Opinion
No. 259.
April 8, 1929.
Appeal from the District Court of the United States for the Eastern District of New York.
Separate suits by Arthur Dorsey against the Pilot Electric Company and against the S.S. Kresge Company. Decrees for defendants, and plaintiff separately appeals. Affirmed as to the first case; as to the second case, modified, and, as modified, affirmed.
Appeal from decrees in equity of the District Court for the Eastern District of New York holding patent No. 1,595,863 not infringed, and patent No. 1,618,921 invalid and not infringed.
The first patent, which issued to one Driggs on August 10, 1925, was for the dial of a panel board in a radio set. It consisted of a circular disk, fitted upon the condenser shaft by an opening in its center. From the center of its outer face projected a threaded boss, upon which fitted a knurled head to screw down upon the boss. The head had a shoulder, which pressed upon a flanged sleeve, fitting around the boss, likewise having a shoulder. The outer end of this member engaged the shoulder of the knurled head and its inner end pressed upon the paper record blank to hold it tight against the outer face of the disk. Thus, when the knurled head was screwed upon the threaded boss, the disc, record blank, sleeve, and head constituted a single member, fitted upon the condenser shaft. A set screw or other suitable device held this composite member upon the shaft.
To have left it so would, however, have exposed the record blank and prevented careful observation of the rotation of the condenser shaft. To provide against this a cover was necessary, with an opening having a pointer to register with the scale upon the record blank. The cover was a circular plate over the record blank and disk, impinging upon the face of the panel or front of the set at its periphery, where it was bent into a flange. The cover was held against the panel by a spring washer, bearing at one edge against the outer face of the cover and at the other against the lower edge of the shoulder of the sleeve. As the sleeve was pushed towards the panel, when the knurled head was screwed down upon the threaded boss, the washer strained upon the condenser shaft through the set screw and pressed the cover against the panel, thus holding it in place. A bolt in the surface of the panel engaged in a groove in the under edge of the periphery of the cover to prevent its rotation.
The defendant's supposedly infringing apparatus was of the same general character, except that, instead of having a sleeve and a knurled head, it had a unitary head with a shoulder against the under side of which bore a spring washer, the other edge of which bore upon the outer face of the cover. A nut at the inner side of the disk engaged a threaded projection from the head, passing through openings in the cover and disk. An alternative form was to overset the edge of the projection against the inner face of the disk. The cover was thus frictionally held between the inner edge of the spring washer and the disk, so that unless prevented it would turn with the latter. To hold it against rotation after the disk had been slipped over the shaft, it was fastened by a screw at its periphery, which passed through the panel and was fastened by a nut on its inner side. The washer normally exerted no pressure upon the panel, nor strain upon the shaft. The disk, record, head, washer, and cover thus formed a self-subsisting composite member, which was shipped as such. To set it up it was slipped upon the shaft until the edge of the cover touched the panel. The screw at the periphery was then passed through a hole in the panel and made fast on the inner side, and ordinarily a set screw fastened the whole to the shaft. In later forms the set screw was omitted, but only when the section of the shaft was square; the opening in the head being in such cases also square.
Claims 1 and 3 are in suit and read as follows:
"1. An indicating device for use with a radio instrument having a rotatable shaft extending through a panel which comprises a disk adapted to be fastened to the shaft and rotatable with it, tuning indicia carried with said disk, a cover plate mounted in front of the disk, a knob attachable to the shaft and provided with a bearing designed to hold the cover plate against movement away from the panel of the instrument, and means for preventing the plate from rotating when the knob on the shaft is turned."
"3. An indicating radio apparatus having a panel and a shaft connected to a variable device which aids in tuning to a desired wave length, comprising a rotatable disk connectable to said shaft, a record blank on said disk, a cover over the disk which has a centrally located aperture, and a knob connected to the shaft through said aperture to turn the same, said knob also serving to exert a pressure which is transmitted to the cover plate for holding it in place."
