FEDERAL REPORTER.
ECLIPSE WlND:.uILL
CO. v. MAY and others. July 10, 1883.) Nos. 8,826, 8,443, AND
(Circuit Court, N. D. Illinois. 1. PATEXTS
Fon
PATENTS
He;ssucd patent No. 8,826, granted to the Eelipse \Vindmql Company, July 29, 1879, as assignee of original patent, granted to L. II. \Vheeler, D.'ptl'mLer 10, 1867, and rel"sued patent No. 8,44iJ, granted to P,l!mer C. Pcrkins, October 8, 1878, the original of which wa" issued Augnst 18, 1b6}), hel'Z. not to be infrmgecl by the" improved May windmill," manufactnred by the defendant. Held, further, that the" improvcd May windmill" does infringe the third and fourth claims of reissued palent No. 9,4'13, issned to the EclIpse Windmill Company, December 7, 18.0, as assignee of the original patent, 'Vill.am H. Wheeler, dated October 20, bU. 2. SAME-HEISSUED PATENT No. 8,443. Whether the Perkins patcut is valid, qUlIre.
In Equity. Hill If; Dixon, for complainant. G. L. Chapin and Coburn J: Thacher, for defendants. BLODGETT, J. This suit is brought to restrain an alleged ment of the following patents, and for an accounting: (1) Reissued patent .No. 8,826, granted to complainant July 29, 1879, as assignee of original patent to L. H. Wheeler, dated September 10, 1867. (2) Reif:lsued patent No. 9,4-\)3, issued to cumplainant, December 7,1880, as aHsignee of the original patent to Wiiliam H. Wheeler, dated tober 20, 1874. (3) Heissued patent No. 8,443, to Palmer C. Perkins, dated October 8, 1878, the original of which was issued August 18, 186!). No question is made as to complainant's title. It appears froLD the proof that pr:or to the twenty-third of November, IS80, complainant had Lrought suit against defendants for infringement of the two patents, reissue No. and migtnal pa'ent to W. H. Wheeler of October 20, 1874,-the application for the reissue of the latter being then pending; and on the twenty-third of November, 1880, a written agreement was made between the parties by wh:ch defendants admitted the validity of the two Wheeler patents, aud. agreed that they wO;lld not the validity of said patents or any thereof," and further agreed that they would "perl1lrlllentl.ll constructed dis;'ontinue and ('ea·se the manufacture and MIle of with a hin.?ed or pil/r,fed vallC, as emhodlcd in said patents, or in lIUY m'lImer infringin{l upon said patellts." This ag::eement takes out of
tllis case all controversy as to the validity of the first two patents set ont in complainant's bill, and only leaves open the question whether defeudams, by the mill they are now m:lking and selling, infr.nge tlJese two patents, and the of the validity and infringement of ibe Perkins patent. The object of the L. H. Wheeler patent was to regulate and control the action of wind-wheels for the purpose of rendering their action more uniform and elIective than theretofore,
ECLIPSE WINDMILL CO.
v.
MAY.
345
mounted on a revolving turn-table, which, in turn, is mounte'l 011 the top or cap of the tower, so that the turn-table to which the rudder is rigidly fixed 1'0., tates on one and the Wheel-support rotates on another fOrtneL! or placed on the turn-table, both being interposed. uetween the wheel and the tower."
