Imhaeuser v. Buerk

APPEAL from the Circuit Court of the United States for the Southern District of New York.

This is a suit, commenced July 5, 1872, by Jacob E. Buerk against William Imhaeuser, Theodore Hahn, and Charles Keinath doing business as Imhaeuser & Co., for the alleged infringement by them of letters-patent No. 48,048, granted to him June 6, 1865, for an improvement in watchman's time detectors.

The drawings and specification of his letters are as follows: -

'No. 48,048.

'The Schedule referred to in these Letters-patent and making part of the same.

'To all whom it may concern:

'Be it known that I, Jacob E. Buerk, of Boston, in the county of Suffolk and State of Massachusetts, have invented a new and improved watchman's time detector, and I do hereby declare that the following is a full, clear, and exact description thereof, which will enable others skilled in the art to make and use the same, reference being had to the accompanying drawings forming a part of this specification, in which,--

'Figure 1 represents a face view of this invention.

'Figure 2 is a vertical central section of the same, the line x x, Figure 1, indicating the plane of section.

'Figure 3 is an inverted plan of the movement.

'Figure 4 is a face view of the same.

'Figure 5 is a diagram representing the keys necessary for the operation of this invention.

'Similar letters of reference indicate like parts.

'This invention relates to an improvement in that class of watchman's time detectors on which a patent has been granted to John Buerk, Jan. 1, 1861. In that case a strip of paper is used stretched on the circumference of a drum to which a rotary motion is imparted by a clock or watch movement, and a series of spring points serve to perforate this strip according to the time when these points are operated by a series of keys of peculiar shape. On the strip are marked the hours, corresponding to hours on the dial of the clock or watch, and the time when one or more of the spring points have been actuated can be ascertained after the strip has been taken off. This construction necessitates a drum in addition to the ordinary clock or watch movement, whereby the expense of the mechanism is increased, and, furthermore, the operation of applying and removing the strips of paper is tiresome and requires much care.

'These difficulties are avoided by using a clock or watch with a stationary index and revolving dial. On this revolving dial are fastened removable dials of paper or other suitable material, with a series of circles corresponding to the positions of the spring points, and these spring points are concealed under the stationary index. By inserting one of the keys and turning the same round, the paper dial is pierced by one or more of the spring points, and the time when this takes place can be ascertained by examining said dial when the watch or clock is opened. The perforations in the paper dial are made from below under the stationary hand, leaving a slight barb on the upper surface, and a similar perforation cannot be produced even if the watch or clock be opened, except if the paper dial is taken off.

'A represents a clock or watch movement made in the ordinary manner, and provided with a revolving dial, B, which is mounted on the centre shaft, C, in place of the ordinary hands, and which rotates under the stationary iindex, D. The dial is marked with figures from 1 to 12, and it revolves once in twelve hours. From this dial project two or more points, a, which serve to retain a false dial, E, of paper or other suitable material, and this dial is held in place by a disk, b, which slips over the centre shaft, and which is provi ed with little holes or sockets to correspond in number and position to the points a. The paper dial, E, is marked with figures from 1 to 12, like the main dial, and with a series of concentric rings, c, corresponding in number to the stations in the beat. The paper dial shown in the drawing is marked with six rings, to correspond to six different stations.

'The spaces between the rings, c, correspond in number and position to a series of spring points, d, the points of which are situated under the index D, and made to project through a slot in the dial-plate B'. When left to follow their own elasticity, said spring points do not reach above the surface of the dialplate, but they are so arranged that one or more of them can be forced up simultaneously and made to penetrate the paper dial, different keys, K, being provided, each of which serves to raise one of said spring points, or of a combination of two or more of them.

'One of the keys is intended to be fastened by a chain or other suitable means to a post or other fixed part on each station in the beat of the watchman, and the watchman carries the watch. On arriving at a station he inserts the key, and by turning the same a perforation is produced which gives a record of the time when the watchman has visited the station. The watch, of course, is intended to be locked, so that the watchman cannot get at the paper dial in order to produce fraudulent perforations to cover a neglect of his duty, and the keys, simple as they look, are so shaped that they cannot easily be imitated, for the slightest difference in the height or position of the bit would produce a different action.

