it may be excessive, but by adopting it both to effect the final grip and then to impart movement to the head blocks after the engagement of the tire with the machine had been secured by means of gripping blocks capable of an exact and correlated adjustment. The commercial success fortifies the strong presumption of validity.

As infringement of claim 5 was not and could not be controverted, if the claim is valid, the decree must be affirmed.

(243 Fed. 575)

AMERICAN SAFETY DEVICE CO. v. LIEBEL-BINNEY CONST. CO. (Circuit Court of Appeals, Third Circuit. July 3, 1917.)

No. 2204.

1. PATENTS 313-SUIT FOR INFRINGEMENT-DISMISSAL ON MOTION.

The court has power to dismiss a bill for infringement on motion, on the ground that the patent is void for lack of invention shown on its face; but such power should only be exercised where the matter is free from doubt, and where invalidity so clearly appears that no testimony can change its legal aspect.

2. PATENTS32S-VALIDITY-SCAFFOLD.

The Foster patent, No. 763,274, for a scaffold, is void on its face for lack of invention, in view of the prior art.

Appeal from the District Court of the United States for the Western District of Pennsylvania; Charles P. Orr, Judge.

Suit in equity by the American Safety Device Company against the Liebel-Binney Construction Company. Decree for defendant, and complainant appeals. Affirmed.

C. P. Goepel, of New York City, and Clarence P. Byrnes, of Pittsburgh, Pa., for appellant. Wallace R. Lane and George Mankle, both of Chicago, Ill., for appellee.

Before BUFFINGTON, MCPHERSON, and WOOLLEY, Circuit Judges.

WOOLLEY, Circuit Judge. This is a bill charging the defendant with infringement of Letters Patent No. 763,274, issued June 21, 1904, to Clair Foster, and assigned to the plaintiff. At the opening of the hearing the defendant moved to dismiss the cause on bill and answer, upon the ground that the patent is void on its face. The District Court granted the motion and dismissed the bill without an opinion. The plaintiff brings this appeal, specifying error to the court, (1) in holding the claims of the patent invalid, and (2) in so holding upon the face of the patent and without taking proof.

[1] Upon the matter of procedure it is sufficient to say, that the power of a court in patent litigation to dismiss a bill on demurrer (or on its modern equivalent, a motion to dismiss) upon the ground that the patent is void for lack of invention shown on its face, is not open to question. Victor Talking Machine Co. v. Hawthorne and Sheble Mfg.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes 156 C.C.A.-18

Co. (C. C.) 168 Fed. 554; Hogan v. Westmoreland Specialty Co., 154 Fed. 66, 83 C. C. A. 178; Wills v. Scranton Cold Storage and Warehouse Co., 153 Fed. 181, 184, 82 C. C. A. 355; Chinnock v. Paterson Co., 112 Fed. 531, 533, 50 С. С. А. 384. If the patent is manifestly invalid on its face, the court may stop short at the instrument and dismiss the bill (Brown v. Piper, 91 U. S. 37, 44, 23 L. Ed. 200), even when the question of validity is not raised by the pleadings (Slawson v. Grand Street R. R. Co., 107 U. S. 649, 2 Sup. Ct. 663, 27 L. Ed. 576).

This is very considerable power, hence courts of this circuit have been careful to heed the admonition, that in its exercise a court should declare a patent invalid upon its face only where the matter is free from doubt and where invalidity so clearly appears that no testimony can change its legal aspect. Wills v. Scranton Cold Storage and Warehouse Co., supra; Hogan v. Westmoreland Specialty Co., supra.

We therefore approached the consideration in this case with appropriate caution; yet we are forced to say, that a careful study of the pleadings and elaborate briefs does not alter the conviction reached upon first view that the patent is one, which, failing even to suggest invention, shows invalidity on its face.

[2] The subject of the patent is a scaffold. It consists simply of pairs of steel cables hanging from outriggers of a building; crossbars secured to each pair of cables by bolt clamps; boards resting on the cross-bars forming a platform; the platform being extended by multiplying the number of cross-bars, and being raised and lowered by adjusting the bolt clamps. The original of this conception, long used and never patented, was either the familiar boatswain's chair or painter's hanger, whichever was first in the art years ago. There followed scaffolds of many designs, varied to meet the requirements of building construction in the change from low masonry to high steel frames, embodying almost always the elemental idea of those primitive devices. Among them we shall mention only the patent to Clark, No. 673,384 (1901), which constituted an advance in the art of no very considerable degree. It consisted of outriggers from which were suspended perforated metal strips or ribbons in pairs; cross-bars fastened to each pair of strips by means of bolts or pins in the perforations; planking on the cross-bars forming a platform; platform being extended by increasing the cross-bars and adjusted by shifting the pins at the points of perforation. With Clark in the prior art, all that Foster did was to substitute steel cables for metal ribbons and bolt clamps for perforation pins. All that he obtained over Clark was the greater flexibility of steel cables, and adjustability without reference to predetermined positions. Did this involve invention? We think not. Is there sufficient doubt about it to justify the taking of testimony in an attempt to overcome the immediate conviction that invention is lacking? We think not.

