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    U.S. Supreme Court


    254 U.S. 24

    No. 22.

    Argued Oct. 7 and 8, 1920.
    Decided Nov. 8, 1920.

    Messrs. Frederick P. Fish, of Boston, Mass., and Frank Chase Somes and C. P. Goepel, both of New York City, for petitioner.

    Messrs. Robert H. Parkinson, and Wallace R. Lane, both of Chicago, Ill., for respondent.

    Mr. Justice McKENNA delivered the opinion of the Court.

    Suit for infringement by the Construction Company of a patent dated May 10, 1910, and numbered 959,008, for new and useful improvements in 'scaffold-supporting [254 U.S. 24, 25]   means,' granted to Elias H. Henderson. Petitioner is assignee of the patent.

    An injunction was prayed, accounting of profits, and damages.

    The patent is in the usual form, but a special manner of use of the invention is alleged. It is alleged that, since the acquisition of the patent, petitioner has been largely engaged in different cities of the United States in putting the invention into practice, and the manner thereof has been to construct and lease for use to builders and others, at a specified royalty or price per week, the scaffolds embodying the invention-petitioner retaining the ownership of and title to the scaffolds; they being returned to petitioner upon the completion by the lessees of the work for which the scaffolds had been required.

    The answer of the Construction Company directly put in issue certain of the allegations of the petition. It admitted, however, the use of scaffolds which it purchased from the Eclipse Scaffolding Company of Omaha, Neb., but alleged that such scaffolds did not contain or embody the invention protected by patent No. 959,008, in any way or manner.

    It is also alleged that petitioner, some time prior to February 21, 1914, brought suit in equity in the United States District Court for the District of Nebraska, against one Egbert Whitney, predecessor in title of the Eclipse Scaffolding Company, to the scaffolds sold by the latter company to the Construction Company, in which suit infringement of patent No. 959,008 was alleged.

    In that suit a patent of one William J. Murray was pleaded, but the Scaffolding Company withdrew its case as to that patent, and relied on claims 1 and 3 of the patent to Henderson, and the court decreed that the claims were void for want of invention, and it is alleged that the Construction Company 'is entitled to the protection of said decree.' [254 U.S. 24, 26]   On the issues thus made by bill and answer proofs were taken, and the court decreed against the patent, saying in its opinion that--

    And further:

    The decree was affirmed by the Circuit Court of Appeals. 243 Fed. 577, 156 C. C. A. 275.

    The Construction Company pleaded in defense, as we have said, the decree of the District Court of Nebraska in the suit of petitioner against Egbert Whitney; but that decree was reversed by the Circuit Court of Appeals. 224 Fed. 452, 140 C. C. A. 138. The reversal and the opinion of the Circuit Court of Appeals thereon are much relied on in this suit, and we may say constituted the inducement to issue certiorari. It is seemingly antithetical to the opinion and judgment under review, and the Circuit Court of Appeals for the Third Circuit felt and expressed the embarrassment of 'disturbing the force of a decision of a court of co- ordinate jurisdiction,' 'formed upon precisely the same issue and upon substantially the same facts.' The court, however, felt constrained to an 'opposite judgment,' and decided that Henderson made but 'formal changes' in the prior art, which involved no invention, and affirmed the decree of the District Court.

    Necessarily for an estimate of Henderson's patent we must consider the prior art. It is detailed by witnesses, explained by counsel, and illustrated. Specific descriptions are not necessary. We may refer to our own observation of the first forms of scaffolding. To quote [254 U.S. 24, 27]   District Judge Orr:

    The first forms of scaffolding which constituted the prior art are described by a witness as--

    In 1900, he testified:

    The Murray patent, therefore, is the step in the prior art preceding that made by Henderson, and a comparison of the latter's patent with it, the Murray patent, is imediately indicated.