and its distinctive feature is a device whereby the wind-wheel is caused to swing automatically out of the wind, by the direct action of the wind itself, by means of a single pivoted tail-vane, or rudder, standing normally in the line of the wind; the arrangement of the operative parts being such that when the force of the ,,-ind reaches or exceeds a certain pressure, the wind-wheel will turn wholly or partly out of the wind, so as to bring the wheel elther at an angle to the wind, so that the wind acts with diminished force, or in a line parallel with the tail-vane or rudder, when the wheel will be wholly out of the wind. Through tbis device it is claimed by complainant the construction of a solid-wheel self-regulating windmill was accomplished. Defore the Wheeler invention, as the proof sbows, the regulation of wind-wheels in plactical use had been obtained by means of adjustable sails or blades, which opened and closed according to the foro.:e of the wind. This made necessary a large numher of joints and couplings, which were liable to get out of repair, and ad'led mncb to the complication of the mechanism. There was also the old Dutch form of wheel, in which the sailt! were unfurled, reefed, aud furled by hand. In all the older forms of operative wind-wbeels the vane or rudder was a rigid extension of t.he horizontal axis of the wheel. In the original and reissued L. H. Wheeler patent there was a disclaimer in these words: "We are fnrther aware that a revolving wheel frame or snpport has been
It is conceded that this disclaimer was made by reaqon of the fact that the records of the patent-office, at tha time tbe application for the L. H. 'Vheeler patent was fileJ, showed the issue of a patent on the ..th of Augnst, 1856, to Chambers and Hargrave for a windmill cantu :ning the elements described in this disclaimer; and defendants now 11. ,ist that they have the right, notwithstanding their admission of tu,\ validity of the 'Yheeler patents, to constrnct windmills in substantiall0nformity with the devices shown in the Chambers and Hargrave patent; and the controversy in this case, so far as these two Wheeler patents arl3 involved, is whether the defendants' mill is constructed upon the PI inciple of the Chambers aud Hargrave patent, or whether it inntdes t'Je domain covered by the Wheeler patent; for defendants, by the agr,.,ement of November 23,1880, agree not to contest the validity of the Wheeler patents, thereby cancelling the novelty and usefulness of those inventions. I think it must be admitted that complainant, in the practical adaptation of the Wheeler devices to a working winamill, has made several quite noticeable mechanical changes in the operative parts, althongh it is of course claimed that these are allowable mechanical changes,
346
FEDERAL'REPORTEa
;n£1 still" preserve the essenwrtf principles of the Wheeler inventions; ami it is equally obvious, from an inspection of the defendants' mill, that itcol1trtins mftny changes from the form of construction shown in the model and drawings of the Chambers and Hargrave patent, and the important question is whether these are mere allowable mechanical changes, or whether they invade the principle of the Wheeler mill. The distinction drawn between his device and that of Chambers and Hargrave, by Mr. Wheeler, in the language immediately following the disclaimer quoted, is that the turn-table which carries the wheel in Chambers' and Hargrave's device is mounted on top of the turn-table which carries the vane, so that the weight of the wheel is necessarily carried upon the turn-table of the vane, while in the Wheeler device the vane is "pivoted upon a separate joint, not interposed between the tower and wheel, and therefore not sustaining any part of the weight of the wheel, nor obliged to resist the strain of the working machinery." . " In the copy of the Wheeler model, in evidence ih this case, the tail-vane is sllown pivoted to the turn-table on which the wheel rests, and which carries the weigh; of the wheel with adrnm or pulley and cord and weights so arranged as to hold the vane in line with the axis of the" wheel until the force of the wind on the wheel becomes so great as to overcome the power of the weights and allow the wheel to swing out of the wind. In other words, if there was no tail-vane to the Wheeler turn-table to hold the wheel in the wind, it would vibrate in the wind and be liable to swing either way ont of the wind; but the vane attached to the turn-table holds the wheel in the wind nntil the force of the wind becomes sufficient to overcome the resist· ance of the weight and flex the joint by which the vane is attached to the turn-table. There can be no doubt, from the drawings and specifications of the Chambers and Hargrave device, that it embodies the idea of a jointed or pivoted vane, whereby it was expected by the inventors that the mill would be self-reguhtting; that is, that the wheel, when the pressure of the wind became too great, would fold back out of the wind, the vane retaining itself in the line of the wind. The main differenees between the Wheeler and the Chambers and Hargrave devices seem to be: (1) The Chambers and Hargrave mill is so constructed that the weight of the wheel, with its horizontal shaft and driving gear, is carried upon the rudder-head 01" turn-table which carries the rudder, and the rudder-head also turns upon the cap of the tower, which must cause a large amount of friction-enough, as is claimed by complainant, to make the device wholly useless. (2) The turn-table which carries the rudder, and the turn-table which carries the wind-wheel, revolve upon a common. center of motion, which is the center of the plate, d; while, in the "Wheeler organization, the pivoted joint, by means of which the wheel folds back out of the wind and in a line substantially parallel with
