Winans v. Schenectady & T. R. Co.

30 F. Cas. 277, 2 Blatchf. 279, 1851 U.S. App. LEXIS 479

• Court: U.S. Circuit Court for the District of Northern New York
• Decided: September 1, 1851
• Status: Published

Opinion

NELSON, Circuit Justice.

I. We have examined the various grounds presented by the counsel for the defendants on the motion for a new trial, and, after the fullest consideration, are of opinion that the motion must be denied.

Most of the exceptions taken at the trial, and relied on in the argument here, are founded on what we regard as an entire misapprehension of the thing claimed to have been discovered by the plaintiff and for which the patent has been issued. This will be seen on a reference to the instructions prayed for by the defendants, upon which most of the questions in the case arise. They assume that if any material part of the arrangement and combination in the construction of the cars or carriages described in the patent was before known or in public use, it is invalid; and hence, various parts were pointed out by the counsel at the trial, and the court was requested to charge, that if either of them was not new, the jury should find a verdict for the defendants.

Now, the answer to all this class of exceptions is, that the patentee sets up no claim to the discovery of the separate parts which enter into his arrangement in the construction of his cars. These may be old and well-known, when taken separately and detached, for aught that concerns his invention. His claim is for the car itself constructed and arranged as described in his patent. This, we think, is the clear meaning of the specification, and of the claim as pointed out in it Proving, therefore, that parts of the arrangement and construction were before known, amounted to nothing. The question was, whether or not cars or carriages for running on rail-roads, as a whole, substantially like the one described in the patent had been before known or in public use; not whether certain parts were or were not substantially similar. The argument presupposes that the claim is for the discovery of a new combination and arrangement of certain instruments and materials, by means of which a car is constructed of a given utility; and that, if any one or more of the supposed combinations turns out to be old, the patent is invalid. This is the principle upon which much of the defence has been placed; but no such claim is found in the patent. No particular combination or arrangement is pointed out as new or claimed as such. The novelty of the discovery is placed upon no such ground. On the contrary, the result of the entire arrangement and adjustment of the several parts described, namely, the rail-road ear complete and fit for use, is the thing pointed out and claimed as new. This is the view taken of the patent by the chief justice, in the case of the present plaintiff against the Newcastle and Frenchtown Turnpike and Bail-road Company, tried before him in the Maryland circuit, and which was adopted by the judge on the trial of this case.

II. It was further insisted, on the part of the defendants, that if the relative position of the two bearing-carriages to each other constituted a material part of the arrangement in the construction of the car, the patent was void, unless the jury should find that the specification described with sufficient precision the location of these bearing-carriages under the body of the car, so as to enable a mechanic of skill in the construction of cars, to place them at the proper distance apart without experiment or invention. It was also contended, that the remoteness of the bearing-carriages from each other was not so described in the specification as to constitute any part of the improvement In respect to this branch of the case, the court charged that the relative position of the bearing-carriages to each other, in the construction of the car, was a material part of the arrangement of the patentee, and left the question to the jury whether or not he had sufficiently described the position of the trucks, having in view their distance apart and also their distance from the ends of the car-body, suggesting, at the same time, that their location must always depend, in a measure, on the length of the body.