The decree below is affirmed.

(243 Fed. 577)

NEW YORK SCAFFOLDING CO. v. LIEBEL-BINNEY CONST. CO.

(Circuit Court of Appeals, Third Circuit. July 3, 1917.)

No. 2205.

PATENTS328-INVENTION-SCAFFOLD-SUPPORTING MEANS.

The Henderson patent, No. 959,008, for a scaffold-supporting means, discloses merely a different construction of the device of the prior Murray patent, No. 854,959, without any real improvement, and is void for lack of patentable invention.

Appeal from the District Court of the United States for the Western District of Pennsylvania; Charles P. Orr, Judge.

Suit in equity by the New York Scaffolding Company against the Liebel-Binney Construction Company. Decree for defendant, and complainant appeals. Affirmed.

The following is the opinion of ORR, District Judge:

This is an ordinary patent suit in which United States patent No. 959,008, for "scaffold-supporting means," issued May 24, 1910, to E. H. Henderson is involved. The defenses are that the patent is invalid for want of invention and that, if the patent be valid, yet defendant has not infringed. The claims of the patent in issue here were in issue in certain other litigation brought by the plaintiff herein against one Whitney in the District Court of the United States for the District of Nebraska. The result in that litigation was that the Court of Appeals of the Eighth Circuit, by a divided court, reversed the court below and adjudged the claims 1 and 3 of the patent valid. This present case has been under consideration for some time in the hope that this court would reach the same conclusion that was reached by the Circuit Court of Appeals of the Eighth Circuit. New York Scaffolding Co. v. Whitney, 224 Fed. 452, 140 С. С. А. 138. The rule of comity does not demand that a judge of another court shall "abdicate his individual judgment, but only that deference shall be paid to the judgments of other co-ordinate tribunals." Mast, Foos & Co. v. Stover Manufacturing Co., 177 U. S. 485-489, 20 Sup. Ct. 708, 710 (44 L. Ed. 856).

The necessity of scaffolding in all building operations of magnitude has ever been apparent. Originally, scaffolding was made to rest upon the ground and was increased in height as the building of the structure demanded. The expense of scaffolding necessarily increased with the height of the scaffolds. The natural result was that when the builder could drop his scaffolding from the top of the building with less expense than would be required to raise it from the ground he naturally did so. So with respect to the exterior decoration of a building, when the painter's ladders were not long enough to reach to the height required, the painter devised means by which he could sustain a platform, or as it is often called, a painter's stage or boat, from the roof of the building. The painting of a vessel's hull at sea involved necessarily the dropping of a platform or a plank from some supports made to rest upon or above the deck. The swinging of a boat from the davits would suggest a means by which the painter's stage used in the painting of a vessel could be swung. To those who are accustomed to observe, it is a matter of common knowledge that many men use different means to accomplish the result at which they may all aim; but it is also observed that men in the same art will oftentimes use the same means to accomplish the end sought, although there may have been great distance between them and no communication.

Utility is often urged as an important factor in determining patentability, but utility must be connected with invention in order to have weight in such determination. Having found that there was no invention in the Henderson device, a consideration of its utility is of slight value, yet the extent to which

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

the plaintiff uses the device of the Henderson patent, if it be less in degree than the extent to which other devices controlled by it, intended to accomplish the same purpose, are used, some light, though little, may be thrown upon the question of novelty, which is also a material element of patentability.

The plaintiff is not a manufacturer of devices, but is the holder and owner of patents under which licenses have been granted to the Patent Scaffolding Company, which constructs or causes others to construct the devices alleged to be covered by the patents. The practice of the Patent Scaffolding Confpany is not to sell the devices, but to rent them to contractors who may require the use of scaffolding in the erection of tall buildings. By judicious advertising and by permitting contractors to have the devices for the necessary period, at less than what it would cost to construct them, the Patent Scaffolding Company has created a large business, and the plaintiff receives substantial returns under the licenses granted by it.

The facts as revealed by the testimony negative the suggestion that there is anything novel in the device of the patent in suit. The demand created for the device is not the result of its novelty combined with utility, but of the business methods of the Patent Scaffolding Company.

We find from the specifications of the patent what Henderson desired to attain as expressed in the following language: "My invention relates to an improved means for supporting scaffolds used in connection with the construction of buildings and their repair. Scaffolds for this purpose are preferably of the swinging type supported by cables from outriggers temporarily secured to the upper part of the building. It has been the practice in the past to associate hoisting means with the cables at the outriggers and in some cases it has been proposed to use such hoisting means in connection with the cables on the scaffold to adjust the height as required in connection with the work. My invention relates to an improved form of hoisting mechanism carried by the scaffold for securing the same to the cables, the upper ends of which are connected to outriggers, generally temporary in character, secured to the upper portion of the building."

