NEW YORK SCAFFOLDING CO. v. CHAIN BELT CO. et al.

Suit by petitioner against Chain Belt Company et al. for infringment of a patent considered in No. 22. The bill contains the usual allegations, and prays for an accounting, for damages, and injunctions, preliminary and final.

A copy of the opinion of the Circuit Court of Appeals for the Eighth Circuit in the suit of the Scaffold Company against Egbert Whitney, expressing the judgment of the court sustaining the validity of the patent and adjudging Whitney to be an infringer of it, is attached to the bill.

The answer denied invention and sets forth a number of patents as anticipations, among others, a patent to William Murray. A dismissal of the suit was prayed.

A trial was had upon the issues thus made, which resulted in an interlocutory decree awarding an injunction, adjudging infringement, and an accounting.

'That an injunction be issued under the seal of this court unto the said Chain Belt Company, and the said Egbert Whitney, enjoining them, and each of them, their several agents, officers, employes, and all persons in privity with them, and each of them, from making or selling, or causing to be made or sold, the machine known as 'Whitney Scaffold Hoist Machines' and 'Little Wonder' machines, to be used in the combinations of claims 1 and 3 of said U. S. patent No. 959,008, or from using or causing said machines to be used in the combinations of said claims, or from infringing upon said claims in any manner whatsoever.'

The Circuit Court of Appeals agreed with the District Court that the Henderson patent exhibited invention, expressing the view, however, that, while its advance was slight, it was 'not so wholly wanting in invention or novelty as to justify a finding contrary to the presumptive validity of the grant to him.' The court fortified its views by the decision of the Circuit Court of Appeals of the Eighth Circuit in New York Scaffolding Co. v. Whitney, 224 Fed. 452, 140 C. C. A. 138, citing, however, to the contrary, the decision of the Circuit Court of Appeals of the Third Circuit, in New York Scaffolding Co. v. Liebel-Binney Construction Co., 243 Fed. 577, 156 C. C. A. 275, the decision we have just affirmed. 254 U. S. 32, 41 Sup. Ct. 21, 65 L. Ed. ——.

The court, however, decided that the decree was 'erroneous in finding infringement in the manufacture or sale or in any use of the Little Wonder machine.' The decree of the District Court was reversed, with directions to enter a decree in accordance with the views expressed.

The Henderson patent was made the basis of recovery in New York Scaffolding Co. v. Liebel-Binney Construction Co., No. 22, just decided, and there we estimated its inventive quality as tested by the prior art, and as representative of that we took the patent of William Murray, accepting it as an advance upon the prior art.

We need only add to what was there said that our conclusion is confirmed by Henderson's testimony, which we insert in the margin somewhat fully, as it cannot be adequately represented in condensation or by paraphrase.1 From his testimony it is certain that his scaffold did not cause him sleepless nights or laborious days. He was not experienced in the art of which it is an example. It may be that the conceptions of invention cannot be tested by such, or by moments of time, and that originality does not need the aid or delay of drudgery; but one is forced to think that, where a change is readily made in any composite instrumentality, the change is not the prompting or product of invention. Indeed, it is a common experience in patent cases that mere mechanical facility can alter or change the form in which originality and merit expressed themselves, and assert for it the claim of invention. This case is an example of such pretension. We may repeat counsel's question, and ask: What did Henderson do that Murray did not do? He made the U-frame which supported the hoising device of continuous metal, instead, as Murray did, of several pieces riveted together, and in the stirrup which it formed he rested the putlogs or beams, loosely making a hinged joint connection between the stirrup and the hoisting machines, with a resulting flexibility. This consequence and its advantage, if it have such,2 it is admitted he did not discern, and naturally. His purpose was evasion. To evasion he was prompted. Beyond what was necessary to that he exerted no vision or conception. He had had no experience in the art, and what knowledge of the Murray scaffolding he had was obtained by a 30 minutes' observation of it in operation. We yield to the assertion of counsel that he cannot be deprived of an advantage because he did not discern it, but the same concession must be given to Murray. He was entitled to all of the benefit that he claimed for his device, or that can be given to it by formal changes.

It will be observed that the Circuit Court of Appeals and the District Court disagreed in their views of the relation of the Little Wonder machine to the Henderson device—the latter considering it an infringement; the former determining otherwise, and to that extent reversing the decree of the District Court. Both courts, however, concurred in ascribing invention to the Henderson device. In this both courts erred, and the decree of the District Court is therefore reversed, and the case remanded to that court, with directions to dismiss the bill of complaint, on the ground that the Henderson patent is invalid; it exhibiting no invention.

So ordered.