JOSLIN v. NORTIIE'ItNPAC. R. CO. ;:'(Circuit Court,D. Minnesota; 'Thj.rd Division. , April 3, 1893.)
, ,':,j... ""'." . ".' , PA'rENTS FOR INVENTrONs,-LnUTATION OF CLArMs-CAH COUPLERS.
Letters patent No. '337,780, issued to Charles Mueller, March 9, 1886, for an improvement in car cOUlmngs; was for an improvement in that class of drawlleads which the strain is received upon a reciprocatheld in place by a spring, the object of the invention being to strengthen those parts ,on which there .is a great amount of friction in ord¢r toretain them in place. The clilim Was as follows: "In combinationwitli the draft bars and the follower plates, the weal'ing plates provided with bent ends entering the draft bar, rind provided with slots or openings, and the lugs provided with tenons entering the slots in the plates, and the bolts passing through the said lugs, wearing plates, and draft bars." Hel,t, that the patent,}q. be valid, must be strictly limited to the combina· tion in the claim, and is not lnfring-ed by a device wherein the plates are bent in the center of the car, and do not enter the draft bar.
Suit by Benjamin J. Joslin against the Korthel'll Pacific .ttailroad Company for the infringement of a patent. Decreefqr defendant. C. E. Joslin, for complainant. Banning, Banning & Payson, for defendant. NELSON, District .rudge. This is a suit brought by complainant to recover from the defendant damages for an infringement of letters patent No. 337,780, issued to Charles Louis Mueller, :March 9, 1886, for. imprOVe111ents in car couplings. 'l'he complainant is the owner of the patented device, by proper instrument of assignment. The defenses set up are (1) want of novelty; (2) noninfringement. The patent In controversy is granted for an improvement in a carcoupling device. 'rhe invention, as described in the letters patent, relates particularly to that dass of drawheads in which the strain imparted in drawing the cars, or in receiving the impact of adjoining cars in coupling, is received upon a reciprocating plate held in place by a spring, and the object of the invention, as stated in the specification, "is to produce' a drawhead in which these parts upon which there is any great a,rnount of friction or wear shall be strengthened, in order. to retain the .difIerent parts in their proper places, arid to successftilly withstand the hard usage to which drawheads ,are usually ilubjected." The patentee has reinforced the durability of the wooden draft bars by iron plates secured by the mode described. At the place where the wooden draft bars. require protection from the movement of the follower plates in contact with them, and by the peculiar form of the wearing plates and their disposition, they not only protect the bars, but prevent displacement of the parts resting thereon; and the various details of the construction are such that the parts are retained in their proper relative positions. In his specification he refers to the drawings of the patent, showing the devices of his invention, and states that-
PAC. R. CO.
tlA drawnead made in, accordance with Invention will be much more durable and .reliable in operatiQn, ):Jy reason of the fact that the parts will always be retalriedin thetr proper positions, and are not liable to become displaced by being worn, for the 'reason' that the plates, A, upon which most of the wear comes, may be,a-eadily removed, and replaced hy others, whilE' in ordinary form of dra'Ylleru]s the wood of the drawheads is exp(lSed, and soon becomes WOI'n, It displacement of the operative parts."·
He then sets forth the claim:
"In combination with the draft bars and the follower plates, the wearing pIatps peovided with bent ends enteling the draft bar, and provided with slots or openings, and the lugs provided with tenons entering' the slots in the plates, and the bolts passing the said lugs, wearing plates, and draft bars, substantially as described."
The patentee uses in connection with the old and usual drawhead found upon freight cars wearing plates with bent ends entering the draft bars, to prevent the follower plates from wearing out or impairing the wood, and he also provides slots or openings or lugs having tenons entering the openings in the plates and boIts passing through the lugs, wearing plates, and the wooden draft bars; so as to prevent not only weal', but also to strengthl'n those parts upon which there is any great amount of strain and friction, and to retain different parts in their proper plaees, and by means of the wearing plates and the openings, lugs and bolts. and other features described, to enable thedrawhl'ads to withstand hard usage. There is certainly no novelty in putting an iron-plate covering over a wooden surface to prevent wearing of that surface by the friction of another piece of iron moving on it; so that, if the patent is valid, it must be limited to the peculiar combination descrillPd in the claim and specification in detail, and cannot be broadened to include any mode of covering of the wooden draft bars by iron wearing plates. The patentee describes the ,Ycaring plates as follows:
"The ends of these :Ire bent light anglps, Hnd fOl'lll the JH'ojectiol1s, a, which enter the draft bars, and aid in retaining tlWlll in plac(; on the same."
