Thomson-Houston Electric Co. v. Elmira & Horseheads Ry. Co.

69 F. 257, 1895 U.S. App. LEXIS 3096

Opinion

COXE, District Judge.

The patent in controversy deals with a comparatively new art. Electricity lias so completely supplanted horse power as a means for propelling street cars that it is difficult to realize that only about 10 years have passed since the first successful electric railroad was installed. At the present time there are more than 500 roads in operation, employing an immense army of workmen and a vast amount of capital. That this wonderful result was accomplished only after innumerable difficulties and obstacles had been encountered and overcome is manifest The potentialities of the art attracted a large number of brilliant and ingenious men who. for more than a decade, have been laboring to make electric; railroading successful. Even after the necessities of the situation had evolved the fundamental principle of taking the electricity from u-n overhead conductor the difficulties in finding suitable contact and switching devices for a long time prevented commercial success and the solution of the problem taxed the in genuity of a large number of inventors. Although the electric road of to-day is a composite organism to which many ingenious and able men have contributed, yet it cannot be denied that to Van Depoele, more than to any other man, belongs the credit of having made it a practical working success. His contributions to the art rapidly supplanted the crude and tentative prior structures and have continued in use until the present time. No one can read this record without being impressed with the truth of this proposition, and, this being so, the court naturally approaches this controversy in liberal spirit and with an inclination to give the inventor the full fruits of his invention. If there be any deviation from this determination it :.s due to the fact that he has obscured his real invention in a multitude of fuliginous and attenuated claims many of which can only be distinguished when their language is subjected to the most searching analysis. He has particularly pointed out his invention in the description, but, because of this seemingly needless verbosity, he has claimed it indistinctly, to the annoyance of the public,, and especially that part of the public which is called upon to construe the patent. A fair amount of tautology and reiteration is prudent and permissible in the claims of a patent, but it is hardly conceivable that it requires 35 claims to secure a comparatively simple mechanical invention. Where the patentee has taken pains to cover every shadow of a shade in his claims the range of construction is limited and he must be held strictly to language which he has adopted with such painstaking deliberation and exactness.

Generally speaking the patent covers devices and combinations by which electric cars are run automatically upon branches and turnouts, the motor being supplied from an overhead system of wires. This is done by a trailing under-running trolley mounted on a long pivoted arm supported on the top of the car and pressed up against the wire by a spring, or equivalent device. This arm has sufficient horizontal and perpendicular movement to adjust itself automatically to the wire, although the wire may not at all times be diiectly above the center of the rails or suspended at the same distance above the car. The conductor without leaving the platform of the car has full control of the trolley. The other important device used by the inventor is an overhead switch so mounted on the wire that when the forward wheels of the car take the track switch a trend or direction is given to the trolley so that when it reaches the overhead switch it is guided to the proper branch automatically without in any manner disturbing the electric current or the running of the car. In this way a system is produced which is well-nigh perfect iu its essential details. That it was necessary in order to attain this result to surmount many difficulties and solve many problems might almost be assumed by the court, but it is abundantly proved by the record.

It is argued by the defendant that the patent is void because all of the inventions claimed therein—except claims 15, 16 and 17, which are not infringed—are covered by earlier patents to Van .Depoele. There is no dispute as to the law. It is fundamental that two patents cannot be granted for the same invention. Where two patents for the same invention issue to the same person the second patent is void. The supreme court in Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310, lays down no new rule of law. It simply adheres to the old rule which is well stated in the syllabus as follows:

“No patent can issue tor an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims may differ.

“The second patent, in such case, although containing a claim broader and more generical in its character than the specific claims contained in the prior patent, is also void.

“But where the second patent covers matters described in the prior patent, essentially distinct and separable, and distinct from the invention covered thereby, and claims made thereunder, its validity may be sustained.”

