,'Il. RAMAPO IRON-WORKS.
of the Giffard invention. But evidence upon this very question was fered in the LdllyOase. It seems to me obvious, therefore, that complainant's thirdcTll,im can only 1?e sustained by holding contrary to Judge' BLODGETT'S finding of fact that, the Hancock combination does produce results SO different from Gi:ffii:rd&'SaS to have required invention. !tis not R case in which the two instruments which are alleged to infringe so differ from each other' that under a narrow construction of the third claim the inst111ment complained of in the present suit 'might be an infringement, while the instrument,of the Lally Oue would not, but, on the contrary,unless the instrument in the Lally aUle is an,iIlfringement, the one complained of in this suit cannot possibly be. If this court should undertake to re-examine the findings and conclusions, of tile learned judge who decided the Lally Oue, and should come to the concl'psion that the third claim could be sustained for any combination made "substantially Rsdeseribed," tberesult would be that the Eberman would be enjoined in this district, while in the Northern district of ,Illinois the Jenks injector, which more nearly resembles the Hancock patented instrument, could be made and sold without hindrance. This is just exRctly'the confusion and uncertainty which it is the wise purpose of the comity between the United States circuit courts in patent cases ,to prevent. Goodyoo.r v. Willis, 1,Flip. 388; Chemical WorkB v. Heckfff, 2 Ban. & A. 351; Purifier 00. v. Chrisf:w.n, 4 Dill. 448; Worden v. Soo.r18,21 Fed.' Rep; 406. The LaUy Que has been appealed to the supreme court, and this one, I presume, will be, and the questions involved in both oases be there finally adjudicated. The bill must be dismissed.
BRAHN t1. RAMAPO IRON-WORKS
(Circuit Oourt, S;n>NetD York. May 11,1888.)
1. 'PATENT$FOR lNvENTIoNS--SWITCH·STANDs-PRrORITY. , James Brahn, August 0, ,1879. and March 6, 1883, obtained patents for improvements in railI:oad Joseph H. Lukens, Ma'y 11,1870, (ap· ,plication filed March 5.1870,) obtained a patent for an inventloncontaining , Bomeof the IlQme features. Brahn endeavored, in an action for infringement, show thAt his invention was prior to the date of the Lukens patent. Held that, in8llmuch 88 complain"nt, when notified, March, 1879, by the patent· office tllat his claim was anticipated by Lukens, more sharply limited his claim to the: precise combination intended to be covered, instead of insisting to the contrl'ry, he cOJ;1ceded the priority of the Lukens patent. 2. 'Where the shaft, as shown in the fourth claim of p,atent 218,110, 7, , 18'79, for switch-stands, slides vertically, and by such vertical action locks and unlocks the switch, and its primarY locking can onlybe overCome by fracture of some part of the mechaniSm. it is not infringed by a switch-stand the shaft ot'whicb revolves, and where the locking is one 'wbIChmay be overcome by pressure at the rails; and when, if the peculiar features of the shaft and hub and lever are eliminated. and the claim ,only covers the substitution of a si,ogle padlock staple rotating with the shaft, for the three exactly similar but med padlock staples of the Lukimsllatent Of May 11, 1875, it would show no above ordinary mechanical skill, and be void. '
Patent 271J,450, March 6.1883, for switch-stands. granted to James Brahn, on account of the. prior state of the art can only be maintained .when closely restricted to the specified elements, each of them being material to the claim; and w·hereinthe alleged infringing stand the shaft has not the vertical motion of tae shaft in the patent, and the additional shaft with its spring aud recess is omitted, there is no infringement. ,
In Equity. Bill to restrain the infringement of patent. James Brahn, complainant, filed a bill to enjoin the Ramapo IronWorks et al., defendants, from infringing patents for improved switchstands, No. 218,110, of August 7, 1879, and No. 273,450, of March 6, . 1883. A. G. N. Vermi7.yea, for complainant. WiUiam A. Redding, for defendants. LACOM'BE, J. This suit is brought for an injunction to restrain the defendants from infringing two letters patent heretofore granted to the complainant, and now owned by him. The patents are each for provements in railroad switch-stands, and are, respectively, No. 218,110, dated August 7,1879, and No. 273.450, dated March. 6, 1883. By n0tice or agreement between counsel the controversy here is confined to the fourth claim of patent No. 218,110, and the first claim of patent No. 273,450. These claims areas follows: .. Fourth, [of 218,110.] The combination, in a switch-stand, of the revolving shaft, B, to which are secured the crank, C, and hub, D, the arm. j, secured to said so as to be rotated it, the lever, E, pivoted in the hub, D, and prOVided with a slot, through which may pass the said arm, j, when the said lever is depressed, aU constructed and arranged to operate as and for the purpose described." "First. [of 273,450.J The combination, in a switch·stand, of the shaft, G, the cam, D, the shaft, E, clutch, D2, D3, and spring F, as and for the purpose described." A distinctive feature of the first patent is the slot in the lever through which, when the le\'er is depressed, the arm, i, passes. At the end of this arm is a hole, through whiGhmay be passed the.qow ofa padlock., Thus the lever lS secured against unauthorized interference. A sim]ar IIlode of fastening the)ever in its depressed positionjs shown in a patent to Joseph H.Lukens, (No. 163,220,) dated May 11, 1875, (application filed Match 5" 1875.) In the Lukens patent there were three padlock staples, one in each plane, within which the lever could be depressed; in the complainant's patent there is only one arm, (or pad;ock staple,) which revolves with the shaft, and by means of such revolution is placed successively in each of the three planes within which the lever can be depressed.. The protrusion of the arm through the slot in the lever, with appliances for locking the two together with the long end of the lever in to the stand and the arm below the stand-head, is common to both. Complainant's patent was issued August 5, 1879, upon an application filed February 5, 1878. Upon the trial he endeavored by pnof to fix the date of his invention prior to May 11, 1875, the date of Lukens' patent. The evilence is that of the plaintiff', and, as
BRAHN V. RAMAPO IRON-WORKS.
