ing the frame of the Henderson device, it did not put in evidence any photographs showing the use of the Henderson device and the putlog in the same relation as contemplated by the Henderson patent. The Henderson patent has not supplanted others, nor has the influence of its owner been exerted to that end. It barely represents a step in the art. It does not disclose invention.

In view of the conclusion reached by this court that claims 1 and 3 of the patent in suit are invalid, it is unnecessary to do more than touch upon the matter of infringement. The evidence of infringement is meager, and yet, if the claims of the patent in suit were to be held valid with a range of equivalents, infringement would be found. The defendant uses a device, known as the Whitney scaffolding device, which was the subject of the litigation in the case in the Eighth circuit above referred to. 224 Fed. 452, 140 C. C. A. 138. If the patent in suit were held to be valid to the exact form as described in the specifications, infringement would not be found, because the Whitney device does not appear to be an imitation of the Henderson device. While similar, they are not so like each other that builders would be deceived and take one for the other.

Another matter should be referred to. At the trial in this case, Whitney, who was the defendant in the suit in the Eighth circuit, was permitted to intervene in the suit in this court, without objection by either party. After the trial, the plaintiff moved for permission to file a supplemental bill, in which the only new matter alleged was the intervention of Whitney in the present case and the final determination of the case in the Eighth circuit against Whitney's contention. It was not pretended that such decision would operate as res adjudicata, because the liability of the defendant in this suit could not be the liability of Whitney. As the case stood at the time of the motion, the plaintiff in this case and the plaintiff in the litigation in the Eighth circuit were one and the same person; but the defendant in this case was different from the defendant in the case in the Eighth circuit. While the decision in the Court of Appeals in the Eighth circuit might have been conclusive upon Whitney with respect to the validity of the patent in suit, yet it would not be conclusive upon the Liebel-Binney Construction Company, for the reason that the latter did not have its day in court.

The court is of the opinion that the plaintiff is not entitled to file its supplemental bill and has refused the motion.

The bill in this case must be dismissed, at the cost of the plaintiff. Let a decree be drawn.

C. P. Goepel, of New York City, and Clarence P. Byrnes, of Pittsburgh, Pa., for appellant.

Wallace R. Lane, Robert H. Parkinson, and George Mankle, all of Chicago, Ill., for appellee.

Before BUFFINGTON, MCPHERSON, and WOOLLEY, Circuit Judges.

WOOLLEY, Circuit Judge. This is a suit for infringement of Letters Patent No. 959,008, issued to E. H. Henderson, May 24, 1910, and is here on the plaintiff's appeal from a decree of the District Court dismissing the bill on the ground of invalidity of the patent.

The patent is for scaffold-supporting means. The claims in issue are 1 and 3. The alleged infringing scaffold used by the defendant was known as the Whitney scaffolding device, manufactured and leased by Egbert Whitney under a junior patent. (Letters Patent No. 998,270 to Whitney.)

In the erection of modern steel frame structures, contractors have found it more economical to rent scaffolds than to buy them. This suit is a part of a controversy between rival scaffold renting concerns. In other litigation instituted by this plaintiff against another defendant, involving the validity of the same claims of the Henderson patent and infringement by the same device of the Whitney patent, the Circuit Court of Appeals for the Eighth Circuit, reversing the District Court for the District of Nebraska, held the claims valid and infringed. New York Scaffolding Co. v. Whitney, 224 Fed. 452, 140 С. С. А. 138. In reaching an opposite conclusion in this case upon precisely the same issues and upon substantially the same facts, the learned District Judge hesitated, as do we, in disturbing the force of a decision of a court of coordinate jurisdiction and in preventing uniformity of decision by yielding to his own convictions. Yet we feel this is a case where comity, being a rule of convenience intended to persuade, not to command (Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 488, 20 Sup. Ct. 708, 44 L. Ed. 856), should not prevail against an opposite judgment when based upon clear conviction.

The matters which induced the District Court to its judgment, holding invalid a patent previously declared valid by another court, are fully set forth in its opinion, supra. These appeal to us with like convincing force. We shall consider them briefly.

In determining whether Henderson's device was a contribution to the art, involving invention, though narrow, or was merely a departure from the art by formal changes in prior devices, we must inquire what Henderson did and what problem he solved.

