without regard to the shape, the latter is always used. For example, para· graph 104 of the tariff act plloVldesfor 'cast.pol1shed plate glass · ... ... not IIlches. square.'This provision has been in several taritl exceeding acts, but has ne'fer been' constriled'to meim-'384 square' inches of glass ot any dimensions or sizes. Paragraph 105. contains the same expression, and, in immediate juxtaposition with It, aprovis!on for 'cast polished plate glass · · · exceeding 144. square inches,' Which does mean of any shape. In paragraph ,112, ,provision Is made for 'mirrors, not exceeding In size 144 square Inches.'Pnr'agraph 88 also provides tor 'tiles ... · ... exceeding two square inches In !Ilze.:. In the one case, tb,e rate of duty has express referof the article, and In tbe otb,er, to the area ence to the or square inch measurement, without regard to shape. Ult Is held that the phrase 'eight inches square' Is the eqUivalent of 'sixty-four square Inches,' it could behel.d .with equal propriety that' 'one, hundred and forty-four square Inches' means 'twelve Inches square' and. excludes an article 9x16 inches square. I think the protest should be overruled, and the assessment of duty affirmed."
Emory P. Close, U. S. Atty., for Collector. COXE, District Judge. The language of paragraph 195, under which the collector acted, sufficiently describes the importations as "sawed lumber." His action must stand unless it appears that the lumber is. specially provided for in paragraph 194 as "timber hewn, sided or squared (not less than eightinches square)." In otherwords, if lumber, which is 12 inches wide, 6 inches thick and 20 feet long, is less than 8 inches square, the importers cannot succeed. I am of the opinion that it is less than 8 inches square. The board reached a contrary conclusion upon the theory that the words "eight inches square" are equivalent in meaning to 64 square inches, and, as the pieces in question have 72 square inches, they are more than 8 inches square. This, in my judgment, is not a correct reading of the paragraph which has reference to the shape of the lumber and not to the square inches it contains. A plank which is but two inches thick cannot be eight inches square even though it be three feet wide. The question has been fully presented in the two opinions filed by the appraisers and nothing can be added to the discussion. It is thought that'the view taken in the dissenting opinion is the eorreot one. The ,decision of the board is reversed.
WJnSTINGHOUSE AIR-BRAK)'j} ,CO. v. GREAT NORTHERN RY. CO. et at
(CirCUit Court of Appeals, Second Circuit.
June 24, 1898,) ·
FEDERAI,. COURTB-JURISDICT[()N IN PATENT CASES-WHERE SUITS MAY BK BROUGHT. ',' '.' ' . '
The provision In the judiciary a.ct of 1887-88 that noclvllsult, of which federal courts have jurisdiction concurrently with .. tbe courts of the several states, shall be broUght' against any perS<!D ih other district than tliat he is nn"lnhabltant,does not iJ.pply"t,Q· patent suits, exClusive jurisdlctlon over which' Is ..c6nferredby ,Rev.E!t. § 629, Cl., 9. And hence, prior to act. of Marcb S, 1897, thejurisdictlon of the fedetlLlcourts In Patent sufts,iisUit tor bY: a citizen of a state Of the Union could:be'brought In, district 'wheriFtalld service could be made upon tne' defehdani . . . . . "
CO. V. GREAT NORTHERN &Y. CO.
SAMK-AME!lDMENT AND REPEAL Oll' S'l'ATUTES.
The act of March 3, 1897, defining· the jurisdiction of the federal courts In patent sUits, and authorizing the bringing of such suits In the district of which defendant is an,Jnhabitant, or in which he "shall have committed the acts of infringement, and have a regular established place of business," did not repeal prior statutes, so as to oust the courts of jurisdiction in pending cases not falling within the jurisdictional limits prescribed In the newact.
. . Prophetical suggestions In a foreign patent of what can be done, when no one has ever tested, by actual and hard experience and under the stress of competition, the truth of the suggestions, or the practical difficulties in the way of their accomplishment, or even whether the suggestions are feasible, are not to be accepted as showing that a subsequent patent, which has already been sustained by the courts as a meritorious one, Is without actual .inventlon.