Patent 1,618,921 was issued to one Ford, on February 22, 1927, and, so far as here material, consisted of added openings in the face of the cover of a radio dial, whose purpose was to allow the operator to write upon the record the initials of the station corresponding to the graduations upon the scale visible through the first opening. It is not necessary to set out the claims. The defendant had two openings in its cover, a graduated scale appearing in each, one running clockwise and the other in the opposite direction. The purpose of these two was to provide for either right or left handed condensers.
The District Judge held the Driggs claims not infringed, and the Ford patent void and not infringed.
Worthington Campbell and Redding, Greeley, O'Shea Campbell, all of New York City, for appellant.
Asher Blum and Mock Blum, all of New York City, for appellees.
Before MANTON, L. HAND, and AUGUSTUS N. HAND, Circuit Judges.
The critical question in claim 1 is the phrase "a bearing designed to hold the cover plate against movement away from the panel," and in claim 3, the phrase "said knob also serving to exert a pressure which is transmitted to the cover plate for holding it in place." It is not enough merely to read the language of the claims; they must be construed with the disclosure. While it is, of course, true that they should not be exactly confined to it, it is equally true that they do not extend beyond its functional significance. There is no high road between these two alternatives, and most patent litigation consists in picking one's way. As in any other written instrument, words are capable of many meanings; we must translate them into the underlying purpose of their user. We have here to ascertain, so far as we can, what Driggs meant, and confine his monopoly to that.
It seems to us that, even literally, the defendant's knob does not hold the cover against movement away from the panel. If the peripheral screw is not set, the dial as a whole is free to move away, except for the set screw, when that is used. Certainly the knob does not so hold it; when properly set, it exerts no pressure on the panel. The same is true of claim 3. The knob exerts no pressure which is transmitted to the panel to hold it in place. The peripheral screw does that; the only possible pressure is when the whole dial has been pushed down upon the shaft, so as to exceed the existing pressure of the washer. This would be bad practice.
Ignoring, however, merely verbal correspondence, it is obvious that functionally the two devices are wholly different. Driggs established an elastic system anchored at one end to the bearing of the condenser shaft, and at the other against the outer face of the panel. When set up, the thrust of the cover against the panel was equal to the strain upon the bearings of the shaft. The spring washer made the shaft a part of the system. This was not true in the defendant's dial. We may assume that the washer was essential to the unity of the composite member, made up of the knob, washer, cover, disk, and scale. But this system did not include the shaft, and was complete without it. When taken from the shaft, it remained a mechanical unit, while Driggs' dial fell to pieces as soon as the shaft and its bearings in the condenser ceased to be an integral part. Manipulation demonstrates, just as speculation would suggest, that unless the pressure between the panel and the cover is very light the leaves of the condenser will be displaced, and perhaps even short-circuited. Nobody disputes that this will have an effect upon the capacity of the condenser.
The claims cannot, therefore, cover the defendant's apparatus, unless we are so far to generalize the disclosure as to include in the invention a quite different combination of parts; that is, unless we omit from the system one of its necessary elements. Driggs suggested nothing of the kind, but by the language of his claims incorporated the specific organization which he disclosed. The putative commercial embodiments of the patent, Exhibits 8 and 9, are not made in accordance with its disclosure at all. Like the defendant's, they are units which subsist independently of the shaft. The patent can gain nothing from their popularity, unless the very question at issue is begged. The actual disclosure has never gone into practical use.
Of Ford's patent we need say very little. The defendant has not suggested that its second opening shall be used to mark stations corresponding to the other scale. On the contrary, that opening has its own scale, which forbids any such use. It is possible, though extremely unlikely, that some one might clumsily use for such a purpose that scale which he did not need. But it is ill-fitted for the use, and perhaps insusceptible of it. In any case, it would be absurd to forbid the double scale, merely against the chance of such misapplication. We need not pass upon the issue of validity.
Decree affirmed as to Driggs' patent; decree modified as to Ford's, so as to dismiss the bill only for noninfringement.