et al. v.
CITY OF HARTFORD
(O£rcmtt Court: D. C07l,necUcut. February 92, 1892.)
P,l.TBNTS FOR GINES.' ' , OJ!' ' aEATER FOR FIRE-EN·
Letters patent No. 81,132" issued August 8, 1868, to' William A. Brickill, consist of a water beater connected with tbe boiler of a steam fire-engine by two detachable pipes, one carrying the cold water to the heater and the other returning it, heated, to the boiler, thus "maintaining a free circulation between the boiler and heater, " and keoping the water in the boiler always hot, so as to expedite the generation of steam on a fire-call. Pipes controlled by cocks connect the heater with a water-tank, and when the engine is away the same circulation is established and maintained between the heater and the tank, "the object being to preserve the coil or beater." The ,for the with a steam fire-engine, of a heating apparatus, constructed substantially as described,! for the ,purposes fully set forth." Held, that it sufficiently appears tba,t tbe tank is a part of the heater, and not a separate eleIUent of the combination, and is !lot void on its face for uncertainty. '.' ',',. ' aspai'tof tbeheatlIig apparatutijthe olalm cannot be said to ,8now on its ,fllce only an unpatentable aggregacionof .partsj since there js a joint and co-operating action between the heater and the boiler. and the aotion of each influences tbe action of the otber. 8. S... STATt;l'P!S. , , · ", '., ' ", " ' ' " :, State statutesof limit'atlon,are not applicable, even in the aosertcle, ofa'federal stat, ute, to actions at law in the federal courts to recover damages hI" infringement of> patents. .. -;f.-,
At LaW. Action by Brickill and:ptpers l;tgainst tb,e of Hartford and others' to recover damages for the of patent. Heard on demurrer to the complaint. Overruled. RaphaeL,.; 1vlo8e<J. Jr., and Jame<J A. Hudson, for plaiqtiffs,: ," ) 'llimothy E.,Steek,City Atty., and Albert H. Walker, for .' .' . .
SHIPMiA.N, District J udge.This,isan action atlaw to recover damages for the alleged infringement of letters patent No·. 81,132, dated August 18, 1868, to ,William A. Brickill, fOr an improved feed water heater for steam fire-engines. The present hearing is upon a demurrer ,to the plaintiffs' cOlllplaint. Before the date of the alleged invention,' or, of any shnilar device, the only method of keeping the water in a steam fire7engine in readiness to be immediately converted into steam when the summons came to extinguish a fire was by placing and keeping fire in the engine. That it was desirable to have the engine in readiness for immediate service is self-evident. That keeping a continuous fire in the engine was expensive, and, might also be otherwise injurious, is also manifest. The object of Brickill's improvement was to have a detachable beater,which would continuously be in use, and Bupply the engine with· hot water while it was :in the engine-house, and could be detached when the engine was summoned to extinguish a fire. The,specificntionsl\Ys:, "The nature of the present invention consists in combining with a steam fire-ellgine a water heater, so constructed and connected to the boiler of a steam tire-engine that the water in the same is made to pass through thE' beater, ahd become heated, so that steam may be more rapidly generated than if my invention were not used in connection with the engine. The object of
BRICKILL t1. CITY OF HARTFORp.
the invention is·to expedite. in a. great measure, the 'extinguishing of fires, by supplying water, heated to very nearly the boiling point, to the boilers of steam tire-engines."
The heater is connected with the boiler of the engine by two detachable tubes, one of which receives the cold water and conveys it to the coil conducts the water, when heated, of the heater, and the other from the heater to the boiler; "thus establishing and maintaining a free circnlation between the heater and the boiler." Pipes, which are opened nnd by cocks, connect the heater and a water-tank. When an alarm of fire has been given, and the engine is away, communication between the water-tank and the heater is established by opeuing the. when cocks, and the heater is supplied with water from the tank, heated, is returned to it, as in ,the case of the boiler,"the objectbl:ling to preserve the coil or h6later." The claim is for" the combination,with a steam fire-engine, of a heating apparatus, constructed substantially as described,for the purposes fUlly set forth." The demurrer specified ,five particulars in which the complaint was defective .or showed no caulle of action. The first was removed by an amendment, and need.not be sidered. . ' , . . .. The complaint did not set out in words a desorIption of the invention, but stated it by reference to and a profert of the patent. The ground of the'second and third causes of demurrer is that the letters patent: are on their face void, because they do not point out and distinctlycllUm the part, improvement, or combination which the patentee claimed as his invention; the particular fault being, as alleged, that it cannot be ascel'tained whether the tank or its equivalent is a part of the invention, as. claimed. There are not three members of the com bination, -tbe heater, . the tank, and the engine. There .are only two members,-the heating apparatus, of which the tank is a part, and the engine. The tank is particularly described as a part of the heating apparatus, and i8to be used in the absence of the fire-engine, and is not to be used when. and so long as the engine is again in the house. It is included in, and is pointed out with sufficient distinctness as a part of, that apparatus. Whether the omission of the tank and the use of the rest of the appa1'a'tus would constitute infringement is It question which does not arise .on this demurrer. The omission to state in the specification the effect which the non-user ofthe tank would have upon ,the apparatus, or that the tank'is It vital part of it, does not create an ambiguous statement of what the patentee claims to have invented. The fourth ground of demurret: is that the patent is void, because it appears on its face to claim only an unpatentable aggregation of a steam fire-engine and of a heating apparatus.. If the claim should be construed to consist of a combination of three distinct elements j , heater, tank, and engine, the defect upon the face of the patent, which is pointed out in the demurrer, would exist" because there is no joint and co-operating action between such three 'separate elements. The serykes of the tank are only called into requisition during the absence of the engine, did not ,and cease upon its return. The joint action of heater and .and could not affect the action of the boiler. Tbesituation., wQlll.d.·be,
J'll:nE:RAL 'RE1>OR'1':ER, vol. 49.'
