and others v.TtnIl MAy'OR; ET(h
(Circuit Oourt. S. D. NerD York.
01' THE CITY 01'
July 2,1880.) .
No. 81,132-FEED WATER HEAlrJllRS FOR STEAH FIRE-Elf_ GINEs-INFRINGEMENT-VALIDITY. Letters patent No. 81,132, grantedio William A. Brickill, August 18, 1868, for improvement in feed water heaters for steam fire-engines, held, fJalid, and i n f r i n g e d . " 2. B.um-SAME-'1NVENTION-UTILITY-PATENTABILITY. Complainant's combination consisting of an apparatus for heating water, circulating through coils of pipe, to be connected, by tW9 readily-detachable tubes, with the boiler of a steam fire-engine, and also with a tank, so that when the engine is not on duty the hot water will circulate through the boiler and keep the ready for immediate use, and through the tank, keeping the heating apparatus order when the engine is away, lteld, to involve invention;and it possesSed utility was therefore patentable.
8. SJllCTION 7, PATENT ACT OF 1839, CONSTRUED-UBJll PIitOR TO APPLY-' CATION FOR PATENT. The clause of the act of 1839 which provides that every person and corporation may use, and vend to others to be used,. any 8peciflc rna, chiruJ, manufacture, or compoBition of matter which they have purchased or constructed prior to the application for a patent, held, restricted in the case of patents for 8ub8tantitlB things to the use of the particular thing bought or made, and not to a general use of the invention. PierB011J v. Eagle Screw Co. 3 Story, 402, 408. McOlurg v. King8land, 1 How. 202, distinguished.
4. ACT OF 187o-JuRISDlCTION. The act of 1870 may govern rights under patents issued prior thereto, if the effect would not be to take away rights already secured under such patents. I. INFRINGEMENT-AGENOY. A city will be held responsible for infringements by lts1lre dllpart': ment, though separately incorporated. 6. SAllE-EX'rENT-lNTERLOCUTORY DECREE The extent of infringement shown is immaterial for the purpose of an interlocutory decree.
In Equity. James A. Hu.d8on, for complainants. liIf'ederic H. Betts, for defendants.
WHEELER, D. J. This .suit involves the construction and validity of lett-ers patent No.S1,132, dated August 18, 1868, and granted to William A. Brickill for an improvement in feed water heaters for steam fire-engines. The novelty and patentability olthe and infringement of the patent by the defendant, are denied, and a license by operation of law to practice the invention is claimed. describes a heating a.pparatus for heating water, circulating through coils of pipe, to be connected, by two readily detachable tubes, with the boiler of a steam fireengine, and also with a tank, so that when the engine is not on duty the hot water will circulate through the boiler, and keep the engine ready for immediate use, and through the tank, keeping the heating apparatus in order when the engine is away. The claim is for "the combination, with a steam fireengine; of a heating apparatus, constructed substantially as described, for the purposes fully set forth." There were, before Brickill's invention, contrivances for heating water in coils of pipe connected by tubes with the boiler of a steam fire-engine, so that water would circulate through the boiler and aid in preparing the engine for immediate use, sometimes detachable when the engine was wanted, and sometimes going with' the engine; but none of them were very effective. Those not detachable could not be effectively heated at all; and if those which were detachable were heated sufficiently to keep the water in the boiler hot when the engine was there, the heat, not having water to counteract it, would injure the apparatus when the engine was gone. Brickill overcame these difficulties, and, upon the evidence, he appeared to have been the first to do this. It is argued for the defendants that the patent is for the combination of a heating apparatus, generally, with a steam fire-engine, and that these prior devices show the combination for which the patent was granted, whatever Brickill may have invented, and that the invention described in the patent was antici. pated. The claim is for the combination of a heating apparatus
lIRIOKILL V. THE
E'l'(J" OJ' NEW YORK.
