vol. 38. ,
As to the third defense, that defendants do not infringe. The flhallenberger patent provided for the .hinging of the gate to the oscillating carrier or rim, while the defendants hinge the gate to an adjoining part of the machine. I do not, however, consider this anything but a colorable change, and see no reason why the defendants could not as readily have hinged the gate to the shuttle-carrier as to have hi.p,ged it to another part of the machine; and, as I construe the Shallenberger patent, I do not think that he nj¥lessarily limited himself to hinging the gate to .the carrier itself, as I think it WIlS. sufficient that the gate should be so hinged as to confine the shuttle and cover the bobbin, so as to retain it within the recess provided in the carrier when the machine was in operation. I am therefore of opinion that the charge of infringement is clearly established by the proof,anda decree will be entered finding that the Plltent is valid,and that defendants have infringed it as charged. The is not only ,against the Wilson Sewing-Machine Company, but William G. Wilson, who was the president of that company; and in the case tenqs· to show that he not only the president but the chief stockhold,er and manager of the COI:\lpany, being, ,as one expressed it, "the company itself in all respects;" as the proof now stands, I think complainant is entitled to a decree for WilsoQas well, .asthe company,' but that question itlaY, be rese.J,'ved until the coming in of the mllster's report upon the :damages,whe,n the defendant Wilson will be at liberty to put ioproof on the reference to the ,as to damages bearing upon the question of his personal liability.
tl. BOARD OF WATER
(Circuit Gourt, S. D. NetD York. April 17, 1889.)
PATENTS FOR iNVENTIONS-CONSTRUCTION OF CLAIM-WATER-METER.
a SA,Mlll. meter described in patents to James A. Tilden is adapted from another ,.' . ' 'The
piston with projections and' a cylinder with recesses more in number than the projections. The 9n1y piston described in tbe specification Is one having llside-rocking and rotating movement"which is due to the fewer projections on tbe.()yIlnder than on the piston. Held, tbat it is such a piston that is referredto in the tlrst claim, and such 'piston is an element of it, and consequently,of claims 3-6 of, reis'sued letters patent, February 8,1887, to the Na: ,tional MetE\r Company, assignee of Nash. , engine'invented by Galloway, (English patent December 14. 1847,) in which , the· prl)jections on the piston equal in n.umber the recesses in the cylinder. and the ;p,isto'o has neither the sitJe-rocking nor rotary motion. In the Nash : meter tHe ports for entraJ;lce and discharge are in the ends' or sides of the piston; .the ends of the cylinder 'act as valves. and the compound movement of thll' ,opens some ;an4 ,.qloses ,others of the ports so as to equalizll the pressure atright anglCi's to the direction of the piston's mqvements., In Tilden'oS meter the ports lire in the endsohhecylinder case, so located'thatthe contact of the piston with '.the .divides .eaoh recess'into onefilUng and
The water-meter described in .letters patent No. 211,582, January 21, 1879, to Lewis H. Nash, is adapted from the Galloway rotary engine, which has a
NATIONAL METERCJO. 11. BOARD OF WATER COM'Re OF YONKERS..
one discharging passage; the piston acts as the valves. and it is essential that there shall be not merely.water pressure moving the piston, but Bide pressure. Held not the Bame combination or combination of equivalents.
In Equity. Suit by the National Meter Company against the board of water commissioners of the city of Yonkers. Broadnnx. &: Bull, for complainant. Livermore &: F'i8h, for defendant.
