858

.' PEDEltALfiitPOWrER',' vol. 41;

'decree; it· may notM' riIade to appear' upon the face 'of'the decree that in met the Mast· & Co'. Company is bOund'· by the results' reached in the prbgress of the litigation in which it h1l.s been actively for that, in effect, is only stating, in set phrase, the force which' thf.ldecree would in fact have as against the corporation.

LoVE, J., concurs.

(Circuit Court, S. D. New

,February 12, .800.)

,

S.

.,; P'..uUTUS.,', ' ,. 'On a bill to restrain the infringement of letters patent No. 256,089, issued April 4, .. 1882, to Napoleon W. Willilimes for an improvement ill buildings, , ! ltappeared that the first practical apparatus embodying his system had been put in in October, 1880; He, howeVlll1. claimedt!lat he had made his inventionl 'and e,hibited it to a society of engineers, J anuarj28, 1872. In this he was corroborateQ cbT two members of the society, and portions of the app9.t'atuB used for the exhibiof ,t1l,e meeting, however made no mentloll were put in evidence. The tiOll of the exhibition, but did mentioll other experiments, for Which the apparatus was suitable. Held that, in the absence of a definite showing that the invention was perfected prior to October, 1880, that date must be fixed as the date of the inventIon. 9. S.ulE-,-ANTICIPATION. The first claim under letters patent No. 256,089, for an improvement in steamheating for provides for an aPIlllratus with an exhaust-pipe and heating coils opening from It, in combination with a bleeder-pipe connecting with the coils, and opening. at the ,bottom into a hot.well, in w!lich a partial vacuum is maintained. The third claim also provided for an exhaust-fan and a feed water pipe to assist combination. It appeared that prior to the issue of the letters an English patent'hlld peen issued for a device for heating railway carriages ,by steam, which consisted of a pipe running from the eJ!;haust-steam passage of the engine, conveying steam'to the heating pipes and coils in the carriages, and a return-pipe, conveyingthe steam back to the engine, whi¢ll opens into the smoke-box, and is fitted . with a small ejector. It also provides in place of the ejectQr a small exhaust-pump , placed on the.engine or guard's van for drawing the return steam throug'l the pipes. Held, tJ!.at the English patent was not such an anticipation of the combination set forth in the first and third claims of plaintiffs' Jilatent as torenMr lt invalid.
SAKE. . ,

LP,lotll:1Ir.m

'FOB INVENTIONS-DATE OF INVENTlON-EVlDENOE-STE.ul-HBATING AP-

But the English patent does anticipate the claims of plainti:ffs' p9.tent for an exhaust-pipe Bupplyingsteam to heatin¥ coils in combination with a bleeder-pipe conneoting with the coils,'and means to oreate a suction in the bleeder-pipe, to draw the steam, through the apparatus. .,
BAKE-;INFRINGEMENT..

4..

Infringement of a patented combioation cannot be avoided by merely using another part in addition to the·combinati1ln. ' · .

,

. . . , " '.,

, '

,

In Equity. Bill to restrain infringement of This acti6nwas brought by Napoleon W. Williames and Robert Cod. Company dington against George A. Barnard and the Ingersoll to restrain the infringement ofletters pa.tent No. 256,089; issued to Will· ia.nlee Apri14, 1882, for an improvement in steam-heating apparatus. F'redericH. Betta and Samuel R. Betta, (or complainants. BenjaminJ!'. Thurston and. ThonuUJ L·.,Live'I'1rWre, for defendants. ,

· WltLIA.MEa tI.B4RN4RD.

