U.S. Supreme Court
Singer Mfg. Co. v. Cramer, 192 U.S. 265 (1904)
Singer Manufacturing Company v. Cramer
Argued March 18-19, 1903
Decided February 1, 1904
192 U.S. 265
Where it appears from the face of the patents that extrinsic evidence is not needed to explain the terms of art therein, or to apply the descriptions to the subject matter, and the court is able from mere comparison to comprehend what are the inventions described in each patent, and from such comparison whether one device infringes upon the other, the question of infringement or no infringement is one of law, and susceptible of determination on a writ of error.
Where the principal elements of a combination are old, and the devising of means for utilizing them does not involve such an exercise of inventive faculties as entitles the inventor to claim a patent broadly for their combination, the patent therefor is not a primary one, and is not entitled to the broad construction given to a pioneer patent.
To prevent a broadening of the scope of an invention beyond its fair import, the words of limitation contained in the claim must be given due effect, and the statement in the first claim of the elements entering into the combination must be construed to refer to elements in combination having substantially the form and constructed substantially as described in the specifications and drawings.
Where the patent is not a primary patent and there is no substantial identity in the character of two devices except as the combination produces the same effect, and there are substantial, and not merely colorable, differences between them, there is no infringement of the earlier patent.
This controversy relates to an alleged infringement by the petitioner, a New Jersey corporation, of United States letters patent No. 271,426, issued to the respondent on January 30, 1883, for "a new and improved sewing machine treadle." For convenience, the petitioner will be hereafter referred to as the Singer Company, and the respondent as Cramer.
The treadle device used by the Singer Company on its sewing machines, which it was charged infringed the Cramer patent, was covered by letters patent No. 306,469, dated October 14, 1884, issued to the Singer Company as the assignee of one Diehl.
The file wrapper and contents exhibit the following proceedings in the Patent Office respecting the Cramer patent: the chanroblesvirtualawlibrary
original application was filed on May 25, 1882, and was for the grant of letters patent to Cramer "as the inventor for the invention set forth in the annexed specification." The specification and oath thereto read as follows:
"I, Herman Cramer, of the City of Sonora, in Tuolumne County, in the State of California, have invented certain improvements in a treadle, to be used in sewing machines, or other machinery where a noiseless treadle may be required, of which the following is a specification:"
"My invention consists of the usual platform marked 'A' in Fig. 1 of diagram on treadle bar. The ends of said treadle bar, marked 'B,' are shaped like the letter V, and rest in socket in lower end of a brace 'C,' the socket being [image of inverted playing card 'spade'] shaped, the brace 'C' cast in one piece, and the treadle bar and platform on the bar is also cast in one piece."
"The treadle bar rests in socket in brace 'C,' which is immediately above a cross-brace usually in machines to keep them from spreading apart, the nut on end of cross-brace is marked 'D.' Letter 'M' immediately beneath cross-brace and treadle bar is an oil receiver to retain any drippings of oil from the bearings of treadle bar."
"My invention consists in having the ends of the treadle bar V-shaped to fit in hole in brace 'C,' also ['spade' image] shaped to receive the ends of the treadle bar."
"This V-shaped treadle bar in brace 'C' entirely prevents noise from the treadle, is self-adjusting, and does away with the necessity of cones and set screws now in use. This I claim as my invention. Fig. 1 represents platform 'A' and treadle bar, the ends of which are V-shaped and marked 'B.'"
"Fig. 2 represents the lower end of brace 'C' with hole ['spade' image] shaped to receive the ends of treadle bar 'B.' 'D' represents nut on end of cross-brace immediately below treadle bar."
"State of California"
"County of Tuolumne"
"Herman Cramer, the above-named petitioner, being duly
sworn, deposes and says that he verily believes himself to be the original and first inventor of the improvement in a noiseless self-adjusting treadle described in the foregoing specification, that he does not know and does not believe that the same was ever before known or used, and that he is a citizen of the United States."
The application was referred to the examiner, who, on May 29, 1882, wrote to Cramer, in care of his attorneys, as follows:
"The application is not prepared in conformity with the rules of the office. The specification is written on both sides of the pages, while the rules direct that it should be written on one side of each page only."
"No claim is appended to the specification. The oath is incomplete, as section 39 of the rules requires applicants to state under the oath if the invention has been patented to them, or with their knowledge and consent to others in any foreign country, and, if so, the number, date, and place of such patent or patents. Reference is made to the patent to G. W. Gregory, No. 256,563, April 18, 1882, which exhibits the alleged invention."
On August 3, 1882, the following substitute specification, concluding with an oath similar to that appended to the prior specification, was sent to the Patent Office:
"I, Herman Cramer, of the City of Sonora, in Tuolumne County, in the State of California, have invented certain improvements in a treadle and brace to be used in sewing machines or other machinery where a noiseless treadle may be required, of which the following is a specification:"
"My invention consists in a combination of the usual platform marked 'A,' in Fig. 1 of diagram on treadle bar. The ends of said treadle bar marked 'B' are to bear against mufflers."
