not cover the saddles used by the defendant. nor the manner in which they mount their saddles upon springs. We are' therefore of opinion that-this suit should be dismissed for want of equity.
& JEFFREY (No. 850.)
(OirOftit Oourl,W. J).lllinois.
April 80, 1888.)
PATJllNTB' FOR INVENTIONB-PATENTARILITY-NOVELTY-AxLB·BEARINGS.
The. device shown by claims 2 and 8 of letters patent No. 249,278 of NovemlJer 8,1881, to Albert E. Wallace, for an "improvement in axle-bearings for vehicle wheels;" consists of an axle upon which slide two sleeves, beveled at the E1nps which approach nearest to the middle of the axle, .110 that when these 1>erels are brought. together, or approximately together.,they will form a V-shaped groove upon the axle, the inner one of these rings or sieeves reat· ing against the hub or shell of the axle, and the outer' coming into close connlllltion with the crank. Upon the axle is fitted a grooved bearing·box, contaiqing me,tallic balls carried in said groove, and adapted to be partly reo tained' fn the groove upon the axle formed by these two beveled sleeves; and the adjustment to take up the wear of these balls is obtained by moving the outer upon the axlEi by means of a threaded screw at the outer end. Held void for want of novelty, being anticipated by the English patent of No· .' vember 14,1878, to James BatEi.
2 and 8 of letters· patent No. 280,421 of Jnly 8, 1883. to Albert E. Walla,ce for an "improvement' in for vehicles," are: "(2) Con· litiucte<dnnd comhined * * *, a two:part sleeve, a bearing·box. a row of bans; a' sorrated ftnnUlllS, and a'locking button, with an axle and hub anll flange.,(SlThe eombino.tion, in.a ball'bearing device, of./1 free bearing·box and II: Held void for wa,nt of novelty, being anticipated by tho EnglIsh patents of November 14.'1878, to James Bate, of March 22,1880, to Bown& Hug-hes, and oiMav 7,1880. to Monks. , .
,In Equity. Bill for . . C. J., and D. J. , Cobu,-n Thacher, for complainant. B. [t'. ThurBton and Offield &: Towle, for respondent.
, BLODGETT, J. In this case defendants are charged with, the infringement of patent No. 249,278, granted November 8, 1881, to Albert E. Wallace for improvement in axle·bearings for vehicle wheels;" and of patent No. 280,421, granted July 3, 1883, to Albert' E. Wallace for "an improvement in axle-bearings for vehicles;" Both these patents are for alleged iml'l'O\'emE'nts in what is known as "ball-hearing devices" for axles or journals, especially.with reference t'J such bearings when used in connection with bicycles· or tricycles; Rnd the features of such patents specially in controversy in this case are the methods by which the adjustment of such benrings is obtained. The first patent contains four claims,but infringement is only charged as to the secondaud third of said claiwiS, which are llS follows:
GORMULLY & JEFFREY MANUF'G CO.
