CHRISTY V. HYGEIA PNEUMATIC BICYCLE SADDLE CO.
the lower pocket, and reach to the lower edges, thereby becoming the means of giving stiffness and rigidity to the case. It is not bulged or buckled, but has a plain surface, the surface of which reaches no further than the upper end of the pocket. In all these particulars it differs from the lid or cover required to make the complainant's device. In view of the prior state of the art and the proceedings had in the patent office, the claim of the complainant's patent should be strictly construed against him, and be restricted to the particular de· vice def!cribed. v. Harwood, 112 U. S. 354, 5 Sup. Ct. 174, and G Sup. Ct. 451; Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. 1021. We are of the opinion that the charge of infringement has not been sustained by the proofs, and for this reason the decree of the circuit court should be affirmed.
CHRISTY et a!. v. HYGEIA PNEUMATIC BICYCLE SADDLE CO. et aI. (Circuit Court of Appeals, Fourth Circuit. No. 300.
May 2, 1899.)
There is no invention in constructing a bicycle saddle top with verticlil. wlilled depressions, adapted to receive two cushions or pads, and hold them firmly in place. Large sales and increasing popularity cannot be accepted as certain proofs of novelty and invention, especially when the article, as made and sold by complainant, differs in many respects from the article shown in the specifications, and covered by the claims. The Christy patent, No. 532,444, for a bicycle saddle having a solid top, with vertical, walled depressions, adapted to receive and hold iu plaee two cushions or pads, is void for want of invention.
SAME-EvIDENCE OF PATENTABILITy-LARGE SALES.
Appeal from the Circuit Court of the United States for the District of Maryland. Julian C. Dowell and Wm. A. Redding, for appellants. Arthur Steuart and HOJ'ace l'ettit (Stinson & Williams, on the brief), for appellees. Before GOFF, Circuit Judge, and BRAWLEY and WADDII.L, District Judges. GOFF, Circuit Judge. This is an appeal from a decree passed by the circuit court of the United States for the district of :.\Ian-Iand dismissing the bill of complaint filed in said court by the app(;Uant, the object of which was to restrain the appellees from manufacturing, selling, or using certain bicycle saddles, which it was alleged in said bill constituted an infringement of the letters patent of the United . States, :K o. 532,444, issued January 15, 1895, to Henry A. Christy, for improvements in a bicycle saddle, which patent, it was claimed, was owned by the complainant company. The complainant below was a eorporation organized under the laws of the state of minois; and the defendant, a corporation organized under the laws of the state of
Mary.land.' !,""'be'defenses relied nonpatentability of the invention iutd 1JIl011infringement. ' 'nbe eonrt below held that, in view ()f the prior gt8te"M the art, the claims setup in thepiltent were invalid; and' eb.tered a decree dismissing the bill, from which the appeal we now dispose of was taken., i' Fed. 902. We have 'given "due- consideratiohtothe appellants'assignments of error; have carefully examined the 'Claims made in support of the patent in suit, and also the insist.oocethat defendants below had infringed the same; and we find outiselvesimpelled to the conclusion that the validity of said patent depended upon whether it required invention to manufact llre the bicycle saddle described therein,-the prior state of the art con8idered,-and, as we also find that no inventhe, same,that the patent tion was )leceS&ary in ()rderto was invalid, and the bill was properly dismissed. The testimony, all pri()r patents Maring on the one in controversy, as also the state of the art when ..,aid patent was issued,were so fully considered in the opinion of Judge Morris, by which he so clearly demonstrated the invalidity of said patent, that we not only deem it proper, but find it best, here in (approvingly. It iS,as follows:
"Bill of complaint for the infringement of letters patent No..532,444, issued to Henry A. Christy January 15, '1896; for 'bIcycle saddle. The defenses are want of patentable novelty and nollinfringemtmt. "Theclalms oftM patent are as 'follows: '(1) A bicycle saddle haVing a solid top providedtipon its upper surface, ,with recessed or sUnken portions at each side of the seat po,rtion,' eonstructedto' receive, and holll removable padR,-said recesses being formed with abrullt marginalwallsrto prevent the pads from as dilseribed; (2) A bicycle saddle having a solid top provided upon its upper surface, with recessed orsuIiken portions at each side of the seat portion, (construC'teli to receive and hold pads,-said recesses being formed witll abrupt marginal walls to prevent the pads from slipping,-'-in combination with pads! adapted to' fit sald