COLUMBUS WATCH CO. et al. v. ROBBINS et al.

(Circuit Court of Appeals, Sixth Circuit.

October 8, 1894.)

No. 46.

1. PATENTS-VALIDITY-INFRINGEMENT.

Reissued patent No. 10,631, granted to Duane H. Church, August 4, 1885, for improvement in stem-winding watches, held valid, and infringed by the defendants. 50 Fed. 545, affirmed.

2. SAME-PATENTABILITY OF COMBINATION.

The patentability of the combination is not affected by the fact that the elements severally were old. It involved patentable invention to see that their union would have a beneficial result.

3. SAME CLAIMS FUNCTIONAL IN FORM.

Claims functional in forn: construed to be for the combination of devices by which the function is performed.

4. SAME-CONSTRUCTION.

Substitution of the expression "intermediate device" for "loose or siiding device" does not enlarge the scope of the patent, when properly construed.

5. SAME CHANGES IN FORM TO AVOID INFRINGEMENT.

Changes in the form of the elements do not avoid infringement, where the principle of the invention is copied, and the substituted elements are mechanical equivalents of the elements for which they are substituted. 6. COURTS-APPEAL FROM INTERLOCUTORY DECREE-HEARING ON MERITS. Although the appeal was taken, under the seventh section of the court of appeals act, from an interlocutory decree awarding an injunction, and the court had held that on such an appeal it could not hear and finally determine the merits of the controversy as to the validity of the patent and its infringement (52 Fed. 337, 3 C. C. A. 103, 6 U. S. App. 275), yet it found itself obliged to consider those questions in order to determine whether the court below exercised a proper discretion in granting the injunction appealed from.

Appeal from the Circuit Court of the United States for the Southern District of Ohio.

This was a suit by Royal E. Robbins and Thomas M. Avery against the Columbus Watch Company, David Green, and William J. Savage, for infringement of certain letters patent. A decree was rendered for complainants as to one of the patents, directing an injunction perpetual in form, and referring the cause to a master to take an account of damages and profits. 50 Fed. 545. From this interlocutory decree an appeal was taken, both parties uniting in an application requesting the circuit court of appeals to hear and finally determine the merits of the controversy. The court held, however, that under section 7 of the judiciary act of March 3, 1891, its power was limited to determining the question whether the injunction was improvidently granted in the exercise of a legal discretion, and as to the other questions the cause was certified to the supreme court. 3 C. C. A. 103, 52 Fed. 337. The supreme court dismissed the certificate upon the ground that it did not contain the expression of a desire for an instruction as to the proper decision of a specific question or questions requiring determination in the proper disposition of the particular case. 148 U. S. 266, 13 Sup. Ct. 594. The cause is now before the court upon the appeal from the decree of the cir cuit court, as originally presented.

This was an appeal from a decree of the circuit court enjoining the infringement of a patent for an improvement in stem-winding watches. The bill averred that the defendants were infringing two patents owned by the complainants; one of them, a patent granted to Duane H. Church, and the other issued to C. K. Colby. The circuit court held that the Colby patent was not infringed by the defendants, and dismissed the bill so far as it related to that patent. From this action in respect to the Colby patent no appeal was taken. The issues on this appeal were confined to the Church patent, which was a reissued patent, No. 10,631, dated August 4, 1885. The original patent, No. 280,719, was applied for September 16, 1882, and was granted July 3, 1883. The reissue was granted to Duane H. Church as assignor by mesne assignments to Royal E. Robbins and Thomas M. Avery, trustees for the American Waltham Watch Company and the Elgin National Watch Company, who were the complainants below and the appellees. The Columbus Watch Company was a corporation engaged in the manufacture of watch movements in Columbus, Ohio, and Dietrich Gruen and William J. Savage were its principal officers. The three were the defendants below and the appellants.

The Church invention, as shown in the specifications for the reissued patent, appears in the following drawings, which disclose the plan view of a watch containing the improvement; the dial being removed, and the pendant and a portion of the center band being in section. Figure 1 shows the position of the parts when the watch may be wound, and figure 2 when the watch may be set.

