of such plunger, and positive resiliency of the plunger, for plunger rigidity was necessary to effect the thrust. So, also, flexibility was necessary to obviate kinking; and active resiliency was required to spring the plunger back to normal shape and position. In other words, it was necessary to obtain the positive thrust and at the same time avoid kinking of the structure as a whole. This was eventually effected in the simple mechanism of Gray, who was an experimental engineer for twenty years. The steps that were taken by him to reach this result we now consider. His device is now in universal use. But in order to appreciate what Gray actually did to solve the problem we must recognize the essential difference between a speced, open-wound spiral spring which is compressible, and a closewound spiral spring which is noncompressible. We must also recognize how objectionable was kinking; how desirable is a rubber-like flexibility; how the apparatus must be bent to the small space of a Kodak every time pictures are taken.
From the record it appeared the first step in the attempt to get away from the rubber bulb and tube of the art was the use, as a plunger, of a strand or a number of fine wires braided together. But while such wire could, under lengthwise pressure, bend and was in that sense flexible, yet it was likely to form an angle at the bending point and did not spring back to place or to normal shape. The result of this was that the wire plunger, when bent, was liable to stay "put," with the effect that when one tried to take another picture, the kinked wire plunger stayed "put" and one got no exposure and no picture because the shutter did not work. In the patent history of the development of the art the first attempt to do away with the objectionable wire plunger was made abroad in the German patent of 1902 to Wermann. He substituted for the wire plunger a spiral spring inside another coiled spring. At this point we note that both Wermann's spiral springs were closewound and therefore noncompressible, because their close-wound coils had no open space between the leaves of the spring and, while these close-wound springs were bendable, and therefore, to a degree, flexible, yet they were wholly different in operation from an open-wound spiral spring. This difference will be seen when the action of the openwould, as contrasted with a close-wound, spring is closely observed. When such an open-wound spring is bent, the leaves freely separate to spring apart at the outer circumference and at the same time freely approach each other or compress at their inner circumference. In other words, bending of such open-wound spring makes it expand at its outer side and compress at its inner. The result is that there is in the case of the openwound spring a free play in expansion and an active resiliency which, on release of pressure, brings the open-wound spring back to normal. Now it is quite evident, as the subsequent development of the art proved, that no successful plunger can be made unless an outer open-wound spring is used for enveloping. Wermann, it is true, made a step forward in substituting a spiral close-wound spring plunger for a rigid wire. He got a plunger which was rigid yet measurably flexible, but around such close-wound plunger spring he took the fatal step of placing another close-wound spiral spring. So near the solution of the problem was he, that had he used an open-wound spiral spring to envelop his close-wound spring plunger, he would then have solved the problem which Gray solved many years later. But Wermann failed to take this vital step, precisely as the great Eastman Company, with all its experience and expert skill, failed to take it years later. As a result Wermann's device failed and made no impress on the camera art, which continued to use the pneumatic or rubber tube. No one to-day would think of using Wermann's combination of a close-wound, noncompressible, spiral plunger and a close-wound noncompressible, spiral sleeve as an enevolpe. While Wermann suggested the use of a noncompressible spiral spring plunger (which is used in the present art) his contribution to the art was to teach it how to make it not work because of the close-wound spiral spring he used as an envelope.
The next attempt was also made abroad in the British patent of Edwards in 1905. As we understand, Edwards differed, inter alia, from Wermann in one vital particular; he discarded the close-wound spiral plunger of Wermann and went back to the objectionable wire or wire plaited rigid plunger of the old art. In that regard the court below held, and rightly so, that the disclosure of Edwards' patent of 1906 "as to the innermost member means what the plaintiff says it does, namely, that it may be formed of wires held together by a closely coiled spiral and that it does not call for a closely coiled spiral alone." This conclusion is strengthened by the fact that the same Edwards in his American patent of 1906 shows the innermost metallic pusher as being wire, saying, "b is the flexible innermost member and is advantageously composed of a strand of thin flexible wires in such wise as to be incompressible under the strains (pressure) to which same is normally liable." Subsequent development shows conclusively that the use of a wire plunger was fatal to the utility of Edwards' device. Instead of advance in the art, Edwards made a backward step in his use of kinking wires which had proved fatal. Edwards taught the art nothing except to avoid his precept and example.Like Wermann, Edwards' was not an enlightening and helpful white light, but a red light showing what the art should avoid.