The question here is, are the inventions of the patent in suit all covered-by prior patents to Ya,n Depoele? The patent chiefly relied upon by the defendant is No. 397,451, dated February 5, 1889, for improvements in “overhead contacts and switches.” The application was filed November 12, 1888, while the application for the patent in suit was pending in the patent office, the original application being filed March 12,1887, and the divisional application October 22, 1888. At line 9 of No. 397,451, the patentee says: “My invention relates to improvements in electric railways and includes improvements upon the invention forming the subject-matter of a prior application,” viz.: the original application for the patent in suit. It is manifest on reading this patent that it was intended to secure a few minor improvements upon the broad invention then pending in the patent office. The public was given due and formal notice of this intention. No one was misled or injured. The claims of No. 397,451 are wholly insufficient to secure the invention of No. 424,695. An infringer unless he used the peculiar contractions and guide ribs shown in the former would escape all accountability if the latter is held invalid. In other words, it is the patent in suit which protects the basic invention. Destroy this and the inventor is despoiled of Ms principal contribution to the art. The substance is gone, the shadow remains. A court of equity should be very sure of its premises before reaching a result so unjust, so contrary to the policy of our government, so dispiriting to inventors. A decision holding this patent invalid would simply be a confiscation of Van Depoele’s property. Why should he be thus punished? What equities demand it? He made a valuable invention and promptly went with it to the patent office. • Subsequently he made what he thought to be improvements and asked for a patent for them also. He could not describe Ms improvements without referring to his original invention, but he did all in Ms power to inform the public of the exact situation. The patent for the improvements was issued first, and because the invention was thus, in a sense, disclosed, it is argued that it is lost. In other words, the proposition is that Van Depoele, in endeavoring to secure his improvements in the only way known to the law, has forfeited Ms right to the main invention. The supreme court bad no difficulty in reaching the decision in the Miller Case, because upon the peculiar facts there disclosed they were convinced that the two patents were for the same invention. Here, to say the least, there is grave doubt whether the two patents are for the same invention. If, to use the hypothesis of the Miller Case, the patents had been granted to different parties, would the apparatus and combinations of the patent in suit infringe the restricted claims of No. 397,451? It is thought not. The patents are susceptible of the construction above suggested, viz.: that the patent in suit is for the broad invention and that No. 397,451 :.s for. improvements in minor details and should be so restricted. This construction gives the inventor the fruits of his inventions, but nothing more, and fully preserves the rights of the public. If the other construction were possible the facts are such that there is every reason why it should not be given. What is said of No. 397,451 is also true of Van Depoele’s other prior patents.

It is said that there is no invention in the claims relating to the switching apparatus because the patentee has simply suspended, face downward, the well-known form of railroad switch. Assuming that this is a fair statement of his achievement it does not follow that patentability is wanting. When it is considered that he was dealing with, an under-running system, that it was necessary to shift the trolley not only but the mysterious current which the trolley carries, and that he accomplished this result automatically when others failed, it is not difficult to place him above the plane of the mechanic. As was said by Mr. Justice Brown in C. & A. Potts & Co. v. Creager, 15 Sup. Ct. 194:

“But where the alleged novelty consists in transferring a device from one branch of industry to another, the answer depends upon a variety of considerations. In such cases we are bound to inquire into the remoteness of relationship of the two industries; what alterations were necessary to adapt the device to its new use, and what the value of such adaptation has been to the new industry. If the new use be analogous to the former one, the court will undoubtedly be disposed to construe the patent more strictly, and to require clearer proof of the exercise of the inventive faculty in adapting it to the new use—particularly if the device be one of minor importance in its new field of usefulness. On the other hand, if the transfer be to a branch of industry but remotely allied to the other, and the effect of such transfer has been to supersede other methods of doing the same work, the court will look with a less critical eye upon the means employed in making the transfer. Doubtless a patentee is entitled to every use of which his invention is susceptible, whether such use be known or unknown to him; but the person who has taken his devico and, by improvements thereon, has adapted it to a different industry, may also draw to himself the quality of inventor. * * * Indeed, it often requires as acute a perception of the relations between cause and effect, and as much of the peculiar intuitive genius which is a characteristic of great inventors, to grasp the idea that a device used in one art may bo made available in another, as would be necessary to create the device de novo. And this is not the less true if, after the thing has been done, it appears to the ordinary mind so simple as to excite wonder that it was not thought of before. The apparent simplicity of a new device often leads an inexperienced person to thii'k that it would have occurred to any one familiar with the subject; but the decisive answer is that with dozens and perhaps hundreds of others laboring in the same field, it had never occurred'to any one before. The practiced eye of an ordinary mechanic may be safely trusted to see what ought to be apparent to every one.”

Again, in Du Bois v. Kirk, 15 Sup. Ct. 729, the same learned judge says:

“Tlie Kirk invention is undoubtedly a very simple one, and it may seem strange iliat a similar method of relieving tlie pressure bad never occurred to the builders of boar-trap dams before; but the fact is that it did not, and that it was not one of those obvious improvements upon what had gone before, which would suggest itself to an ordinary workman, or fall within the definition of mere mechanical skill. It was in fact the application of an old device to meet a novel exigency, and to subserve a new purpose. That it is a useful improvement can scarcely be doubted.”