A represents the top plate of a watch movement contained within the center band, B, of a watch case, with the usual stem or pendant, b. O is a shaft, called the "stem arbor," fitting in the hollow of the stem, and having a milled head at its outer end, called a "crown." E is the yoke or train carrying at its center a toothed wheel, F, and at each end the wheels, G or H, in engagement with and driven by the wheel, F. A shifting of the yoke on its center will bring the wheel, G, into engagement with the wheel, C, the winding wheel, while a shifting of the yoke in the other direction will bring the wheel, H, into engagement with the dial wheel, D. Journaled in the plate, A, is an arbor, I, the end of which is seen in the drawing. Below the plate, A, this shaft or arbor has a lug, i, which engages with the spring, K, also below the plate, A, as shown by dotted lines in the drawing. From the end of the arbor, I, seen in the drawing, extends the arm, i1. When the spring, K, is allowed to act, uncontrolled, upon the lug, i, it turns the arbor, I, and the arm, i1, into the notch, c, near the dial-wheel end of the yoke, and carries the wheel, H, of the yoke into engagement with dial wheel, D, as seen in Fig. 2. In line with the stem, and adjacent to it, is a pinion, L, which meshes with the wheel, F. v.64F.no.3-25

It is provided with an axial opening adapted to receive the squared end of the stem arbor, M, which is journaled within the pendant or stem. and when rotating therein sets in motion the pinion, L, and the wheels on the yoke. From the side of the arbor, I, already referred to, and opposite to the lug, i, beneath the plate, A, is an arm, i2, shown by dotted lines which extend radially outward from the arbor, I, under and opposite to the opening in the center of the pinion, L. In this position a loose or sliding piece, N, within the hollow of the stem-winding arbor, as a continuation of the stem arbor, will rest upon the arm, i2, and when the stem arbor is thrust into the watch will turn the arbor, I, throwing the dog, i1, out of engagement with the notch, i, and pressing the spring arm of the arbor, I, marked in the figure is, against the other end of the yoke. effecting its engagement with the winding wheel, the force of the spring, K, being overcome. When, however, the stem arbor is withdrawn, and the loose sliding piece, N, in the center of the winding arbor, does not press upon the arm, i2, the spring, K, shifts the yoke back again into engagement with the dial wheel. O is a spring retainer formed by partially splitting a tube lengthwise, and securing its whole end within the inner end of the axial recess, b1, of the pendant, b, and turning inward the ends of the split portion. The stem arbor has two peripheral grooves, m and m1, the first of which is engaged by the jaws, o, of the spring retainer when the stem arbor is at the inner limit of its motion, while the groove, m1, is engaged by the spring jaws when the stem arbor is at its outer limit of motion. The inward spring of the jaws, o, is sufficient to cause them to hold the stem arbor in either groove firmly enough to prevent accidental displacement, but not enough to prevent moving the arbor from one to the other when desired. When the stem arbor is drawn to the outer limits of its motion, its inner end projects into the pinion, L, only so far as to enable it to rotate said pinion for the purpose of setting the hands, and in such position offers no obstruction to the removal of the movement from the case or to its insertion in the case, and is ready for use as soon as a movement is in place.

The patentee, in his specifications, uses this language: "This invention relates to watches in which the winding and hand-setting train is operated entirely by means of a rotatable stem arbor that is adapted to be moved longitudinally for the purpose of causing said train to engage with the winding wheel or dial wheels. Heretofore, in watches of this class, said winding and hands-setting train has been normally in engagement with the winding wheel, and disconnected from the dial wheels, so that an outward movement of the said stem arbor has been necessary in order to change the engagement of said train, and adapt it for setting the hands. Such construction has required that there should be a positive connection between the stem arbor and the winding and hands-setting train, to enable said arbor, when drawn outward, to effect the necessary change in the engagement of said train, which positive connection has made said stem arbor virtually a part of the movement, and has prevented, or rendered very difficult and expensive, the changing of said movement from one case to another. The object of my invention is to render watch movements and cases readily interchangeable. * * *" Again he says: "While the mechanism between the stem arbor and the winding and dial wheels is preferably employed, my invention is not limited to these particular devices, as any of the well-known forms of intermediate mechanism may be used." In the specifications and claims, the patentee describes his stem arbor as having no positive connection with the winding and hands-setting train, by which he says he wishes to be understood “as meaning such construction as causes said arbor to be contained within the pendant of a watch case, and to form a part of such case, in contradistinction to an organization in which the stem arbor is journaled in the movement, and is so connected therewith as to be removed from the case with said movement."