Scaffolds are as old as buildings; and scaffolds of different types have conformed time out of mind to the types of buildings upon which they were used. When buildings were low, scaffolds likewise were low, and were constructed along lines of greatest convenience, namely from the ground up. When structures increased in height, scaffolds likewise increased in height to a point where the elements of cost and danger induced a change. Then instead of being built from the ground upward they were suspended from the roof downward. When this change was found expedient, the art went for information to other arts in which scaffolds, by reason of their peculiar uses, had never been built upon the ground but had always been suspended from above. Among these was the seaman's art, in which was found the boatswain's chair, a simple contrivance made of a board with ropes through each end after the manner of a child's swing, which converge toward and are connected with a main rope slung from the mast-head or cross-tree, and passed through an overhead block and returned to the operator, by which he raised or lowered his position along the mast. Then there was the painter's stage or hanger, which is nothing more than a longer board, the ends of which are attached to ropes suspended from the ship's rail, capable of being raised and lowered from above or by blocks from below, and used by sailors when painting the ship's sides. The painter's stage was brought to land and conveniently used upon buildings. It consisted of a plank or planks used as a platform resting on cross-bars, the ends of which were held by ropes passed through blocks, which in turn were suspended from large metal hooks so shaped as to securely grasp the roof of the building. This platform was readily adjusted by block and fall to any elevation.

This crude but much used device was improved by Bowyer and Casperson in their Patent No. 388,252 (1888) by arranging in one structure an enlarged cross-bar or putlog and a drum by which to operate the overhead block and fall and elevate and lower the platform, which extended from one putlog to the other.

Platforms of both the crude and improved types were sufficiently steady for sailors and painters who did their work while sitting, but they were not sufficiently firm and steady for the heavier and more active work of bricklayers. As the demand for overhanging scaffolds increased with the increasing height of modern buildings, Clark (Letters Patent No. 673,384–1901) disclosed a mason's platform for such buildings by hanging perforated metal ribbons or strips in pairs from projected out-riggers, attaching putlogs to each pair, and suspending platforms on the putlogs. The platform was adjusted by pinning the putlogs at different positions in the perforations. Foster secured a patent (No. 763,274–1904) for substituting steel cables for the metal ribbons and bolt clamps for the pin fastenings of Clark, which, though held invalid by this court for want of patentable invention (American Safety Device Co. v. Liebel-Binney Construction Co., 243 Fed. 575, 156 С. С. А. 273), was a scaffold in the art prior to Henderson. Scaffolds made like Clark and Foster in multiple pairs were found to possess rigidity, but they were adjustable only by changing the putlog sustaining bolts and pins, with loss of time and risk of injury. Cavanaugh overcame these difficulties by a patented device (No. 796,807-1905) for elevating scaffolds of this type by drums positioned on the out-riggers but operated by chains suspending loosely to the platform. Murray (No. 854,959—1907) improved upon Cavanaugh by changing the position of the drums from the projecting out-riggers to the platform. The hoisting mechanism of Murray consists of a drum with bearings mounted in upright arms of a rectangular metal frame connected and stiffened at the top and bottom by metal rods. The metal frame serves the double purpose of holding the drum in position and of affording a place for engagement with a putlog. To the lower part of the metal frame is rigidly attached one end of a putlog, the other end being similarly attached to the metal frame of another like hoisting mechanism. The drums in pairs are then connected with the pairs of steel cable of Foster. The platform extending from putlog to putlog may then be raised or lowered by winding or unwinding the drums in pairs. In this arrangement the drum frames are placed edgewise the building. This is to be noted because it is the principal thing, which, it is claimed, distinguishes Murray from the patent in suit.

This was the art when Henderson entered it. Henderson took the drum of Murray, positioned it in a drum frame in the same way and for the same purpose, but he made the frame U-shaped instead of rectangular, and changed the position of the frame and drum from edge to the building to flat with the building, thereby permitting a putlog to be loosely placed and held within the bend of the U. Much stress has been laid in this and other litigation on this difference in position of the drum and manner of engagement of the putlog. In this difference patentable invention is claimed, and has been found. 224 Fed. 452, 140 С. С. А. 138. This is the only difference we discern between Murray and Henderson. We are not satisfied that by this difference Henderson made any improvement, patentable or otherwise. He provided a loose and unfastened putlog in place of the fixed and fastened putlog of Murray, and lessened the fixity and rigidity of the whole platform, thereby correspondingly lessening the security of the workmen, which is just the opposite of what was pressed throughout the argument as the important consideration to induce masons to work with heavy materials upon swinging platforms. But however that may be, the evidence is that although Henderson followed Murray and claims to have improved upon his device, the Patent Scaffolding Company advertises only the Murray device, and seventy per cent. of the scaffolds it puts out and rents are the Murray device.