PATENTS-ANTICIPATION-"SUGGESTIONS" IN PRIOR PATENTS·
1'he Westinghouse patent, No. 376,837, for Improvements In fluid pressure brake mechanism, held valid and Infringed as to claims 1, 2, and 3. A railroad company continuing to use Infringing air hrakes on large numbers of its cars for 3% years after notice of an adjudication by a circuit court of appeals sustaining the patent, and declaring infringement, cannot complain, on the ground of hardship, of a preliminary Injunction, which provides for a gradual removal of the Infringing brakes.
This appeal is by the Great Northern Railway Company from an order of the circuit court for the Southern district of New York, which granted a preliminary injunction against the infringement by that corporation of claims 1,2, and 3 of letters patent No. 376,837, applied for October 1,1887, and issued to George Westinghouse, Jr., on January 24, 1888, for improvements in fluid pressure brake mechanism.
The bill of complaint was filed October 8, 1896, and the defendant filed pleas to the jurisdiction, which wer'e overruled December 27, 1897. The order for an Injunction pendente lite was granted April I, 1898. The questions of the validity of claims 1, 2, and 3 of this patent, and of their infringement by the quick action triple valve which is used by the defendant, were before this court, and were decided on October 15, 1894. 'Vestinghouse Air-Bra\;:e 00. v. New York Air-Brake 00., 11 O. O. A. 528, 63 Fed. 002, and 26 U. S. App. 248-
Simon Sterne and Wm. H. Kenyon, for appellant. Frederic H. Betts and George H. Christy (J. Snowden Bell, of counsel), for appellee. Before WALLACE and SHIPMAN, Circuit Judges. SHIPMAN, Circuit Judge. 'l'he first question which arises upon jurisdiction of the circuit court fol' the this appeal is that of Southern district of New York over the cause, so far forth as it relates to the appellant. The Great Northern Railway Company is a corporation organized under the laws of the state of Minnesota, and is a citizen of that state, and operates a line of railway from Duluth and St. Paul to the Pacific coast. It has an office in the city of New York, where its transfer books are kept and transfers of stock are made;. and this part of its corporate business is attended to at said office by Edward T. Nichols, its secretary and assistant treasurer, who resides at Morristown, N. J. Service was made upon him in New York City, as secretary of the corporation. The complainant is a citizen of the state of Pennsylvania.
88 FEDERAL REPORTER.
The appellant insists that, when the bill was filed, the only existing statute which prescribed and designated the proper district within which Buits arising under the patent laws could be brought against a citizen of the United States was the ftrstsection of the act of March 3, 1887, as amended by the act of August 13, 1888 (25 Stat 434), the last clause of which is as follows:
"And no civll suit shall be brought before either of said courts againlilt any person by any original process or proceeding in any other district than that whereof he Is an inhabitant, but where the jurisdiction is founded only on the fact that the action is between citizens of different states, suits shall be brought only In the district of the residence of either the plaintiff or the defendant."
The question whether the circuit courts of the United States could take jurisdiction without the consent of the defendant, of suits of which the federal courts have exclusive jurisdiction, in any other district than the one of which the defendant was an inhabitant when the suit was brought, has been much discussed since the date of the act of March 3,1887, but, for the present, must be considered as sub· stantially settled by the dicta contained in the opinions of the supremecourt in Re Rohorst, 150 U. S. 653, 14 Sup. Ct. 221, decided December 18, 1893, and in Re Keasby & Mattison Co., 160 U. S. 221, 16 Sup. Ct. 273, decided December 16, 1895. If the clause of the section which has been quoted was an independent paragraph, and had no relation to the previous clauses of the same section,. the contention of the appellant would have great force; but in theIJohorst Case it is regarded as so related to the preceding clauses that it must be considered as referring only to the jurisdic. tion of the circuit courts, which is concurrent with that of the several states. The earlier part of the section is as follows:
"The circUit courts of the United States shall have original cognizance, con· current with the courts of the several states, of all suits of a civil nature, at common law or in equity,' where the matter ,In dispute exceeds, exclusive of interest and costs, the sum or value of two thousand dollars, and arising under the constitution or laws of the United States, or treaties made, or which shall be made. under their authority, or in which controversy the United States are plaintiffs or petitioners, or In which there shall be a controversy between citizens of different states."