359'

COXE, J. Napoleon W. Williames is the oWner and Robert Coddington is the exclusive licenSee of letters patent, No. 256,089, granted to Williames April 4, 1882, for an improvement in heating apparatus used in buildings. They bring this action against the defenda.nts, seeking the ordinary decree in equity. The principal improvement which, the complainants insist, was original with Williames may btl briefly stated as follows: Prior to his invention steam had been circulated direct from the boilers, under considerable pressure, and, in other instances, the exhaust-pipe of the engine was loaded, and the exhaust steatp forced through the system by the back pressure thus created. The steam was, in each case, permitted to escape at the tail end of the system under a pressure above. that of. the get rid of the back pressure·upon atmosphere. Williames's idea was the steam-engine by removing the loaded valve at the end of the exhaustpipe and create and maintain a partial vacuum by means of an exhaustfan or vacuum-pump. By producing a suction through the pipes he draws the steam from an open exhaust. In other words, he pumps steam through the heating coils. By the older mechanisms the steam waspushed through the .coils. Williames pulls it through. In the former the principal force came from the engine and boiler.. In Williames's at the other, or tail end, of the device it comes from a system. An essential feature is that when the steam has once entered the heating pipes there shall be a closed circuit to the vacuum-pump. If air is permitted to enter at any intermediate point the apparatus will not operate. The patent describes in detail the means for carrying out this principIe. The chiefadvantages claimed for Willi,ames's system over. prior systems, are, that it increases the power of the engine by removing the back pressure; that it is cheaper and more simple; that the circulation of steam is more rapid and reliable; that water-hammering is avoided and the water of condensation'is returned to the boiler. The patent is not limited to the use of coils; in place of these any heating apparatus, steam-drums, for instance" may be substituted. The inventor also provides forthe use of a cold-water spray to induce condensation in the hotwell and states that his invention may be practiced in cases where live steam is taken direct from the .boiler, or where steam is taken from a loaded exhaust. No specific construction of vacuum-pump is shown, any apparatus by which a partial vacuum is maintained within the hotwell and its communicating pipes, is within the description. In fact, the invention is broadly stated and broadly claimed. In the language of the specification, it "comprehends broadly a main to supply steam when arranged with steam-heaters, and means to create a suction through said heaters." The cl!1ims alleged to be infringed Bre as follows:
"(1) In apparatus for b,eating buildings. the unobstructed exhaust-pipe and heating coils opening from it, in combination with a bleeder-pipe connecting with said coils and openinga,t the bottom. into a hot-well in whic.h a partial vacuum is maintained, SUbstantially as and for the purpose specified. (2) In llrpparatus for heating buildings; the unobstructed eXhaust-pipe and heating' coils opening Into it. in combinlltion with a bleeder-pipe CQunecting with said coils and to create's suction in said bleeder-pipe., substantially as .and

360

FEDERAL REPORTER t

vol. 41.

for the purpose specified. (3) In apparatus for heating buildings, the unobstructed exhaust-pipt:l. A. B. o!eeder-main, D. hot-well. E. suetil>n.or exhaust fan.F. feed-water pipe. N, substantially as and for the purpose specified. (5) In apparatus for heating buildings, an exhaust-pipe and steam-heating apparatus, in combination with means to sue!, steam from said xhaust into or through said heating apparatus. substantially as am! for the pllrposespecified. (7) In apparatus for heating buildings, a steam-main into which stea.m is fed,in combination with steam-heating apparatus and means to create a suction through said heating apparatus to draw steam from the main into said heatinga,pparatus." The defE'nses are lack ofnbvelty and invention, two years' public use,and non-infringement. It is riecessaryat the outset to determine the date of the invention. The fhstpractical working apparatus embodying the Williames system placed in the Chatham Mills in October, 1880. This is not disputed. WilliameS insi!lts;however, that he first conceived the invention in 'November, 1871,10 years before his application for a patent was filed. (December 31, 1881.) The excuseSfor this long delay are poverty, sickness, and the nature of his employment. He says he exhibited a model of his apparatus, January 23, 1872, to a society of engineers, of which he was president, and. illustrated the principle of its operation by an experiment performed in their presence. In this he is corroborated by two me'mbers ofthe society. PortiOtis of the apparatus then used have been preeerved and are in evidence'. Other portions have been lost or destroyed. The mostpregl1l111t piece of evidence tending to show that these witnesses are mistaken is the recdrd of the society, giving a description of what took place on the eveIling in question. It is as follows: balance of the e'vening taken in experimenting. the subject was boilof water. The apparatus being ready, namely a bottle of ordinary river-water, and heated with an alcohollamp, when no hotter than could be beld' in' the hand, was made to boH'byrelieving it of the pressure of the by a vacuum-pump.. Water was then brought to the boilingtlpi,nt. with heat, when:the hose attached and.at the. end a hollow ball, after had been expelled, the !ampremoved, the water in the jar was kept boiling by condensation, namely by a llowof cold watei' 011 the ball. The open mercury column gauge next produced. when the members commenced blowing, to test the strengtbof their lungs, also the gaage from 1 ro 2i lbs. per squarein. was reached, the guage attached to the steam-bottle, but. the hour o,fadjourning having arrived, the, experiment'ceased, to be continued next Tuesday evelling." This ends the description. If the discovery, which, years afterwards, was so startling a surprise to many learned men, was first disclosed on this evening how does it happen that no notice of it appears in the minute-book. especially when the book deals so fully. with experiments evidently made with the apparatus, portions of which are produced in proof? . Again, the reaSons offered by Williames for not applying for a patent earlier seem wholly insufficient. They might justify a short delay, but not a delay of 10 years. The. fact that the invention waf) not patented until 1882, certainly rai.ses the,presumption that it was not perfected in

