PERRY V. REVERE RUBBER CO.
PERRY et al. v. REVERE RUBBER 00' (Circuit Court, D. Massachusetts. January 7, 1898.) No. 469.
PATENTS-NoVELTY AND INvENTION.
Dowels, and couplings In the nature of dowels, being common to all the arts, the presumption of want of Invention In the applica.tion of a dowel to any particular art cannot be overcome by mere proof of novelty, or by the presumption arising from the issue of a patent, or by indecisive proofs that it met a long existing want which persons skilled in the art had not been able 'to overcome, or by all· these combined. The Perry patent, No. 462,278, for a steam-joint; packing, consisting of a hollow core of cotton duck or other woven fabric, a. covering of elastic material,and a coupling the ends of which enter the ends of the packing, iii! void for want of invention.
This was a suit in equity by Edward L. Perry and others against the Revere Rubber Company for alleged infringementof letters patent No. 462,278, granted November 3, 1891, to Edward L. Perry, for a steam-joint packing. Edwin H. Brown and Edward P. Payson, for complainants. Henry M. Rogers and Alex. P. Browne, for defendant. PUTNAM, Circuit Judge. The patent in issue relates to steam packing, <ir gaskets, and contains a single claim, as follows:
"A steam-jciint packing consisting of a hollow core of cotton duck or other woven fabrIc, a covering of elastic material, and a coupling the enlli! of whicb enter tbe ends of the packing, substantially as and for the purpose specified."
Questions have arisen as to the true construction of the patent, growing mahJ.ly out of inconsistent expressions found. in the specification. As originally applied for, it contained several claims, of which only one, and that in an amended form, was allowed to remain.. The phraseology of the specification was not meanwhile amended, and this accounts to some extent for its confused expressions. The proceedings in the patent office show that the examiners entertained and expressed certain views as to the construction of the claim in issue, but they were not of a character to operate as an estoppel, and cannot be accepted as of any effect; and the true ·construction must be determined from the face of the patent. One question relates to the nature of the coupling. This, as shown in the drawings annexed to the application, is hollow; and the .specification proceeds as follows:
"In order to secure the compression of the packing more readily, the core, B, Is made hollow, which also provides means for attaching the ends of the hollow coupling tube, C, to join the two ends of the packing together, after which the joint thus made Is covered with a piece of suitable 'material. The coupling tube is preferably of metal, but otber material may be used, and Is made hollow to enable it to be compressed. with the packing. Although it is considered materially advantageous to have the coupling in the form of a hollow tube, a solid coupling may be used, but possibly not with as good results."
In view of its connection, the word "materially," found here, preceding .the word cannot be accepted in its proper sense; because, if so construed, the coupling which is made an
element of the be . The word "materially" must tHerefore yield to' 'follows U,lirtd we must hold t.hat the couplin'g,whiehforrnl'l·iftn'elementdf the'ehiimmay be either hollow or s o l i d . . . j ,'j.,' The complainants maintain thQQgn ,l;t)3Qlid c01lpljng maybe: :uijad1yet, by: the of: the 'claJJri. as the light of the patent, M,mnstbeoomvressible. ,By this,ofcourse, the intetid every possfble:sense, but ,as .to ,the'. p1}.rpos,es, for which the proposed 'j'nv'ention is Wtended. Thil;! ,proposition, bow· ever, cannot be maintained on the properconstrnction of the claim in connection wilth, :tlle ..···'The specification; by saying, pe'''illade hollpw to enable it to be in compressed with 'the packInl!." and by omitting fJ;'9Ill: what follows all reference t<) compels the court to construe the cotiplingto inc1tlde a,sOlid one"oot compressible ill the practicf!,l '" , '. I I sense to . Therparties 'also, in part indired::Iy, have given certain limitations to the patent which it does' not contain. The respondent lIas dis(Jussedtlae'posaibility that the core of the tubing of theipfttent, (Iconsisting of' cotton: duck other woven fabric," has reference to some peculiar quality of certain materials o:ILthat and ,it contends -that,: unless be; soithere is nothing patentable 'iIi the alleged in;vention, and that; tf it he'sa, it does not infr,inge; But iUs entirely"plain that reference 'is -impliedly made, of the. art, .and that persons skilled 111 the art m.ay properlyt1e assumed by the patentee ito the ':tIl1tu1'e' of':lhe matenaHluitable for the core; isndthliig'novel 'so' far as "the . component 'parts'olltliEf:ttlbinlrare concerned.:' " ' , : " . ,; The comptainantsiseek that thehds'intheirpatented' 'pi-oducta' certaih'relatiotl between 'the size of the conpIer and the· walls of thetubingithllt the'wtH1sa'i'e too-thick, and the cenMr hole too small, to ha:ve had in anticipation tUbing ''llsed as a 'pipe' ot! rcondl1ct<jr,;' that the 'gasket has a very sma'll:bo'()ei; and 'that, tne"aJlleged'·prior 'tubings vary'accbrdingly in this latter '. must be held td'relate to the complainan!ts' gasket) asamuaHy ·put on the 'tnarket;because thecHilm COnlnJfiS nothinig as to thei!le particulars ; and, indeed,' by express term!'!j that the tubing may be of any shape or cross section, and of any dirtmeter found most d:esirh· changes coming within ordinary mechanical :"i'" ....;' ' skilL" "';n tlfat,uo' fUnction jflaime& for the 'cowplainl\p.ts', gasket" out of the ,alleged,compressibility of the.cQupler, or of the relative PI;0poriions of We parts, can be' availed of tosustain the ';daim:in ,issue' covers a gasket formed by 'a comlliliatioh otanY .size of tuhing found suitable, with any kind of c0upling which 'cao 'enter the ends of the tubing, provided,only that thecMeribg of the tubing is' of an elastic material core is fabric suitable to';give: strength. , .