·"(2) The described anti-friction bearing for a wheel and axle, consisting of a one-part bearing-box and a two-part sleeve, having a circular row of balls within said box, and between bearing surfaces.in the box, and on either P1l.rt <,If the sleeve, and adapted for adjustment for wear and securement in position on an axle by a screw-thread at the outer end of one part of the sleeve, operating to draw it towards and from the other part, substantially as set forth. (3) The described anti-friction bearing for a wheel and axle, consisting of a two-part collar or sleeve adapted to inclose the axle, a one-part bearing-boX' i.nclosing said sleeve, and containing a receSl! with bearing-surfaces between which and a bearing-surface on either part the said sleeve is held, a circular fOw of balls combined and constructed essentially as shown and described, for securement in position and adjustment for wear by the pressure of one part of the sleeve against tbe hub of the wbeel, and by an external thread on the other part of the sleeve, operating in an internal thread in a box secured to the axle on the opposite side, substantially as set forth." Plainly stated, and stripped of technical verbiage, the device shown by the patent consists of an axle upon which slides two sleeves, beveled at their inner ends. or the ends which approach nearest to the middle of the axle, so that when these bevels are brought together, or approxi. mately together, they will form a V-shaped groove upon the axle, the inner one of these rings or sleeves resting against the hub or shell of the axle, and the outer one coming into close connection with the crank. Upon the axle is fitted a grooved bearing-box containing metallic balls carried in said groove, and adapted to be partly retained in the groove upon the axle formed by these two beveled sleeves; and the adjustment to take up the wear of these balls is obtained by moving the outer sleeve upon the axle by means of a threaded screw at the outer end. The second patent, No. 280,421, purports upon its face to be for an improvement upon the first-mentioned patent, and is stated to consist in improved means for adjusting the bearings, and for securing and adjusting the parts in position, and for adjusting and holding the frame of the vehicle and its load with relation to the bearing-box, and shows sub· stantially the same beveied sleeves which were shown in the former patent, and forming a channel or groove in which the ball-bearings ride, or partly ride, with the grooved bearing-box to carry the balls slipped onto' the axle sO that the balls will move in channels or grooves formed by the beveled ends of the sleeves, operating substantially, so far as its practical service is concerned, like the device shown in the first patent. This patent contains four claims, and infringement is charged as to the second and third of said claims, which are: .. (2) Constructed and combined, SUbstantially as herein set forth, a twopart sleeve, a bearing-box, a row of balls, a serrated annulus, and a lockingbutton, with an axle and hub and flange, essentially as Ilhown and described. (3) The combination. in a ball-bearing device, of a free bearing-box, G, and a E, substantially as set forth." The defenses set up are want of novelty and non-infringement. The complainant also charges in this case as in No. 824, ante, 877, heretofore considered and disposed of, that the defendants, by the con· tracts of June 13, 1883, and December 1, 1884, given by complainant to the defendant Gormully, have admitted the validity of these patents, v.34F.no.11-57
and complainant's title thereto, and are now estopped from denying the same; so that the only question leftopen in this case, as complainant claims, is' the question of infringement. As we fully discussed in the first case the question of the binding of these contracts, we do not consider it necessary to reconsider or review what was there said; but as this suit has spe<;lial referm).ce to the ball-bearing mecha,niems used by tlledefendants in their machines, it may not be inappropriate to refer to the letter of complainant to Mr. Gormully of November 4, 1884, in answer to a letter of Gormullyto complainant of October 29, 1884, in which the complainant says: , ,' , "You misread the license probably, as to the Peters patent, as we do not ask you to adntit in that license that the ball-bearings on the ·Ideal' infringe that patent. As drawn out, it did atikyou to admit the validity of that patent, and the scope of it, as covering ball-bearings with means for lateral adjust· ment. We would not ask you to relinquish anyclahn whleh you have in any patent." ,