ManuJ'g Co; v. 'AtWater ManuJ'g (]o::,U4 U. 5 Sup. Ct. Rep. 1007. But, construing the claim to be a combination of heating apparatus, of which the tank is merely apart, and steam-engine, the vice does not, in my opinion, exist, because there is a joint and co-operating action between the heating apparatus and boiler, and the action of each influences and affects the action of the other. It will be observed that the questiQN of patentable invention, as affected by thellse of mere mechanical skill,' does not arise upon this demurrer. It will also· be observed that the invention consists merely in an economical and efficient method of preparing the engine for immediate use at a . fite. The conversion of hot water into steam, and the discharge of cold water upon a fire, are effected by a different set of instrumentalities. This prtlpamtion of the engine does not consist simply in the injection or hot water in.to the boiler, but' <101d water is constantly received from the heater, while another pipe conveys the the boiler and conveyed wa.ter, when heated, from heater to boiler, and a free circulation between the two is thus maintained·. Boiler and beater are jointly acting, each to receive and each to discharge; the result being that the engine is constantly prepared· for immediate eBloienoy. The fifth cause of de111ur1'e1'is that eo much of the plaintiffs' alleged right of action as aroSe between JUne 22. 1874,the date of the repeal of the federal statute of limitations, tmdJuly 22, 1885, six years before the date of the commencement of the suit, is barred by the statute of limitations of the state of Connecticut, which provides that no action founded upon a tort, unaccompanied with force, and where the injury is consequential, shall be brought but within six years next after the right of action shall accrne. .The' patent expired August 18, 1885. The complaint alleges a continuous infringement from the date of the patent during its life.· This cause of demurrer raises the frequently discussed question of the effp.ct of aetate statute of limitations upon actions at law for the infrinp;ement of a plltent dUring the perio() not covered or provided for by a statute of limitations. It is well known that this que8tion has never been directlypassetl upon by the supreme court, and that it has been frequently discussed and decided, or left undecided, by the circuit courts, and that at the prf'sent time the number of deeisions in favor of the position that a state statute of limitations has no effect upon the limitation of suits in the federal courts for the infringement of patents, largely exceeds the number of those which take the opposite view. In considering the decisiollsupon this question, the line of thought and reasoning which was adopted by Judge SHIRAS in May v. Buchanan 00;, 29 FeU. Rep. 469, as well as by other judges who prectilled hiltl,lIeems to me to ,lead the mind to the more satisfactory conclusion. It is plain that cohgress has the power to enact its own statute of limitations for actions,upon patents,and it may also be considered as reasonably certain .that it could, if it chose, adopt the state statutes, and declare that tiber expressed its own legislative will. The question is whether 8ection·34 of the original judiciary act, now reproduced in section 721 Statutes, which provides tliat "the
similar to' that which , in the view: of the 'supreme court, existed in Beecher
CITY OE ;1IARTFOBD.