"The treadle bar bearings are in and on brace 'C.' The treadle bar rests in socket in brace 'C,' which is immediately above a cross bar usually in machines to keep them from spreading apart. "
"The nut on end of cross-bar is marked 'D.' Letter 'M,' immediately beneath cross-bar, and treadle bar, is an oil receiver to retain any drippings of oil from the bearings of treadle bar."
"The treadle bar, mufflers, and brace 'C' are held between the right and left legs of the machine by means of a brace bar underneath the treadle bar."
"This brace and socket or bearing in or on brace is in one piece."
"The treadle bar with mufflers on the ends, working or bearing in or on brace, entirely prevents noise from the treadle, is self-adjusting, and does away with the necessity for cones and set screws now in use."
"Fig. 1 represents platform 'A' and treadle bar, the ends of which may be V-shaped, or any shapnd set screws now in use."
"Fig. 1 represents platform 'A' and treadle bar, the ends of which may be V-shaped, or any shapnd set screws now in use."
"Fig. 1 represents platform 'A' and treadle bar, the ends of which may be V-shaped, or any shape to suit, marked 'B.'"
"Fig. 2 represents the lower end of brace 'C.'"
"D' represents nut on end of cross-bar immediately below the treadle bar."
"What I claim is a combination of brace 'C' with socket or bearing in it or on it, to receive the treadle bar with the mufflers at the ends of treadle bar or in or on brace 'C' in connection with said brace 'C,' and the treadle bar in connection with brace 'C,' and mufflers to work in or on brace 'C,' substantially as set forth."
On August 14, 1882, the examiner wrote Cramer, in care of his attorneys, as follows:
"Applicant's amended claims are met by the patent to J. E. Donovan, June 28, 1881, No. 243,529, in view of which a patent is again refused."
Following this rejection, there was filed a revocation of the power of attorney which had been executed by Cramer in favor of the attorneys who had theretofore conducted the proceedings, and an appointment of other attorneys for the further prosecution of the application. On October 17, 1882, the substituted attorneys sent to the Patent Office a new drawing and an amendment of the specification on file, which amendment consisted in cancelling all the specification except the chanroblesvirtualawlibrary
signature and substituting for the matter so stricken out the following:
"Be it known that I, Herman Cramer, of Sonora, in the County of Tuolumne and State of California, have invented a new and improved sewing machine treadle, and I do hereby declare that the following is a full, clear, and exact description of the same, reference being had to the accompanying drawing, forming part of this specification."
"My invention relates to improvements in the bearings of sewing machine treadles, and it has for its object to provide means, first, to keep the treadle bearings rigidly in line and at a fixed distance apart to avoid friction, and second, to make its movement in use noiseless. To this end, my invention consists in the construction and combination of parts hereinafter fully described and claimed, reference being had to the accompanying drawings in which --"
"Fig. 1 is a perspective view of a portion of a sewing machine showing my invention."
"Fig. 2 is a transverse vertical section through one bearing of the treadle."
"A represents the treadle provided with the usual pitman connection by which to run the sewing machine wheel. B represents the two trunnions cast as a portion of the treadle and extending from its sides into loopholes in the common cast-iron cross-brace C. These trunnions are sharpened to an edge or corner along their lower sides, and the lower end of the loophole is hollowed to an angle more obtuse than the edge of the trunnion, to serve as a bearing for the same and permit the rocking motion common to treadles."
"C represents the usual cast-iron double brace connecting the two end legs diagonally in a plane generally vertical. The lower ends of this brace are secured directly to the web of the legs by bolts d, and for convenience and strength I make the two ends of the common cross-bar D serve as these bolts. The upper ends of the brace are secured as usual, either to the web of the legs or to the table of the machine near the legs. "
"The treadle and its trunnion bearings are wholly independent of the cross-bar D, except its service as stated, to hold the brace to the legs. The bearing holes in the brace are formed into long vertical loops to permit the entrance of the treadle."
"Pieces of leather F, or other soft material, cover the top and end of each trunnion to serve as cushions to keep the same close in its bearing, to prevent the noise which would result were the trunnions permitted to bounce and thump end-ways when the treadle is in motion. The leather F is fitted to the curve of the upper side of the trunnion, which is an arc of a cylinder whose center of oscillation is the lower edge of the trunnion; the same leather also interposes between the end of the trunnion and the adjacent iron. f is a block serving as a mere backer to which the cushion F is attached. This block conforms to the back and top side of the cushion, and fills the loophole in the brace above the trunnion. It also has tangs or projections e, resting in suitable recesses in the brace C, which are held between the brace and the web of the leg E, by which means the block and cushion are held in place. Below the bearings of the trunnions B, I provide cups, M, attached to the ends of brace C, to catch the oil that usually drips from such bearings."
"By this construction, my treadle bearings are rigidly fixed and in no way liable to get out of line or to require adjustment; the usual noise is prevented, and overflowing of oil is caught before it can do damage."
