Colt's Patent Firearms Mfg. Co. v. New York Sporting Goods Co.

Although the patentee states that his improvement is not restricted to any particular kind of firearm, the specifications deal with a pistol; and, since defendant’s device is also a pistol, it will be convenient to refer to pistols in this discussion.

The specification states that the invention relates to automatic breech-loading firearms “in which the several operations — such as the unlocking and opening of the breech after firing a shot, the ejection of the empty cartridge shell, the cocking of the hammer, the presenta*557tion and introduction of a new cartridge to tlie chamber of the barrel, and the closing and locking of the breech — are automatically effected by or through the energy of the recoil of * * that part which at the time of firing the shot closes the breech or rear end of the cartridge-chamber of the barrel and of the parts connected therewith after each discharge.” This concedes, as the record clearly indicates, that Browning was not a pioneer in the art of automatic firearms. Complainants do not contend that he was, but merely an improver in details of construction. Nevertheless, if some of his improvements are novel and useful, that circumstance will not deprive him of the right to such improvement if properly claimed. The patent deals with an automatic pistol complete in all its parts. In consequence the specifications refer to the combinations of many different parts and the claims (there are 18 of them) relate to various separate combinations. The objects of invention are stated to be practicability, .efficiency, safety in use, simplicity, inexpansiveness, security against release of the hammer until all parts are locked in proper position for discharge, against release of hammer after discharge until the trigger is in proper position, and automatic locking and unlocking the breech-block by means of the hammer. All the parts of the complete pistol, “lock, stock, and barrel,” breech-block, magazine, ejector, etc., are fully and carefully described, and their interrelations pointed out. As might be expected, the defendant’s complete pistol has many points of difference from the weapon of the patent, and therefore infringement is charged of 2 claims only of the 18.

There were patents for various forms of automatic pistol before Browning, but the one which best illustrates the prior art was apparently the Borchardt pistol (No. 571,260, November 10, 1896). In this weapon the barrel is screwed at its rear end into a rearwardly-pro-jecting extension h, movably engaging with and sliding in the frame a. At the rear end of h there is pivoted a spindle on which turns the rear link óf a heavy toggle-joint. The forward link of this toggle-joint presses against the rear of the breech-bolt c, holding it firmly against the breech of the barrel. Upon discharge the breecli-bolt is forced back by recoil, and, while the toggle-joint holds it in place it pulls the barrel back with it, by the spindle and extension h. But by an arrangement of parts which need not be described, after a very short movement rearward, the toggle-joint is broken (thrown up) ; and thereupon the breecli-bolt is drawn back away from the barrel, which ceases its rearward motion, and the parts which eject the old shell, introduce a new cartridge, cock and restore to firing position, come into action. The defects charged against the Borchardt pistol in complainants’ brief are these: It is a long, heavy, complicated affair, with plenty of projections and exposed mechanism. One of the witnesses says:

“It is entirely too heavy for a pistol of tlie small caliber which it is, and is complicated, cumbersome, and awkward to hold in the firing position. (Its handle is in the middle.) On account of the heavy rearward extension beyond 1he grip of the pistol, it was almost impossible to shoot it accurately. It lias the other great fault, due to its form, that it cannot be carried in any pocket *558or holster without surely getting caught at the time when one attempts quickly to withdraw it for use.”

It is also pointed out that the barrel and rearward extension therefrom are very heavy, much heavier than the breech-piece itself, which, it is said, gives great momentum to the wrong part, viz., to the barrel,, which must be stoppéd after a short movement, instead of to the breech-piece, which must move a long distance against the stress of the reaction spring and perform its several functions. The testimony seems quite clearly to sustain these criticisms, and we are satisfied, that the complete pistols, both of complainants and defendant, are distinct improvements upon the Borchardt.