WALLACE, J. This suit is brought 1:.6 restrain infringement of claims · 3, 4, 5, and 6 of reissued letters patent granted to the complainant as assignee of Lewis H. Nash, February 8, 1887, for an "improvement in rotary water.meters." The original patent (No. 211 ,582) was granted January 21, 1879. None of the claims now in controversy were contained in the original patent; The alleged infringing apparatus .of the defendant is constructed under patents .granted to James A. Tilden, assignor to Hersey Bros., for" rotary fluid-meters," the first of which was granted August 18, 1885. The manufacture of the alleged infringing meters was commenced; and quite a large number of them put upon the market, and they were extensively advertised,prior to the filing of the application for the reissue of the patent. The defenses are non-infringement and the'invalidity oithe reissue as to the claims in controversy., The experts on both sides agree that Nash, the inventor of the complainant's water-meter, took one form of the Galloway rotary engine, described in Reuleaux:s Kinematics of Macbinery, (translation of Alex B. Kennedy, published in London in 1876,) and madeimprovements upon it, which were necessary to adapt it for practical use as a. water-meter, and these improvements were meritorious and valuable. At that time it was well known that steam and water engines, whether rotary or reciprocating, could be usen. as meters to measure the flow of the fluids which pass through them, and various forms of both descriptions had beep used as· meters. The patent of Nash states that it is contemplated to use the apparatus as a motor (engine) or as apUl;llp. Besides the rotary engine thus described, Galloway patented another form of engine,· (English patent to Galloway of December 14, 1847.} The experts agree that Tilden, the inventor of· the defendant's water,-meter, took the form of the Galloway engine of this patent, and made improvements upon it which were necessary to adapt. it to practical use as a. water-meter. What each din. was to supply the arrangements of ports and discharging spaces necessary fl)r the special form of piston and oylinder-chamberemployed in the respective Galloway engines in order to convert the engine into a practical water-meter, adding also a registering device, to operate by attachment to the piston. In the kinematic engine there is a piston with pJ,'ojections, and a cylinder with recesses, but the r.Jcessesof the. cylinder are more in number than the projections of the .of the O:allo",ay .patent the piston has the same number of projections as the cylinder has recesses. In the kine-
matic enginethe,pistpn has 'il. side-rocking movement across the center of peari,up, wade by the contact ofa projection on the piston with a recess In the cylinder, or conversely, and the piston rotates upon its own axis, so that each projection visits successively eachresess of the cylinder; whHe the piston of the Galloway engine has neither the side-rocKing nor the rotary motion, and each projection of the piston always operates in co'nnectionwith one particular corresponding recess in the cylinde'r'and never leaves that recess. The description of the apparatus of the complainant's patent is precisely the same in the original and in the reissue. In the reissue, however, there is a disclaimer of the combination' of elements shown in the Galloway patent. In the original patent all the eight claims except the first were for combinations in which. a piston revolving about its center was an element. The disclaimer of the reissue seems to have been inserted upon the theory that the first claim of the original did not specify ,'such a pistol}audwas sufficiently broad to include the combination of the Galloway patented engine. The new ,claims, in the reissue were doubtless intended to cover inventions of which this combination is a .part. Although the language oithe first claim did, not expressly specify such a piston,' it does not seem open to fair doubt that such a 'piston was a necessary element of that claim. A brief reference to the lllnguage of the specification suffices to Ilhow that such ll.. piston was a necessary element of the first claim of the original patent, and must be read into 'it and all the new claims of the reissue now in controversy· The pis19n is described in the' specification as to have an eccentfi'cor motion across the center of to effect at two or more points into receiving land dischargin.g spacl's. ... '....,' .... With this eccentric or action the piston also re\'olves around lts Own center, and both these movementa 'are effl'ctedby the'.relati ve shape of the piston and cylinder, and· by the direct 'actionof.the water ,upon the piston, for. as the piston rocks from one bearing _pointW ,ll.ilother across center of the cylinder it is at the same tiDl,e revolved to effect of the, water, passing into and from tpe' cylinder spaces.......... The piston, It, is arranged for operation \vithin tl1e'cyltnder; and the bearing or contacting surfaresof these parts are IforrIlt'd bylUternate recesses and projections of such form or conligurati4ln as £to allow',of the rotation of the piston, not only upon its own axis, but around ,and across:thecenter of the and the space within the c;vlindermust s!1ch form, and,sufficicntlylarger than the piston, to allo,,,, it to have this 'cOinpound motion. ,lie. lie ,'" . The compound motion of the piston and the dividing points, are due to the fact that the piStlln has one or 100l'e less' points of projection thali the cylinder. ... ... ... The function of the 'viilvll'is to regulate the flow of water in and out of the spaces of tllt' cylinder manner as, topl'oduce the compound rotation and cruss-movement of ,;tl1e piston; and this function can be made operative whether the valve be within the piston, Mdescribell" or separate from and, connected with ,it,; it iJeing only nf'Cessary that the motion of the valves shuuld be controlled '1?y.t.h,ecol!lpound,mb,tionof the piston i,n any ,. ... I descl"ibed that the pIston shallhaVl! thecomp(l.und motIOn descrIbed; but Itla obvious that the piston may be i fixedj 'and the :cylinder made'to I18vethe rela,ti ve compouhd ,
NATIONAL METER CO. V. BOARD OF WATER.COM'RS OF YOl'iKERS.