laws of the several states, except where the constitution, treaties, or statutes of the States or provide, shall be regarded as rules of decisions in trials at common law, in the courts of the United States, in cases ",pe,re they apply," was intended to make state statutes of limitations, which might be passed from time to time, applicable to rights of property which are exclusively within federal control, and are apart from the jurisdiction of a state legislature. If congress intended ,this result, it that the states could, during, the, time when no fe,1e,ral statute exists, attempt to limit very seriously, byatnel1d'ments to, their own puratipn of the right of actiol1 for injuries to patents, and thus indirectly'accomplish that which they had no power to legj.slate upon;' ?irectly. / Inasmuch as the states cannot legislateupon matters which ;are without state jurisdiction, a construction of section 721, which decla.res.that cOJigress has the subjects of tlxclusive federal control within the control of state legislation. isnot to be presumed unless it is imperatively required QYi th,e terms of the section., Tha1 it is not absolutely requilledis implied in the clause which limits the of laws otthe states to ," Cllses where they apply:" A natural and reasonable construction of the section is that, when. actions are brought in the United States courts with respect to rights of propwhich the' states have" control" the statutes which had enacted'in the respective states with respect to sucb'rights should alao be eontroUingj:Jotherwise legislation in: respect to such rights in the l]nited States courts would be in a chaotic state, but that such statutes, are not applicable to rights over which have no control, except as they relate to procedure, practice, or,rules of evidence. Sch,.eiber v. SharpllJ88, 17 Fed. Rep. 589. It has been sufficiently decided that in actions at law upon lettet& patent the ,l'ules of evidence which are, created by statute in the respective states apply, (Vance v. Call1pbell, 1 Black, 427;) and this appearsto be neoossary,for otberwise rules of evidence in patent cases would be ina state of gr.eat uncertainty. While this exception must be made in order to create exactitude in the law so far as is possible, the conclusion by ,no means. follows that the important right of protection to property in letters.'pateut,so far as the protection is afforded by the ability t6bring an aetion at law or in equity, WJl,S intended to be: or bas been" controlled by state legislation. conclusion seems to me to be at varianoe: with the entire dual system of state and federal control, under which we live. The conclusions upon this part oHh.edemurrer are stated by Judge SHIItAS as follows: That section 721 declares that the laws of the state shall be followed as rules of decision "incases where ,they apply;" that is, in ,cases which invoJve matters or rigpts within the -legislative jurisdiction of the state. That, asthe subject of letters patent andauthorizingactiOfls to be brought for ihe protection' of rights thus :created is whollywithol.lt state control, the general statute of limitations oftha state does not, ezproprio vigore, apply thereto,andj not applying; is' not made a rule of decision goverping, tile United Statesicourt by the 'provisions of section,721." :. The demur:rer: is overruled': .. ' \' :,.f
(IXBtrlct Court, S. D. NewYor1c. February 1,1892.)
"REPORT AT CUSTOM-HoUSllI" Don XOT INOLtrnB RIGJI'l' oro SHIP'S!NWA.BD BUSINESS. , '
A clause of a cliarter providing that ,the vessel is to be "reported at the oustomhouse" b.ttheoharterers:or their appointee does not give the charterers the right to do the inWard business of the s1).ip·
,BUSINESS" OJ' SHIP--SU1'BMENT OJ' CUB,'
A charter provided that the vessel should be reportel,l at the oustom·house by the charterers or their appointee, or pay £20 liqUidated damages·. Tb.e master reported to the C!:lartererson the da,1f of arrival! bllt, the latter and their a\>p,ointee declined to enter the sliip unlesstlIey should De allowed to do the ship's- Inward business, , ',WhiCh the, ship refused,,' o,n libelllled b"the S,hip""owner, to reco,v,er freight, cha,r, .' ,terers to deduct the £20. tbat the right to do the inward of the ship eoutd not be allowed the charterer unless plainly indicated in the char, tar, and that the phrase "to report at the include the ling of suc:lJ.lnward business; hence tlieship. in reporting to the charterers, had fulfilled her part of tbe charter, and the charterers could not be permitted to deduct the £20 from the' freight;
In Admiralty. ,Libels in per8O'flllm by Andrea Mignano. and others against Robert MacAndrews and others. and GaspareCalifano and 'others against the same,torecover a balance of charter hire oftwoveseels. Decree for libelants. . Wing, Shoudy & Putnam, for Wilcoz, Adamset Green, for respondents.
BROWN, District Judge. In June, 1891, two vessels of 506 and 607 tons respectively were chartered by the owners to the respondents, at Smyrna for a voyage thence to New York. Both charter"parties were in the same form,the concluding paragraph of whioh provided that the .vessels were "to be reported at the custom-house by MacAndr.ews & Forbes, 55 Water street, or:their appointee, or pay £20 liquidated damages." The vessels were lOaded with the charterers'own goods, and bills of lading iS8uedfor cargo deliverable to,themselves at New York. As .the respondents did not do shipping business themselves, they appointed, John C. Seager,a ship-broker, to attend to this business. On the day of arrival, the master of each vessel reported to Funch, Edye & Co.,. Who had long acted as agents of the owners in this city, and who were .understood to be the consignees of the ship. Their clerk at once went, with the masters to confer with Mr. Seager in reference to reporting,the vessel, and on the same afternoon ancLthe next morning they had severalcon\'<lrsations with Mr. Seager and with Mr. Cuthbertson, oneoHh& respondeutB'firmt the result of which was that Mr. Seager, under re<3pondentB'direction, refused· to enter. the vessel at the custom-house, either upon the ordinary custom-house brokerage fee of three dollars. or upon the compensation of five cents per ton, unless he was also to. have what is called "the inward business of the shiPi" that.is to say"