'Having thus described my invention,

'I claim as new and desire to secure by letters-patent,--

'1st, The use of a false revolving dial, E, in combination with the stationary index, D, and spring points, d, constructed and operating substantially and for the purpose set forth.

'2d, Producing the perforations on the paper dial, or its equivalent, from the inside out instead of from the outside in, as before.' The bill was taken as confessed against Keinath. Imhaeuser and Hahn filed an answer denying the infringement and setting up that the indicators manufactured by them were made under letters-patent No. 117,442, granted July 25, 1871, to Anton Meyer, of Stuttgart, Germany, for an improvement in watchman's time checks; and that the complainant's letters are void for want of novelty, the invention therein claimed having been anticipated by a French patent granted to one Nolet in 1847; another granted in the same year to one Schwilgue; English letters No. 957, granted in 1852 to John Rowbotham; English letters No. 1431, granted in 1862 to Thomas Buckney; and in a German work by Emanuel Schreiber, entitled, 'Dr. Friedrich Wilhelm Barfuss's Geschechte der Uhrmacher Kunst von den altester Zeiten bis auf unsere Tage,' published in the year 1856 by Bernh. Friedr. Voeght, in Weimar, Germany.

The drawings and specification of Meyer's letters are as follows:--

'Specification forming part of Letters-patent No. 117,442, dated July 25, 1871.

'To all whom it may concern:

'Be it known that I, Anton Meyer, of Stuttgart, in the empire of Germany, have invented a new and useful improvement in watchman's time detectors; and I do hereby declare the following to be a full, clear, and exact description thereof, which will enable those skilled in the art to make and use the same, reference being had to the accompanying drawing forming part of this specification, in which drawing—

'Figure 1 represents a face view of this invention. Fig. 2 is a similar view of the same, the dial-plate being partially broken away to expose the marking-dies. Fig. 3 is a transverse central section of the same. Fig. 4 is a detached section of the cam-shaped bridge.

'Similar letters indicate corresponding parts.

'This invention consists in the arrangement of one or more stationary marking-die in the face-plate of a watch or clock in combination with a cam-shaped bridge extending over the marking-die or dies, and with one or more keys, the bit or bits of which correspond in position to the marking die or dies in such a manner that, by affixing a disk of paper or other suitable material to the movable dialplate of the watch or clock, and causing said disk to revolve between the stationary marking die or dies and the cam-shaped bridge, the key or keys, on being introduced into the watch or clock-case and turned in the proper direction under the cam-shaped bridge, will depress the paper or other material on the marking-die corresponding to the position of its bit, and the exact time when the watchman has visited a certain room or station on his beat will be recorded on the disk of paper or other material.

'In the drawing, A designates the case of a watch or clock, in which is firmly secured a stationary face-plate, a, the central part of which is cut out to make room for a disk, b, which is secured to an arbor, c. This arbor connects by suitable gear with the clock-movement, and it revolves once in twelve hours. The surface of the disk b is flush with the surface of the stationary face-plate a, and it is provided with two or more points, d, so that a dial, e, of paper or other suitable material can be readily attached to it, and that, when such dial is placed on the disk, it will be compelled to follow the motion of the same. From the face-plate a project one or more stationary dies, f, the faces of which have engraved or otherwise produced in them figures, letters, or other suitable characters, and which, when more than one such die is used, are set in a radial direction, as shown in Fig. 2 of the drawing. These dies are situated beneath a bridge, g, which is firmly secured to the case a, and which is perforated with a hole, h, to receive the key K. The under surface of the bridge is cam-shaped, as shown in Fig. 4, and the upper surface of the key is rounded, so that, when the key is inserted into the key-hole and turned round under the bridge, the projection i on said key will be depressed toward the die, and the dial, e, which is carried through between the dies and the bridge, will receive an impression to correspond to the face of the die. The position of the projection i on the key, of course, must correspond to the position of the die, and if more than one die is used several keys have to be prepared, one for each die. These keys are intended to be secured in the various rooms or stations composing the beat of the watchman, the watchman carrying the clock or watch, the case of which is locked by a key in the possession of the superintendent or proprietor of the place. On reaching a certain station the watchman inserts the key in his clock, and, by turning it, a mark is produced on the dial e indicating the station. On the dial is also marked a time-table, j, and the bridge g may serve as the index pointing on the divisions of the time-table. As the dial is carried around by the clock-movement, the time when a mark is produced on the dial by one of the keys can be read off from the time-table, and the movements of the watchman on his beat can be controlled. If the number of stations in the beat exceeds the number of the marking-dies in the clock, keys can be prepared with two or more projections, and with six marking dies a large number of stations can be controlled. If desired, the bridge g may be made yielding, so that its action on the key will depend not only on its cam-shaped face, but also on the action of a spring having a tendency to force said bridge in toward the marking die or dies.