4.S Was' said in the formercase; it is hardly conceivable that Gormully, beinghiplse,lf the own,er pf ball-beadng patents, and under them, would these]icenses with any other understanding of their import anCl uponp,im than that whf.never they he waS remitted: back to,the,same position in whjch he stood prior to the taking of licenses; and, having found thai Gormullyis not estol?ped by: these contracts in the former cases, we simply reiterate that conclusion1 in,this C/l,se, and proceed to the consideration of the, issues made upon the patents themselves, . . ' .", . have put in evidenc6,with special reference to the patente 99:W in controversy, the specifications of the Engljsh patent granted November14, 1878, to James Bate, which shows. beveled sleeves upon anl;lx,],e,: so. arranged as to slide with their ends towards each other,fqr:t:n,ing ,a beveled or V-shaped groove, shell. or balH>ox r.oun<Fng sllch groove, and carrying .the balls in' the. groove of the shell, so that when the parts were brought together, the balls would move upon these expr6$s,provisionfQr el}dwise adjustment by of a. moving one of these sleeves;, and, for the .of this case, to us wholly immaterial wh ch one of these sleeves, Or thim bles. moves upon the so long asit made provision for. adjustment. This far as. this of adjustability is concerned, it seems to us, ,is in mode that oftb,e,first of the,patents uow und.er ,consideration, and to: ,llqPstantially antiQjpate covered ,by the second and thirdcla.imsof the second'Wallace 'patent. The same features are also shown ,in 'the specifications,'of patent of'Bown & Hughes. dated March 22, 1880, where provision'is made for lateral or endwise adjustmente.s it seems to ,us, by substantially the ,same device in all its .modeS ·of operation as jsshown in' the' seol=\nd of these patents j while the English patent to Monks·. of May 7, 1880,.describes a device for latera! .or endwise adjustment which, in all respects, seems to fully anticipate and cover the far as .they may. seem material; ox patentable,
of this Wallace 'patent. With· these old devices' found' in the art, it seems clear to us that the defendants had the right to use the ball-bearing boxes which are shown· by the proof to have been embodied in their machinejal'ld the conclusion is irresistible that the claims of both these patents upon which infringement is charged show nothing new or worthy of the name of invention. The bill is therefore dismissed for want of equity. '
SPENCER t1. PENNSYLVANIA
(Circuit (Jourt, E. D. Penn81111Dania. October 10, 1887.)
PATENTS FOR INVENTIONS-ExTENT 011' CLAIM-LoCOMOTIVE TENDER EBS.
The first claim of letters patent No. 99,728, which is as follows: .. The herein described method of supplying locomotive tenders with fuel or water, which method consists in using the traction of the moving locomotive, acting through chains, or any proper connection, to raise the buckets, boxes. or other deliver· ing apparatus, so that their contents may be discharged into the tender as sub· stantla11yset forth," must be construed as a claim for the particular means devised and shown to perform the work therein specified, and not as a broad claim for a method of accomplishing the result, and that the patent is there· fore valid. The first claim of letters patent No. 99,723, as above set forth. is infringed by an apparatus in accordance with the specifications contained in letters patent No. 245,850, granted to John B. Collin. August 9,1881, and reissued letters patent of December 4,1888, No. 10,417, for supplying locomotives with coal consisting essentially in the employment of the movement of the engine in connection with the hoisting mechanism for elevating the coal into the proper position to be discharged into the tender.
In Equity. Bill for an infringement of letters patent. This is a suit brought by Albert H. Spencer against the Pennsylvania Railroad Company, for an infringement of letters patent of the United States, No. 99,723, and bearing date February 8, 1870,granted to the said Albert H. Spencer. Complainant's patent has for its object the utilization of the traction of a moving locomotive to raise suitable coal or water delivery appar.atus 1 so that their contents may be discharged into the tender of said locomotive. The invention relates to the construction of a hoisting apparatus for elevating fuel or water into a locomotive tender, and in having the same so arranged, with relation to the locomotive, that the labor of hoisting sh'111 be aecomplished by its tractile power. The fuel car rises in the slides until the proper height has been obtained, and discharges its contents into the tender, which, by this time, will be directly opposite; the length of the hoisting chain being determined in such a manner as to accomplish that object. As the available hoisting power is prl'l.ctically equal to any requirement, any reasonable quantity of fuel or water may be thus elevated. The claim of said patent, upon
by C. Berkeley '!'aylor, Esq., of the Philadelphia bar.