    Murray describes his invention to be of 'new and useful improvements in adjustable scaffolds.' The object of it, he said, was to provide such a scaffold as would [254 U.S. 24, 28]   'permit of adjustment at any height during the construction of a building or the repair thereof.' And he claimed:

    The following is the illustrative diagram of the claim:

    (This cut appears on page 29 of U.S. Reports)

    Henderson describes his invention as 'certain new and improved scaffold-supporting means,' and further says it relates 'to an improved means for supporting scaffolds used in connection with the construction of buildings and their repair.' In other words, the patent is, as the Murray patent is, for improvement of scaffold-supporting means. And the details given by Murray, or necessarily implied by him, and the inevitable adjuncts 'of crossbeam and floor piece' are made elements in the combinations claimed in three claims. There is a change from the Murray hoisting device, and it is described to consist--

    The continuity of metal is the novel element asserted. Counsel emphasize it, not so much for itself as for what it permits. It permits, according to counsel, a 'hinged or loose jointed connection between the putlog (called in the claims 'crossbeams') and the [254 U.S. 24, 29]   frames that support the putlog and the hoisting mechanism,' and counsel say that this is a 'separate and distinct entity from the elements of the Murray patent, differing in structure, function, and result produced.' And of this it is insisted there was no suggestion in the Murray patent; it containing but a single claim and a

    single idea, 'the idea of supporting the scaffold to outriggers by means of auxiliary bars or rods,' so that the platform or scaffold by the lengthening of the cables can be raised to a greater height than before. In other words, the assertion is that Murray invented nothing and saw nothing in his device but means of raising the scaffold, and, to use counsel's word, all other 'functions' were [254 U.S. 24, 30]   beyond his vision. Or again, and to bring out clearly counsel's contention:

    The utility of this construction is the final assertion, and that the continuity of metal of the stirrup adds strength, and the loose jointed connection of the putlogs with it gives 'flexibility longitudinally and transversely of the platform' and 'enables the operator to raise the scaffold machines one at a time, allowing the putlogs to tip or hinge over the support of the U-frame, leaving the machine to stand erect at all times.' The advantage of this is emphasized in various ways, and the construction, it is insisted, quoting the patent 'secures the greatest possible amount of security.'

    Claims 1 and 3 are inserted in the margin. 1 The following is an illustration of them taken from brief of counsel:

    (This cut appears on page 31 of 254 U.S. Reports)

    It is further contended that the arrangement of the hoisting device parallel to a building, instead of at right angles [254 U.S. 24, 31]   to it, as in the Murray patent, gives more room to the working masons and mechanics, and therefore contributes to their security. This advantage was asserted in the patent; the others were not, nor displayed or counted on. They, however, may be conceded. The fact of nondisplay in the patent while it does not militate against his claims for the advantages, causes surprise at least, considering the emphasis that is now put upon them, and the assertion that they distinguish and make superior his mechanisms

    to all that preceded them. However we may concede to counsel, for the sake of the argument, all of the uses and excellencies of the patent, even though not discerned by Henderson; but his pretensions, whether at first hand or second, his or those of his counsel, must be subjected to the test and estimate of the prior art, and, so subjecting them, we can discern no exercise of invention. The changes were simply mechanical, easy to discern and as easy to make, incidental entirely to the main idea of Murray which was as was declared by him to provide a scaffold that would 'permit of adjustment at any height during the construction of a building or the repairing thereof'-a scaffold which might 'be readily moved from one [254 U.S. 24, 32]   position to another by the workmen thereon without interfering materially with the work being performed,' and one 'in which different supports are employed,' and 'in which the shifting from one set of supports to another set' might 'be accomplished without interfering in any degree with the workmen thereon, or their work.' A glance at the diagram which we have given will show that he accomplished his purpose and the way he accomplished it; a glance at the diagram we have given of the Henderson device will show that it is a substantial imitation of Murray's scaffold, the variations being only mechanical. The chief difficulty we have found in the case is the plausibility of the arguments of counsel, and that it secured the assent of the Circuit Court of Appeals for the Eighth Circuit and other courts, and strength from such assent.

    Decree affirmed.


    [ Footnote 1 ] '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.'

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