. 'the vane, is 'outside the center 9fmoW:m of the ttirn-table which carJries the wheel. ' "-_:... : c,_ I am not prepared to say that, the mere difference in construction between the two devices, which only showed a difference in the amount of friction against the earlier device, would make a ence in principle or a patentable difference, because this excess of friction might be overcome or reduced within practical limits by some mere mechanical appliances, although it may be that the great fric,tion involved in the mechanism shown may have decided the ques'tion against the practical usefulness of the Chambers and Hargrave 'patent, as it is conceded that no machines were made until after the introduction of the \Vheeler mills embodying the principles of this patent. But I am of opinion that the change of location in the . vibrating joint by Wheeler must be deemed the main element of difference between the' two devices; arid it must be 'conceded, from the , proof, that, the Wheeler device was at once accepted by the public as : a practical and useful machine, and has gone largely, into usc. ' The defendants, at the time of. the suit mentioned in the agreement , between the parties of November 23,1880, had been engaged in the : manufacture of a windmill constructed with a tail-vane. pivoted out, side the center of motion of the turn-table which carries the wheel; in fQ.ct, piyoted to the back side ur rear of the mill-head. A.fter the settle,ment of that suit, defendanta commencecl the manufacture of. what ,they termed the "improved ::\lay windmill," and the question is, does this mill come within the two 'Vheeler patents? This mill has a . pivoted tail-vane, but the turn-table of the wheel isconstFucted of a hollow column, inside of which the pitman works, and on which is mounted a cap which contains two pillars which carry the axle ,of the wind-wheel. A thimble or band passlOs around this holloweolumn, so arranged that it turns freely about it, and a flange of the column rests upon the top of this thimble, but with friction balls interposed between the top of the thimble and the lower edge of the flange. ,The column also extends' below the thimble, and is stepped upon a plank below the top of the tower. The lower rim or bottom of this thimble or vane,band also rests on the cap of the tower, and is so arranged that it seems to carry some part of the weight of the wheel tum-table or wheel column. Defendants claim that this arrangement is a mere mechanical improvement upon the Chambers and Hargrave machine; ,that the hollow column surmounted by the two pillars which curry the wind-wheel is but the plate, I, of the Chambers device, and the thimble or collar, which carries the tail-vane, is the Chambers and Hargrave plate, e; that the plate on the top of the tower on which the bottom of the thimble or collar rests is but the plat'l, d, of the Chambers and Hargrave device; that they have in fact' bv this b,' miire ,\-el!-kno\':n mechanical devices constmction, ;educed the friction which rendered the Chambers and Hargrave deyice impracticable; but that they have
ECLIPSE WI:'iDMILL CO. V., MAY.
, 347
348
FEDERAL llEPORTER.
kept' strictly within the distinctive principle of the Chambers and Hargrave mill. An examination of the model of defendant's mill, as well as the working mill produced in evidence at the hearing, shows that the tailvane of their mill works around what is the equivalent of the wheel turn-table, instead of being pivoted to the turn-table, as it is in the L. H. Wheeler mill, and as it was in the old defendant's mill. upon which the settlement of November, 1880, was made. It seems to me that it must be admitted that in the construction of defendant's mill, the "improved May," "the revolving wheel-frame is mounted on a revolving turn-table, which in turn is mounted on the cap of the tower, so that the turn-table, to which the rudder is rigidly affixed, rotates on one bearing or joint, and the wheel-support rotates on another, formed or placed on the turn-table;" both-that is, both bearings or jointsbeing interposed between the wheel and the towel Tile defendants' arrangement of parts, it seems to me, meets both of these conditions. The rudder turn-table rotates ali. one Learing, and the wiJeelsupport rot3.tes on the ruliesr turn-tahle, and both bearings are between the wheel and top of the tower. It is true, the turn-table column extends down t!uough the rudder-head and the top of the tower, but this is a necessary mechanical arrangement in order to obtain a safe and steady attachment of the wheel and rudder machinery to the tower, and is no more of a change than what has been done in the practical constr'.1ction of mills under the Wheeler pa tent. I am, therefore, of opinion that defendants do not infringe the L. H. Wheeler patent. The W. H. Wheeler patent is for a device wherehy a varying resistance to the deflecting action of the wind is secured. The clement in the mechanism by which this resuit is obtailJed is a lover pivoted at. one end, with a weight at the other end, and so arranged that, when the wind-wheel begins to deflect or turn out of the wind, the weighted lever hangs in a nea.·]y perpendicular position; but, as the wheel swings out of the wind, it raises the lever, and as it is brought towards a horizontal position the resistance increases so that the wind-wheel, after having been thrown into a position oblique to the wind, will still work, instead of swinging fully into a position parallel to the valle. This patent has been reissued since the agreement of November, 1880, with five claims, the third and fourth of which aro ciuimerl to be in. fringed, and which read as fallows: ·· (3) The combination of a deflecting windmill, a pivotctl tail-vane, and meaiJS for resisting the deflection of the wheel ont of the wind. with a vari!lhle force proportionate to the extent of such deflection, SUbstantially as descrihed. (4) The combination of a Wind-wheel, a ph'oted tail-vane, and a weight ot resistance, :(01' the purposes herein set forth."
The validity of these broad olaims in the reissue defendants havo admitted, so that no matter what may be the relation of this patent
ECLIPSE WINDMILL CO. V. MAY.