It will be necessary to quote from the specifications so much only as will disclose such parts of the complete organism as the two claims in controversy are concerned with. In pistols of this type it seems necessary that immediately upon discharge the breech-bolt should remain against the breech long enough for the gases of explosion to give, proper impulse to the bullet. Thereafter the breech-bolt separates from the barrel to allow ejection, insertion, etc. The temporary clasping of the bolt against the breech is secured in Borchardt by the extension, spindle, and toggle-joint, as we have seen. In complainants’ patent the arrangement of parts is as follows: The barrel is provided with .two lugs, projecting'from its under side, one near the muzzle, the other at the breech, corresponding recesses being formed in the frame. Links are secured in slots in said lugs and between the walls of said recesses by transverse pivot-pins, so that said links swing freely in the plane of the axis of the-barrel. The links are of such length and so attached that the axis of the barrel remains always parallel to its normal position, while as the barrel is moved forward or back it. swings bodily from and towards the frame. As the ’ specification states, the barrel is attached to the frame in such a manner “as to be capable of limited movement only, but of a double movement within its limits — that is to say, the barrel is free to move to and fro in the direction of its length, and also to have another movement at the same time, such other movement being, in the construction represented in the drawings, a bodily movement toward and from the frame.”

The breech-bolt has a long forward extension (in which is cut a slot for the ejectment of the empty shells), which incloses substantially the whole barrel. It is semi-tubular or U-shaped, and has longitudinal .ribs and grooves to engage corresponding ribs and grooves formed on the frame to be thereby held to the frame and guided thereon in its reciprocation. This extension is called in the patent “the breech block or bolt carrier.” Just forward of the slot for empt)r shells this carrier is provided with one or more recesses to receive corresponding transverse ribs or projections on the barrel, said ribs or projections being caused to enter and occupy said recesses by the movement in the transverse or vertical plane which the barrel has at the same time that it is moved forward in a longitudinal direction by the breech block or bolt carrier during the last of the forward movement'of the latter, whereby the breech block or bolt carrier is securely locked to the barrel and the breech-bolt is held rigidly against the end *559of the barrel, closing the breech. In this closed position, therefore, the breech block or bolt carrier and the barrel are securely interlocked, and neither one can move independently of the other. When, however, the breech block or bolt carrier is moved rearwardly under the influence of the recoil, the barrel moves for some distance with it until the rocking movement of the barrel on the links heretofore explained lowers the barrel until it rests upon the frame, and thereby withdraws the ribs from the recesses in the breech block or bolt carrier and releases the carrier from the barrel. The frame prevents further rearward motion of the barrel, which is left with its breech in proper position to receive a fresh cartridge. The continued rearward movement of the breech block or bolt carrier opens the breech by moving the breech-bolt away from the barrel. During the return or forward movement of the breech block or bolt carrier the barrel is kept from moving forward with it by the top of the breech block or bolt carrier, which slides over the ribs and prevents the barrel from rising from its frame; but as the last of the closing movement brings the face of the breech-bolt against the breech, the recesses arrive above the ribs, permitting the barrel to rise as the ribs enter the recesses, and at the same time to be pushed forward by the breech block or bolt carrier, so that when the latter and the barrel arrive at their forward or closed position they are again securely locked, as before. There is described an arrangement of the links, pivots, etc., intended “to delay somewhat the unlocking of the barrel and breech block or bolt carrier, so as to insure the exit of the projectile from the muzzle and the consequent relief of the pressure of the powder gases in the barrel before the carrier is unlocked and the breech opened.”

That the firearm thus described was sufficiently novel and useful to warrant the issue of a patent seems quite plain upon the record of the prior art; indeed, it is not understood that this proposition is seriously disputed.

The first claim relied upon is:

“7. In a firearm, tlie combination with a frame of a breecli block or bolt carrier sliding on a frame, said breech block or bolt carrier comprising a breech-bolt and a forward extension embracing said frame, and a barrel mounted upon said frame within said forward extension, and having a limited movement upon said frame to move with and to lock and unlock said breech block or bolt carrier.”

