[endants' apparatus. I-do not deem it necessary, however, to enterinto further details or comparisons. The prior state of the art, it seems to me,limits Hayden to the particular devices described in his patent or their equivalents, and I :find the locking' and unlocking devices in the two contrivances quite different. IfclaiDi 13 cannot be said to include the locking or unlocking devices as an element, then it is void for want of invention; for, in view of the White patent No. 229,783, to merely add a receptacle to receive and hold the carrier after becoming detached from the cable would not constitute invention. In my opinion, the defendants do not infringe either of the. three patents relied upon by theplaintiff, and the bill must therefore be dismissed.
TORRANT 'V. DULUTH LUMBER
«(Jif'cuit (]ourt, .D. Minne8ota. :May, 1887.) 1.
PATENTS .FOR INVENTIONS-REISSUE-DISOLAIMER.
The first cll\im of letters p,atent. dated May 18, 1875, issued to John Orm, F., having is in the following terms: ' In a logo-turning device tbe turning spikes, F', in combination witb the piston rod, D " and piston head, D"', of 8 steam cylinder, A. constructed and operating substantially as and for the purposes described." Held. that as the device is not operative without a pressure roller to hold the tooth-bar in place against the log, the claim does not describe an operative combination, and is void.
TORRANT 'V. DUJ.UTH I.UMBER CO.
InEquity. Bill for infringement of letters patent. Parker k BuTton, B.F. Thurston., and P. H. Gunckel, for complainant. We8t' k Bond, for defendant. NEl,sON, J.'This is a suit in equity brought by the complainant against lhedefendant charging the infringement of two letters patent,-...one (reissue No. 5,487)'datedJuly 15, 1873, to Alexander Rodgers as al'lsignee of Essau Tarrant; and the other (granted to John Orm, No. 163,398,) dated May18, 1875. The complainant owns both patents, and the bill charges the infringement of the second claim in the Tarrant reissue and the first claim of the Orm patent. The answer contains several defenses. It denies infringement, and alleges that the second claim of the Tarrant reissue is void because the reissue has been unlawfully enlarged, a.nd that both the second claim of the Tarrant reissue and the first claitn. of the Ormpatent are void for want of patentability. BefOfe, touching the question of infringement, I will first examine the defeIlseofithe invalidity of the patents as charged. Tarra1l.t Patent. EssauTarrant took out letters patent, August 25, 1868, "fora new and improved machine for rolling saw-logs." As scribed in the specification, the apparatus rotated a log upon its axis upon the log of a saw-mill, and the knees on the carriage were effective and essential to the operation. As stated by him, his invention had for its object "to furnish an improved device for turning or rolling logs upon the carriage of * * * saw mills, * * * and it consists in,the const'ttiction and comhination of the various parts, as hereinafter more fully described." The first claim of the patent was for a combination as follows: ' "The 'C, pivoted at its lower end between the blocks, E. which are adapted to slide in vertical grooves formed in posts, D. Whereby the said har, C. is rendered vertically movable and capable of adjustment to suit logs of different substantially as herein set forth and shown. " This bar,moving up and down by the side ofihe log on the carriage, rotated it upon its axis. The lower end of the bar being pivoted to and between blocks which moved in the grooves of upright tiaIly a cross-read-allowed a horizontal movement-would move back and forth to adjust itself to the log upon the carriage. The power is applied .to a projecting arm at the rear side of the lower end of the bar and moves it up and down and presses it forward Se> that the teeth shalltake So orin hold of the log, and the knees against which the log is pressed holds it in' place and forms part of the means by which it is rotated. In the reissue theinventi611 is declared tobe a new and improved machine for turning logs, and it is described in the specification as an invention having for its object" to furnish an improved device for turning and rolling logs to or upon '!'Llog carriage of and it consists in the application for that purpose of a tooth-bar eonllected with means for it the necessary movement, and further in the construction and combination of the various parts, as hereinafter more fully described," and an additional claim was added to-wit: "I claim,jirat, the tooth-bll.r
herein described, operating in the manper described and for the -purpose specified." .This first claim of-the Tarrant reissue was held by the supreme court of the United States, in .Torrent4rm8,etc., Co. v. Rodgers, 112 U. S. 659, 5 Sup.Ot. Rep. 501, to be void, for the reason that the specification had beenl,.wlawfullyenlarged so as to describe a maohine or an invention nQt the;same as the one for ,the original pat!3J;lt issued·.. After a decision in that case the complainant purchased the Tarrant patent, and filed a disclaimer June 3, 1885, as to the first claim. ofth13 reissue. The disclaimer may be found incomrlainant's evipage 169; and, in brief, after setting up his title t:> the Tarrant reissue, ,etc., states that he has. "reason to believethat through inadvertence and mistake the specification and claim of said letters patent are too broad, including- that of which said patentee waa not the fil'$t inventor.Your petitioner therefore enters his disclaimer to that part of the claim in that specification which ,ts in the following words, to-wit: ']i1irst. the hereinde:;cri;be«;l, operating substantially in the manner and for the purpose specified. [Signed] J OHNToRRENT·· Witnesses, PARKER & BURTON.''' lnother