The claims of the patent are as follows: (1) As an improvement in stem winding and setting watches, a winding and hands-setting train which is adapted to be placed in engagement with the winding wheel or the dial wheels by the longitudinal movement of a stem arbor that has no positive

connection with said train, substantially as and for the purpose specified. (2) As an improvement in stem winding and setting watches, a winding and hands-setting train which is adapted to be placed in engagement with the winding wheel or the dial wheels, and is normally in engagement with said dial wheels, substantially as and for the purpose shown. (3) As an improvement in stem winding and setting watches, a winding and handssetting train which is adapted to be placed in engagement with the winding wheel or the dial wheels by the longitudinal movement of a stem arbor, and is normally in engagement with said dial wheels, substantially as and for the purpose set forth. (4) As an improvement in stem winding and setting watches, a winding and hands-setting train which is normally in engagement with the dial wheels, in combination with a rotatable stem arbor that has no positive connection with said train, and is adapted to be moved longitudinally within the case stem to cause said winding and handssetting train to engage with the winding wheel, and to be simultaneously disengaged from said dial wheels, substantially as and for the purpose shown and described. (5) As an improvement in stem winding and setting watches, a winding and hands-setting train which is normally in engagement with the dial wheels, in combination with a rotatable longitudinally movable stem arbor that has no positive connection with the watch movement, and, when moved longitudinally to the inner limit of its motion, will cause said winding and setting train to be disengaged from said dial wheels, and engaged with the winding wheel, and, when moved longitudinally to the outer limit of its motion, will permit said train to be disengaged from said winding wheel, and engaged with said dial wheels, substantially as and for the purpose specified. (6) As an improvement in stem winding and setting watches, the combination of a winding and hands-setting train which is normally in engagement with the dial wheels, a stem arbor having no positive connection with said train, and an intermediate device which is adapted to communicate the longitudinal inward movement of said stem arbor to said winding train, and cause the same to engage with the winding wheel, substantially as and for the purpose shown and described.

As already stated, this was a reissued patent. The specifications under the reissued patent and the drawings were substantially the same as those contained in the original. In the original patent a claim was made for the device by which the stem arbor was held in the stem, and moved within fixed limits from one groove to another by means of the jaw spring. On an application for the reissue, an interference was declared by the patent office between Church and one C. K. Colby in reference to the stem arbor device, and priority was awarded to Colby, who secured the patent. The Colby claims related solely to the mechanism within the stem for fixing the limits of the inward and outward movement of the stem arbor without interfering with its rotary motion. In the reissue to Church, therefore, no reference was permitted in the claims to the peculiar form of stem arbor employed. The claims of the original Church patent, which did not include the peculiar stem-arbor device, were the first and second, and they were as follows: (1) "In a pendant winding and setting watch, a movement having winding and setting mechanism adapted to be operated by the endwise movement of a winding bar or key, and normally in position to operate the hands, whereby a positive connection between the movement and winding bar is avoided, as set forth." (2) "In a pendant winding and setting watch, a movement having winding and setting mechanism normally in position to operate the hands, a winding bar or key having no positive connection with said mechanism, and a loose or sliding device adapted to communicate the inward end thrust of the winding bar to the device for engaging the winding portion of said mechanism with the main winding wheel as set forth."

The defenses were (1) that the patent was void for the want of novelty; (2) that the claims of the reissued patent were void because they were framed to obtain the exclusive right to functions or results, rather than the means or mechanism for accomplishing such results; (3) that the reissued patent was void because the original patent was not inoperative or defective by reason of inadvertence or mistake, and the reissued patent

was procured for the purpose of unduly enlarging the claims of the original patent; (4) that the device of the defendants is not an infringement of the patent.

It will be of assistance to give rather a full description of one of the prior patents which were claimed to anticipate the Church combination. It was that of Charles V. Woerd, which was applied for April 10, 1882. The drawing of the Woerd watch is given below:

In this drawing, T represents a lever, pivoted at U to the inner side of the inwardly projecting flange, I, of the case, and lying, when in its normal position, entirely within the space formed by said flange, and outside the space occupied by the movement. M is the winding arbor, which fits into the stem arbor or pipe, O, and, extending down into the movement in a way not shown in the drawing, imparts the rotary motion of the stem arbor to a terminal pinion engaging with the wheel of the yoke, V. To the swinging yoke, V, which carries the pinions that impart motion from the winding arbor, respectively, to the winding wheel, i, and the hand-setting train, is pivoted, at a, a slide plate, b, secured to the plate, A, of the movement, by a screw, c, passing through a slot, d. The plate, b, is thus adapted to slide towards and from the center of the plate. A, and is pressed outwardly by a spring, e. At the outer end of the plate, b, is an arm, f, against which one end of the lever, T, bears. The opposite end of the lever, T, has a recess, g, which partially incloses the key or pipe, O. When said key or pipe is drawn outwardly, its flange, P, bears