The defendant’s weapon, which closely resembles complainants’ is said to embody a wholly novel principle discovered by one Searle, defendant’s assignor, and covered by patents issued to him. It is contended that in defendant’s pistol the breech-slide is absolutely locked against the recoil motion until the bullet has left the barrel. This happens, as Searle states in his patent, 804,985, because “the inertia of the projectile or its resistance to rotation as it takes into the rifling bf the barrel amounts to a very considerable force, that can be utilized to perform work without materially detracting from the effect of the rifling on the projectile.”

There is much testimony in the record for and against this theory. Experiments have been made and criticised, and the experts are at *560variance. It will not be necessary to go into that branch of the case, nor to express any opinion as to the weight of conflicting evidence. It is conceded that defendant’s barrel has one movement only. It rotates, but does not move forward and back. It cannot so move, because it is anchored against fore and aft movement (patent 936,369) “by a lug on the under side of the barrel inserted between two shoulders integral with the frame; the shoulders permitting the barrel to rotate, but holding it against movement in the direction of its bore.” Rotation is effected by engagement between a lug on the top of the barrel and a slot in the breech bolt or block carrier, called in the Searle patents the “breech-slide.” The relation of parts is so arranged that for a moment bolt and breech are held together, and thereafter the bolt moves away from the breech. The details of the structure need not be discussed. The question is: What does the seventh claim mean when it says, of the barrel, “having a limited movement upon said frame to move with and to lock and to unlock said breech block or bolt carrier”? Complainants would have it construed so that the word “with” should mean only “synchronously,” making it read “a limited movement to lock and unlock, which movement takes place at the same time that the carrier is itself moving.” This seems to us a very strained construction, and we concur with Judge Platt in the conclusion that the double movement described in the specifications is expressed in this claim. The barrel is to have a limited movement “with * * * said breech block or bolt carrier,” locked to it by ribs and recesses, and therefore moving “with” it; and the barrel is also to have another movement of its own to make or break such lock. The whole language of the patent plainly calls for such a construction of this claim, and, as thus construed, there is no pretense of infringement.

The other claim relied upon is:

“13. In a firearm, tlie combination witn a frame and a barrel mounted on said frame, of a breech block or bolt carrier, comprising a breech-bolt and a forward semi-tubular extension to cover the barrel, and having an opening forward of the breech-bolt to permit the ejection of the shell.”

In" the opinion of' a majority of the court it cannot be successfully contended that the Browning patent, No. 580,924, covers a generic invention. Automatic firearms, embodying the general principles of the Browning' device, had long been known, and are shown and described in numerous prior patents heretofore referred to, notably the patent to Borchardt.

As time progressed defects were discovered, and, as usually happens in so promising a field, many skilled workers in the art entered upon the task of remedying these defects; the result being the compact and éffective arm of the present day. Some of these men were inventors, others were skilled mechanics, and frequently the changes, even when made by men possessing the inventive faculty, required only the skill of the calling. The finished product of to-day is to a large extent the evolution of successive improvements developed as experience demonstrated their necessity. Browning does not assume to be a pioneer. He distinctly says that his additions and changes are but *561improvements upon existing structures. It is not pretended that Browning was the first to construct an automatic recoil-operated firearm containing as essential elements the frame, the barrel, and the breech-slide. Hé has made certain definite and meritorious imp'rove-ments up,on this firearm, consisting, as the complainants’ expert states, “in a definite structural and operative relation of these three elements to one another in the organization of the pistol.”

It is manifest, therefore, that though he is entitled to the rewards of his contribution to the art, and to a reasonable range of equivalents, he is not entitled to the fruits of the labor of others who have endeavored to reach the same result by improvements along different lines. Other inventors have the same right as Browning to improve the combination of the frame, barrel, and breech-slide, and, if the result be accomplished by elements differing from his to the extent that they cannot be regarded as clear equivalents, these inventors cannot be held as infringers. In other words, the claim cannot be given a broad construction. It must be' confined strictly to the elements as shown and described.

The combination of claim 13 contains the following elements: First, a frame; second, a barrel mounted on said frame; third, a breech block or bolt carrier sliding on said frame, said breech block or bolt carrier comprising a breech-bolt and a forward semi-tubular extension to cover the barrel, and having an opening forward of the breech-bolt to permit the ejection of the shell.