WILLlAMES to. BARNARD.

361

1872, but was still in a tentative and embryonic form. It is unnecessary toentel' into a discussion of this subject further than to say that the proof is not of that clear, positive, and convincing character required to estahlish the invention at a date so long anterior to the application. The witnesses offered by the complainants describe the minutire of an experiment which took place, in a private room, 18 years before. If they were mistaken, even in the smallest particulars, their testimony is valueless. The experiment which the record shows was actually made and the experiment which the complainants seek to establish, !;Lre so similar, that a slight change would enable the apparatus to accomplish either·. How easy to be mistaken, after so long a time, upon a point so minute, how easy to be misled by interest, friendship, a confusion of influences which affect the mind andmemdates, or any of the oryof man I. The imlJossibility of recalling the details, even of the most important events; after the lapse of 18 years, is ·manifest to anyone who attempts it. The complainants' witnesses may be correct in their statements; but,it is also true that they may not be. It is .enough that the grave. doubt upon the subject. Their story, from the .court nature of the case, cannot be met by positive contradiction. A .party thus confronted is always compelled to rely upon negative prooUor bis deniaL .. ',The danger' of accepting such testimony as is here offered, to facts which affect the litigants not only, but the rights of third public, is apparent. The injustice, that may be do.ne in individual instances, by the establishment of a rule which rejects such proof, is not to be compared with the greater calamities which would spring from a contrary rule. Whether the inventor, conceding the conception o(the invention in 1871, did not lose his rights because of inexcusable in asserting them, is an interesting question, which. however, itis not necessary to decide. As there is no definite date intermediate this experiment and the placing of the apparatus in the Chathaln Mills. the time when this took place, October, 1880, must be fixed as the date of the invention. The evidence, documentary and oral, offered to prove want of novelty, has bee,nexamined, and the conclusion is reached that the Reid and Billinton English patent. sealed December 7, 1877, is the strongest referencepresented by the defendants. The patent is for improvements for warming railway carriages. The specification describes both a double-pipe and a single-pipe arrangement, the tail end of the fprmer being carried forward, by a return-pipe, to the engine; that of the latter being at the end of the train. 'fhe patentees propose to· take a pipe and to run from the bottom of the exhaust-steam passage of the it from thence, with between the carriages, to the de. livery or warming pipe of the train. This pipe is to be arranged under each seat of all the compartments in a series of coils, or other suitable heaters, to the end of the trt\in,where it is connected with a retq.m-pipe which passes through the c¥riages, or under them, to the engine. The end of the return-pipe is. projected into the smoke-box close to top of 'he exhaust-pipe orifice and is fitted with a small ejector. The. patentees