might be expected in undertaking to testify as to the precise dates of transactions occurring several years ago, it is not altogether consistent. A very reasonable explanation of its apparent inconsistencies is advanced by complainant's counsel, but the decision of this question is controlled by an independent circumstance, which stands proved without dispute. When all the facts were fresher in complainant's mind than they were when he testified last year, and when it must be assumed that he was Burer of his dates than he is now, the Lukens patent was brought to his attention. Complainant's original fourth claim read as [')llows: "The combination, in a switch-stand, of revolving shaft, B, to which is secured the crank, C, and hub, D, the arm, j, secured to said shaft. the lever, E, pivoted in the hub, D, and provided with a slot through which may pass the said arm, j, when said lever is depressed, all constructed and arranged to operate as and for the purpose described." On March 14, 1879. he was notified by the patent-office that his claim was found to. be anticipated in the Lukens patent. Instead of insisting that his invention was prior to Lukens', he practically conceded the contrary, by "more .sharply limiting his claim to the precise com bination intended to be covered." That precise combination consisted solely in fastening a single padlock staple (or arm) to the shaft, instead of fastening two or more to the frame. Such action on complainant's part indicates quite plainly that at that time (May, 1879) he did not believe that he was a prior inventor in the field covered by Lukens. lam of the opinion, therefore, that the complainant has failed to fix the date of his invention, covered by th;e'fourth claim of patent No. 218,110, earlier than the date of Lukens' patent. Upon the argument defendants' counsel expressly disclaimed any inintention of challenging the validity of the patent. Such validity will therefore be assumed; but in view of the state of the art as disclosed by tbe proofs, such validity can only be sustained upon such a construction confine it strictly to the precise form and arrangeof the claim as ment of the parts which-all of them old-are combined by complainant in a particular manner to accomplish particular results. Bragg v. Pitch, 121 U. S. 478, 7 Sup. Ct. 978; Hill v. Sawyer, 31 Fed. Rep. 282. Defendants contend tbat, if the patent sued on is thus construed they do not infringe, and such contention seems to be well founded. The shaft in defendants' device revolves, but it does not, as in complainant's stand, slide vertically, and by such vertical action lock and unlock the switch. In defendants' switch-stand the primary locking is one which may be overcome by sufficient pressure at the rails; in complainant's, it can only be overcome by fracture of some part of the mechanism. The specifications and drawings show how these results are brought about in complainant's patent by the peculiar construction and intended mechanical action of the shaft, B, hub, D, and lever, E. All these parts are brought into the fourth claim by reference, and are thus to be taken as entering into the combination which the claim covers. As it is not attacked here, such combination may be accepted as sufficient to supporta patent. If, however, the peculiar features of the shaft, the hub, v.35F.no.1-5
and the lever are to be eliminated from the claim,and it is to be con· strued as covering only the substitution of fl. single padlock staple rotat·, ing with the shaft for the three fixed, but otherwise precisely si.milar, padlock staples of Lukens, there is no substantial invention shown; nothing above ordinary mechanical skill; and under the later decisions the patent (as to this claim) cannot be sustained. Atlantic Worka v. Brady, 107 U. S. 192, 2 Sup. Ct. Rep. 225; Hollister v. Manufacturing 00., 113 U. S. 59,5 Sup. Ct. Rep. 717; TMmp80n v. Boisselier, 114 U. S.l, 5 Sup. Ct. Rep, 1042; Pomace-Holder 00. v. Fergu80n, 119 U. S. 336, 7 Sup. Ct. Rep. 382. .. The junior patent, No. 273,450,is to be similarly construed. In view ofthe state of the art, it can only be sustained when closely restricted to the specified elements, each of them being held material to the claim. When so construed, the variances found in defendants' stand-notably the tical motion of the shaft, G, and the entire omission of the additional shaft, E, with its spring and recess-are such at to relieve the structure from the charge of infringement. The bill of complaint should be dismissed, with costs.
SPALDING et al.
(Oirouie Oourt, D. MasBachwett,. November 17, 1886.)
PATENTS FOB INVENTIONS-INFRINGEl\tENT-WAXED PAPER.
In view of the broad construction given to the fifth claim of reissued letters patent No. 8,460, of October 22,1878, to Siegfried Hammerschlag, for a process of making waxed paper by machinery, in Hammer8chlag v. Wood, 18 Fed. Rep. 175, and other similar decisions, held, that the "Spaulding Machine" was an infringement, and that a preliminary injunction should issue.
In Equity. On motion for preliminary injunction. The bill was filed to enjoin an alleged infringement of reissued letters patent No. 8,460, of October 22, 1878, (original No. 193,867, of Au· gust 7,1877 ,) to Siegfried Hammerschlag, for a process of making waxed paper by machinery. The fifth claim of the reissue is as follows: "The method herein set forth of waxing paper, consisting in spreading the wax upon the sUrface, heating the paper from the opposite side to spread and fuse the wax into the fabric of the paper, removing the surplus wax, and remelting and polishing the wax upon the paper, substantially as set forth." Prost & Cae and Livermore & Fish, for complainants. H. D. Hadlock, Thomaa Weston, Jr., and Lore;nzo Dow, for defendant. COLT, J. In view of the broad construction given to the fifth claim of the Hammerschlag patent by various courts, and especially in vieW of
IThe opinion in this case reached us but recently. It is now published 111 connection with the opinion on final hearing, reported infra.