Appeal from the District Court of the United States for the District of Delaware; Hugh M. Morris, Judge.
Before BUFFINGTON and WOOLLEY, Circuit Judges, and SCHOONMAKER, District Judge.
The bill charged the defendant with infringing certain claims of Letters Patent No. 1,587,007 issued to Clifford Norton and others, and of Letters Patent No. 1,565,143 issued to Harold J. Fear. The defenses pleaded were invalidity and non-infringement but the case was tried on the issue of infringement within the scope of the claims. The court, having restricted the claims and having found the defendant had not infringed them, dismissed the bill. The plaintiff appealed.
The inventions of the patents in suit, like those of many prior patents, relate to mechanism for opening and closing elevator doors. Doors are of two kinds; door in the elevator shaftway at each floor of a building and the door on the elevator itself. In the rapid increase in the number and height of modern hotel and office buildings the use of elevators for both freight and passengers grew with corresponding rapidity. Elevator problems multiplied quickly and inventions to solve them soon crowded the art.
Norton Patent No. 1,587,007, Issued June 1, 1926.
Norton, recognizing that elevators had been provided with mechanism for operating shaftway doors by power which is so controlled that the door opening mechanism is thrown into operation when the car is stopped at any one of the floors, sought by the invention of his patent to improve and particularly to simplify the complicated mechanism theretofore used to do that thing. The invention of the patent, carefully stated in detail by the learned trial judge, 33 F.2d 148, and here roughly stated, is found in the disclosures of the specification rather than in the terms of the claims. It is by no means simple.
The invention is directed, and limited, to shaftway doors and is embodied in two lines for operating all doors and in means for operating one at a time by connecting the operating mechanism of any one of the doors with the lines, their members and connections. A motor at the top of the shaftway actuates an endless line (78) which extends downwardly close to the side of the shaftway from a pulley connected with the motor at the top to a pulley at the bottom. Between the endless line and the pathway of the car is another line (110) suspended from one end of a small walking beam whose other end is connected with and actuated by an electric coil (38) at the top. This line is held taut by a weight at the bottom. The circuit of the coil is interconnected with the car operating lever which when moved to shut off the hoisting power and stop the car deenergizes the coil which in turn releases the walking beam and allows the weight to pull down the line (110). On line 110 are toggles and toggle connections opposite the floors. When the coil is deenergized and the weight pulls down line 110 it straightens out all the toggle levers opposite all floors. If this were all, nothing would happen. On the car, however, there is a fixed cam which in normal position is out of the path of the toggles and their connections before coil 38 is deenergized, striking none of them as it passes from floor to floor except when the car comes to rest at a particular floor. To stop the car the operator moves the lever which shuts off the hoisting power. This in turn deenergizes the coil with the effect that, as we have said, the walking beam tips and line 110 descends. When the weight pulls line 110 downwardly and otherwise the toggle opposite the car would straighten out, the car-connected cam will prevent one arm of that toggle from moving outward and so cause the toggle to move a lever (98) and thus disengage the latch at the upper end of the door and move hook 92 at the lower end to engage the under part of one of the many enlargements or obstructions (96) on the endless line 78. Simultaneously the stopping of the car also energizes the operating door motor 84 whereby the lower half of a horizontally split door -- the one type mentioned in the patent and apparently the only type workable with the invention -- is thrown downward and the upper half is thrown upward. Thus the door on that floor is opened and the doors on all other floors remain closed. This, it should be noted, is a train of automatic movements brought into play by the manual movement of the car lever.
The plaintiff says that this invention is a combination of five elements all of which may perhaps be old but that the combination is new. They are: (1) The elimination of all projecting parts with which the car, in its travel up and down the shaftway, might come in contact; (2) the automatic operation of the shaftway door opposite which the car is brought to rest by the mere action of opening the hoisting circuit; (3) the prevention of operation of the doors in the shaftway other than the one opposite which the car is stopped; (4) the interlocking of the door operation with the electrical system of the elevator control; (5) the provision of a single electro-magnetic instrumentality for operating all shaftway doors, eliminating the necessity of providing a separate electro-magnetic instrumentality for each door.
On this disclosure of mechanism to produce these results numerous claims were filed and allowed of which claim 15 is typical. It is as follows:
"An elevator mechanism having in combination a hatchway (shaftway), a series of doors for said hatchway, a car, car hoisting means, means for controlling the hoisting means to start and stop the car, means for operating the doors, a single electro-magnetic device, means controlled by said electro-magnetic device and means controlled by the car cooperating to cause the opening of the door at the floor at which the car is stopped while the other doors remain closed."
When this claim is laid on the device described in the specification, translating the word "means" as it appears in the claim into the mechanism disclosed in the specification, it will be observed that the claim reads precisely on the device there described. It also reads on the mechanism of the defendant's device which, we shall assume, has the same five essential elements of the invention before stated. This constitutes infringement if the various "means" of the claim are to be read as not particularly or substantially the means of the specification but any and all other means which may be employed to do those things and to produce those results. But to determine whether or not the defendant's device is truly an infringement it is not enough to read the word "means," iterated and reiterated in the claims, literally on its construction and ignore what the inventor meant by that word as disclosed by his specification. Motion Picture Patents Co. v. Universal Film Mfg. Co., 243 U.S. 502, 510, 37 S. Ct. 416, 61 L. Ed. 871, L.R.A. 1917E, 1187, Ann. Cas. 1918A, 959. It must be determined that the device of the defendant is not merely in words but in fact the invention of the patent.
All the law on this question is stated in Westinghouse v. Boyden Power Brake Co., 170 U.S. 537, 568, 569, 18 S. Ct. 707, 722, 42 L. Ed. 1136. In that case Westinghouse sued the Boyden Company for infringement of his patent No. 360,070 for a fluid-pressure automatic brake mechanism. Boyden's device was in principle different from that of Westinghouse yet the claims of the Westinghouse patent read literally on it. Even so, the Supreme Court, affirming the Circuit Court of Appeals for the Fourth Circuit (70 F. 816) which reversed the Circuit Court (66 F. 997) for the District of Maryland finding the claims infringed, said (italics ours for emphasis):
"But, even if it be conceded that the Boyden device corresponds with the letter of the Westinghouse claims, that does not settle conclusively the question of infringemnt. We have repeatedly held that a charge of infringement is sometimes made out, though the letter of the claims be avoided. [Union Paper Bag] Machine Co. v. Murphy, 97 U.S. 120 [24 L. Ed. 935]; Ives v. Hamilton, 92 U.S. 426, 431 [23 L. Ed. 494]; Morey v. Lockwood, 8 Wall. 230 [19 L. Ed. 339]; Elizabeth v. Pavement Company, 97 U.S. 126, 137 [24 L. Ed. 1000]; Sessions v. Romadka, 145 U.S. 29, 12 S. Ct. 799 [36 L. Ed. 609]; Hoyt v. Horne, 145 U.S. 302, 12 S. Ct. 922 [36 L. Ed. 713]. The converse is equally true. The patentee may bring the defendant within the letter of his claims, but if the latter has so far changed the principle of the device that the claims of the patent, literally construed, have ceased to represent his actual invention, he is as little subject to be adjudged an infringer as one who has violated the letter of a statute has to be convicted, when he has done nothing in conflict with its spirit and intent. 'An infringement,' says Mr. Justice Grier in Burr v. Duryee, 1 Wall. 531, 572 [17 L. Ed. 650], 'involves substantial identity, whether that identity be described by the terms, "same ...