'I am aware that a watchman's time detector has been heretofore made in which spring marking-points are used to indicate the different rooms or stations in the beat, such as described in the patent of J. E. Buerk, June 6, 1865. For these spring marking-points I have substituted stationary dies r presenting figures or letters, whereby the stations of a beat are readily recognized; and, furthermore, the stationary dies are easier made than the spring marking-points, they are less liable to get out of order, and the impressions produced by them cannot be forged without having exact counterfeits of the dies.

'I disclaim every thing shown and described in the patent of J. E. Buerk, above mentioned.

'What I claim as new, and desire to secure by letters-patent, is—

'The stationary marking die or dies, situated beneath a camshaped bridge, in combination with a suitable key or keys and with a dial passing through between the marking die or dies and the bridge, substantially as herein shown and described.'

The court passed a decree in favor of the complainant, and granted him a perpetual injunction restraining the defendants from making, manufacturing, or causing to be manufactured, using, or vending to others to be used, watchman's time detectors embracing, containing, or using the invention described in and secured by the said letters-patent No. 48,048.

Imhaeuser thereupon appealed to this court.

Mr. Arthur v. Briesen for the appellant.

The complainant's patent is void. Mere duplication of devices is not patentable.

Invention, in the sense of the patent law, is the finding out, contriving, devising, or creating by an operation of the intellect something new and useful which did not exist before. Ransom v. Mayor, 1 Fish. Pat. Cas. 252. A contrivance which does not require the exercise of inventive power is not patentable. The Corn-Planter Patent, 23 Wall. 181. Enlargement of the organization of a machine does not afford any ground, in the sense of the patent law, for a patent. Phillips v. Page, 24 How. 164. The mere change of location of an old device is not patentable, if the result is the same as before. Marsh v. Dodge et al., 6 Fish. Pat. Cas. 562. The mere transfer of a mode of constructing wooden slides and metallic slides is not invention. Carter v. Messinger, 11 Blatchf. 34. There is nothing new in the multiplication of parts. Wilbur v. Beecher, 2 id. 132.

The defendant's device does not infringe. Form, when of the essence of the invention, is necessarily material; and if it be inseparable from the successful operation of the machine, the attainment of the same object by a machine different in form is not an infringement. Werner v. king, 96 U.S. 218. Every man has the right to make an improvement in a machine and evade a previous patent, provided he does not invade the rights of the patentee. Burr v. Duryee, 1 Wall. 531; Seymour v. Osborne, 11 id. 516; Johnson v. Root, 1 Fish. Pat. Cas. 351.

Where the defendant in constructing his machine omits entirely one of the ingredients of the plaintiff's combination without substituting any other, he does not infringe; and if he substitutes another in the place of the one omitted, which is new or which performs a substantially different function, or, if old, was not known at the date of plaintiff's invention, as a proper substitute for the omitted ingredient, then he does not infringe. Gould v. Resse, 15 Wall. 187; Fuller v. Yentzer, 94 U.S. 288, 297, Carver v. Hyde, 16 Pet. 513; Brooks v. Fiske, 15 How. 212.

Mr. J. Van Santvoord, contra.

MR. JUSTICE CLIFFORD delivered the opinion of the court.