WESTERN, ETC., IIANUE'a 00. V. CHICAaO, ETO., )(ANUF'a 00.
WESTERN ELECTRIC MANUF'a CO. V. CHIOAGO
lCircuit Oourt. N. D. Illinois. December 26,1882.)
PATENTS FOR INVENTIONS-PATENTABLE INVENTION.
Where the proof shows that complainant's devices have been generally adopted, the fact that simultaneou&ly a number of inventors had given their attention to the subject-matter covered by the devices, is evidence that something more was required than mere mechanical skill to accomplish the result obtained by complainant's patent. 2.
Where the result produced by an aggregation of parts is the transmission of signals to a car when in motion, whicb had never been produced before the combination was adopted. and some of the parts in the combination performed a new function, the whole combination produces a new 3. SAME-lNFRINGEYENT-DECRItB. Where there is no controversy on the question of infringement, complalUant will be entitled to a decree and an accounting.
In Equity. G. P. Barton and J. M. Thacher, for complainant. Merriam ct. Whipple, for defendant. BLODGETT, D. J. This is a. bill to enjoin infringement by defendant of patent No. 172,Q93, issued February 1, 1876, to Elisha Gray, (application for which was filed February 8, 1878,) for "an improvement in electric annunciators for elevators" and patent No. 148,474, issued March 10,1874, to Augustus Habi, (application for which was filed February 7, 1812,) for an "improvement in electrio indicators elevators;" both of whioh patents complainant claims to own, by assignment from· the patentees, and no contest is made as to complainant's title. Defendant denies the validity of these patents:
(1) For want of novelty. (2) That the Gray patent was irregularly issued on an interference declared. between the application of Gray and the patent of Hahl after the Hahl patent had been issued. (3) That both patents, but especially that of Gray, are void for want of certainty in the description of the thing claimed to be invented. (4) That each of said patents only shows an aggregation of parts which, in the combination, perform no new results.
The Gray patent showed two methods· of connecting the annunciators in the elevator cab with the signal keys on the several floors and with tbebattery: one by means of a flexible cable of insulated wires, which wa.s.atta.ched to the oar with sufficient slack to allow the, car to
pass up and down the elevator well,-this is called the flexible cable method; and the other by means of wires suspended upon or against the side or wall of the well, and with which wires projecting from the the car and connected with the annunciator were kept in contact as the car passed up and down the elevator well,-this latter is called the sliding or friction contact method; and the proof without dispute shows that Gray first conceived the idea of this device in the latter part of 1870, and between that time and March 1, 1871, he constructed and put in operation an electric annunciator in the elevator in the Palmer House in this city upon the sliding or friction contact method. The Hahl patent also shows two methods of connecting the annunciators in the car with the signal keys and battery,-one by the flexible cable and the othel' by afl'iction contact device,-although the minor details of each are somewhat different from that of Gray's. While the Hahl application waS pending in the patent-office, interferences were declared between his device and pending applications for, substantially, the same thing by Edwin Holmes and James H. Corey, which resulted in a decision by the commissioner in favor of Hahl as the first inventor as against both Holmes and Corey, and the patent was issued to Hahl, dated March 10, 1874. After the patent had been issued to Hahl an interference was declared between the applications of Gray which had been filed in February, 1878, and Hahl, and pending this interference, after proofs had been taken, concessions were made between Gray and Hahl by which Hahl ad· mitted Gra,y to be the prior and first inventor of the device contained and claimed in the first clahn of the Gray patent, and Gray conceded to Hah! priority of invention of the flexible-cable method of connecting the annunciator in the car with the'signal keys an'd battery; the proof showing that although Gray may have .conceived' the idea of the flexible-cable method prior to Hahl, yet 'Hahl was' the first to embody that idea in a working mechanism, as well as the first to thereon. . '. . apply for . After these concessions, the Gray patent was issued with only one claim, as follows:
.. The combination of a movable elevator car, an annunciator attached thereto and moving therewith, circuit closing or breaking signal keys on different floors, respectively, of a building, and mechanism whereby an electric currf>nt is maintained petween tl;1e signal keys and the interruption by thempvetnent of the car."
