ants'11ght$, 01' that they have individually derived any profitor:adVan. tage 'from the 'patent sued on. No reason is shown why adecl'ee should be tendered against them as individuals. As to them, therefore, the bill is dismissed at complainant's cost. Howard v. Plow Works, 35 Fed. 743; Boston Woven Hose Co. v. Star Rubber Co., 40 Fed. 167; Consolidated Fastener Co. v. Columbia Fastener Co., 79 Fed. 795. . The bill is sustained as to claims 2 and 4, and dismissed as to claim 6, and' a decree will be' entered accordingly,. and for an injunction and an. accounting of the profits' and in respect to clailUs 2 and 4, the injunction not to be operative uMn 60 days !;lfter the entry of the decree, on account of the public inconvenience tb,at .lllight result in summarily enjoining the defendant Home Telephone' Company in the use of its switch boards. .
WEST END ST.Ry. CO. WEST END ST. RY....CO. V. Nos, 234 and 235.
1. PATENTS-INFRINGEMENT SUITS-P'AR'J:IEll.,
('Circuit Court of Appeals, First Circuit.' February 18, 1898.)
2. SAME':-CRARACTER OF CLAIMS.
One who has made a broad invention mllY state Its general principles and requisite features In one claim, and, in another, the general principles ancl requisite features, supplemented by a more particular desc11ptlon of the details Involved In the contemplated structure. The McElroy patent, No. 500,288, for an electrical heater for street-railway cars, construed, and held valid, and infringed as to both its claims.
8. SAME-ELECTRICAL CAR HEATERS;
Appeal from the Circuit Court of the United States for the District of Massachusetts. . .
This was a suit In equity by.the Consolldated. Car-Heating Company against the American Electric Heating Corporation,' the West End Street-Railway Company, and certain individuals, for alleged Infrlngeme'nt of letters patent No. 500,288, Issued June 2fT,' 1803, to the complainant, aSllsslgnee 01' James F; McElroy. The suit was vohmtarily discontinued as to the Individual defendants, leaving merely the two which, by some of the allegations, were charged as 30lnt Infringers. The circuit court held that the first claim, of the patent was VOId, but that the second claim was Valid, and had been' Infringed. It found,however, that the proofs were insufficient to show a joint Infringement by the .two cqrporations, and therefore directed that, if the complainant to dismiss tpe bill against one of the respondents, It Illight do so on payment of costs; that, unless It did so, the blll would be dismissed. With costs; but that, i'f It disniissed as to one of them, a decree should be entered adjudging claim 1 void, cani:lfor an accounting 'and
EKD ST. RY. CO.
82 Fed; plalntitf accordJngly dif;missed l,lS ,to the American Electric porPj>fatiOJ;l, leaving the West End., Railway Company lI;S sole detenda.nt, a'!ld a, decree was entered agamst the latter, from which it has appealed. The complainant also appealed trom that part ot the decree dismissing the bill ail to claim 1.
t10n as to cliLim 2;
Frederick P. Fish and William K. Richardson, for Consolidated . ". .' Car-Heating Co. JamesH. Lange and Odin B. Roberts, for West End. .st. Ry. Co. , Before COLT, Circuit Judge, and WEBB and ALDRIOH,District Judges. ALDRIOH, District Judge. The assignment of error. based upon the refusal of the circuit court to dismiss for misjoinder of defendants is not well founded. The proceedin.g was originally against several defendants, and, among others, the West End Street-Railway Company, the only remaining party against whom .thecoD;lplainant now asks relief. .some of the allegations below illVQlved a charge oj conspiracy and joint infringement, but by leave of court and by amendment the bill was dismissed as agoainst all, :ll:cept the West End Street-Railway. Orders relating to the conduct of a trial and. to amendments adjusting. the parties to a controversy are generally treated as orders made in 'the exercise of discretion, and not subject to exception and review. In an equity case, however, where the appeal brings up questio.Il,l!l of law and of fact, the court of review may d.oubtless examine to see whether. the case, as presented" js, either upon. the law, the facts, or tl1e pleadings, an inequitable case; .and if, for any reason, it so apPllars, relief may and shoul.d be withheld. Butin this case tb.e. West End Railway, one of the original defendants, was charged with nsing car heatelis covered by the patented device, and this allegation, in what remains of the original proceeding, fairly enough, we tl1ink, raii!es the questions of patentability and infringement. patent in controversy relates to mechanism, and adev:ice for converting the energy of an electric currentinto 1;I.eatenergy for the Pllrpose of heatingstI,'eet cars, railway trains, and houses by electri<1ity. There are two claiDls in the patent, and in the circuit court tbg, second claim was held to involve patentable invention, ,and the defen9ant appealed, While: the, first claim Was held invalid upon the ground that all of its substantial features were covered by the second claim, and the complainant appealed,. The case comes to us on. cross appeals, and therefore presents the questions involved in both claims. . The defendant's couosel have argued with ability and earnestness against the of the· circuit court .that the second claim involves patentable novelty. We are, however, not only not satisfied that the court went too far in sustaining the patent, but are satisfied that it stopped shortof giving' the patent the scope to which it is fairly entitled through what is expressed by the, inventor in his first daim. We w.ill consider first the general question of invention. Wbile the heater in question is described generally as for the purpose of warming an apartment, it is obvious, from read-
ing the whole specification, that the real problem which the inventor intended to solve was how to heat street cars. As is well understood, 'Yhen electrical power was applied to street railways, and the lines increased so as to involve long runs, and include places at a considerable distance, the question how to suitably h.eat the cars at once becante 'an important one. Stoves took up considerable space in the car, were uncomfortable l:\.Dd dangerous, rendering too much heat in the locality of the stove, and not enough in other parts of the car.c So it became a question how the motive power could be utilized to evenly distribute heat through the car. It is not necessary that we should reiterate a description of the inventive device and the mechanism which connected the described structure with the electric current, thereby enlisting'its energy and converting it into heat for. the purpose!! designed. The ill!!'enious means by which this result was· accomplished are sufficiently set out in the opinion of the circuittlourt (82 Fed. 