recesses so as to be removably retained therein, sub'stantially as described. (3) A bicycle saddle having a solid top provided upon its upper !:lurface, with recessed or sunken portions at each side of' the seat portion,; constructed to receive and holdremovable pads, and haVing a horn portion shortened or truncated so that it will not project between the legs of the rider, and also cut away or recessed upon its upper surfaGecentrall:v: of S1tid horn,portion, substantially as described.' "The complainant contends that claims 1 and 2 are infringed: Claim 3 is .not in controversy, for the reason that in the defendant's saddle it is conceded that the horn is not truncated or shortened up so as not to project between the legs of the rider, as called ,for by claim 3, Claim 1 is for the saddle plate, made with sunken recesses on each sideM the center line Of the seat; the recesses being formed' with abruptmargirtAl walls to receive and, hold removable pads, !andprevent the pads from ,sUpping. Claim '2 is for the same device in combination with pads adapted. to fit the recesses so as to be removably retained therein. ,As the defe.ndant's saddle has the removable pads fitted into the' recesses, if' (ftinfringes either it infringes both claims; and, so far as this case, is concerned, claims 1 and 2 may be considered as identical. 'The Ohristysaddle, as manufactured by the complainant and known to the trade, is qUite.;dllferent in some of its" feBitW:,I1S from the saddle described in .he specification "a,nd the of ,the patent, so that the question to be decided in sU.1t'turns, not upon the simllarity of the defendant's saddle to that made by' the compln inant, but upon the validit:r of the claims of the patent in suit, and the infringement Qfthose claims as explained by the specification. '.rhe prior patents put in evidence show that there was nothing new in any of the objects which Ohristy has in mind to Rccomplish, Christy states that his object was to lessen the discomfort and injury which bicycle l'iders suffer from the pressure of the saddle upon the perineum, and from
the rubbing of the legs against the horn. In Hicks' patent for a cushion seat designed particularly for bicycles (Xo. 487,3(;7; October 11, 1892i, he states that his object is to obtain a cushion seat that will adjust itself to the sbape of the rider, and at t,he same time prevent injuriou/'i pressure against the perineum. Tills he tried to accomplisb by an inflatable cushion, with a covering of any suitable material, secured in any desired' malUler to a base of some inelastic material, preferably of wood; the cEshiou to be formed with a fissure extending from the front rearward to any desired extent. He 'This fissure prevents upward pressure on the perineum when a person sits thereupon. This fissure may be formed by securing !l: portion of the top of the cusuion intermediate the sides down firmly upon the lower, portion thereof, allowing the cushion to be inflated at each side thereof. The fissure may extend only part way towards the rear of the cushion, * * * or it may pass to the rearward limit of the cushion, dividing it into two separate air chambers. * * * Such a form relieves the perineum. * * *' We thus have in Hicks' device an inelastic base upon which are secured two cushions to support tbe ischial tUberosities of the ride.r, and separated along the center line of the seat by a vacant space which relieves the perineum from all pressure. Tbis is precisely what is accomplished by the two separate cushions or pads, with the space between them, shown in the Christy saddle, as manufactured by the complainant. In the English patent to Henson (No. 19,840) of 18fl3, the same object is decL'ired to be the purpose of the bicycle saddle there described, in which there is cut out from the framework of the saddle the portion between the points where the ischial tuberosities are to rest, or a depression is formed in the frame there, so' as to leave a vacant space, with nothing to press against the perineum. It is apparent, therefore, that the elaim of Cbristy was rightly restr'icted to tbe mechanical device by which a saddle h,aving two separated cushions or pads, with a space between th,em, might be constructed; his invention, as claimed by bim in his patent, being solely fqr tbe sunken depressions in the solid saddle top, so formed as to receive tM cushions or pads, and prevent the pads slipping. It is conceded that, if CUShions or pads similar to those shown in the defendant's saddle are fastened to' the top of a saddle without depressions, there is no infringement. '.rhe validity of the patent tIien depends upon whether; in view of the state of the art, it required invention to construct II saddle top Witll vertical, walled adapted to receive the two cushions and hQld them in place, It is certainly ,a. in. all that is new in the mode of construction is 1lOt very distinguishable from mere mechanical improvement, and, if it can he shown that -the idea of the mode of construction was not new, then I think nothing remains but mechanical skill. . "It being conceded that all that the complainant cau make claim to is the depressions to receive the pads, it is important to see if that idea, in connec· tion with the seat of a metal-top saddle, was new. It is a matter of observation that a depression, more or less deep, made in a seat in order to receive a cushion, is common and old; and in the English patent in evidence (No. 12,854 of 1889), to Henry Edward Newton, he describes an equestri3l). saddle to be made of thin sheet steel or iron, in wWch 'two cup-like depressions are stamped, one depression being on each side of the central axis of the blank. These depressions are subsequently filled up with India rubber, gutta percha, padding, or any othet' suitable elastic substance, so as to render the seat comfortableand elastic to the rider.' And his claim 2 is for 'the cup-like depressions, F, F, as described, as illustrated in the drawing, for the purpoo;es herein set forth.' This, it seems to me, is the substance of the complainant's specification and claim, viz. in a metal-top saddle, a depression on each side of the axial line, made to receive padding, intended to make the seat elasti.! to the pressure of the tuberosities of the ischii. Here we have the same problem of a rigid metal seat to be made elastic at the same two points 0'1' contact with the rider's body, and ,the same device to accomplish it, viz. with pads. It is urged that there depressed spots in the metal, to are in the complainant's device the additional elements tha t the depressionfl are j:nade with abrupt walls to prevent. the pads from slipping, and that the pads are removable, both of which features are asserted to be important and useful Improvements. But with cup-like depressions to hold the pads, already
93 FEDERAL REPORTER. shown by patent, it does not appear that It required invention to maketh¢depressions sufficiently abrupt to prevent the filling from slipping. Illbis specification, Christy states: 'In my improved saddle I have only a truncated horn: ,.... ,.. and I also prefer that this truncated horn portion, instead of being cOIl vex upon its upp'er. surface, as in the old construction, should be cut away, or concave, centtilliy thereof, thereby giving. room for the portions of the person which are so easily injured. I aiSQ preferably make the rear of the saddle wider than ordinarily constructed, so as to sustain the fleshy portions of the buttocks as well as the pelvis, and provide upon each side of the seat portion a sunken portion or recess constructed to receive and hold pads or cushions which may be removably fitted therein for the comfort and easeol tlle rider.' In the drawings the pads are shown lying in the depressions,' '.and not extending above the piane of the metal top of the saddle. In the Ohristy saddle, as manUfactured, the horn is not truncated, it Is nat cut away or made concave oh its upper surface, and the saddle is not made wide, and does not support the fleshy portion of the buttocks at all. As manufactmed, the Christy saddie presents nothing to the body of the rider but the two small pads on· w)iich the two ischii rest, sustaining the whoie of the rider's weight. Instead of the concavity, the truncated horn being cut out to relieve the pressure on the pprineum, there is substituted on the saddle, as manufactured, an open space the whole length of the saddle, from front to rear, between the two cushions, which space, from the cushions being considerably separated, and being built up quite high above the plane of the metal saddle, is both wide and deep. Merit is claimed .for the saddle because the cushions are removable, but, as manufactured, they are held in the recesses by catches of twisted wire. Any cushion which is affixed to a sand base may be l'emoved, if the fastenings are released. Great advantage is also claimed because the abrupt walls of the. sunken recesses prevent the cushions' from slipping. But if it was not new, as is shown by the English patent to Newton, to make the recesses in a metal saddle to receive cushions, it can hardly be said to require invention, when the cushions as used liable to slip, to make the recesses abrupt to prevent slipping. 