Southern Plow Co. v. Benton Mfg. Co.

FOSTER, District Judge.

In this case the Southern Plow Company, as owner of letters patent of the United States, Nos. 807,967, granted December 19, 1905, and 815,698, granted March 20, 1906, by virtue of transfer and assignment from the original patentees, Eugene Rosenbaum and Elias Haiman, respectively, brought its bill against the Benton Manufacturing Company, alleging infringement, and praying for an injunction and an accounting. The defendant answered, denying that Rosenbaum and Haiman were the original inventors of the devices patented to them, and setting up numerous instances of prior use and publication. On these issues the matter was referred to a master, who reported in favor of defendant. Exceptions to his report were overruled, and a decree, entered by the District Court dismissing the bill. From that decree this appeal is prosecuted.

The patents in suit are for a cultivator or harrow, designed to be drawn by a horse and guided from the ground the same as’ an ordinary plow. Claim No. 1 of the Rosenbaum patent is as follows:

“A beam, pairs of parallel bars connected pivotally with and extending in opposite directions from the beam, earth-engaging members pivotally connecting the parallel bars and serving to keep them in parallel relation, a circular brace securely connected with the beam, and means for connecting one of each pair of parallel bars adjustably with the circular brace.”

Claims 2 and 3 are substantially the same, except that the inventor allows latitude for the substitution of some other kind and shape of brace, instead of the circle above described.

The Haiman patent is substantially the same as the Rosenbaum, the main difference being that the brace is elliptical, instead.of circular, and very much smaller in circumference. Defendant’s implement is practically identical with the Rosenbaum machine, except that an elliptical brace, similar to the Haiman device, but approximately the same size as the Rosenbaum circle, is used, and this is strengthened by a bar across and on top of the beam at right angles, in the center of the brace. It may be assumed that defendant has infringed complainant’s patents if they are valid, notwithstanding it has also obtained patents on its device.

The master found the parallel bars and earth-engaging members of plaintiff’s device to be identical with the device patented to Blount and Guice, letters patent No. 633,563, dated September 26, 1899, some six years prior to the issue of plaintiff’s patents, and the circular brace to be similar to a device used in the same manner and for the same purpose patented to Gilliard, letters patent No. 26,581, dated December 27, 1859. Considering these prior patents, the master concluded the combination as made by Rosenbaum and Haiman disclosed mere mechanical skill, not amounting to patentable invention.

There can be no doubt that the intention of each of the inventors above named was to design a harrow with adjustable plow points depending from bars that might be fixed at different angles to the beam, so as to throw the earth to either side, or the center, as occasion might require. That each of the said inventions may be so adjusted is beyond dispute. Gilliard, who is perhaps the man with the original idea, used a circular brace with a single bar, on each side of the beam carrying adjustable plowing points. Blount and Guice used parallel bars for carrying the plowing points and other straight bars connected to different .points on the beam for holding the parallel bars at the desired angle. Rosenbaum used the circular brace, and Haiman an elliptical brace, for the same purpose.

Considering the object in view, the shape of the brace was unimportant, and possibly the patents in suit might be held to be anticipated by the Blount and Guice and other patents in the record. That particular question, however, is not material, as the claim relied on is for the combination including the circular brace. Beyond question the Rosenbaum and Haiman devices are combinations of the Blount and Guice and the Gilliard devices. This is not seriously disputed, but it is contended by plaintiff that this combination of old elements is new and useful, and in combination the said elements perform functions not possible in either of the other implements. To that end it is argued that the circle used by Gilliard does not act as a brace to hold down the ends of the bars and prevent their twisting when the plow points come in contact with the earth, while in the Rosenbaum and Haiman devices it does. Except for the theoretical speculation of plaintiff’s expert, there is nothing to show that each of the four said implements, as well as defendant’s, would not do exactly the same work when practically operated. Incidentally it may be noted the preponderance of expert testimony is on the side of the defendant. Obviously the contention is' untenable. Unless the various members of the cultivators were made strong enough to resist the strains to which they would be subjected in the ordinary operation of the implement, the machine would be useless. How a circular brace.could perform certain functions on one machine, and not on another almost identical, is inconceivable. No particular dimensions of any member are attempted to be patented and the making of them large enough and strong enough is a mere detail of construction. No doubt the implement manufactured by plaintiff is useful; but, if the form of the means used to hold the teeth-carrying bars at the desired angle is material, it is certain the circular brace performs exactly the same functions, and no others, on the Rosenbaum, and Haiman devices, as it does on the Gilliard device. Every feature of plaintiff’s devices has been anticipated, and the combination discloses only mechanical skill, not amounting to invention.

The judgment of the district court was right, and it is affirmed.