The opinion of the court was delivered by: KIRKPATRICK
This is an action at law for patent infringement. It was first tried to a jury and resulted in a verdict for the plaintiff in the amount of $153,553.18. Being of the opinion that his instructions to the jury were inadequate, the trial judge ordered a new trial. Thereafter the parties stipulated in writing that the case be tried to the court without a jury upon the testimony taken at the jury trial, and upon that record the case is now before the court for findings and judgment.
The patent in suit is United States patent No. 1,314,867 (filing date, February 1, 1918) to the plaintiff for a flexible power-transmitting mechanism, particularly intended for use as a cable release, a well-known device by which the shutter of a camera is actuated by pushing a plunger in the end of a cord or cable held in the operator's fingers. The reason for a flexible mechanism is that a thrust upon the shutter control either directly or through a rigid member is likely to jar the camera in the moment of exposure.
Formerly the desired result was accomplished by air compression by means of a bulb and a rubber tube. But it was found that rubber deteriorated rapidly, and the cable release, having a stem slid or pushed through an outer tubular member, was then evolved.
It was important, of course, that the device should be as nearly perfectly flexible as possible. A very slight degree of rigidity sometimes resulted in kinks or bends which prevented the free play of the inner sliding member and either disturbed the position of the camera or interfered with the perfect response of the shutter to the operator's control.
Now a solid coiled wire tube is capable of transmitting power from a lengthwise thrust and at the same time is in the highest degree flexible, and the idea of making the members of the cable of coiled wire tubes is disclosed in the earliest patents for cable releases. In fact, the earliest of all the patents cited, the German patent to Wermann, of 1902, shows both the inner thrust member and the sheath constructed in this fishion.
It is the plaintiff's claims, 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 and 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.
With the exception of one minor feature, which appears in claims 5 and 6 and which will be discussed later, it is practically conceded that all the instrumentalities of the plaintiff's device were known and used in the prior art. Taking the question in its broadest aspect and assuming, as the plaintiff contends, that all the claims (including 1 and 2) can be so construed as to include the combination which he says constitutes his real invention, I am satisfied that it amounts to nothing more than an essembly of two selected elements, neither of them new, without any new joint function, and hence is unpatentable. Of course, they co-operate, and whoever first combined a flexible inner thrust member with a flexible outer sheath in a cable release may have produced a real invention, but when that had been done, and especially after coiled wire tubes had been evolved for both members, the selection of superior forms of coils from the prior art produced no new result as the product of the combination. Whatever advance there may have been was simply an aggregate of several results, each the complete result of one of the combined elements. The principle is too well established to require citation of authority.
No doubt a closed coil is the most satisfactory type of inner thrust member to be found in the prior art. An open coil would not do because of its compressibility, and the only alternative was an ordinary wire or stranded wires. But the closed coil being incompressible could transmit power just as well, while its superior flexibility greatly reduced the danger of kinking. The closed coil thrust member is a feature of the Wermann German patent of 1902, and also of the patent to Dakin and Underwool (filing date October 15, 1917), and was also manufactured by the defendant in this case prior to the date of the plaintiff's application.
For the sheasth member an open coil is undoubtedly better than a closed coil. When the cable is bent the convolutions of the spirals on the inner side of the bend are drawn together without separating the spirals on the outside of the bend. This is desirable, since the whole thing is inclosed in inextensible fabric and, otherwise, inconvenient stresses and dislocations might be produced. But this mode of operation is a function of the outer spiral coil of itself and is performed entirely without regard to adjacent members of the combination. An open coil sheath member is shown in the Edwards British patent, No. 13,157, of 1905. The specification of that patent expressly recognizes that it was an old feature of such devices and had been used before in combination with an incompressible inner member.
It may be conceded that the plaintiff selected the best types of the elements to be found in the prior art and put them together. However, his closed coil thrust member still transmitted power in exactly the same way in which it did in the Wermann German patent and the Dakin and Underwood patent, and the fact that it was inclosed in an open coil instead of a closed coil did not change its mode of operation. The open coil sheath member flexed in precisely the same manner as in the various British patents which disclose its use, and it would do so whether the thrust member were a coiled tube, a stranded wire, or a plain wire, I am unable to see how the advantages of the particular types selected by the plaintiff for each of these members are enhanced or in any way affected by the character of the other member, or to find anything new in the functional relationship between them.
I should say here, parenthetically, that I do not agree with the defendant that claims 1 and 2, if construed to call for a closed coil inner member, would be anticipated by the British patent to Edwards, No. 5,471 of 1906. I think that the disclosure of that patent 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 arises not only from the grammatical construction of the sentence, but from a consideration of the patent itself.The exemplifications shown in figures 5, 6, and 7 all provide for power transmission by a pull rather than a push. The cross-bar marked "j" in these figures is slideable on a barrel so that, with the operator's fingers about the cross-bar, the pressure of his thumb upon the button will pull the inner member outwardly instead of pushing it inwardly. A coiled spring could not possibly be used in this form of the device because it is extensible, but there is no suggestion in the specification that these forms require any different kind of inner member from the other forms in which the power is transmitted by a push.
The conclusion that the combination of closed coil inner member and open coil outer member is not patentable in view of the prior art renders claims 1 and 2 invalid even if they be interpreted as claiming that particular combination, as the plaintiff contends. It may be well, however, to say that in my opinion they may not be so interpreted. These claims do not call for a coiled tube as an inner member, but merely for "means intervening * * * for the transmission of end-wise motion," and, if read as stated, made a combination which was clearly anticipated by the British patents. Only by reference to the specification can the claim be narrowed to a claim for a coiled tube inner member. The file wrapper history, however, shows that another claim (original claim 17) identical in all respects with claim 1 (and substantially identical with claim 2) except for the fact that it called for a "coiled wire tube" instead of "means intervening" was disallowed by the Examiner, as so anticipated. The plaintiff then amended by including a "barrel" feature in both claims and claim 1 was allowed. Claim 17 was again rejected "as not patentably distinct from claims 1 and 4 allowed." In this action the plaintiff acquiesced.
The case is so nearly on all fours with U.S. Repair, etc., Co. v. Assyrian Asphalt Co., 183 U.S. 591, 22 S. Ct. 87, 46 L. Ed. 342, that the opinion in that case may be applied to this with a very little paraphrasing, thus: "Another objection to the proposed limitation of the claim by making it read * * * ('a coiled wire tube') * * * in lieu of the unqualified word * * * ('means') * * * is the fact that the * * * ('17th') * * * claim, which contained the additional words, was withdrawn by the patentee upon a ruling or declaration of the Patent Office that the 1st and * * * ('17th') * * * claims were the same in substance and could not both be permitted to remain in the case. * * * Having voluntarily abandoned the claim for * * * ('a coiled wire ...