Keuffel v. Lufkin Rule Co.

5,202
Decided Circuit Court, N. D. Ohio, E. D.
Disposition
dismissed
full scope · unanimous
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Court
Circuit Court, N. D. Ohio, E. D.
Decided
Judge
RICKS, District Judge
Posture
Suit in equity for patent infringement
Complainant (1)
William Keuffel
W. P. Preble, Jr.
v.
Defendant (1)
Lufkin Rule Company
Hall & Pay

Overview

The bill is dismissed. The court finds the third claim of patent No. 338,602 valid when limited to specific construction, but holds there is no infringement by the defendant.

Case summary

This is a patent infringement case where William Keuffel sued the Lufkin Rule Company for allegedly infringing his patent No. 338,602 for an improvement in tape-measure cases. Keuffel claimed infringement only of the third claim, which involved a crank handle pivoted on a hinged plate arranged to allow unlocking by pressure at the back. The defendant denied validity, citing prior art, and claimed its tape measures were made under a later patent (No. 498,104). The court found the third claim valid when limited to the specific construction allowing pressure at the back to unlock the crank. However, the court found no infringement because the defendant's device had a swiveled rather than pivoted crank handle, and the grant of a subsequent patent to the defendant created a presumption of noninfringement that was not overcome. The bill was dismissed.

Abstract

Plaintiff sued defendant for infringing the third claim of a patent covering an improvement in tape-measure cases involving a crank handle pivoted on a hinged plate unlocked by back pressure. Defendant denied validity based on prior art and asserted its product was made under a later patent. Court upheld the third claim's validity when limited to the specific construction but found no infringement due to differences in the crank handle mechanism and a presumption from the defendant's subsequent patent, dismissing the bill.

Opinion of the court

Majority
opinion
RICKS, District Judge
  • Third claim of patent valid when limited to specific construction allowing pressure at back to unlock crank
  • Defendant's device differs in having swiveled rather than pivoted crank handle
  • Grant of subsequent patent to defendant creates presumption of noninfringement
  • Presumption not overcome by evidence

Jurisdiction

not challenged
Subject matter
Patent infringement suit in equity
Jurisdictional facts
  • Suit filed in Circuit Court, N. D. Ohio, E. D.

Procedural posture

Posture at trial
Suit in equity for patent infringement
Posture on appeal
Not applicable (trial court decision)
Preserved issues
  • Validity of patent No. 338,602
  • Infringement of third claim

Legal categories

Business

Case record

Full case name
KEUFFEL v. LUFKIN RULE CO.
Docket number
5,202
Court
Circuit Court, N. D. Ohio, E. D.
Trial court
Circuit Court, N. D. Ohio, E. D.
Trial court judge
RICKS, District Judge
Decided
Opinion author
RICKS, District Judge
Opinion type
published
Precedential status
persuasive
Judges on panel
RICKS, District Judge

Issues & holdings

2
Issues raised
2
affirmed
2
Holdings
Standard of review

de novo

Disposition rationale

Court finds third claim valid when limited to specific construction

Preservation

Issue preserved for review

Standard of review

de novo

Disposition rationale

Court finds no infringement due to differences in construction and presumption from subsequent patent grant

Preservation

Issue preserved for review

Holdings of the court

Validity of patent No. 338,602
Third claim of patent is valid when limited to specific construction
Court finds new combination in arrangement allowing crank handle to be pressed out from back face, limited to specific construction
unanimousnon-binding
Infringement of third claim
Defendant does not infringe the third claim
Defendant's crank handle is swiveled not pivoted, differences in construction, and presumption of noninfringement from grant of subsequent patent
unanimousnon-binding

Burden of proof

Prosecution burden
Complainant must prove patent validity and infringement by preponderance of evidence
Burden met
false

Standards of review

  • Patent validity and infringement — de novo Patent cases typically reviewed de novo on issues of claim construction and infringement

Timeline

4
Events
3,716
Days, incident to ruling
—
Span
factual eventcited in opinion

Letters patent No. 338,602 issued to William Keuffel for improvement in tape-measure cases

Patent forms basis of infringement claim

William Keuffel · U.S. Patent Office
factual eventcited in opinion

Letters patent No. 498,104 issued to F. Back, later owned by defendant

Defendant claims tape measures made according to this patent

F. Back · U.S. Patent Office
procedural eventcited in opinion

Suit in equity filed by Keuffel against Lufkin Rule Company for patent infringement

Initiates the legal proceedings

William Keuffel · Lufkin Rule Company · Circuit Court, N. D. Ohio, E. D. trial court
rulingcited in opinion

Court issues opinion construing patent, finding third claim valid but not infringed, and dismissing bill

Outcome: Bill dismissed

Final disposition of the case

RICKS, District Judge trial court

Facts & evidence

Key facts

6 facts
  1. Complainant William Keuffel holds letters patent No. 338,602 issued March 23, 1886 for improvement in tape-measure cases
  2. Defendant Lufkin Rule Company manufactures and sells tape measures allegedly infringing the patent
  3. Defendant denies validity, claims prior art including five U.S. patents and two English patents
  4. Defendant claims ownership of U.S. letters patent No. 498,104 dated May 23, 1893 granted to F. Back
  5. Complainant claims infringement only of third claim of his patent
  6. Stipulation that defendant made and sold tape measures like exhibit since date of patent in suit

Procedural history

1 steps
  1. Bill filed by complainant to establish patent validity and recover damages for infringement

Evidence in the record

Direct
  • Stipulation that defendant made and sold tape measures like exhibit since patent date
Physical
  • Tape-measure cases as exhibits
Documentary
  • Letters patent No. 338,602
  • Letters patent No. 498,104
  • English patents No. 11,962 of 1847 and No. 5,382 of 1886
  • Five other U.S. patents cited as prior art
Expert
  • Expert name: Defendant's expert · Expertise: Patent analysis · Opinion: Defendant's exhibit does not contain equivalent for hinged plate or central tube

Objects of relevance

Tape-measure cases with crank handles and central tubesLeather cases for tape measures

Policy considerations

  • Presumption of patentable difference from grant of subsequent patent

Authorities

Statutes

  • U.S. patent laws governing validity and infringement

Standards & doctrines

  • Presumption of patentable difference from subsequent patent grant
  • Claim limitation doctrine

Legal principles applied

  • Presumption that patent office considered prior patents when granting subsequent patent
  • Claim limitation to avoid prior art

Notable quotes

“The grant of letters patent to the defendant was virtually a decision by the patent office that there was a substantial difference between the two inventions.”
RICKS, District Judge — Discussing presumption of noninfringement from subsequent patent grant
Establishes legal presumption in patent cases
Index terms48
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Entities and documentation
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Action type
dismissed
Target
bill of complaint
Appealed from
Circuit Court, N. D. Ohio, E. D.
Context
Court dismisses the bill after finding no infringement of the third claim of patent No. 338,602
Scope
full
Disposition vote
unanimous
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