words the disclaimer amounts to this: "l means for turning or rolling logs to the canjage of . The'disclaimer, think, is broad enough to carry with, in the connected with the first claimoqhe all; invention whereby the tooth-bar could be usedwitho)ltthe kneesa.s 8: J;llachine for rolling loge to the carriage Qf a saw-mill. The supreme court decided that the invention described in the origi,nal pa,t,e,nt required the use 9£ knel:ls, and that the operation of the tooth-ha! is, enlarged in claim of the reissue, in that it required a chanp;e of the movement and location of the tooth-bar necessary to roll a log to the carriage, and knees essl111tia.l to the operation of the invention described ill.the origiI).al, to-wit, turping: or rolling logs upon the carriage of a saw-mill would be an obstruction. to the operation of a tooth-bar for the pucr-pose· of rolling logs to the carriage. This disclaimer refers to the claim in that specification which enlarged the invel1tion, anda fair constructionof it would eliminate any operation and Use ofa tooth-bar covering a different from that described in the original patent. .The disclaimer relieves' the reissue from the objectionable features pointed out by the supreme court, and describes the same invention as the , The second claim in the reissue, therefore, being for a combination of elements, to-wit: tooth-bar, 0, pivoted at its lower end between the blocks, E, which are adapted to slide in vertical grooves formed in. posts, D, whereby the said bar, 0, is rendered vertically movable and capable ofadjustment to suit logs ofdifferent sizes substantiallyas herein set forth," does not enlarge the scope of the patent, but corresponds with the body of the specification, after effect is given to the disclaimer as I interpret it. The defendant's counsel concedes the right to disclaim, and limit the description in the $pecification of patent and also the correspond4lg claim; and authorities are not wanting for such right. There is, then, described in the reissue an invention which is novel and original and of
TORRANT 'lJ. DULUTH LUMBER CO.
gieat value to the lumber interests of the country. It was the first device of its kind for turning a log upon the carriage of a saw-mill, and was extensively used. There was no machine used previous to Tarrant's patent in 1868 for the purpose of handling the log upon the carriage in the manner described therein, and for that purpose it was practically ef· fi.cient.· The second claim of the reissue, therefore, after the disclaimer, contained a patentable combination, and Tarrant was the first inventor of a machine which accomplished its work effectively, and gave the toothbar, through the contrivance described,a vertical and lateral motion which rotated the logo upon its axis. Such a combination of elements is entitled to protection as a new and useful invention. The defendant insists that the second claim in the reissue, as a combination claim, is limited to the peculiar and specific form of the devices mentioned in it, and described in the specification as operating in a particular manner. The doctrine relating to mechanical equivalents, as he states it, is not applicable to this invention. The Tarrant patent, as the pioneer invention, is entitled to a more liberal application of the doctrine of mechanical equivalents; and if the defendant has substantially made use of the patentee's invention, by employing well-known mechanical equivalents·to accomplish the same result as the Tarrant combination does, iUs an infringer. The defendant uses a machine which has an uprighttooth-bar,.with two arms or branches; one in front and one in the rear at its lower end, which makes it forked. Two steam-cylinders sitting on trunnions are placed under it, one smaller than the other, and each arm of the tooth-bar is hinged to the outer end of the piston-rods of these cylinders. The front end is pivoted to a radius bar, the other end of which ,is hinged to the frame of the saw-mill. When the log is upon the carriage to be rotated, steam power is applied to the piston of the larger cylinder, to which the rear arm is attached, and the tooth. bar moves up causing its teeth to take hold of the log; at the same time the piston-rod of the smaller cylinder moves up, and the end of the radius bar pivoted to the front arm of the tooth-bar allows it to adjust itself to the log upon the carriage. The piston-rod, to which the power is applied as it moves the tooth-bar vertically, also presses the log against the knees of the carriage,when the. teeth engage it, and by these movements the log is rotated. If it is necessary to press the log more closely to the knees, steam is admitted to the top ofthe smaller cylinder, which would tend to stop the upward movement of the tooth-bar, and draw, by this piston-rod, the bar more firmly to the log. Other operations are performed in the defendant's machine, but only the movements described are necessary for my purpose. The machine used is called the "Hill machine." It is seen at a glance that if the radius bar used in the Hill machine is equivalent to the cross-heads and posts in the Tarrant machine, and serves the purpose for which Tarrant used them, the defendant's machine, in the operation of turning a log, invades the invention owned by complainant. The radius bar in the Hill machine guides the lower end of the tooth-bar, and permits it to adjust itself to the diameter and inequalities of a log, when the power is applied to the rear arm or branch v.30F.no.1l-53