'l'he strongest and most persuasive argument which the complainant urges in favor of the patentability of tha Christy saddle Is based upon the. testimony showing the rapidly increasing sales and its decided popularity since it has become known upOn the market; But the saddle maimfactured differs so widely from the Saddle shown in the specification and drawings that it is not easy to determine just what features make it acceptable to the trade and to those who use it. It would appear that some of the features of the saddle as manufactured, whleh are not shown in the saddle as patented, possess more novelty and utility than those described in the patent. It may be well that the advantages of the manufactured saddle re"sult from the fact that the saddle plate is reduced in size until It is nothing more than a support for the hv() pads,and has no bearing at all for the fleshy portion of the buttocks. so that the rider's weight rests exclusively upon the two ischli of the pelvis, and also from the fact that the interval between the cushions or pads leaves an opens-pace from front to similar to that shown in'tlle Hicks patent. through wllich there .can be a current of air, and because of which there can be no pressure upon the perineum. It seems quite probable that it may be these unpatented features, not shown in the specifications or drawings, which have given the Christy the acceptat;lce which it has obtained, rather than any advantage of construction arising from. the fact that the pads are set in depressions and are detachable. It may also be that, with the enormously increased uSe of bicycles, experience may have taught particular riders that in the long run it is less injurious to use onekiud of.a saddle than another, lilthough not so agreeable at tirst. " The fact of compara.tive utility, when the acCeptance of the improved device may just !lS well be attributed to features hot claimed in the patent, is an unsafe guide in determining the existence of patentable invention. ' "'['pon the whoie ease, considering the prior state of the 'art, I have been foreed to the conclusion that it did not require invention to form" the recesses on the surface of a solid-top saddle with abrupt marginal walls to receive the pads and keep them from slipping."
Appellant claims that the fact that the saddle manufactured by it so soon went into extensive use, and largely superseded the BaddIes made prior to the date of the patent in suit, is evidence, not only of novelty and value, but also of usefulness and invention. It must be conceded that the sales were large, and that the evidence shows the ChriBtv saddle was received with great favor by those who used the bicycle; and also it may be admitted that it not only added to their comfort, but contributed to their safety. But still we do not think that it follows that, therefore, invention was required to design and construct it. On this question the supreme court of the "Cnited Rlates, in }IcClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct.7G, said:
"That the extent to which a patented device has gone into use is an unsafe criterion, even of its actual utility, is evident from the fact that the general introduction of manufactured articles is as often effected by extensive and judicious advertising, activity in putting the goods upon the market, and large commissions to dealers, as by the intrinsic merit of the articles themselves. The popularity of a proprietary medicine, for instance. would be an unsafe cr.iterion of its real value. since it is a notorious fact that the exte))t to which such preparations are sold is very largely dependent upon the liberality with which they are advertised, and the attractive mallner in which they are put up, and exposed to the eye of the purchaser. If the of sales were made the test of patentability, it would result that a person, securing a patent upon some trifling variation from previously known methods, might, by energy in pushing sales, or by superiority in finishing or decorating his goods, drive competitors out of the market, and secure a practical monopoly, without in fact having made the slightest contribution of value to the useful arts. The very case under consideration is not barren of testimony that the great success of the McClain pads and clasping hooks, a large demand for which seems to have arisen and increased year by year. is due partly, at least, to the fact that he was the only one who made thE' manufacture of sweat pads a specialty; that he made them of a superior quality, advertised them in the most extensive and attractive manner, and adopted means of pushing them upon the market, and thereby largely increased the extent of their sales. Indeed. it is Impossible from this testimony to say how far the large sales of these pads Is due to their supE'riority to othE'r". 01' to the E'nergy with which they were forced upon the market. While this court has held in a number of cases-even so late as Magowan v. Packing Co.. 141 U. S. 332, 12 Sup. Ct. 71, decided at the present term-that in a doubtful case the fact that a patented article had gone into general use is evidence of its utility, it is not conclusive even of that; much less, of its patentablE'" novelty."