FEDltRAL"REPORTlm,

\ToL 41.

a:sser1l this' al'rll.rtgeOll:lnt,o[, the ajector and rehlrll..pijle the'force of 'the with the-extmiforce given by the use of the ejector, will ,be: to: ;keep, up a 1t1l11'l'ent of steam moving in the pipes to required to warm: the apartments, and cause a'ny:degi-eeof condensing oUhe steam in theapparMU!." In place ofthe they pro'p08eto substitute "a l'!mall pump or 'ekhlliaster, ,fixed on the engine or van, for drawing the return steamthroughi aP'J!ctratU8." The exhaU8terhe'i'e referred to functions ,as "the exhaust-fan, F,":of the Williames :patent. "Mrt Knight,:in'his MwMechanical Dictionary, (188'4) defines US follciivs:" An by many i names' accOrding wconstruction or PUrpOS&." In the case of *,trainfittelhvith an 'atmaspheri-cbrake they proposetd use a jet of com:preasoo.'air,ortG fix a sma11' ,'ltdditional Ilump onto tqe:existing pump, 'ol'otherwise, and Use the eatne'lor drawing the exhaust:steam through tM pipes, O'fthe Bl'rarlgement the inveDtors say:;, , ; 'II means: propbse.' wlIel"ebj'bne pipe may be of two 'Hi toarrarige 'the pumps ,ah'eadY' mention'ad forfOrciBg instead 'of drawing, same to be connected' to the bottomolj.the exhaust passage ,Of the st6al;ll-cyJinderi 1;)y,tl;J.is exhanst Ilteam ill the pan Q.J! PI'SlJage :llorlled, the traiq pipes" lleaters. at ,theeJ:!.d valve ,.nd '<lriP:'box,or otherWise; in thegllatd's Van 'afthe erid of tlia"train; or on each 'vaft lor'engin'e. 'a exhanster, pump; or' filil 'can' be ,and' put in :mbtion by. a frietl<mdrtimi wneel. tl!.' strap on one Gr, any- of the axles; or '8 ;lfulall air-pump. :worked in a .aimilar manner by a fricbion:drum.wheel or eecentrle!fixell oll;f;he aIde of,the van.or:el1gine. by Or Qtber.wise." , i 'The' specificAtion theil that' the patentees' do not· themsehfes to,the;precise details described nndshown in the drawings, and 'that'they claim, am6ngothet tllings, the :ejector ol':ejectors, fan,' pump, "or, exhauster, with pipe arrangements for'causing a circulation of steam. FroIhthis' brief summary it w'lll beseerithat the broad itl:vention by Williames is dcsqribed .tllis'fa6t, the most heroic efl'oitsh'ayebeen reSorted ta to break its force. 'SOme of the objections Jlrged 'aga.inst it .are hypercritical and othersao tiichniea1 that they tend to 'strengthen than' 'weaken the force or For instance, it is sai4. that'thfi exhaust, because it is in 'the :shape of 9. frustum, larger at :the'bottom'than at, the top, is not an and this, too, 'in the fuce 'of the declaration of the Willilimes with a loaded as well as an oven :pafent' that hiB'inventiOn 'is' 'e$.:haust.; .: 'The .ooriclusion 'that. the. apparatus is inoperativa is reached !by itilponinK into the system mechanism evidently intended the. single-pipe sYstem ;ltiria. by exaggerating .alleged' inconsistencies '1ih'lthe minutsdrawings' tathe Bnpplemente4by tending to shOW that an ,apparatus made upon !f¢i4 'plan could not produce ptaetibal'results. An expert who starts out ;tl6 Jconstruct'a machine' thatwUI'hot wOflc'is usually successful·. !tis to that the which, it is insisted, .are :Shdwn"in'the di'awirig$, would Jne\Ter' be adopted by a mechanic who is