We do not see what problem was presented to and solved by Henderson. He did what Murray had already done, but did it in a different way. Patentable invention does not reside in mere difference, either of construction or result. The difference in construction is small indeed, involving nothing more than mechanical skill. The difference in result is a small saving of space upon the platform. This saving does not appear to have been demanded before the patent or valued after it. Finding no new problem presented or solved and no real improvement made, we cannot conceive patentable invention in Henderson's formal changes from the prior art. We are therefore of opinion that Claims 1 and 3 of the patent are void for want of patentable invention.

The decree below is affirmed.

(243 Fed. 583)

CHAMPION SHOE MACHINERY CO. v. UNITED SHOE MACHINERY CO.

(Circuit Court of Appeals, First Circuit. June 16, 1917.)

No. 1245.

PATENTS328-INVENTION-MACHINE FOR NAILING SHOE SOLES.

The Casgrain patent, No. 864,951, for a machine for nailing shoe soles, claim 4, held invalid for lack of patentable novelty, in view of the prior art, and especially of the Cutter patent, No. 582,579.

Appeal from the District Court of the United States for the District of Maine; Clarence Hale, Judge.

Suit in equity by the United Shoe Machinery Company against the Champion Shoe Machinery Company and another. Decree for complainant, and defendant named appeals. Reversed.

For opinion below, see 235 Fed. 139.

John H. Bruninga, of St. Louis, Mo., for appellant. Alexander D. Salinger and Frederick P. Fish, both of Boston, Mass., for appellee.

Before DODGE and BINGHAM, Circuit Judges, and ALDRICH, District Judge.

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

DODGE, Circuit Judge. The District Court has held claim 4 of United States patent 864,951, issued September 3, 1907, to Louis A. Casgrain, upon an application filed August 4, 1898, and now owned by the appellee, valid and infringed by both the corporations, who were defendants below. One of them had bought and used the machines held to infringe; the other had made and sold said machines. The defendant last referred to is the only appellant before us.

In the opinion of the District Court (United Shoe Machinery Co. v. Farmington Shoe Mfg. Co., 235 Fed. 139) the important features of the patent, of the machines held to infringe, and of the earlier patents relied on by said defendant, are so clearly and fully set forth as to render much description in detail of the construction and mode of operation of the various mechanisms there referred to unnecessary in this opinion.

The contention that the claim in suit is invalid in view of the prior art is first to be considered. The claim is for the combination, in a machine for inserting fastenings, of the following old elements:

(1) A horn or work support.

(2) A main driving shaft.

(3) Mechanism controlled by said shaft to depress the horn periodically. (4) A clutch for said shaft.

(5) Controlling means to throw said clutch into operation. (6) A treadle.

(7) Operating connections between said treadle and said means to start the machine.

(8) Positive connections between the treadle and horn, to raise the latter manually (i. e., operated or controlled by the workman or operator) when the machine is started.

The appellant says that all the elements of the above combination, operating in substantially the same manner, are found in two prior United States patents, both of them expired: One, No. 566,359, August 25, 1896, to Weeks & Tuttle, for a sole-nailing machine; the other, No. 582,579, May 11, 1897, to Solomon M. Cutter. Many other prior patents were referred to in the answer, but it is upon these two that the appellant mainly relies. The questions to be determined involve more especially the elements above identified as (4) to (8) inclusive.

As to the Weeks & Tuttle patent, the machine it describes has three treadles, side by side and separately operated. By depressing one of them the clutch is thrown into operation and the machine thereby started, which continues to run while this treadle is kept depressed, which treadle has no connections operating either to raise or to lower the horn or work support. By the depression of another treadle alongside the first, the horn is raised into working position before the machine starts; when so raised, it is locked in working position, and the same treadle cannot be operated to lower it. By depressing a third treadle, after the machine has been thrown out of operation by release of the second treadle, the horn is unlocked and lowered from its working position. Although the second treadle may be said to have "positive connections" between it and the horn, we agree with the District Court in being unable to regard the mechanism which this patent de