Since the cl)mmencement of thIS suit, the complainant, as owner of the Hahl patent, has disclaimed so ·much' of the Hahl patent as
WESTERN, ETa., MANUF'Q
ETa., MANUF'Q 00.
claimed the sliding contact or friction method. These concessions and disclaimer left the Gray patent, covering only the general principle of connecting the annunciator in the moving car of an elevator with signal keys on the respective floors of the building and the bat· tery by the means shown. but. conceded priority of the flexible-cable method to Hahl. The defense of want of novelty rests mainly on the patents of Holmes and Corey for similar devices, and the analogous devices of Foster, and the gas-tube by which gas is by means of a flexi. ble tube to burners in an elevator car. As to the Holmes and Corey patents it is sufficient to say that they were put in interference with the Hahl patent before the patent. office, and the commissioner, on proof, that the invention of Hahl was prior to that of either Holmes. or Corey. This decision of the commissioner ml\Y not be so Wholly conclusive upon all the world as to prevent the citation of the devices of Holmes and Corey as an· ticipating the Hahl patent, but no proof is. introduced on this trial which was not before the commissioner on the interference, it seems to me there can be no doubt that the decision of the commis· sioner was correct upon the testimony in the matter then before bim, and that his award of priority to flahl disposes of the Holmes and Corey devices for the purposes of. this case. The. Foster patents are for devic,e!! for, transmitting signals by means of pneumatic tube"s. Neither of them ,shoWS of the device to an annunciator in the car of an elevator while in mo· tion; and even if they had shown such application of the Foster vices, I do not think a person could, without invention, from any hint or suggestion in the Foster devices, by mere mechanical skill adapt the system of electric calls used in Hahl's device to an elevator car. The same may be said of the flexible gas-pipe. Neither air working through a flexible pneumatic tube, not gas passing through it for the fluid,. and it required somepurposes of illumination, are the thing more than was done either by .Fpster with his pneumatic tube, or whoever applied the gas-tube,to apply electricity to the operation of an annuliciator in a car in m6tibn·. The pr'oof shows that since the Hahl and Gray patents this device has been for use in elevator cars, and its adoption, and the fact thl:!>t,almost simultaneously quite .lj.. invlilntors-two of them, at leQ,st, Gray and Holmes, "ell ·knoWll to thepupiic fo;!: in the field of electrical science-had given thei! attention to.the sub· ject-matter covered by devices now before us. is it
694 required something more than mere mechanical skill to accomplish the result attained by this patent. As to the second point, that this device shows only a mere aggregation of parts and produces no new result, it is sufficint to say the result produced is the transmission of signals to a car when in motion, which was new and had never heen produced until this combination, and that some of the parts in this combination perform a new function, and the whole combination produces a new result. As to the objection that the Gray patent was irregularly issued, it is, perhaps, not material to the purposes of this case to consider that point seriously, because'the defendant in this case is shown by the proof to only use the flexible·cable method covered by the Hahl patent; but I have no doubt that under section 4904 of the Revised Statutes the commissioner of patents had the right to declare an interference between Gray's application and the flahl patent, as the statute expressly gives him the power to declare an interference between "any pending application and any unexpired patent." So, too, it seems to me that both patents are sufficiently definite in tpeir statements to describe and cover the inventions claimed. There is no controversy in this case on the question 01 mfringement. The proof shows that the defendants have used, and are using, the flexible-cable method shown and described in the Habl patent. I can, therefore, see no reason why the complainant is not entitled to a decree and an accounting.
& Co. and others v. PARRY.
(Oircuit Oourt, D. Ma88aMuBeU8. December 19, 1882.)
PATENTS FOR INVENTIONS-REISSUE-PRELIMINARY INJUNCTION.
A motion for a preliminary injunction against an infringement <>f a reissued patent, where there is no doubt that the reissue is in terms broader than th& original, but which change may be legitimate, as describing the real invention. will· be denied. '
In Equity. L. Gifford and W. B. H. Dowse, for complainants. J. A. Loring and W. P. Preble, Jr., for defendant. LOWELL, C. J. This motion is for a preliminary injunction against. an infringement by the defendant of the reissued patent No. 6,018,.