constructell 8ubstantia,llya's described, anf,the construction described is of what was hew with Brickill,c-so that this vieW prevail. He madetlieinvention white-in employ of the fire department of the city <>fNew York, andattaehed the apparatus to two fire.;engines, which were those numbered 12 and 26, himself, and it to have gone into extensiveuse in that fire department, and' to have been of great utility in obtaining- speedy control of fires. To make it, required more than mere mechanical skill or workmanship applied to what was in existence or known before. The principles of it were to be' wrought ont, and devices to be constructed and applied to meet the necessary requirements, The accomplishment of the result involved the exercise 'of inventive faculties to a considerable degree, which, 0oncur.; tiJJ:g with the utility, clearly makes the invention patentable. The patent'was granted mider the acts of 1836 and 1839, and the cOhstructions attached to engines Nos. 12 and 26 were made and attached before the application for a patent, It is strenuously argued that under section70f the latter ad, which provides' that every person and corporation may use, and vend to othersto be used, any'specificimachine, man.; ufacture, or composition of matter which they have purehased or constructed prior to the application for a patent, as construed in McClurg v. Kingsland; 1 How. 202, the defendant has not only the right to use those' constrllctions, but also the' full right to practice the invention without liability. 5 St. at Large, 353. The patent in that case was for a method of casting iron rollers so as to throw the dr6s8 into the center instead of leaving it on the surface, and the real question before the court was whether that st.atute, using the words "specific machine, manufacture, or composition of matter" only, should be applied to a patent for that process, In some parts of the reasoning, language broad enough to cover all patents was used in coming to the conclusion that the statute should not be limited, in its application, to those patents only which were for some specific 'thing, and that it should apply to the invention itself where there was no such thing. It has been said that, in 'order to understand this language, v.1.no.4--31
itmUBtbe considered with ref&renee to the very case before
lhe court. Eag16 Screw Co. 3 Story, 402, 408. ,The right,to'Qse ·thetlling.pl!>tented is secured against an extenaionof.tbe and grantees by section 18:of the act of 1836, (5 St. at Large, 117.) ;This language is quite as broa.!l'&'s that of the aot of .1839, and still, since the decision .in McCltu'1,'g v. Kingsland, it has been held to coverparticula;r constructions, Jtnd. not the right to practice laJ:l.g1lAJ.ge of the act of 1889 does nol the seem cl!>pable of being extended beyond the use of particular things bought or, made in cases of patents for substantive things, and it is not probable that McClurg v. Kingilland would .be followed beyond cases of its class upon the same statute. WilllQn V. ROlllleau,4 IIow. 646. But in the act of 1870, St. at La;rge, 203,-Rev. St. § 4899,) of a person const,ructinga patentable article, or purthe clIasing it before the application for a patent, is lirpited to right to use, or vend for use, the specific thing. This may be considered asa legislative construction of the former acts; but, if not"congress has full power over the subject of patents, unless it· be as to. the right to take away property secured by existing patents; and this act of 1870 may properly govern the right of recovery in actions brought since its passage. This was expressly held, as to the act of 1836, in MeCl,urg v. Kingsland. So, in any view which can be taken of this case, it does not seem that the defendant has any right to this invention any further than to the extent of machines constructed prior to the, application for the patent. It is urged that an by the fire department of ,the city is not an infringement by the defendant, because that defendant 'was, under the law, a corporation of itself, over which the officers of the city had no control. It is understood, however, as wits said in Allen v. The Mayor, etc., that the fire department was a mere agency of the city, having no funds of its own, l!>nd making no profits for itself apad fro:q:l those of the city., Inhere are any gains and profits in the hands of any party to be accounted for, under these circumstances, .on account of an infringement, they must be in
THE MAYOR, ETC., OF NEW YORK.
the general treasury of the city itself must be liable to account for them. . It is further argued, that the case does not show any infringement by the fire department, even by using the patented invention. The answer does not really deny, but rlither admits, what would amount to· an infringement. If that were not so the proofs fa.irly show infringement to some extent; to what extent, if to any, before the bringing of the bill, is not now material. The extent is aniatter to be set. tIed in the accounting. Let there be the usual decree for a.n injunction and an account, with costs.
ALLEN fl. THE MUOR,
OF NEW YORK.
(Circuit Oourt, S. D. New York. June 15, 1880.)
EQUITY-PRACTICE-ApPLICATION OF EQUITY RULES.
Rules of equity are framed to bring a cause to hearing, and do not apply after a hearing, unless the necessary steps are taken to bring it within their opera.tion, and start the cause anew towards a hearing. 2.
After a hearing and decree a cause will not be opened for mere technical and unimportant defects in the steps preliminary thereto, where no injustice has resulted to the parties. Such defects, if not objected to at the time, must be considered as waived.
PATENT-DECREE PRO CONFESSO.
In a suit upon a patent for school furniture against a city, its board of education, and its several successors, where the board last organized failed to answer, and no decree pro confesso was taken against it, and the cause proceeded without objection to a :tinal hearing and decree upon the pleadings, held, that such board could not take advantage of the omission to enter .the decree 'j11'O confesso and :tile its answer.
WHEELER, D. J. This suit was brought against the city and the then board of education, a corporation within that of the city, and an instrumentality of the city having charge of its educational interests and institutions, for infringement of