at the top and bottom of the measuring tube, the method of calibration, the cork obstruction utilized as a means to prevent the free movement of the mercury into the measuring tube during shipment or carriage, the standard reservoir, and the means by which the groove in the measuring scale partially encircles the measuring tube, and the combination of the box for carrying the instrument are the mere exercise of the skill of the calling or an advance plainly indicated by the prior art.
Long experience with these devices and industry in the desire to market its product to the best advantage led it to enhance its appearance so as to make it more attactive to handle.It exploited the removability of the measuring tube. It made its apparatus compact. It made it less easy to break and more convenient to use. It developed it on the aesthetic side, so that it was better to look upon. But it did nothing to improve the end result, namely, the measuring of blood pressure, by anything that can be termed inventive genius. Certainly the right to exercise its mechanical skill in this direction is to be accorded to the plaintiff, but not to the exclusion of others to act in the same manner.
In the case of Florsheim v. Schilling, 137 U.S. 64, 77, 11 S. Ct. 20, 24, 34 L. Ed. 574, the court said:
"The argument is advanced that the combination in this corset of the prior inventions secured and put into use by prior patents, making it a superior and cheaper article, is itself a patentable invention.We are unable to agree with appellants' counsel on this point. In Pickering v. McCullough, 104 U.S. 310, 318, [26 L. Ed. 749], this court, speaking through Mr. Justice Matthews, said: 'In a patentable combination of old elements, all the constituents must so enter into it as that each qualifies every other. * * * It must form either a new machine of a distinct character and function, or produce a result due to the joint and co-operating action of all the elements, and which is not the mere adding together of separate contributions.' 'The combination of old devices into a new article, without producing any new mode of operation, is not invention.' Burt v. Evory, supra, [133 U.S. 349, 10 S. Ct. 394, 33 L. Ed. 647]. See, also, Hailes v. Van Wormer, 20 Wall. 353, [22 L. Ed. 241]; Reckendorfer v. Faber, 92 U.S. 347, [23 L. Ed. 719]; Double Pointed Tack Co. v. Two Rivers Manufacturing Co., 109 U.S. 117, 3 S. Ct. 105, [27 L. Ed. 877]; Bussey v. Excelsior Mfg. Co., 110 U.S. 131, 4 S. Ct. 38, [28 L. Ed. 95]; Phillips v. Detroit, 111 U.S. 604, 4 S. Ct. 580, [28 L. Ed. 532]; Stephenson v. Brooklyn Railroad Co., 114 U.S. 149, 5 S. Ct. 777, [29 L. Ed. 58]; Beecher Mfg. Co. v. Atwater Mfg. Co., 114 U.S. 523, 5 S. Ct. 1007, [29 L. Ed. 232]; Thatcher Heating Co. v. Burtis, 121 U.S. 286, 7 S. Ct. 1034, [30 L. Ed. 942]; Hendy v. Miners' Iron-Works, 127 U.S. 370, 8 S. Ct. 1275, [32 L. Ed. 207].
"In the light of these authorities, our judgment is that the appellants' patent No. 238,100 was for a corset that had been in long and publicly-known use, each part of it previously patented; that it involved nothing original in the construction of those parts, nor in their relation to one another, nor any change in the function of any one of them; and that the combination of them produced no original mechanism or device."
In the case recently before the United States Supreme Court, Altoona Theatres v. Tri-Ergon Corporation, 294 U.S. 477, 486, 55 S. Ct. 455, 458, 79 L. Ed. 1005, the court stated: "An improvement to an apparatus or method, to be patentable, must be the result of invention, and not the mere exercise of the skill of the calling or an advance plainly indicated by the prior art. Electric Cable Joint Co. v. Brooklyn Edison Co., 292 U.S. 69, 79, 80, 54 S. Ct. 586, 78 L. Ed. 1131. The inclusion of a flywheel in any form of mechanism to secure uniformity of its motion has so long been standard procedure in the field of mechanics and machine design that the use of it in the manner claimed by the present patent involved no more than the skill of the calling. See American Road-Machine Co. v. Pennock & Sharp Co., supra, 164 U.S. 26, 41, 17 S. Ct. 1, [41 L. Ed. 337]. Patents for devices for use both in the motion picture art and in the art of sound reproduction, notably the Holst, the Bell & Tainter, the Dragoumis patents, and the Edison application, already noted, plainly foreshadowed the use made of the flywheel in the present patent, if they did not anticipate it. The patentees brought together old elements, in a mechanism involving no new principle, to produce an old result, greater uniformity of motion. However skillfully this was done, and even though there was produced a machine of greater precision and a higher degree of motion constancy, and hence one more useful in the art, it was still the product of skill, not of invention. Hailes v. Van Wormer, 20 Wall. 353, 368, 22 L. Ed. 241; Grinnell Washing Machine Co. v. Johnson Co., 247 U.S. 426, 432-434, 38 S. Ct. 547, 62 L. Ed. 1196; Powers-Kennedy Contracting Corporation v. Concrete Mixing & Conveying Co., 282 U.S. 175, 186, 51 S. Ct. 95, 75 L. Ed. 278."
The plaintiff's suit must therefore fail for invalidity of the patent. In such view it is unnecessary to discuss the allegations of infringement upon the part of the defendant's instrument.
There is also an allegation of unfair competition, but the burden resting upon the plaintiff to prove this charge has not been carried by it. This product is purveyed to a very narrow class of consumers -- practically all physicians -- people who are or should be of more than usual intelligence, who would be expected to be capable of discriminating in their purchases. There has been no showing of confusion upon the part of the buying public. Hence the plaintiff's bill of complaint must be dismissed on this charge as well.
This memorandum is designed to meet the requirements of Equity Rule 70 1/2 (28 U.S.C.A. following section 723), with regard to the filing of findings of fact and conclusions of law.
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