The proceedings in the patent office show that it rejected some of his original claims for wearing plates attached to the draft bars, and gave him the one claim which is set forth ahoH" whieh provides for wearing plates with bent ends entering the draft bars as an element of the combination. The patentee, in his testimony, states that he claims protecting plates with bent ends entering the draft timber, and nothing else, His expert, in his testimony, states that one of the elements of the combination is wearing plates having the bent ends entering the draft bar, and provided with slots, and the lugs provided with tenons entering the slots. True, he says, that he finds in the draft rigging used by defendant substantially the same elements of the Mueller combiuation, with the exception that the position of the wearing plate is reversed with the bent ends pointing in"mrd towards the centf'r of the car, instead of being imbedded in the draft bars, as in the :Mueller patent; and the defendant's expert says in his testimony that the wearing plates in defendant's rigging are entirely different
aIidtoi'qI' from Mueller's, and the bent ends of defen,dant's plates perforin. no such functionjlis ,the bent ends of Mueller's plates, which are let into the timbers,and the sole object of that was to present a larger re8isting surface. I agree with the view taken by this witness, thltt the structu.res are different. The defendant uses a drawhead having iron covering plates with the ends bent inward, which do not enter the wooden draft bars or timbers. Its plates are, gained into the timbers the thickness ()f each plate, and have a :flange on the upper side turned inward, which serves as a support to the edges of the follower plates, and a crossbeam is also inserted between the draft bars at the inner ends of the plates. These plates are substantially different from the Mueller plates in their construction and operation. They certainly are not supported in the same way, and their ends are not bent and inserted into the bars to aid in retaining it in plac..... The inner ends of the defendant's plates, by butting against this crossbeam between the draft bars, prevent in some degree the plates from moving endways in ''buffing,'' but not like the Mueller plates with bent ends entering the draft bars, which prevent them from moving endways in ''buffing'' and drawing. The same function is not performed by defendant's construction. The patentee, to fulfill his combination, must have the ends of the plates forming projections inserted into the draft bars. It is true the plates of the defendant are gained into these bars, but no bent ends enter them. Olearly, :flat plates fastened upon the surface of the wooden draft bars, used in combination with the old and ordinary draft rigging, would not infringe the patentee's claim unless the ends were bent and inserted into the timber; and so wearing plates with the ends bent inward towards the center of the car, and not entering the draft bars, and having no connection with the draft bars except as they form a part of the plates, do not infringe, for the function performed by the bent ends is not the same as when entering the bars. The wearing plates with bent ends entering the draft bars are material elements of the Mueller combination. The doctrine of equivalents does not broadly apply, as the patentee Was not the first inventor of a car-coupling device. His invention is an improvement, denominated a "secondary" invention; and, the claim being limited to a combination having a peculiar form of wearing plates entering the draft bars, before he could get his patent it must be strictly construed. See Lubricator 00. v. Wurster, 38 Fed. Rep. 429. As said in that case, "the patentability of complainant's combination was, in view of the state of the art, extremely doubtful." There is no infringement, and decree must be for the defendant. It is so ordered.
CHRISTIE v. SEYBOLD. (Circuit Court of Appeals, Sixth Circuit. March 22, 1893.) No. 53.
PATENTS FOR INVENTIONS-INTERFERENCE-BILL IN EQUITY TO SECURE LETTERS PATENT-EsTOPPEL.
The failure of a party in an interference proceeding in the patent office to raise the question whether his opponent's invention includes the issue declared in the interference does not estop such party to raise that question in an equity suit, under Rev. St. § 4915, to determine his right to a patent.
Letters patent No. 450,882 were issued April 21, 1891, to W. H. Christie, for a bookbinder's press in which the platen could be quickly run up by hand without moving the power-driving mechanism. The patent was granted after a decision in Christie's favor upon an interference with an application by Charles Seybold. In the Seybold invention the pressuro was obtained by a vertical screw, and transmitted to the platen by means of removable pipes of different lengths to suit the size of the bundle. In the Christie invention the power was obtained by a lever and pawl operating in connection with a ratchet Wheel, pinion, and rack bar. In both inventions the platen was -balanced by weights. The interference was declared on a claim for a "platen detachably connected with the power-driving mechanism and provided with a counterbalancing weight," which language was taken from the Christie claim. In the Christie invention, however, the point of disconnection was between the rntchet wheel and the lever pawl. Held, that. this construction was fairly within the language of the claim and interference, notwithstanding that the point of disconnection was not immediately at the platen proper; and that there was an interference between the two inventions. The man who first reduces an invention to practice is prima facie the first inventor under Act July 4, 1836, (5 St. p. 117,) but the man who first conceives the invention may date it back to such conception if he uses due diligence in reducing it to practice, and he must use such diligence before, as well as after, the second conception of the invention. Reed v. Cutter, 1 Story, 590, followed. The person who first conceived a comparatively simple improvement in power presses for bookbinding made a rough sketch of it within a few months. Three years after his first conception he had working draWings made, and six months thereafter a machine was mnnufactured. He excused the delay by asserting that he could neither afford to buy the necessary tools sooner nor URC them in his small shop. His renson for uot having the machine made at another shop was that he would have made no profit on machines made by others according to his invention. Held, that he did not use due diligence so as to entitle him to a patent as against one who conceived the invention later, but reduced it to practice sooner, than himself. A rough sketch of an invention is' not such a reduction to practice as to make its author the original inventor, within the meaning of the patent laws. Under Rev. fit. § 4!.l15, the only question the court can consider is whether the complainant is the first inventor of a. patentable device. 'Whether respondent or a third party was the inventor of the device for which respondent lms received a patent should not be inqUired into either by the court or by the commissioner in interference proceedings between the same parties.
TIITRD PARTY WAS INVENTOR.
SAME-PRIORITY OF INVENTION-REDUCING TO PRACTICE.
SAME-DUE DILIGENCE-WHAT COXRTITUTES.
S.UIE-SXETCH OF MACIlINE.