which complainant asks for relief, which is the first claim in the is as follows: "(1) .The herein described method of supplying locomotive tenders Y::.h fuel or water, which method consists in using the traction of tho moving 10. cOmotive, acting through chains, or proper connection, to raise the buckets, boxes, or other delivering apparatus; so that their contents may be discharged into the tender, sUbst3ntiallY'as set forth." The respondent's apparatus is illustrated and described in letters patent granted to John B. Collin, August 9, 1881, No. 245,350; reissued December 4, 1883, No. 10,417; the claim of which original patent is: "The described method of suppl;ring locomotives with coal, consisting essentially in the employment of the movement of the engine in connection with hoisting mechanism, substantially as described, for elevating the coal into the proper position to be discharged into the tender." The patent also says: "This invention is an improved method of supplying locomotives with coal, consisting essentially in the employment of the movement of the locomotive, in connection with proper mechanism for lifting the coal from the ground to the requisite elevation for properly the same into the tender." And also the following: "The power of the locomotive is employed in combination with the proper hoisting mechanism for lifting the coal from the ground to the requisite eleva. tion for properly discharging the same into the tender, the engine being so connected to the hoisting mechanism, that, when the same is moved into the proper position to receive the coal, the receptacle carrying the latter will be lifted into the proper position for discharging its contents into the tender." George J. &:George Harding, for the complainant. It is not claimed that an l:l1evating device in itself is the novelty of Spencer's invention, nor that the tractile movemept of the locomotive shall lift coal in that elevating device; but the claim is the application of that principle in such manner, through ropes or chains, that when the object which elevates the coal is in the position to receiVe it, then the lifted coal will bein a position to be discharged into said object which has elevated it. A modification of an elevating apparatus, which changes the relationship of the different elements so as to act ip a different manner, and fora different result, cannot be said to be anything bllt ,an invention. Andrew McOallum, for respondent. Confining the issue to the SUbject-matter of the first claim, the questions to be determined, in a measure dependeut upon the constl'uction to be given to it. ;Defendant contends that the claim is, on its face, void in law; that to . be at all valid it must becol1stl'ued as for the machine or mechanism described; that there is no·vatentable novelty disclosed, in view of the state of the art; that the device described is inoperative practically; that the apparatus used by defendant does not infringe.,
CONSTRUCTION OF THE CLArK.
So far as the. meaning of the language U'sed is concerned, it would seem to be beyond question that Mr. Spencer has attempted by it to cover a method or mode of supplying 10comotivEftenders with fuel and water, and not the means 01' mechanism described,through the operation of which the desired result is accomplished. Complainant's expert, in defining the invention covered by the claim, says: "The !'lssence of the invention, as emlJodied in claim I. is
SPENCER V. PENNSYLVANIA R. CO.
the utilizationof the tractne power of a locomotive to deliver to said locomotive in an automatic manner the necessary substances which are to be employed in the development of further power in the locomotive. It is true that the construction shown will automatically discharge its contents, but the inventor is in nowise limited to any such construction." Mr. Chief Justice TANEY, in discussing the principles of patent law in O'ReillY v. Morse, 15 How, 62. "Whoever discovers that a certain useful result will be produced in any art, machine, manufacture, or composition of matter, by the use of certain means, is entitled to a patent fOl' it, prOVided he specifies the means he uses in a manner so full and exact that anyone skilled in .the scienceto which it appertains can, by using the means he specifies, without any addition to or subtraction from them, produce precisely the result he describes. And if this cannot be done by the means he describes, the patent is void; and if it can be done, then the patent confers on him the exclusive right to use the means he specifies to produce the result or effect he describes, and nothing more." The rule thus announced by the United States supreme court more than 80 years ago, remains the rule to-day, andh¥ been followed by that court in all cases where the same question has