Tlie defendant argues that tlie complainant is estopped from asking a decree against six cars purchased by it front the Sprague Electric Bailway & Motor Company in 1890 for the reason that in May, 1892, the General Electric Company acquired a controlling interest in the stock of the Bprague Company and of the complainant The theory is that the General Electric Company is the real complainant and, as successor to the Bprague Company, it is violating its obligation to the defendant, as "vendee of the Sprague Company, in bringing this suit. Even if the complainant had given the defendant a license in May, 1892, it would seem that it might still have a decree for an accounting during the two years that the defendant used the cars without any claim of right. But the court is unable to discern how the complainant’s right to maintain this action is affected by the proceedings alluded to. The proposition is this, that one who purchases a patented machine from, an infrigger and operates it unlawfully for a term of years acquires a right to its use if the vendor and owner of the patent subsequently enter into partnership. The complainant is a legal entity entitled to sue. It has never given the defendant a license to use the cars in question, either express or implied. The defendant never acquired the right from the Bprague Company, for that company had no right to give. How then did. the defendant get the right to infringe the complainant’s patent? Bo far as this plea is concerned the defendant stands a naked trespasser claiming to do an unlawful act because of a subsequent arrangement between its vendor, the patent owner and a third corporation, to which it was in no way a party. The complainant has done no act to deceive or mislead tlie defendant. The latter has parted with nothing and lost no right, relying upon complainant’s declarations, for none were made. If the complainant had in any manner induced the defendant to purchase the cars in question, intimating that they did not infringe the Yan Depoele patent, the situation would be different, but as it is the case seems devoid of every element' of estoppel. The decree should not, of course, include the car purchased of the complainant.

The defendant owns and operates an electric railway at Elmira. The current is supplied to the motor of the cars by a trailing under-running trolley mounted on the roof of the car. The trolley is pressed up against the wire and the lateral and vertical action of the pole is controlled by springs. Two forms of trolley are used known as the “Anderson” and the “Nuttall.” Both are adjustable from the car platform by a cord in the hands of the conductor. There are about 12 sheet metal pan switches, ten so-called “Murray” switches and two so-called “General Electric” switches, in use on the defendant’s road. The Murray switches are used at turnouts, the others at branches. They are so located that “the car has fully passed the track switch before the trolley enters the overhead switch.” The circuit remains unbroken while the trolley is passing through.

. It remains to consider the claims with reference to the question of infringement.

Claims 15, 16 and 17 are not infringed. One of the elements of the claims is “a weighted spring,” or, as it is expressed in claim 16, “a vertically-moving weight connected to said spring,” and in claim 17 “a connection extending from said spring and provided with a weight at its lower end.” The function of the “weight, H,” is pointed out with care in the description. The defendant does not use this weight in any manner whatever and consequently does not infringe. McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76; Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274.

I fully agree with the defendant that several of the remaining claims are for the same subject-matter and, in a patentable sense, are not distinguishable. To attempt to differentiate them would, in the language of the Miller Case, “involve the drawing of distinctions too refined for the practical administration of the patent law.”

The counsel for the complainant admit that claims 9-14, inclusive, “cover substantially the same ground.” Claims 9 and 10 are so nearly alike that the difference is only a verbal one. The language of claims 13 and 14 is identical, except that the latter adds to the former the words “and depending from.” What the significance of these words is, in view of the description and other claims, the court is at u loss to conjecture. To analyze all of the claims involved, or, more correctly speaking, the imvolved claims, and attempt to point out their differences and similarities, would extend this opinion beyond all reasonable length.. As the brief for the defendant says, “no special harm can come of it” where several claims for substantially the same invention appear in one patent, but, on the other hand, the issues in these causes should be simplified as much as possible. In view of the admitted similarity of the claims it is possible that the complainant should be compelled to elect which cf them it will.rely upon, but further discussion of the matter may well be reserved until the settlement of the decree.

Of the claims relating to the construction and attachment of the conductor switch the complainant’s counsel regard claim 2 as the leading one in the group. This claim is very broad, but it must be construed in the light of the specification and drawings and so construed fairly secures the invention. Claim 9 is also pointed out as the one which best secures the special features of the switch. From what has been already said of the defendant’s railway it is manifest that these claims have been infringed. The particulars of the infringement may be conveniently left to the master.

Claims 4 and 20 are pointed out by complainant’s counsel as the leading claims in the group relating to the directive action of the track switch. Infringement of these claims is satisfactorily established.

Whether or not claims 5, 6 and 7 are infringed it seems unnecessary now to determine.

Of the claims relating to the centralizing spring ilie complainant seems to rely principally upon the thirty-third as describing with the greatest accuracy the patented construction. It is thought that this claim is infringed'by the “Anderson” trolley which is given a centralizing tendency by springs located at its base, but not by the “Nuttall” which has no spring tending to restore it to its normal central position.

Tt follows that the complainant is entitled to a. decree for an injunction and an accounting, but, as the defendant has succeeded as to some of the claims, the decree should be without costs.