The bill in equity in this case does not aver the sum or value of the matter in dispute, and the jurisdiction of the circuit court depends entirely upon the subject-matter. In regard to causes of that class, the supreme court says in the Rohorst Case, which was a suit by a citizen of New York against an alien corporation, for the infringement of letters patent of the United States: .
"By statute in force at the time of the passage of the acts of 1887 and 1888, the courts of the nation had original jurisdiction, 'exclusive of the courts of the several states,' 'of all cases arising under the patent right or copyright laws of the United States,' without regard to the amount or value in disPllte. Rev. St. § 629, cl. 9; rd. § 711, cI. 5. The section now In question, at the outset, speaks only of so much of the civil jurisdiction of the circuit courts of the UnIted States as Is 'concurrent with the courts of the several states,' and as concerns cases In, which the matter In dispute exceeds two thousand dollars in amount or value. The grant to the circuit courts of the United States, In this section, of jurisdiction over a class of cases described generally as 'arising under the constitution and laws of the United States,' does not affect
WESTINGHOUSE AIR-BRAKE CO. V. GREAT NORTHERN RY. CO.
the jurisdiction granted by earlier statutes to any court of the United States over specified cases of that class. It the clause of the section defining the district· in which sult shall be brought is applicable to patent cases, the clause limiting the jurisdiction to matters of a certain amount or value must be held tci be equally applicable, with the result that no court of the country, national or state, would have jurisdiction of patent suits involving a less amount or value. It Is Impossible to adopt a construction which necessarily leads to such a result."
The Keasby & Mattison Case was a suit in equity between citizens of diJ;ferent states for the infringement of a trade-mark under the statute of March 3, 1881; and the bill alleged that the matter in dispute, exclusive of interest and costs, exceeded the sum or value of $2,000. The court hold that a tuit for infringement of a trade-mark under the trade-mark act of 1881 was "one of which the courts of the United States have jurisdiction concurrently with the courts of the several states," and that it came within the provisions of section 1 of the act of August 13, 1888, and repeat the two grounds which governed the decision in the Hohorst Oase, the second of which has been stated, and say emphatically that it is distinguishable from a trade-mark case in the essential particulars that "it was a suit for infringement of a patent right, exclusive jurisdiction of which had been granted to the circuit courts of the United States by clause 9 of section 629, and clause 5 of section 711, of the Revised Statutes, re-enacting earlier acts of congress, and was therefore not affected by general provisions regulating the jurisdiction of the courts of the United States, concurrent with that of the several states." This construction of the provisions of section 1 of the act of 1888 was very deliberately stated by the supreme court, had been apparently carefully considered, and, until it has been revised and altered by that court, is controlling upon us. It follows that, inasmuch as jurisdiction of this class of cases does not depend upon inhabitancy, the defendant corporation "may be sued by a citizen of a state of the Union in any district in which valid service may be made upon the defendant." In re Hohorst, supra. Service was made upon the secretary of the company, who was in permanent charge of an office of the corporation in the city of New York, in which an important part of its corporate business was transacted; was made in accordance with section 432 of the New York Code of Civil Procedure (Tuchband v. Railroad Co., 115 N. Y. 437, 22 N. E. 360); and was a sufficient service upon the corporation (St. Clair v. Cox, 106 U. S. 350, 1 Sup. Ct. 354; Societe Fonciere et Agricole des Etats Unis v. Milliken, 135 U. S. 304, 10 Sup. Ct. 823). The appellants next assert that the act of March 3, 1897 (29 Stat 695), devested the circuit court of any jurisdiction which it might have had when the suit was commenced. The statute is as follows:
"Chapter 395. "An act defining the jurisdiction of the United States circuit courts In case brought for the Infringement of letters patent. "Be It enacted by the senate and house of representatives of the United States of America In congress assembled, that in suits brought for the Infringement of fetters patent the circuit courts of the United States shall have jurisdiction, In law or In equity, In the district of which the defendant Is an
, 88 '1l'IIlDlllRAL RlllPORTJIlR.