come before it. Burr v. Duryee, 1 Wall. 531, affirmed in Case v. Brown, 2 Wall. 280; Fuller v. Yenzer,94 U. S. 299; Corning v. Burden, 15 How. 252. Presuming for the purpose of this argument that the complainant. Spencer, WllS the first to conceive the idea of utiiizing the tractile power of a locomotive for hoisting fuel and discharging it into the tender, it does not necessarily follow that such method of loading the tender amounts to a patentable invention, or to anything more than the discovery of a new use of a well-known machine. And if it is shown by the state of the art that the tractile power of the locomotive has before been utilized for analogous purposes, and that substantially the same method and means for loading and unloading with other well-known powers were before known, the mere fact that such old method and means could be employed for loading a tender wonld not be a patentable invention. In Railroad Co. v. Truck uo" no u. S. 490-498,4 Sup. Ct. Rep. 220, GRAY, J .· says: "Whoever discovers that a certain useful result will be produced in any art. machine, man nfacture, or composition of matter, by the use of certain means, is entitled to a patent uses in a manner so full and exact for it. provirled he specifies the means that anyone skilled in science to which it appertains can, by using the means he specifies, without any addition to or subtraction from them, prodmle precisely the result he def'\cribes. And if this cannot be done by the means he describes the patent is void." O'Reilly v. Morse, 15 How, 62. "Utility is absent from all processes and devices which cannot be used to perform their specified functions, and patents for such subjects are therefore void." Bliss v. Brooklyn, 10 Blatchf. 522; 6.Fish. Pat. Cas. 289; Rowe v.Blanchard, 18 Wis. 465. "The patent is void if the machine will not answer the purpose for which it was intended without some addition, adjustment, or alteration which the mechanic who is to construct it must introduce of his own invention, and which had not been invented or discovered by the patentee at the time his patent was issued." Burrall v. Jewett, 2 Paige, 148. What is essential to Spencer's apparatus is non-essential to Collin's, and what makes the latter valuable is not shown or described in the Spencer patent, "It is no infringement of a patent for a combination which is in itself impracticable and worthless to add to the combination an element which renders it useful and valuable." Robertson v. Hill, 4 O. G. 182.
PElt CURIAM. The first claim (which alone is involved) must be construed as for' the particular mean:1 devised and shown, to perform the work specified therein; not Bsa broau claim for a method of accomplish-
.. ing the result. In this .viewthe claim is valid. Thert' is no sufficient .' evidence to justify anticipation, or want of vention.. The devise used' by the respondent is sUbstantially' identical with the complainant's, t6th,e e;t(lnt covered by this -claim. A decree . must therefore go against: him fqr an account. ,.
A$M,UB t1. FREEMAN. 1 SAMg t1. ALDEN.
(lJircuit (J01VI't, E. D. Ptn""1Iltoania.
PATJmT8:1'OR INVENTIONS-INFRINGEMENT-DAMAGES MEASURED BY LIcENSE
... BAME-WORTHLESS CLAIM.'
Where "it is reasonably plain that A claim is structural, and the master has reported it valueless, and tbe proofs seem to justify him in so doing, the nonuse of it by an infringer of another claim .embracing the whole invention will not compel the complainant to adduce evidence to show the value of the part taken.. WeatooU v. Rude, 19 Fed....Rep. 836; Thread 00. v. l'hread 00.,27 Fed, Rep. 865; Tondeur v. Stewart, 28 .Ired. Rep. 561,-cited and followed.
In Equity. Exception to master's report. Order for injunction and account, July 19, 1886. See 27 Fed. Rep. 684. Master reported nominal damages. Plaintiff excepted to report on account of ruling therein that a license fee of $1,000 per furnace had not been proved. B,akewell &- Kerr, for complainant· . Wayne Me Veagh and W. W. 13aldwin, for defendant.
BUTLER, J.' The report shows such intelligence and care that we feel besitation in disagreeing with the leamed master. We are unable, however, to accept his conchision in one important respect. To show the ej[tent of damage sustaiIled, the complainant undertook to prove the existence of a uniform license. fee. In this, the master thinks, he failed. , The rule requires.a uniform fee within given periods, such as indicates the market value of a license at the times specified. Itneed not be uniform throughout the life of the patent, and could 'not be. As the 'nopoly approaches its close, the value necessarily .diminishes, and the price of its use must be correspondingly less. Nor is it important that a larger or smaller sum: is demanded and paid under special
Esq., of the Philadelphia bar.