The only piston described in the specification, and consequently the only one which could have beenreferredtoill the.p.rst claim of the original, is one having the side-rocking and rotating movement which constitutes the compound motion ofthe specification, which is due to the fact that the piston has one or more less points of projection than the cylinder. Unless such a piston is an element of each of the new claims of the reissue now in controversy, the reissue alit to those claims must be held to be invalid. The defendant's meter does not have such a piston, and therefore does not infringe any of the claims." It is ,insisted for the complainant that the Galloway kinematic and the Galloway patented engine were well-known equivalents foi--each other, and that Tilden. merely added to the latter ·theauxiliary:devices added to the former by' Nash,. This proposition does not seeri) to be correct. two fomls of t.he Galloway engine are different, and necessitate a different ()onstruction and arrar,gement of thectK>perating devices to adapt them to efficient use as The'itlVentions of Nash and Tilden commence upon different lines. and result in a combinati;onhaving a different mode , .The or,der of tlle. valve,s differ in each, .and a arrangement of the valve ports with reference to the valves which .open and close them. In Nash's meterthe ports forboth entrance and discharge of water are in the or Sidet1pfthe piston, are not in: the piston, but in the ends or heads of the cylindercasej and are So lOdate(J., thaVthecontact ofthe pistonwith cylinder4i,vides , each recess info one filling and one . theIqrmer the ends of the cylinder act as the valves; in the latter the pistQn itself ; acts as the valves. In Nash's meter the rotaryandside:-rockingor compound movement of the piston opens some and' closes others of the in sU(lcession, in such a manner as to equalize, the pressure of the ,",'ater at right angles to the direction of the movements-Mthe piston. In Til'den's meter it: is an essential feature thatiliere sbliJ,lbe not merely wa:t,llr-pressure which moves the piston about tbe cylinder-chamber, but additional side pressure, which, in Nash's meter; must be avoided, and it is only because it han pressure of water not found hi Nash's !peter that it is operative at all. It is unnecessary to dweil'upon the other. differences between the two meters which might be poimted out. It suffices to say that, notwithstanding the very ingenious exposition of the. expert and counsel for ,the complainant, the theorythat the two empody 'the satire comb.ihation ciuinot sland. The bill is ,'"
. . I .. . , ·
SAME t1. CHAMPION MACHINE SAME SAME
et al. et al.
«(hrcuit Oourt, S.
FOR bVENTIONS-'CONSTRUCTION OF CLAIM-GRAIN-BlImING
In view oftheprQceedings in thepatent-oflice before, the issue of letters No. 77,876, May 12, 1868, to James Gordon. for improveIXlents in grain harTesters, allowing that the first clailnof the first application; which embraced broadly the feature of a binding' device capable of adjustment in the direction ·of the length of the grain .fn order to bind the bundle at or near the center. was required t!> be and was limited. as allowed, to the binding arm, capable of adjustment in the direction of the length of the grain. in combination with an automatic twisting device, substantially, etc.· and, in view of the prior state of the art as sh.own .by prior patents. such claim. must be limited to the specific combination embodied in it, includi'ng the rake as an element. and caunot be enlarged so as to cover all binding devices adjustable to separate machines. ' . ,
. ' . '
, 8. 4.
. If so enlarged. tl)..e claim would be void, as being anticipated bI the Watson, Renwick & Watson patent; No.8,0f:l8. May 18, 1851; Watson & Renwick patent, No. 9.000, JUDe 6, 1858; the patent to S. S. Hurlbut. No. 7,928. dated February 4, 1851; theA. Sherwood patent, No. 21,540. granted September 14, 1858; and the patent issued to Allen Sherwood, August 50, 1859; but, as thus restricted, it is not so anticipated.. ,
But .the patentee is not entitled to the benefit of the doctrine of equivalents or the Hberal construction aIIowlld to pioneer inventions. -'
The adjustable feature of certain parts of a harvester cannot, in the light of the art as disclosed by prior ,patents, be treated as substantially the same thing as an independentbindhlg mechanism, adjustable as a whole. with all its parts fixed aud unadJustable. simply because such binding device is used in connection with gram harvesters; .and such an independent binding machine does not. when so used;;infringe the first claim of the patent.
. J . . . "
Such an adjustable and independent binding device: could not anticipate the first claim of the Gordon patent, nor is the Gord'on invention an anticipation of, such a device. ail thes&mc is described in the Carpenter patent.
Four suits by JOQn and others against H. Warder and others, 'the Champion Maclline' Company ,Whitely,Fassler & Kelly, and Abel Hoover and others, to restrain the infringement of a patent. Esek Cowen, Geo. B. Selden, and Stem & Peck, for complainants. Parl.-inson & Parkinson, for defendants. Benj. F. Thur8ton, for the William Deering Company. John R. Bennett, for the Minneapolis Harvester Company. Before JACKSON & SAGE, JJ.
PER CuRIAM. Without setting out in detail the facts in the aboveentitled causes, which were heard together, and in each of which the