STANDARD OIL CO. t'. SOU'rBERN PAC. CO.
a pawl which engagesthe ratchet, and an arm carried by the lever to the tip of the bnrner; but it does not show that the teeth of the ratchet are proportioned to the ways through the cock. Nor is the curved magnet of Smith, pivoted at its center and carrying a rod, the two-armed lever of Packard. The Smith arm is not carried past, but only up to the burner tip, and, from all tQ.at appears, must be moved forward several times to turn on or off the gas. There are also other differences between the two devices. The Tirrell patent, No. 232,661, bears a closer general appearance to the Packard apparatus. The date of the Tirrell patent is subsequent to the Packard, but it appears that the Tirrell invention was prior in point of time. But in the Tirrell patent there is missing theratchet,the pawl, the spring, and the stop of Packard. It is said that all Packard did was to apply the ratchet and pawl, which were old, t6 the Tirrell 1:1tructure, and that this was not invention. But he did something more than this. We must take the combinations in their entirety; and, s,o viewed, I do not think the Tirrell invention destroys the Pa(jkard patent. It is clear that the Packard device is a great provement over Tirrell's, and that the combination of elements employed is different. For the same reason, and without entering into the specific distinctions between the two structures, the Heyl patent, No. 58,943, does not anticipate Packard. I find in none of the prior devices thEi combinations referred to in the third and fourth claims of the Packard, patent; and. recognizing the prior state of the art, I think it called for the exercise of the inventive faculty, as distinguished from mere' mechanical skill, to produce the Packard burner. Upon the question of fringement I have no doubt. Decree for complainants.
OIL Co. v.
Co. et al.
(Oircuit Oourt, N. D. Oalifornia. March 81,1800.)
PATENTS FOR CARS.
Letters patent No. 216,506, granted to M. Campbell Brown on June 17, 1879 for an improvement in oil-cars. consisting in the division of the car-space into 'two or more compartments, each end compartment 'containing an oil-tank the partitions between all the compartments being removable, and readily adjustable are not void !'S being a mere aggregation of devices, since they obviate th,e necessity of haullUg back empty tank-cars, thereby cheapening transportation. ' ., Where the question of the validity of a patent is doubtful, a demurrer to a biUfor its infringement will be overruled, and the question reserved for further CQnsider., ation on final hElaring. ' . ., "
SAME-ACTION FOR INFRINGEMENT-PRACTICE.
In Equity. On demurrer to bill. . This suit was brought by the Standard OilCompany against the South'em Pacific Company and Whittier, Fuller & Co.,to restrain the ment of letters· patent No. 216,506, issued to M. Campbell Brown on'
J \lne 17, 1889, for an improvement in oil-cars. In the specification it
was said: invention relates to cars, and especially to that class of cars designed for,transporting merchandise and oil or other liquids; and it consists in the parts and combination of parts hereinafter described and claimed, whereby oi16r other liquids may be safely transported in the same car with miscellaneous merchandise. '.rhe object, as briefly above stated, of my device is to produce an improved form of car for the transportation of oils and liquids in bulk, which shall also be adapted for the transportation of ordinary merchandise on roads where a load of oil or liquid cannot be obtained on return trip, thus o!:>viatinp; the necessity of hauling empty tank-cars over long distances, as is now commonly done; and to this end the construction of the ordinary is modified as follows: The car-space is divided into two or more compartments, but for the purpose of the present specification, we will suppose it to be divided into three. The central compartment would embrace about two-thirds of the entire length of the car, and is designed and adapted for ordioi\ry storage. and for this purpose may be constructed in any proper manner, The two end compartments occupy each about one-sixth of the entire length of the car, are located in the ends thereof over the trucks, and are designed and constructed to contain metallic tanks, which tanks are adapted fOl' safely containing and transporting oil or other liquid." It further appeared from the specification that partitions were provided between the compartments, extending from floor to roof, which were made removable and readily adjustable: that the floor of the central compartment was made level, while that of each end compartment was made slanting so as to afford reliable drainage: that the bottoms of the oil-tanks were made inclining, so as to fit on the bottoms of their compartments; and froIll the lowest point of each was a discharge-pipe: a filling-in opening was 'provided at the highest point on the top of the tank, which was also made on an incline, and this opening was made to register with an opening in the car-top. The claim of the patent was as follows: "A car subdivided into two or more compartments, each end compartment containing an oil· tank. said tank constructed with an inclined 01' self-draining bottom arid resting upon a floor formed in counterpart thereto, said tank also having a tapering or inclined top, with a tilling opening placed at or near its highest point alld in line with a filling opening in the car-top, and there being a removable partition separating said tank from the next adjacent compa'rtment, all combined substantially as set forth." Langlu:Jrns &; Miller and Pillsbury &; Blanding, for complainant. Frank Shay, for defendant Southern Pacific Co, John L. BfiOne, for defendants Whittier, Fullel' & Co. Before SAWYER, Circuit Judge. SAWYER, J., (orally.) I have looked over the question in this Case. The main proposition raised on demurrer is, whether this patent presents a case of a mere aggregation of devices instead of a combination, which would produce some common result. It liys very nearly on the border line under the various rulings of the supreme court. I am not prepared to say that there is not something more than an aggregation, at all events upon demurrer. It is true that the carrying of oil one way
STANDARD OIL CO. fl. SOUTHERN PAC. CO.