It will be seen, on looking into the specification, that the location of the trucks relatively to each other under the body of the car, as well as the near proximity of the two axles of each truck to each other, form a most essential part of the arrangement of the patentee in the construction of his cars. Great pains are taken to point out the defects in the existing four-wheel cars, and the impediments to be encountered and overcome in the running of cars upon railroads, as the latter are usually constructed. The patentee states that, in the construction of them, especially when of considerable length, it has been found necessary to admit of lateral curvatures, the radius of which is sometimes but a few hundred feet, and that it becomes important, therefore, to so construct the cars as to enable them to overcome the difficulties presented by these curvatures, and to adapt them for running, with the least friction practicable. on all parts of the road. The friction referred to is that which arises between the flanges of the wheels and the rails, causing great loss of power and destruction of the wheels and rails, besides other injuries. For this purpose, he constructs two bearing-carriages, each with four wheels, which are to sustain the body of the passenger or other ear. by placing one of them at or near each end of it, as particularly described. The two wheels on either side of the truck are to be placed very near each other—the spaces between the flanges need be no greater than is necessary to prevent their contact with each other. The car-body rests upon bolsters supported on each of the two bearing-carnages or four-wheeled trucks, the bolsters so constructed as to swivel or turn on each other like the two front bolsters of a common wagon. The body of the car may be made of double the length of the four-wheeled ear, and is capable of carrying double its load. The truck may be so placed within the ends of the car as to bring all the wheels under it; or, without the end, so as to allow the body to be suspended between the two bearing-carriages. The patentee further states, that the closeness of the fore and hind wheels of each bearing-carriage, taken in connection with the use of the two bearing-carriages arranged as remotely from each other as can conveniently be done for the support of the car-body, with a view to the objects and on the principles before set forth, is considered by him as an important feature of the invention; for. by the contiguity of the fore and hind wheels of each bearing-carriage, while the two bearing-carriages may be at any desirable distance apart, the lateral friction from the rubbing of the flanges against the rails is most effectually avoided, while at the same time all the advantages attendant upon placing the axles of a four-wheeled car far apart are obtained. The two wheels on either side of the bearing-carriages may, from their proximity, be considered as acting like a single wheel; and, as these two bearing-carriages may be placed at any distance from each other, consistent with the required strength of the body of the car, it is apparent that all the advantages are obtained which result from having the two axles of a four-wheeled car at a distance from each other, while its inconveniences are avoided. Among the principles stated by the patentee to be taken into consideration in the construction of the car is, that the greater the distance between the axles, while the length of the body remains the same, the less the influence of shocks and concussions occurring on the road; and hence the relief from them, when the trucks are placed under the extreme ends of the body, is greater than when they are placed midway between the centre and the ends.

It is apparent, from what we have already referred to in the specification, and still more manifest on a perusal of the whole of it, that the improvement in this part of the arrangement does not consist in placing the axles of the two trucks at any precise distance apart, in the construction of the car, or at any precise distance from each end of the body. The distance used must necessarily depend somewhat upon the length of the car and the strength of the materials of which it is built, and hence it was impracticable to specify in feet or inches the exact distance from the ends of the car-body at which it would be best to arrange the trucks. Neither do the advantages of a car constructed and arranged as described, depend upon the trucks being placed at a specified distance from the ends, or so that there may be a specified distance between the axles. Having in view the defects in the existing cars, and other difficulties to be encountered, some considerable latitude may be allowed in this respect, consistent with the object sought to be attained, to remedy the defects in the existing cars. All the principles for the construction of a car for the purpose of overcoming these difficulties and remedying these defects, are particularly set forth in the description given by the patentee. We think the specification sufficient, and that the court was right in the opinion expressed on this branch of the case. Any mechanic of skill could readily arrange the bearing-carriages in connection with the body of the car. so as to secure the advantages so minutely and clearly pointed out, and which are shown to attend the practical working of cars constructed in the manner described.

III. The questions of originality and of infringement were questions of fact, depends ing upon the evidence, and were properly submitted to the jury. We think the weight of it decidedly with the verdict.

IV. The patent in this case was originally issued on ,the 1st of October, 1834, and was recorded anew on the 7th of June, 1837, according to the act of congress of the 3d of March, 1837 (5 Stat. 191). No drawings were attached to the original patent, nor was there any reference therein to drawings. On the 25th of September, 1848, the patent was extended for the term of seven years from the 1st of October, 1848. The plaintiff gave in evidence, at the commencement of the trial, a certified copy of the patent and specification, of the certificate of extension, of a drawing with references to the same, and of an affidavit of the plaintiff, made November 19th, 1838. The drawing was not filed at the time the patent was recorded anew, but was filed on the 19th of November, 1838. The counsel for the defendants objected to the evidence, on the grounds: 1st, that it appeared that no drawing was annexed to the original patent; and, 2d, that the act of congress did not make such a drawing evidence. The court also instructed the jury, in summing up the case, that the drawing, a certified copy of which had been given in evidence, was to have the same force and effect as if it had been referred to in the specification, and was to be deemed and taken as part of the specification.