The specification points out that the tubing is arranged for use as a gasket by cutting it to a suitable length according to the particular need of each case, bending it in a circle, and uniting it by a coupling which operates as a dowel. . The function claimed for this product is that it answers for tubular gasket, ready to be made of any desired size, and capable of being sO coupled by the person .applying the same as to be substantially jointless. It is pointed -out that, inasmuch as it can be put on the market in the form of tubing of any length, ready to be cut as needed, and with it any desired number of couplings, it has been found very convenient, and has received a large sale. The complainants maintain that the patented product revolutionized the market, but the evidence in the record fails to sustain this proposition. Indeed, it appears that some of their own witnesses, who were men of large experience, had never heard of it, and were still TIsing gaskets of other styles. It is shown beyond doubt, and is a matter of common knowledge, that the tubing called for by the claim, as we construe it, contains nothing novel. It is also shown beyond question that the use of tubing as a gasket, by bending it in a circle, and by uniting the ends in various ways, was also much known before the alleged invention in issue. Much evidence was also offered tending to show that several persons skilled in the art, on various occasions before the alleged invention, had united the ends of elastic tubing, for use as gaskets, by inserting various materials to serve as couplings or dowels. The complainants contravene the proofs of the respondent in this particular, but they apparently rely more on the contention that the use thus proven was incidental than on an attempt fo directly gainsay the evidence offered. It is clear beyond question that the only novelty which the complainants can presume to maintain is the use of the coupling, or dowel, in connection with the tubing. It is not easy to perceive that such a use is withiri the range of patentable invention. Dowels, and couplings in the nature of dowels, are common to all the arts, and this application to anv particular art cannot, therefore, be regarded as indicating inventive faculty unless the circumstances are more peculiar than those found in the case at bar. The propositions relied on by the complainants, that the earlier applications of the dowel to these purposes were incidental, so far, under the circumstances, from strengthening their case, weakens it; because it indicates that various persons, when the emergency arose, laid their hands promptly on this as an available resource, so that its use was simply an exhibition of ordinary skill in the art to which it appertains. The presumption of the want of the inventive faculty in the application of a dowel to any partiCUlar art cannot be overcome by'mere proof of novelty, or by the presumption arising from the issue of a patent, or by proofs of the indecisive character which we have here, to the effect that it met a want which had long existed, but which persons skilled in the art had not been able to over· come, or by all combined. Let there be a decree entered according to rule 21, dismissing the hill, with costs.
86 FEDERAL REPORTER.
THOMSON-HOUSTON ELIDCTJUC CO. v. UNION RY, CO. et aL
(Oircuit Court of Appeals,Second Oircllit. No. 110.
PATENTS,.--INVENTION-ELECTRIC RATLW Ai, DEVICES,
April 7, 1898.)
, The Van Depoele plitimt, No, 495,443, for a traveling contact for electric railways, must be construed, as to claims 2 and 4, as inclUding, by implication, means for maintaining the contact device and the conductor in their normal working relations, and, so construed, are void, as being for the same invention as letters patent No. 424,495, to the same inventor,
Appeal from the Circuit Court of the United States for the Southern District of New York. ' This was a snit in equity by the Thomson-Houston Electric Company against the Union Railway Company and others for alleged infringement of claims 2 and 4 of the Van Depoele patent, No. 495,443, for a traveling contact for electric railways. The circuit court granted a preliminary injunction (78 Fed. 363), and the respondents have ap' pealed. William S. Kenyon and Charles E. Mitchell, for appellants. Frederick H. Betts, for appellee. Before WALLACE and SHIPMAN, Circuit Judges. PER CURIAM. This appeal involves the question whether claims 2 and 4 of letters patent No. 495,443, for a "traveling contact for electric railways," granted AprilU; 1893, to the administrators of Charles A. Van Depoele,assignorsto the complainant, are void because they are for the same invention whH;p baq been previously patented in letters patent No. 424,495. The inventlOn, to adopt the language of an expert witness for the complaiml.lltina fOrmer suit brought upon the patent, "consists genel'ally in an, electric railway, having an overhead conductor, and a cai' for sa,id r liUwfly,' provided with a contact device , carried by the car,so as to form a structure therewith, and con· sisting of a trailing arm hinged and pivoted to the car so as to bridge the space between it and the,condu<;to;r, and move freely both laterally and verticallY"and said. aI'I:l1 at its outer ,end a contact device capable of being pressed upwar",d.' b"y,a, SU,,i,table tension devl,'ce,' into engagement with the uJider side, of the conductor." The essential features of construction involve the location of the supply conductor above the track a:q.d line of travel of the car, and contact with its under side, the arrangeinent oUhe device on a trailing arm, and the maintenance of a constant upward pressure by means of a tension device operating upon a hinged The two claims in controversy are:
"(2) The combination of a CaI'j an ovel'llead, conductor above the car; contact device, making underneath, ,contact with the conductor; and an arm carcontact device, and pivoted 89 as to swing ried by the car, and carrying freely around a vertical axisl' "(4) The combination of a car; an overhead conductor above the car; a contact device, making underneath contact with the armon the car, movllble on both a vert1C;\ll and a transverse conductor; and, axis, and carrying the contact ' "
The patent contains 16, claims. The characteristics of the tion, and the scope and validity of many of the claims, were consid-