993), together with a description of the means by "hieh the device has done its work so successfully and satisfactorily as to supplant all otlier means, and become.an almost universal; heating device for street cars moved by electricity. As shown by the record and the evidence, persons skilled in the art had previously endeavored to accomplish the desired result, but without practical avail, and until McElroy combined the known electrical energy with his happy mechanism, and described a device for putting the heat energy involved in electricity into practical operation for this purpose, the public had contiuued to ride in the cold. All agree that his device is practical, useful, and a decided advance upon any theretofore described or known. If does the work. In practical use the heating coils are placed under the car seats in different pai'tl!! of the car, arranged with a radiating surface capable thecal' in' extreme cold weather, and with practical stops of or cut-offs for reducing the radiating surface, and thus properly adjusting the heat to milder degrees of cold. The spiral coils are safely insulated, electrical contact avoided, and the current safely means of a mechanism so adjusting the parts as to make the whole self-protecting against the jar and vibration f sulting from rapidly moving cars. Looking at the general use, and the subs,tantial results accomplished through the mechanical arrangement and the device described, with the practical view of giving the inventor, rather than with the view, through refining processes of reasoning, of depriving. him of, what fairly belongs to him, it is difficult to see how the patentability of the device in suit can be seriously. challenged. Aside from technical and refining analysis as to what some feature of the prior art may cover or might do, and without reference to the question as to what class of invention the patent in question belongs, ,it is difficult to view the McElroy device, which provides for connecting with the motive power -the electric current-in a manner which develops and utilizes its heat energy, and in a harmless and practical form diffuses its influ ence throughout the car, as other than a useful and substantial con tribution to the practical art.
CONSOLIDATED CAR-HEATING CO. V. WEST END ST. RY. CO.
Great stress is laid upon the English patent to Rose as embodying anticipatory features, but the Rose device did not do the thing that this device does. It did not undertake to do it, and" so far as appears, no one ever thought of its being applied to such a situaHolt, and doing the work in the manner in which the device in question does it. Quite likely the Rose patent had some of the idras involved in the patent in question,-asj for instance, the idea of radiating heat by means of coils of wire,-but it did not describe, or even suggest, the distribution of heat, either in detail or in substance, in the manner and by the means employed in the complainant's device. As was said by the circuit court, nnder the rules applying to foreign patents it cannot be viewed as anticipating the McElroy invention. Now as to the claims. In practice the coils of wire are wound or laid around an insulating substance, usually porcelain, in paths or grooves which form a ridge of nonconducting material, serving to keep the coils apart, and thus prevent short-circuiting. While the first claim expresses the idea that the layers of spirals shall beseparated from each other, it does not describe the mechanical detail for accomplishing such result. The second claim is more explicit in respect to this feature or detail of the contemplated structure, and describes the separating or insulating substance as a nonconducting material placed between the adjacent layers. It is reasonable to conclude, we think, from the inventor's statements in his claims, that he had thought out the situatiou, and contemplated that other nonconducting material.between the layers of spiral means than coils mig-ht be employed by the skilled mechanic, and that he would therefore make his first claim broader than the limit which he puts upon his second claim by expressly describing a noncooducting material as the means for performing the function of keeping the coils separated. He quite likely anticipated that, if he expressly limited himself to nonconducting material as a means for keeping the wires separated, the value of his patent might at least be threatened by the construction and use of heaters made in accordance with his scheme, except in respect to the means employed to prevent short circuits. In other words, some one might construct a heater .like his, except the coils migh't be kept separate in other ways than expressly described by him in his second claim. What the inventor intended to cover by his second claim, and what he might rightfully cover, was a heater constructed upon the general principles and with the general features of his device, with the coils of wire separated by nonconducting material, such as a porcelain ridge between the coils, formed by :the grooves into which the coils were laid as they were wound about an insulating substance; while by his first claim he intended to cover a structure with the same general features, with such other means separating the coils as might occur to the ordinary skilled mechanic as anseful means for performing the particular function of keeping the wires separate. In other words, by the second claim he describes nonconducting material as his means for separating the coils and preventing contact, while
:S5' FEDERA'L 'REI!'ORTER.
KENDALL. January 31, 1898.)
(Olrcult Court, N. D. California.
No. 11,781. 1.
In an equity suit brought under Rev. St. § 4915, by a defeated contestant in Interference proceeqlngs, to determine his J;!ght to a patent, the court has power to the question of priority without any exceptions or limitations; and, when the decision ,Of the patent offi,ce Is based rather on questions of law thlinany distinct finding of prIority, the court will make an independent _ examination of the testimonY,andreach Its own conclusioI1s.
The. conception of an consists in the complete performance of the mental par-t of the Inventive act,-the ,formation In the mind of the inventor of a definite and permanent 'Idea, of the complete and operative invention as It Is thereafter to be applied in practice. It anything rem!1I1s to be created or devised -In order to enable the macI:rlne to perform' Its functions In the manner pr()posed, the conception is not complete, so as to show a true Idea of the means.
SAME-REDUCTION TO PRACTICE.
One is not entitled to& patent until lie has performed a complete inventive act, by conceiving a complete and finished idea of means, and then reducIng It to practice In some art, machine. manufa<,ture. composition of matter, or design.