The 1st section of the act of 1837 provides that any person interested in a patent issued prior to the 15th of December, 1836, may, without charge, have the same recorded anew, together with the descriptions, specifications of claim and drawings annexed or belonging to the same, and it is made the duty of the commissioner to cause the same, or any authenticated copy of the original record, specification or drawing which he may obtain, to be transcribed and copied into books of record kept for that purpose; and that, whenever a drawing was not originally annexed to the patent and referred to in the specification, any drawing produced as a delineation of the invention, being verified by oath in such manner as the commissioner shall require, may be transmitted and placed on file, or copied as aforesaid, together with the certificate of the oath, or such drawings may be made in the office, under the direction of the commissioner, in conformity with the specification. The 2d section provides, that copies of such record and drawings, certified by the commissioner, or, in his absence, by his chief clerk, shall be prima-facie evidence of the particulars of the invention and of the patent granted therefor in any judicial court of the United States, in all cases where copies of the original record or specification and drawings would be evidence, without proof of the loss of such originals. This section also provides, that no patent issued prior to the aforesaid 15th day of December, 1836, shall, after the 1st day of June then next, be received in evidence in any court on behalf of the patentee, unless it shall have been so recorded anew, and a drawing of the invention, if separate from the patent, verified as aforesaid, shall have been deposited in the patent office. See, also, section 3 of the same act.

[For other cases involving this patent, see Winans v. Eaton. Case No. 17,861; Winans v. New York & E. R. Co., Id. 17,863; Winans v. New York & H. R. Co., Id. 17,864; New York & M. L. R. Co. v. Winans, 17 How. (58 U. S.) 30.)

It is quite clear, from the above provisions of the act, that the court was right in admitting the drawing in evidence, in connection with the patent and specification. The whole together are made prima-facie evidence of the particulars of the invention and of the patent granted therefor. The weight to be given to the drawings furnished under the act, by way of enlarging or explaining the description as given in the specification, is another question. That will depend upon the circumstances of each particular case. As a general rule, they will not be effectual to correct any material defect in the specification, unless it should appear that they correspond with drawings which accompanied the original application for the patent; otherwise, in case of discrepancy between the drawings and specification, the latter should prevail.- Care must be taken to avoid imposition by the use of the newly-furnished drawings, and, for this purpose, the specification will afford the proper correction, unless the plaintiff goes further and shows that the drawings conform to those originally filed.

The charge that the drawing in this case was to have the same force and effect as if it had been referred to in the specification, and was to be deemed and taken as part of it, was, perhaps, too strong, as it respects the drawings furnished under the act of 1837. The principle is true as it respects those accompanying the original application for the patent, but can hardly be said to be applicable, to the full extent stated, in the case of these newly-furnished drawings. The principle might open the way to imposition and fraud. Assuming that there is nothing but the oath of the party attesting that the drawing affords a true delineation of the invention, the specification should prevail, in ease of a material discrepancy. But, admitting the instruction in this respect not. to be strictly correct, and that too much weight was given to the drawing, we do not see that it would have altered the result. The specification afforded a sufficient description of the invention, independently of the drawing. It was open to some question whether some slight additions that improved the working of the car, were embraced in the specification, but they did not enter into the essence of the invention or constitute any substantial part of the improvement. Time and experience usually indicate these slight additions and alterations, and they should be regarded as consequential results, belonging to the inventor. It requires time and experience usually to perfect the machiue, and improvements derived therefrom are justly due to him.

V. We think that the court was correct in its instructions as to the prior use of the car Columbus and of others constructed by the patentee before he made application for his patent. The law allows the inventor a reasonable time to perfect his invention by experiments; and these could be made, in this, instance, only by putting the car into the service of those controlling lines of railroads. There were repeated failures in the experiments tried and in the cars which were abandoned before the perfection of the car described in the patent. These experiments and trials sufficiently account for the previous use set up by way of forfeiture of the invention.

Upon the whole, after a careful examination of the ease, and of all the points made by the defendants on the argument, many of which have been noticed above, we are satisfied that the verdict is right, and that a new trial should be denied.