The United States circuit court of appeals for the Ninth circuit. in the case of Klein v. City of Seattle, 44 U. S. App. 741, 23 C. C. A.. 114, and 77 Fed. 200, used the following language, which we think applicable to the case now under consideration:
"A patent must combine utility, novelt;\" and invention. It may In fact embrace utility and novelty in a high degree, and still be only the result of mechanical skill, as distinguished from invention. A person, to be entitled to a patent, must have invented or discovered some new and useful art, maehine, manUfacture, or composition of matter, or some new and useful 1m" provernent thereof. In the language of the supreme court: 'It i" not enough that a thing shall be new, in the sense that, in the shape or form in which it is produced, it shall not have heen before known, and that it shall be USE'"ful. hut it must, uncleI' the constitution and statute. amount to an invention or discovery.' Hill v. Wooster, 132 U. S. 693. 701, 10 Sup. Ct. 228. 231, and authorities there cited. A mere difference or change in the mechanical construction, in the size or form of the thing used, in order to obviate known defects
, 93 FEDERAL REPORTER.
eXiistIng in, the, 'previous devices, aithollgh such changes are highly advan,far better and more efficacious and convenient, does not make the improved ,deVice patentable. In order to be patentable, it must embody some neW Idaaor principle, not before known. It must, as before stated, be a discovery, as distinguished from mere mechanical skill or knowledge. Atlantic WQrks v. Brlldy, 107 U. S. 192, 200, 2 Sup. Ct. 225; Hollister ,y. Manufacturing Co., 1:!-3 U. S. 59,5,Sup. Ct. 717; Thompson v. Boisselier,114 U. S. 2, 11, 5 SuP. Ct. 1042; Trimmer Co. v. Stevens, 137 U. S. 423, 433, 11 Sup. Ct. 150; Andre'*s v. Thum, 33 U. S. App. 39, 15 C. O. A. 67, and 67 Fed. 911."
In Grant v. 14;8 U. 'So 547, 13 Sup. ct. 699, the supreme court, speaking by Mr. Justice Jackson, said:
"The most that ca,n be said of this Grant patent is that it is ,II discovery of II new use for an old deVice, which does not involve patentability. * * * The advantages claimed for it, and which it no doubt possesses to a considerable degree, cannot be beld to this result; it being well settled that utility cannot contr,ol the language of the statute, which limits the benefit of the patent laws to things which are new as well as useful. The fact that the pawpted article has gone into general use is evidence of lts utility, but not conclusive of that, l\nd still less of its.,patentable novelty."
The supreme courtof the United States, in the case of Aron v. Railway Co., 132 U. So 84, 10 Sup. Ct. 24, said, as stated in the syllabllilof said case:
"The same devices employed by him [the patentee] existed in earlier patents. All he did was to adapt them to the special purpose to which he contemplated their application, by making modification$' which did not require invention, but only the exercise of ordinary mechanical 'skill; and his right to a patent must rest upon the n'ovelty of the means he contrived to carry his idea Into practical IlJpplication." "
error in' the decree
frOIn, and it is affirmed.
R'Y-AN ·v. RUNYON et al. Court of Appeals, Circuit. May 4, 1899.)
A patent tor an lIln»;oved spring 1)llltt,ress made in tW9 parts, and in wh,icU,ac()nspicuoui:i, is the hinging the two sections together ,by "of ,a continu01,l!3"u,nl;>roken woven-wire facing, free from the ridge or hard unyielding hinge piece found in other hinged mat-, tresses, is not Infringed by a mattress in which the two sections have a central.lougitudinlj.1 ,il:'OIl brace· or· tie rod, which .allilo, ac.ts:as ia hinge rod, running through tbeupper facing of tue,p1atlress fr:om end to end.,·."
A patent for a bedbottolJI, in Which novelty consists altogether in connecting the, ends, of the stiffening rods or strips to the side edgeso( tb;ewoven-wire"fabric, Is Dot by a mattress In which ',there is no such connectlon,and whlcbhas its transverse tie wires attachedat their outer eJ;lds to the fXli-me. The'JGail 'patent, No. :399,,867,foran improvement in woven-wire mattresses or bed bottorus, construed, as limited by the prior state of the art to the specific formshowIl and described, and held not infringed.
The Ryan: patent, No; 403,143, relating to woven-wire mattresses or bed' bottoms, construed,as limited by 'the 'prior state of the art to the specific constructions, shown, ,and held' not infringed.