· ': WiLLUMES tI. BARNARD.

gifted with thesmalIestdegree ofcomnion.sense, and further, that the drawings,when taken together. and fairly construed aud understood,do not show' such a construction. Again, tbe bold theory is advanced that Reid and Billinton were ignorant men who stupidly stumbled, upon the use of such expressions as the following, "By this means the exhaust steam is 8uckedfrom the exMuat part or passage,!' and "the pump or exhauster is fixed on the engine or vanfor drawing the return steam through the pipes or apparatus;" and that they used this language without comprehending its meaning, and with little conception of what they were thus formally stating to the world. IUs clear that no patent can survive such tests. The patent in suit would be eviscerated if subjected to criticism so captious. The Reid and· Billinton' apparatus is intended, for railroad trains, and Williames's· for buildings. The mechanisms described are applicable to these uses, respectively. Necessarily they differ in detail, but their general aspects are. similar. It is manifest tbatthe Reid and Billintonapparatus anticipates. the broad claims of the Williames patent, if it infringes those claims. Compare it with the seventh, for instance. This claim has for its elements-rFirst, a steam-main or exhaust-pipe,open or obstructed. Reid and Billinton have it. Second. A sillam-beating-apparatus. They have this also. Third. Means,. no matter what, for creating a suction to draw steam from the main into the heating apparatus. Unquestionably, they have -this element also. One of the "means" proposed by them is "a small pump fixed on the engine or van for drawing the return steam through the pipes," but they disclose stlveral other methods of accomor pump at the tail of their system plishing this result. If the is not intended for the purpose of drMving the return steam through the pipes it would puzzle the imagination to suggest what its office is. It is true that the word "vacuum-pump" is not used in the specification, but the use of such a pump is certainly implied. A pump which draws return steam through the pipes must necessarily be a vacuum-pump. It does not make the statement stronger to assert that the pump which is used to produce-.a vacuum is a vacuum-pump. It is unnecessary to attempt a solution of the numerous theoretical problems propounded by the experts, or to follow them through the varied of their scientific wrangle, for, when all is said, the fact remains that Reid' and Billinton disclose, as plainly as the English language can state it, the idea of taking steam from an open, or parit through a system of pipes by tially obstructed, exhaust, means of an ejector or pump, at the tail end of the system. When' WilJiames,states, " My invention comprehends broadly a niainto !lupply steam when arranged with steam-heaters, and means to create a suction through said heaters," he describes the English system .as aptly as his own. The evidencerelating to the heating apparatus in the Morse building has been examined, and every effort has been made to reconcile the conflicting theories with regard to it. It would seem that a very simple experiment might demonstrate, with absolute precision, whether or not a

864:

DDEBAL REPORTER ,voL

(1.

vacuum; is maintained in the pipes and wh'£lther the pump which operatesat the tail of the system tends to ,draw steam from the exhaust. But after the evidence of the experts this question is left in doubt. Many facts are presented which indicate the presence of a vacuum and there are others which seem to render its presence impossible. No one can read this testimony and arrive at a definite conclusion upon this proposition either way, at least so far as it relates to the apparatus as it existed prior to the time which has been fixed as the date of the Williames invention. The doubt wbich.is thus present is sufficient to eliminate this apparatus from the case as an anticipation. Although the broad invention is thus anticipated by the English patent, the combinations represented ,by the'.first, and third claims are nowhere found in the prior art, and it is thought that there is sufficient invention in the combinations to sustain these claims. To Williames, unquestionably; belongs the creditofada:pting the principle of pumping steamfroman.:dpen.exhaust to the heatirigoflarge buildings. This, at least, was with him; even the most flccomplished specialists in this branch of industry were first informed of it by Williames. Furthermore, he is entitled to the credit of ISOI ving the problem not only unaided and alone, but against the opposition'and ridicule of friends and associates as well as rivals and competitors. There is not the slightest reason to suppose that he ever heard of the Reid and Billinton patent. The rule is well settled that there' is no invention in finding a new place for an' old device, but it seems very clear that the ingenious and complicated arrangement by which the principle in question has been harnessed and set to work in warming buildings is far above the perception of the ordinai'y mechanic. The elements of the combination of the first claim are anullobstructed exhaust-pipe, heating coils opening from it, a bleederpipe connecting with the coils and a hot-well in which a partial vacuum iSiwaintained by an exhaust fan or vacuum-pump. The third claim is substantially like the firstbut with the addition of another element-the feed water pipe, N. As to the defendants' infringement there is little doubt. All the elements of these claims are present in their system. It is qaite possible that their'I'condenser" operates to assist in creating a vacuum, but it is established with reasonable certainty that the function of the pump, F, in their apparatus, is to produce and maintaill a vaeunmin the bot-well and return-pipe. A party who uses a patented combination cannot escape the consequences of infringement by showing that he, uses something in addition to the combination. On filing a disclaimer of the claims covering the broad invention the complainants are eJltitled ,to a decree, upon the first and third claims, for an injunction and accounting" but without costs.