It is to be noticed in that language that Henderson recognized the prior use of scaffolds of the swinging type, supported by cables from outriggers, and that he recognized the use of the hoisting means in connection with the cables on the scaffold to adjust the height as required in connection with the work. Henderson did not have to say, what every one knew, that as part of a scaffold floor, pieces were used extending between and resting upon cross-beams called putlogs.

In considering the claims in suit, we find that, in addition to these various elements, Henderson claimed a combination with U-shaped bars in which the crossbeams or putlogs are laid, upon which the floor pieces are sustained. The claims are as follows:

Claim 1: "A scaffold consisting in the combination of crossbeams, floor pieces extending between such beams, and a hoisting device associated with each end of each beam, each hoisting device consisting of a continuous U-shaped metal bar extending around the under side of and upward from the associated beam, and a hoisting drum rotatably supported by the side members of such bar."

Claim 3: "A scaffold consisting of a plurality of U-shaped bars arranged in pairs, a crossbeam laid in and extending between each pair of such Ushaped bars, a floor laid upon said crossbeam, a drum rotatably supported between the upwardly extending side members for each of said U-shaped bars, and means for controlling the rotation of said drum."

The support of the hoisting device by the side members of the metal bar is found in United States patent to Murray, 854,959, dated May 28, 1907. In the United States patent to Bowyer and Casperson, No. 382,252, under date of May 1, 1888, is found a painter's stage in which there is a continuous metal bar extending around the under side of and upwardly holding one end of the plank upon which the painter rests. A similar one must be at the other end. The plank rests upon the lower part of that bar, just as the crossbeam rests upon the lower part of the U-shaped bar called for in the patent in suit. The plank, of course, is not large enough to afford support for bricks or mortar, but if that plank support, as called for in the Bowyer and Casperson patent, be placed at right angles to the building and used as a putlog, and a similar plank resting in the same way be used as another putlog, upon which floor pieces can be placed, the arrangement would be the same as contemplated by Henderson in the patent in suit, so far as the resting of the beam upon the metal which forms the base of the U-shaped bar. The erection of outriggers for the support of the Bowyer and Casperson devices, arranged as suggested, would accomplish the same result as the device of Henderson and just as satisfactorily.

This court is not unmindful of the difficulty of ascertaining what is and what is not invention. In every case of a rearrangement of old parts it is urged that, because such rearrangement seems simple and natural, the court must avoid falling into the error of holding that there is no invention. It is insisted that the device under consideration would be found in prior patents and publications, if it were so simple to the men who claimed invention as appears after the patent has been granted. The argument is good where the patented device has filled a long-felt want and has immediately leaped into favor upon its own merits; but it is not sound where the device is one which has become widely used by reason of extensive advertising and reasonable charge for its use. It is a matter of observation that of recent years patents have been multiplied beyond precedent and not in proportion to the increased population. Many of them, which have each very slight variations from the other, are found in the same art. In many suits brought upon such patents it has developed that the method of the patent has been a shop practice for years, or that the device of the patent has been used by artisans to accomplish the result which the patentees hoped to secure especially for himself.

It was the intention of the framers of the Constitution that inventors could only be protected. It is well said by Judge Strong in Pearce v. Mulford, 102 U. S. 112-118, 26 L. Ed. 93: "But all improvement is not invention, and entitled to protection as such. Thus to entitle it, it must be the product of some exercise of the inventive faculties, and it must involve something more than what is obvious to persons skilled in the art to which it relates." It seems clear that to a person skilled in the art of making or adjusting scaffolding, if he had a Bowyer and Casperson patent and the Murray patent before him, the arrangement of Henderson would be obvious if he desired to use it.

In the neighborhood of 70 per cent. of the scaffolding devices put out by the Patent Scaffolding Company are used, and are intended to be used, in accordance with the disclosure of the Murray patent, No. 854,959. The Patent Scaffolding Company in its catalogue in illustrations illustrated the Murray arrangement, and not the Henderson. According to the claims of the Henderson patent in suit, the frames of the machines are intended to be parallel with the wall of the building upon which they are to be used. The plane of the frames of the Murray machines are intended to be in the plane of the putlog which, of course, must be approximately at right angles to the building in order that the flooring of the scaffolding resting thereon may be extended along the side walls of the building. The putlogs indicated in the Murray patent consist of two pieces of angle iron bolted together in connection with the frames in which the hoisting devices are supported. This arrangement of the Murray patent makes the portions of the angle iron where they are connected with such frame equivalent to the bottom part of the U-shaped frame of the Henderson patent. In connection with the frames described in the Henderson patent in suit, in more than two-thirds of the machines used, the putlogs are the angle irons of the Murray patent and the bolts connecting the two angle irons with each frame rest upon the lower part of the "U" of the Henderson frame; that is to say, the Henderson frame, at this lower part, extends between the two pieces of angle iron below the bolts connecting the same. It therefore appears that in the vast majority of the frames used the putlogs do not extend through the frames as called for in the patent in suit, nor could they do so, because, as we have said, the vertical plane of the frame is in the vertical plane of the putlogs. This conclusion is strengthened by the fact that, while the plaintiff put in evidence a large number of photographs show