does not co-operate directly with the performance of carrying merchandise the other way. But do not the two co-operate directly in the performance of carrying merchandise both ways? Do not the two erate to produce a common result, that is a reduction of the cost of the transportation of oils by successive acts performed in different parts of the service? The result attained is a carriage at a much less' cost. It saves the dead loss of hauling empty cars one way. In many combinations, each single operation by itself is not affected by the following or subsequent operations, but' they all constitute one continuous operation and end in a common result. Is not that the nature of this case? One way oils are carried by these compartment cars, arranged expressly for the purpose of carrying oil, and then on the return voyage they carry other merchandise, in the intermediate compartments combined with the others, instead of hauling back empty cars. Each carriage, considered by itself, is a separate performance, but what is the result? The result is a much cheaper transportation of the oil. Is not that a common result? And does not each carriage, though performed by itself, co-operate to produce that common result? As I said before, it lies very nearly on the border liue of these cases which the supreme court have held to be a mere aggregation. In illustrating that very point the supreme court in one case said, speaking of the effect of a watch-stem operating, also, as a key to wind the watch, which performed the office of holding and carrying the watch, and also. the office of winding the watch, in distinguishing this from aggregation, the court says: "'rhe office of the stem is to hold the watch or hang the chain to the watch:
the office of the key is to wind it. When the stem is made the key, the joint duty of holding the chain and winding the watch i,s performed by the same instrument, a double effect is produced, or a double duty performed by the combined result. In these and numerous like cases the parts so co-operate in producing the final effect, sometimes simultaneously, sometimes successively. The result comes from the combined effect of the parts, not simply from the separate action of each, and is, therefore, patentable."
Now, here, with these cars-they carry oil one way, and carry mer. chandise the other way. They are successive operations, but theyoperate to cheapen the transportation, and in this sense does it not come within the illustration of the watch-key? It saves the operation of hauling the empty car one way at an expense without any contributory compensation. I am not prepared to say at present on demurrer that the arrangement does not contribute to the common result of cheapening transportation and am not prepared to say that the arrangement is not patentable. I shall therefore overrule the demurrer, and reserve the question for further consideration if counsel desire, when the testimony all comes in, and I have the fun case before me.
Mr. Boone. Does your honor take into consideration the factthat the. res'ult was not new? ' , The Court. Yes. I do not know but that it is new. If the result is the cheapening of transportation of oils, that result must be
it oheapen do ,SOJ;uething which had not been done b'4tore? ,'But, as I before, I shall reserve it for further considera: tio,n., If tpe same oU could never have been carried before at so Iowa resultwas,necessarily new. ,I do not know but what the resulti!!! new with reference to the transportation of oil. , I t1;iiilk, $e 'patent itself says no, that it is not new. it not done before. A would lDvolvea contradIctIon of terms. I shall at all ,9,vex: rulethe deiAlurer. Should counsel desire to further present tp,8, I will consider it on the further hearing. As I said before; near the, line petween an aggregation, and invention as illusthe decisions ,of the supreme court, and it is not very easy to it falls. ' "
New f"ork. Apri128,I890.)