Inhabitant, or In any district in which whether a person, partnership or corporation, shalLhave committed /Lets of Infringement and have a regular and eltabUshed place of businesl. If such suit II brought In a distrlctof'which the defendant is not an inhabitant, but in whichs,uch defendant' haa a regular and established place of business, service of process, summons, orsubprena upon the defendant may be made by service ,upon the agent or agents engaged in conducting such business In the district. In which luit is brought."
The act was passed about 15 months' after the Keasby decision, and was obviously intended to add t9 the general statutes upon the subject of jurisdiction: .jl)' patent caselil a definition of the particular requisites for jurisdiction of such causes by the various circuit courts, and of the proper method of service tlbf process upon a defendant in the district of which he;was not an inhabitant. The 9,bject was to determine with precision tb,e boundaries of jurisdiction, and to create a future method of service of process in patent causes against nonresident defendants, which had not theretofore been stated in a federal statute., . The appellant, however,$ays that the statute covered the subject of jurisdiction in patent cases, prescribed a new set of rules in regard thereto, and must be held former statutes. The circumstances of ,the cases and the statutes to .which the appellant refers bear no similarity to those now in question. The statutes which, in the:view of the supreme court, alone gave jurisdiction to .circuit courts in,patent cases, were very general. The new provisions were prospective, in accordance, with the ordinary rule of construction when the language does not necessarily indicate that they are retroactive. Harvey v. Tyler, 2 Wall. 328. It is said, however, that the statute repealed former statutes,and that, therefore, the courts were ousted of jurisdiction in cases which were undetermined at the date of its approval, and in which the jurisdi,ction differed from the limits described in the new statute. Of, course, it did not repeal the statute which gave the circuit jurisdiction of all cases arising under the patent laws. Bank v. Harrison, 8 Fed. 721. It did not repeal pre-existing reme!lies, and "is to be considered rather as a continuance and modificatioll of old laws than as an ,abrogation of the old and the re-enactment of new ones." Treat v. Staples, 1 Holmes, 1, 5, Fed. Oalil. No. 14,162; Wright v. Oakley, 5 Mete. (Mass.) 406. The of infringement depends upon the correctness of the construetionwhich .was given to the patent in the New York AirBrake Oase, supra. The former opinion of this court was based upon the position,,tbat the improvement shown in patent No. 376,837 wad a markedand'sllccessful advance upon the invention described in No. 360,070; and that the later patent was entitled to a broad construction., The appellant intro!luces British letters patent to George Westinghouse, Jr., No. 4,676, for March 29, 1887, accepted April 29, l88!:Lwhich the invention of letters patent of the United Statef! .No. 360,070, and.-whicluays:· '
as described by'aseparate piston In a cylindrical cavity communicating on the
one side of the1l1stonwith 'the auxiliary reservoir, and on the- otl1er side with the train pipe.'" '
"It Is o'bvluul that it [the stem of the emergency
WESTIXGHOUSE AIR-BRAKE CO. V. GREAT NORTHERN RY. CO.