an

II

ASSANTE fl.

00.

AssANTE 'V. CHARLESTON BRIDGE CO.

et ale

(DiBtrfct Cowrt, D. South Oa'1'o1tlma. January 25, 1890.)
NAVIGAIlLE WATERS-BRlDGllS-WIDTH OF DRAW.

A bridge companywaslncorporated by the legislature of South CaroUnawith authority to build a bridge across Ashley river, "and there shall be a draw in said bridge in the channel of the river in such place as the same is deepest and most easily navigable, not less than 80 feet wi,de, for the passage of vessels through said bridge." Held, that if the bridge be not built directly across the current, perpendicular to it, then it must leave a clear width of 30 feet open across the channel, estimating with reference to its curve and the obliquity of the bridge.

In Admiralty. Petition for rehearing decree. J. P. K. Bryan, for libelant. MUchell & Smith and John F. F'ickin, for. respondents.
::)IMON'l'ON, J. This was a libel in personam against the bridge com pany and the owner of the tug. The latter was engaged in towing the brig through a draw of the bridge, when the brig collided with the fenders of the bridge. The decree filed 10th December, 1889, (40 Fed. Rep. 765,) stated that it was impossible to decide, from the conflicting evidenceof unimpeached witnesses, whether the collision was not due to a sheer made by the brig, sudden, unexpected, and not accountedfQr; that, if it were due 1.0 this sheer, the tug was not responsible; that for the same reason no de{)ree could be made as to the lawful character ofthe bridge. The libel {)harged that the draw of the bridge was made obliquely across the current; that this Was unlawful, and contributed to the collision. The decree proceeded upon the idea that, if the collision was due to the sheer, the brig alone was in fault. The accident, therefore, would not have been caused by the conduct of the tug, nor by any obliquity the bridge. The jpdge not being able to say from the evidence that it was not due to the sheer, the libel WjlS dismissed. The libelant files his petition for a rehearing ofso much of the case as relates to the bridge. It proceeds.on this ground: If the bridge is not lawfully constructed, it had no right to be where it was in the channel of a navigable stream; that had it not been there the brig would' have escaped collision with it, even if it did sheer. Thus, being there, It contributed to the injury, and, if, unlawfully there,must bear its share of the damages. Atlee v. Packet Co'" 21 Wall. 394; Jolly v. Draw-Bridge 00.,6 McLean, 246. I feel the force of this argument, and have heard counsel on the point suggested. Is this ,bridge lawfully constructed? It is across a navigable stream of the United States, but, in the absence of legislation by congress, states may authorize bridges across navigable streams by statutes 80 well guarded as to pro. tect the substautial rights of navigation. Gilmuin v. Philadelphia,.3 Wall. 713. Or, as it has been put,no state can permit an the navigable waters of the United States. But. although every bridgehav;. ing piers ex neeeB8'itate is more or less an obstruction, still it may be built