Our attention is also called to the patent to Duryea, No. 1,072,439, of 1916. But this shows an even more radical departure from the mechanism by which the plunger problem was finally solved. Duryea went back to an incompressible outer spiral. "I overcome," he says, "these objections by rendering the flexible outer member inextensible as well as incompressible." He used wire for his plunger instead of a spiral, as his patent says, "and by using for the inner member a wire of high elasticity."
It will thus be seen that up to 1917 the problem of a successful metallic plunger had not been solved and a great company like the Eastman, with its skilled engineers, continued to use the rubber bulb with the pneumatic push. In applying for its assigned patent No. 1,297,327, through one of its employees, recognition is made by the Eastman Company of existing difficulties in cable or plunger devices, as follows: "Our present invention relates to photography and more particularly to shutter actuating devices of the type known as cable release, in which two laterally flexible members, one working within the other and terminating in relatively movable finger pieces, are connected, respectively, to a shutter casing and an operating part thereof to afford a means for actuating the shutter without jarring the camera and in a convenient and comfortable manner and the invention has for its object to increase the flexibility of the members so that extreme distortions thereof will not result in permanent kinks or bends that would interfere with the relative sliding movement of the members." These objects of plunger nonkinking and camera nonjarring Eastman's patentee sought to obviate by sleeving one wire spiral within another, but Eastman's fatal mistake was that both spirals were close-wound. The specification describes the inner spiral as "closely-wound incompressible wire helix." It is further described as being "as flexible as the outer helix 5 and more so." We therefore have in this Eastman employee's patent a closewound incompressible wire plunger and an enveloping close-wound noncompressible spiral spring even less flexible than the inner one. From this it will be seen that no one in the art up to 1917 had placed a close-wound spiral plunger inside an open-wound spiral.
In 1918, sixteen years after the German patentee, and thirteen years after the British patentee, failed to solve the problem, the plaintiff applied for the patent in suit. Without at present entering into details, it suffices to say that he therein disclosed for the first time in the kodat art a close-wound spiral wire spring as a plunger and an open-wound spiral tube surrounding it. This is aptly stated in the opinion of the trial judge, who says: "It is the plaintiff's claim, however, that he first invented the combination of a closed coil for the thrust member with an open coil for the sheath. By a closed coil is meant one in which the spirals are in contact throughout so that the whole is incompressible lengthwise. In an open coil the adjacent spirals are spaced. Both in his testimony at the trial and through his counsel in argument the plaintiff urged that this combination of closed inner and open outer coils is the essence of his patent and his real contribution to the art."
It is also shown by Gray's drawings and specification, which latter reads as follows: "This mechanism comprises two important features. One of these is the closely-wound coiled wire transmission tube, J, connected with the stem, F, and the slide member, I, whereby there may be transmission without lost motion. The other of these features is the forming of the outer coiled wire tube, G, in such manner as to permit bending the tube without material separation of the coils at the outer side of the curve, the spacing between the coils permitting the coils to approach each other on the inner side of the curve while the tube is being bent. The member, I, being free to slide, the adjacent end of the inner wire tube, J, is free to move endwise when the mechanism is being bent. In this manner, the inner tube, although closely-wound, adapts itself to the bending without kinking. Practice has shown that a mechanism of this construction may be bent an indenfinite number of times without kinking or otherwise disabling the coiled wire tubes." The resume of the prior art shows Gray's patent first disclosed this combination. Assuming such was the case, the court below held this novel combination was a mere aggregation or selection of previously known objects, and the combination did not involve invention. In other words, the patent of the man who solved the problem and made the metallic plunger work is declared void by reason of patents of men which did not work and disclosed no such combination as did Gray, of a close-wound inner coil and an open-wound enveloping outer coil.
Turning to that question, we note the three requirements of a valid patent -- novelty, usefulness, invention. As to the first requirement, there is no question. As to the first requirement, there is no question. The proofs simply show, and there is no proof to the contrary, that prior to Gray, no one had disclosed that combination. It was therefore novel. As to its usefulness, it is shown that after the defendants saw Gray's combination, they ceased making other types, and concede that since then they have made and marketed one million of Gray's device. The defendants' adoption and use prove its usefulness. In that regard this court, in Consolidated Window Glass Co. v. Window Glass Mach. Co. (C.C.A.) 261 F. 362, held that: The imitation of a thing patented by a defendant who denies invention has often been regarded, perhaps especially in this circuit, as conclusive evidence of what the defendant thinks of the patent, and persuasive of what the rest of the world ought to think.
Was it inventive? The testimony of defendants' witness, Christie, who was the general foreman in charge of Eastman's experimental work, is conclusive ...