It is said that this describes the appellant's valve, shows that the change from 360,070 (which was applied for November 19, 1886) to 376,837 was an obvious one, and, therefore, that the former conception of the inventive character of the improvements must be modified. The successful character of the invention described in the later patent has been universally recognized in the litigations upon it, by the witnesses on both sides, including Massey, the inventor of the valve which is the subject of this suit, and by tbe courts in the Boyden Brake Cases, G6 :Fed. 997, 25 U. S. App. 475, 17 O. C. A. 430, and 70 Fed. 816; and its impoI'tance at the date of the invention, in view of the practical failure of the brake mechanism of the previous patent, in the tests upon long freight trains, cannot be doubted. The prophetical suggestions in English patents of what can be done, when no one has ever tested by actual and hard experience and under the stress of competition the truth of these suggestions, or the practical difficulties in the way of their accomplishment, or even whether the suggestions are feasible, do not carry conviction of the truth of these frequent and vague statements. The nature and character of the invention of 376,837 were, in the record heretofore before this court, put to rigorous tests by examination and cross-examination in court; and the result which was then reached is not shaken by merely a single sentence in the English patent. The defendant has about 16,000 cars in the equipment of its system of railway, which covers a very large extent of territory, of which number about 3,200 are equipped with the infringing valves. The order provided tbat these valves should be removed during successive periods of 60 and 30 days, occupying 9 months in all. In October, 1894, the attention of the defendant was called by a general circular to the decision of the circuit court of appeals; and in May, 1895, its attention was particularly called to the infringement by a written proposition from the complainant for a purchase of its valves, and an indemnity against claims for infringement. It has paid no attention to the subject for about 3-! years, and it now thinks that it is a hardship to be prohibited from further infringement. The subject of the' propriety generally of a preliminary injunction against the user of infringing mechanism has been fully considered by this court in Allington v. Booth, 24 C. C. A. 378, 78 Fed. 878; and the appellant discloses DO peculiar equities which ought to induce a withholding of the injunction. It has been a deliberate user of a large number of valves, and has preferred to run the risk of an injunction than to displace its present equipment. The order of the circuit court is affirmed, with costs of this court.
88 FEDERAL REPORTE.R.
WICKELMAN v. A. B. DICK CO. (Circuit Court of AppealS, Second Circuit. No. 98.
PATENTe-NoVELTy-AOCIDJIlNTAL PRIOR PRODUOTION.
June 24, 1808.)
Novelty Ie not negatived by a prior accIdental production of the eame thing, When the operator doee not recognize the means by which the accidental result Is accomplished, and no knowledge of them. or of the method of their employment, Is derived from It by anyone. The Broderick patent, No. 377,706, for a coated paper sheet for stencils,
MId to cover a novel and meritorious invention, and also held infringed.
Appeal from the Circuit Court of the United States for the Southern District of New York. This was a suit in equity by the A. B. Dick Company against Frederick A. Wickelman for alleged infringement of a patent for stencil sheets. In the circuit court a decree was rendered for an account of profits and damages (74 Fed. 799), and afterwards the cause was heard on exceptions to the master's report, and such exceptions were overruled.· 80 Fed. 519. From the final decree thereafter rendered the defendant has appealed. F. A. Wickelman, pro se. Richard N. Dyer, for appellee. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. WALLACE, Circuit Judge. Error is assigned upon this appeal of a decree adjudging the validity of letters patent No. 377,706, granted February 7,1888, to John Broderick, for coated paper sheet for stencil, and the infringement thereof by the defendant. The appellant insists that the court below should have held the patent void for want of novelty. The patent covers a meritorious invention. The subject is a transmitting printing sheet to be used as a stencil for duplicating upon other sheets the words or designs impressed upon it, but differing from a stencil in that the letters or figures are not cut out. In the ordinary stencil, loop letters such as 0, D, Q, etc., cannot be perfectly formed, for, if completely cut out, the center is lost. rhe invention is. especially valuable because it is adapted for use with a typewriting machine, and enabled for the first time a com· mercially useful, type-impressible. stencil to be made, and thereby the duplication ofa greater number of copies than can be transmitted by carbon sheets. The work done upon it is practically the equivalent of ribbon work, and resembles it so closely that it is difficult to detect whether the prints made from it are not actually typewriter work, and the thousandth copy is as perfect, substantially, as the earlier copies. In the prior art, stencil sheets for duplicating handwritings were made from waxed or gummed paper cut or perforated through the wax and the fibers of the paper. In some instances these sheets of paper, covered with wax, were placed upon a roughened plate, and when the letters were traced upon it the plate would abrade the