in its essentials at the time these letters were written is almost a necessary implication from their contents.
(c) Certain blueprints bearing various dates during 1928 taken from fully dimensioned working drawings and showing the device in complete detail. These blueprints were taken from drawings made by Crook in the course of his employment by Eichel. An effort was made by the plaintiff to nullify the evidentiary value of the blueprints, based upon the fact that the tracings from which they were unquestionably made (produced and offered in evidence by the defendant, not the plaintiff) show dates as late as 1931 to 1933. However, I am satisfied that the explanation given by the defendant as to how and why the dates on the tracings were changed from time to time by erasure and the original date not preserved, is perfectly reasonable and credible. While such shop practise might be considered a grave departure from normal in larger and more highly organized firms, it is probably not infrequent in smaller plants where completeness of records and system is often sacrificed to economy. Then too, one would naturally inquire why, if the dates of these blueprints were forgeries, the defendant would produce and offer original tracings bearing dates too late to help his case, when it would have been so much simpler to have made the dates of the tracings and blueprints correspond and all bear the earlier dates. I am also inclined to think that it would be practically impossible to make a blueprint, so that it would bear a different date from the tracing from which it was made without showing evidence of the imposture.
The plaintiff's position is that Eichel did not think of the device until some time after December, 1931, and that it was then really evolved from Doering's structure and a drawing made by one Shartle, an employee of the plaintiff who was loaned to Eichel for a short time early in 1932. In order to accept this theory I should have to find that six or seven witnesses have entered into a conspiracy to destroy the plaintiff's patent by deliberately perjured testimony aided by forged drawings and documents and a counterfeit model.
I would not have had the slightest hesitation in rejecting such a position and accepting the defendant's evidence as the truth, had it not been for an argument advanced by the plaintiff, based upon the identity of certain dimensions in Crook's calculations and Shartle's drawing, which, it was asserted, could not possibly have been arrived at independently. And, since Eichel admittedly had Shartle's drawing at some time, the plaintiff says that Crook must have copied from Shartle and dated the whole procedure back three years. This argument is summed up in the Plaintiff's reply brief where he says that the defendant "now asks Your Honor to believe, with reference to Defendant's blue-print Exhibit P, that on the 8th day of the 8th month of 1928, more than four years before Mr. Shartle made his drawing for Eichel displaying those dimensions of the worm design which he had originated, Mr. Crook had made his drawing No. 90, Defendant's Exhibit O, anticipating with prophetic accuracy to the ten-thousandth part of an inch the peculiar dimensions of Shartle's worm, which are inconsistent with any accepted rule of design for such a worm."
To me, a layman with little knowledge of the mechanical principles and practice, this argument seemed to have great force, since there are certain dimensions which do correspond to the ten-thousandth part of an inch. I therefore obtained the agreement of both parties to employ an independent expert mechanical engineer with special knowledge and experience with gearing, to advise me as to its validity.
Without going at length into a discussion of the technical details of engineering practise involved, it is sufficient to say that, while there are a number of similarities, most of these represent dimensions which might easily have been arrived at independently and that, except for the similarity in one dimension (.1094" or 7/64", being the whole depth of the worm thread in Crook's drawings), there is no basis in the table for the conclusion that either party obtained information from the other. Parenthetically, it will be noted that the other correspondence which seems remarkable (.0487", the addendum) follows mathematically from that just mentioned provided the same clearance for the thread is taken, and that the .012" clearance is by no means uncommon. It is pointed out that the use of the dimension just mentioned (.1094") by Shartle was for the gear tooth, while Crook used it for the worm thread.So used by Shartle, it makes a highly undesirable, although not necessarily unworkable combination. In Crook's drawings it is good practise. The conclusion is that if there was any copying done, it is much more likely that Shartle, rather unintelligently, gently, copied this dimension from Crook than that Crook copied it from Shartle. It is a fact that Eichel did give Shartle certain general instructions as to dimensions, etc., though it does not appear that he furnished him with Crook's drawings. The series of calculations and drawings made by Crook with the changes which appear in them from time to time, show an entirely reasonable and probable evolution in working out the idea. For example, he began with 5/64" thread, later decided it was too shallow, and changed it to 7/64". Other changes followed naturally.
The net result is that plaintiff's argument based on the similarity of certain dimensions does not disturb the conclusion arrived at as to the truth of Eichel's testimony.
The second reason advanced by the defendant for the invalidity of the patent is, I think, also sound. All of Doering's claims cover a combination which includes the elements of window-frame, sash and operator, and many of them contain other elements. The invention, if any, consisted merely in the improvement of one of these elements -- the operator. If there were some new functional relationship between the operator and the other parts of the structure, it would be permissible to claim the entire combination. There is, however, no new mode of cooperation involved. The function of the operator of Doering's patent is to open and close the sash and hold it in intermediate positions. So far as its effect upon the movement and position of the sash is concerned, it performs its function in exactly the same manner as the operators of the prior art. What has been done is merely to put the handle of the crank by which it is worked in a more advantageous position, not so much for its use as for the appearance and the convenience of the room. This is nothing more than an improvement in one of the elements of a combination which does not in the slightest degree change the coaction of the parts of the whole. The claim is clearly much broader than the invention. That such a claim is invalid has been held many times. Langan v. Warren Axe & Tool Co., 3 Cir., 184 F. 720; McGrath Holding Corporation v. Anzell, 2 Cir., 58 F.2d 205; In re Germantown Trust Company, Cust. & Pat. App., 57 F.2d 365; In re Ratican, 36 App.D.C. 95.
Statements of fact and law in this opinion may be taken as specific findings and conclusions under Equity Rule 70 1/2, 28 U.S.C.A. following section 723.
The bill may be dismissed with costs.
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