"I am aware that sewing machine treadles have before been provided with V-shaped bearings, and I do not claim the same as my invention, but --"
"What I claim and wish to secure by letters patent is --"
"1. The vertical double brace joining the legs of the two ends of a sewing machine, provided with holes through its lower extremities to serve as bearings, in combination with a treadle provided with trunnions fitted to oscillate in said bearings substantially as specified. "
"2. The sewing machine legs E, the vertical double brace C secured thereto and provided with holes to serve as bearings for the treadle A, and the treadle provided with trunnions B to oscillate in said bearings, in combination with the cushion F and the block f, as and for the purpose specified."
Accompanying the new specification was the following communication, signed by the attorney:
"A new oath is herewith filed. Gregory, referred to, pivots the grooved trunnions of his treadle upon knife edges secured within the upper loops of two collars, which are secured to the cross-bar by means of set screws to keep them from turning. Donovan pivots his treadle upon its trunnions having sharpened edges, in grooves in the cross-bar, where it is held by collars provided with flanges projecting over the trunnions. Applicant pivots his treadle upon the sharpened edges of its trunnions in loop holes in the two ends of the brace which is bolted to the legs of the machine by the two ends of the cross-bar. This service of the cross-bar might be as well performed by two short bolts, but, the bar being a usual cross-tie to stiffen the legs, applicant uses its ends as bolts to hold his brace ends to the legs. We have rewritten the specification to elucidate the inventor's claim. Should the case meet with favorable consideration, a new drawing will be furnished. For the purpose of examination, see pencil sketch on sheet of drawing filed."
On October 19, 1882, the examiner wrote Cramer, in care of his attorney, as follows:
"The case has been reconsidered in connection with the substituted specification filed the 17th inst., and the examiner holds that the references previously cited -- that of Gregory in particular -- meets the alleged invention. The case is accordingly rejected."
To this letter the following reply was made by the attorneys for Cramer:
"The examiner will please notice that applicant's invention places both bearings of the treadle in the cross-brace."
"By this means, they may be made perfectly true in line,
either by casting or drilling, and they cannot be thrown out of line, either by use, or by the most awkward setting up."
"Therefore, one source of friction is avoided. All the references have shown bearings made of two separate pieces which could readily be set up out of line, or even be worked loose. The advantage is obvious."
"A reconsideration is respectfully asked."
This closed the correspondence. Soon afterwards, notification was given that the patent had been allowed, and letters patent embodying the specification last above set forth, headed "Treadle for sewing machines," etc., were issued, bearing date January 30, 1883. The following is a facsimile of the drawing referred to in the specification:
The alleged infringing device is delineated on the following fac simile of the first sheet of the drawing attached to the Diehl patent: chanroblesvirtualawlibrary
In this specification, Diehl declared his invention to consist in "certain new and useful improvements in sewing machine stands and treadles," and the object to be
"to secure a permanent and reliable support and adjustment for both the band wheel and treadle, and to preserve their respective relative positions, so that they will always cooperate to produce the best results with the least danger of friction or binding."
The claims were five in number, as follows:
"1. In a sewing machine stand, a cross-brace having supports for both the band wheel and the treadle integral with said brace."
"2. In a sewing machine stand, a cross-brace having supports for both the band wheel and the treadle integral with
said brace, and provided also with means for adjusting and taking up the wear of such band wheel and treadle."
"3. In a sewing machine stand, a cross-brace adapted to connect the legs or side pieces thereof, provided at one side with bearings for the flywheel crankshaft, and having a support at its base for the treadle, substantially as set forth."
"4. The combination, with the cross-brace of a sewing machine stand, of a crankshaft and a treadle, both mounted in the said brace, substantially as set forth."
"5. A cross-brace for sewing machine stands, having at its base a cross-bar, combined with a treadle mounted in said cross-bar, substantially as set forth."
To recover damages for alleged infringement of the first claim of the Cramer patent in the use by the Singer Company of the Diehl device just referred to, Cramer brought this action at law against the Singer Company on October 8, 1896, in the Circuit Court of the United States for the Northern District of California. By amendment of the declaration, the recovery was limited to damages sustained by infringements committed within the Northern District of California. In the answer filed on behalf of the Singer Company -- in addition to excepting to the jurisdiction of the court and pleading as res judicata a former judgment rendered in favor of the defendant in an action brought by Cramer against one Fry, an employee of the Singer Company, 68 F.2d 1 -- defenses were interposed of want of novelty and utility and lack of invention, and infringement was denied.
A trial was had which resulted (by direction of the court, sustaining the plea of res judicata) in a verdict and judgment for the defendant. This judgment was reversed by the Circuit Court of Appeals for the Ninth Circuit. 93 F.6d 6. On a second trial, a verdict was rendered for Cramer and judgment was entered thereon for the sum of $12,456. On appeal, this judgment was affirmed by the Circuit Court of Appeals for the Ninth Circuit. 109 F.6d 2. A writ of certiorari was thereafter allowed by this Court. chanroblesvirtualawlibrary