to move it vertically. It also holds the cylinders in position, and, if the radius bar is taken away, the tooth-bar and the cylinders will be free to topple over. It is shown by the evidence that radius bars were in common use as the full equivalent for cross-heoos and guide posts, when the movement is to be guided in the direction and as described in the Tarrant reissue. In the Hill machine, then, 1 find a tooth-bar pivoted at its lower end, and guided so that the bar is rendered vertically movable and capable of adjustment to suit logs of different sizes, and this combination of elements performs the same office as the combination of corresponding elements in the Tarrant invention. So far, then, as this combination exists in the Hill machine, and the practical operation of the elements of the combination to 1'otate a log upon its axis upon a carnage is the same in both machines,the defendant infringes the complainant's invention. Tarrant was the first in the field, -and Hill follows his leading ideas as set forth in his patent. Orm Patent. The defendant insists that the first claim of the Orm patent is void for want of patentable. novelty. This claim is in the following language: "In a log-turning device, the spike-bar, F, having spikes; F', in combination with the piston-rod, D", and the. piston-head, D"', of a steam-cylinder, A, constructed and operating as and for the purposes described." In the year 1871 or 1872, J(}hnOrm, seeing at Muskegon, Michigan. a Tarrant machine in operation, \Vorking, as he thought, too slow, and having previously seen a steam freight-hoisting apparatus (}n a steamer, which consisted of a platform upon which the freight was placed and hoisted from deck to deck by a steam-cylinder, conceived the idea that the tooth-bar could be operated by steam; and he built wnat he called a steam-cylinder log-canting machine, which consisted of two cylinders five feet long and eight inches in diameter, with trunnions on each for oscillating, and bolted together with a steam-joint. It fonned really but one cylinder, with piston-heads as usual in steam-engines, and with a short piston-rod connecting with it,to which was attached a tooth or spike bar. There was a pressure roller at the back of this spike-bar, to hold the bar up to the log. This ma¢hine he afterwards made with a single cylinder, the tooth-bar being attached rigidly to the piston-rod, and used a pressure roller. This was the machine patented. The cylinder, being on trunnions, allowed horizontal motion to the bar, but the resistance of the knees would throw the bar back when it was moved vertically, and the teeth engaged the log. Unless there was a pressure roller to hold it up, the bar would fall back clear of the log, and would not tum it at all. Such is the testiulOny ·of :defendant's expert, Bates. John Orm saw this, and his patent provides for a pressure roller permanently attached to the frame of the mill,and, to secure its operation to hold the tooth-bar up to .the log, he has an oscillating bar nearly upright, pivoted to the frame of the mill, and Ilear its top, and at right angles an arm extends towards the tooth-bar, and at the end of this arm is securely attached.a l?I:essure roller, which bears upon the rear of the tooth-bar.
SAX V. TAYLOR IRON-WORKS.
The osciilating bar can be held by a weight, so that the pressure roller shall cause the spikes or teeth to keep their hold during the upward reciprocation of the bar in the operation of turning the log. If there was no pressure roller when the tooth-bar sttut::k the log, and moved horizontally, it would not turn the log, but would fall away as far as the length of the slot, through which the bar passed would allow. The machine, in my opinion, would not operate without the rear pressure John Grm put it there. Robert Grm said: "It has to have it on." The complainant's expert, Dayton, says that it would turn small logs without it; but Bates, the defendant's expert, says it would be inoperative without it, or some device to hold the bar up to the log. I think the counsel for the defendant, by the diagram and model illustrating the movements of the bar, has also shown that it is inoperative without the pressure roller. The first claim in the Grm patent, therefore, in my opinion, does not describe an operative combination, andis void. The conclusion arrived at is that the complainant is only entitled to a decree, as prayed in his bill, for an infringement of the second claim in the Tarrant reissue, and it is so ordered.
(mrcuit Oourt, D. New Jer8ey. March SO, 1887.)
1. PATENTS FOR INvENTIONS-VALIDITy-ANTICIPATION.
Letters patent No. 249,102, issued to John K. Sax, November 1, 1881, for improvements in the manQ.facture of car-wheels, the claims of which are for a car-wheel consisting of a flanged or grooved rim, having a recess at the inner side, and a solid metal body fQ.sed or welded to said rim by plain or dovetail joints, are anticipated by the Sax & Ker patent of 1869, and its reissue of 1870 and 1877, the claims of which cover a car-wheel composed of a cast-iron body and steel rim, the two parts being united by means of a fused tongue and recess joint, as described in the patent of November 1, 1881. The change in the method of combining the body and rim of the wheels, by transferring the groove or recess to the rim, and embracing the body of the wheel, instead of having the groove or recess in the body and embracing the rim, does not involve invention. On authority of HoUiIltifr v. Benedict d':i Burnham ManuJ"u 00.· 113 U. B. 69, 5 Sup. Ct. Rep. 717.
In Equity. Suit for infringement of letters patent. David A. Burn, for complainant. A. G. Rishey &: Son, for defendant. BUTLER, J. 'fhe suit is for infringement of patent No. 249,102, issued to plaintiff, November 1, 1881, for "improvements in the manufacture of car-wheels," the claims of which are as follows: "Fi1'St. a car-wheel, consisting of a flanged rim, having a recess at the inner
side, and a metal body, fused or welded to said rim, substan tially as set forth;