' ,',' ,
-;:-:iGTBev.iiSt;''D'.B. 5 '921, which allows ,&, CQurt of equity to treble the recovery of
NCovllra.We at'law, in suits for infringeDlents of patan mcrease, mthe recovery ofproftts froDl the intringeDlent, Bmce 8uchpr6:tl.ts were not 1'OOoverable at law. Campb8l£ v. ,,', " ,
,;"Wl':i.U,J(iftg. for complainant. ." Joh".,K. Bench, for defendant.' ,
U. S; § 4921) not confer authority upon a courf of equity to'treble a recovery of profits decreed against,th,einfringer, of a patent, but' distinctly discriminates between the ,profits',which are rl:lco'Verable in a :court of equity and the damages which were formerly recoverable in actions at law only, and confines the the recovery to the latter. The point has been expressly',deoil1ed in this ,court. Campbell v. Jamea, 5 Fed. Rep. 807. Until jurisdiction was conferred upon the circuit courts by statute to desuits inequity, (Act· of July 8, 1870, § 55,) they eould'onlYidecree profitein such suits. Elizabeth v. PavfWLent Co., 97 U. S.·lSS.: ,Wlaen such jurisdiction was conferred; the power was circum'scribed, :by explicit langwige to cases in which it could be exercised by courts of la", in actions upon the case.' Courts of law could awanl damages, but not profits. Packet Co. v. Sickles, 19 Wall. 611; BurdeUv. Denig, AstpeJJo:mplainant has not recovered damages, he must be content with such indemnity for the violation of his rights ashe will ,\>.y, profits which the master has found were redefendant. .', ,' ,
THE l'ROCEEDS' OF THE GRATITUDE. THE PROCEEDS BOURDON v. THE PROCEEDS
THE GRATITUDE. I
THE GRATITUDE and nine other cases..
(Di.8trict Court, S. D. New York.
Liens for supplies furnished to vessels making short trips about the harbor allowed tbeir priority for 40 days. Liens for supplies, by the long-prevailing maritime law, take precedence of a lien for damage 'to· cargo, on the same voyage, and similarly to damage arising from negligent towage on the same voyage.
SAME-DAMAGES FOR NEGLIGENT TOWAGE-PRIORITY.
In Admiralty. The steam-tng Gratitude, belonging to this port, was libeled fo1' supplies by the Communipaw Coal Coinpany, and by the Hoboken Coal Company, on August 26, 1889. She was arrested by the marshal on August 29th, and sold on the 3d of October, 1889. The net proceeds, after defraying the expenses of sale and the marshal's fees, were paid into the registry of the court, amounting to $3,343.72. In all, 10 libels were filed against the tug, or her proceeds. The claims, as allowed, amount to $4,171.95. Upon the libel of Bourdon there was found due $452.32, including costs. His claim was for damages incurred through the negligence of the tug in towing his vessel on August 28, 1889, two days after the first libels were filed. Two libels were for wages; the reat were for materials, repairs, supplies, and labor furnished to the tug. More than of the amounts of those items were over a year old, Carpenter &:Mosher, for libelant. Alexander « for lienors· . BROWN, J. Tpe final reason given for the decision in the case of The R. S. Carter, 38 Fed. Rep. 515, affirmed, 40 Fed. Rep. 331, a tug which made daily trins about this harbor, is that "the rule extends [qpdulYl the duration liens of material-men," so as to destroy the security the supply liens amounted to $1,072. All of the damage a,rose on previous voyages or .trips from nearly two to seven months before the trip. which the collision lien accrued, except the small sum of. $26; and, if allowed priority, they would have absorbed the whole furid, and they were postponed to a lien for collision with an independent on the tug's The present case is not like that, which was one of damage done in invitum to an. independent vessel. This is a. Case of arising by negligence under a voluntary contract of towage.: Towage damage I as respects the lien for negligence, is like cargo It. is manifestly .immaterial Wihether the case is one of cargo talWn. (:>0 board, or towed or ona hawser. The other reasons given for the decision in the Clj,Se above cited have no application to liens for dam. ageto cargoes or ?'f"nk of alien, does
Reported by Edward G. Benedict, Esq., of the New York bar.