In order to construe the claim properly, recourse must be had to the specification and the prior art. We cannot permit speculation and guesswork to guide us as to the character and structure' of the elements of this claim. What kind of a frame is referred to ? What, are the dimensions of the 'barrel, and how is it mounted on the frame? What is the form of the breech-block and its semi-tubular extension, how does the latter cover the barrel, and what is the character of the opening forward of the breech-bolt?

The answers to these questions are made clear by an examination of the specification and drawings and the proceedings in the Patent Office. “The frame a is extended forward for the attachment thereto of the barrel b and for the reception and support of the reaction spring,” and is constructed so as to form a seat for the barrel when it is in its rearmost position. The barrel must be mounted on the frame “in such a manner as to be capable of limited movement only, but of double movement within its limits — that is to say, the barrel is free to move to and fro in the direction of its length, and also to have another movement at the same time; such other movement being, in the construction represented in the drawing, a bodily movement toward and from the frame.”

The breech-block is sufficiently described in the claim. It must, however, be connected with a transverse key near its forward end, which is inserted through rectangular recesses cut therefor in its sides. It is also provided, just forward of the ejection opening, with one or more openings with recesses to receive corresponding ribs on the barrel, *562which are caused to enter the recesses “by the movement in the transverse or vertical plane which the barrel has at the same time that it is moved forward in a longitudinal direction.”

The patentee says that he does not restrict his invention “to a magazine-pistol nor any other particular kind of firearm.” How, then, is this claim to be construed ? Is it to be given a broad construction commensurate with its language, or is it to be confined to the firearm actually produced by Browning?

We are convinced that we must follow the familiar rule and interpret the claim in the light of the specification, conceding to Browning all that he has accomplished, but not permitting him to collect tribute from an independent inventor, who has made other improvements in an already crowded art. The three elements of the claim' — the .'frame, the barrel and the breech-block — are not any frame, barrel, and breech-block, but Browning’s frame, barrel, and breech-block, as described and shown in his specification and drawings. It is not enough that the defendant has these three elements, unless they are found in the environment and operating in the manner described by Browning. They cannot so operate and accomplish the result sought by him unless they have the characteristics and perform the functions pointed out in the patent. His combination will not operate unless its members are assembled as he directs. The frame and the barrel must be so constructed as to permit the “limited double movement” which is so clearly emphasized. Without this the combination iá inoperative.

The barrel of the patent must have a longitudinal and also a vertical movement. . The bolt-carrier comprises the bolt as an integral part thereof. In the defendant’s pistol the barrel is not mounted on the frame, but is mounted on the bolt-carrier. It has no longitudinal or vertical movement, but is fixed against both. The “double limited movement” of the patent is therefore wholly absent. In the defendant’s structure the breech-bolt is separate from the bolt-carrier; in the patented structure the carrier comprises the bolt as an integral part thereof.

Many other differences between the two structures could be pointed out, but sufficient has been said to indicate our views. It is. enough that the defendant’s pistol does not have one of the elements of the' combination of the claim, namely, a barrel mounted on a frame. Neither does it have the “limited double movement” which is an essential ingredient of the combination of the claim.

The complainant advances the ingenious argument that the defendant’s barrel is mounted upon the frame, because the breech bolt carrier, upon which it is actually mounted, is slidingly mounted on the frame. In support of this contention it is asserted that “the barrel is mounted upon the frame just as truly as a rider is mounted upon a horse, in spite of the use of a saddle.”

Undoubtedly a rider is mounted upon a horse, even though he wears breeches and has a saddle under him; but the illustration, though specious, fails, we think, for lack of resemblance. We might suggest another and, perhaps, a more relevant simile. Would it be accurate to *563assert that the locomotive engineer seated in his cab is mounted on the rails, because his engine is so mounted?

In the most favorable view for the complainants, which can be taken of the evidence, infringement of the thirteenth claim is involved in doubt.

It follows that the decree of the Circuit Court must be affirmed, with costs.