849
to tIle of the public, these defendants are estopped from denying their validity. The defendant obt.ains a resistance to the deflection of the wheel by means of an upright leaved steel spring, fixed upon the shank of the vane, and which is connected by a chain or cord with an arm extending from the wheel support, so arranged that, as the wheel is deflected, the strain upon the spring is resisted by the increased stiffness of the spring, thereby holding the wheel in an oblique position to the wind until tile force of t!Je wind becomes sufli. cient to entirely overcome the resistance of the and bring the wheel into a line parallel to the tail-vane, where it will be held until the force of the wind abates, when the action of the spring will bring the wheel back either fully or obliquely into the wind. I think this device is clearly within the third and fourth claims of the W. H. Wheeler reissue. It is in all respects an equivalent of the W. H. Wheeler device, both in function and mode of operation, and as the defendants are precluded by their agreement from contesting the validity of this reissue, they must be held to infringe. The Perkins patent is for a device wllerehy tlw weight of the tail. vane is made the force for keeping the wheel into the wind, and is an adaptation of the old and well-known device for a seH-shutting gate or door, by causing the gate or door to be lifted as it swings, so that its weight will be exerted to bring it hack to its closed or normal position. 1'0 some extent the tendency of the defendant's spring and chain is to lift the further end of the vane; that is, if there is any room for play of the vane-thimble on the wheel-support. It is quite evident, however, that this lift of the vane by means of the spring and chain, in defendant's combination, is a mere incident, rather than any part of the purpose of the device; while the Perkins vane is wholly organized to accomplish this lift as a mode of utilizing the weight of the valle as a resistance to the deflecting force, as a means of overcoming such force. The Perkins patent has been reissued twice: original patent No. 93,472, dated August 10, 18t.W; reissued October 9,11:572; and again reissued October 8, 1878, on application tiled June 4, 1878. There is no controversy in the case as to the validity of this reissue; but, passing on this in the light of lute cases reissues, much doubt might exist as to the validity of the patent, and the defendants are not estopped by any agreelllent from denying the validity of the Perkins reissue. That question I do not care to discuss, as I do not think the defendants infringe the Perkins patent. I therefore find that defendants infringo the third and fourth claims of the W. H. Wheeler patent, auLl thuL thq do nut infringe the L. H. Wheeler and POl'kins puttlllLd. -
350
;' , "
REI'ORTER.
BACKUS WATER MOTOR
Co.
V. TUERK'
arid others.
(Cu'cuit Court, N. D. Illinois. '1. PATE"'TS FeiR
July 10,1833.)
The pocket device shown in thG sixth claim of reissued patent No, 5,5no, dated October 7, 1873, granted to Isaac assignor of O. J. Backus, tor alt "impr07ement in eomLinea water·wheels and sewingcmachines," (original patent having heen ismed Septemb3r 24, 1872, No. 1;)1,616,) is void for want of novelty, having been clear,y shown in the provisional specifications of James Pilbrow for English letters patent in 1857. 2. S.nm-\VATEH
The firs' claim in 1l:tters patent No. 146,120, dated January 6, IS74, issued to O..J. l'ac:kus for an "improvement in water motors," is void for want of novelty, and thc 3ccond thei'cin nude is not infringed hy the Tuerk water motors, .claimed to be an iniring',ll1ent of. tIle Backus patents.
1\IO'1'01:S.
In Equity. lIIun.90n J: Phillip, for complainant. P. C. Drycf(jo'rth, for detendants. BLODGETT, J. This is a bill to restrain the alleged infringement of reissued letters Intent No. 5,5\)0, dated October 7, 187:1, to Isaac Hyde, assignor of O. J. Backus, for an "improvement in combined water-wheels and sewing-machines," the original patent having been issued September 24,1872, No. 131,616, and of patent No. 146,120, dated January 6, 1874, iSHued to O. J. Backus, for an "improvement in water motors." The defendants are charged with the infringement of the sixth claim of the reissued Hyde patent, and of the first and second claims of the Backus patent.· Thedeftllses set up areFirst, that the patents in question are void for want of novelty; second, that the reissued Hyde patent is void, by reason of its describing a different invention from that contained in the original patent; and, third, that the defendants do not infringe. The sixth claim of the Hyde patent is as follows: "A vertically revolving water-wheel, in combination wi'th an inclosing case, which has a projecting spent-water pocket,D, to prevent the spent water 1rom acting on the wheels, substantially as The drawings and model of the Hyde patcnt show an downward of tho wileel-casing, so as to give room for the escape of the spent "ater, without' its huddling or utberwise l'crading the motion of the wheel; and this feature of the Hyde device is specifically covered by the sixth claim of tbe reissued patent, it not baving bemi claimed in any ,form in the original patent; 'rhe defendants manufacture a water 'motor, the wheel of which is inclosed in a metal case, in oue form of which there is· an elongation of the case downward, so as to give room for the free escape of the 8p"nt water. Their other 'form of wheelcase is nearly circular. TJ.;e wheel, however, in the circular case is set eccentrically to tlle center of the case, so that a larger space is left below the wheel than above it, and from thi8 larger space tha