NATIONAL CABLE RV. CO. fJ. SIOUX CITV CABLE RV. co.
679'
governing the rights of the parties in the use of the invention. The opinion of the court, pronounced by Justice Mn,LER, is, that relief in such a suit is founded on the contract, and not on the patent laws. The cases from Blatchford, above cited, appear in the memorandum of cases cited by counsel for the complainant in the court below. To the same point, see Albright v. Teas, 106 U. S. 613, 1 Sup. Ct. Rep. 550, and Manufacturing 00. v. Hyatt, 125 U. S. 46, 8 Sup. Ct. Rep. 756. See, also, Puriftlr/' 00. v. Wolf, 28 Fed. Rep. 814; Seibert Cylindlr/' Oil-Cup Co. v. DetroiJ, Lubricator Co., 34 Fed. Rep. 216; Seiblr/'t Oylindlr/' Oil-Cup 00. v. Manning, Id. 538; Seibert Oylindlr/' Oil-Oup Co. v. William Powell Co., 38 Fed. Rep. 600; and Densmore v. Manufacturing Co., Id. 747. It is to be observed, moreover, that there was no clause of forfeiture in the license contract in Eureka 00. v; Bailey Co. It maya:lso be observed thnt it does not appear that the objection that the complainant had an adequate remedy at law was made in the court below, and, the subject-matter being within· the jurisdiction of equity, it was too late to make it on the hearing in the appellate court. Rey71e8 v. Dumont, 130 U. S. 395,9 Sup. Ct. Rep. 486, and cases cited. Such an objection "should be taken at the earliest opportunity, and before the dE'fendants enter upon a full defense." Kilbourn v. Sundlr/'land, 130 U. S. 514, 9 Sup. Ct. Rep. 594. The objections to recognizing that tho compillinant has the right to an accounting in equity, and to a discovery, are so well stated by Judge THAYER in Waahburn &- Moen Manuf'g Co. v. Freeman Wire Co., 41 Fed. Rep. 410, that it is enough to refer to the decision in that case, which was made, as has already beenstated, upon a casein all respects like the present case. The demurrer will be sustained, and the bill dismissed, at the complainant's costs. The circuit judge concurs in this opinion.
NATIONAL CABLE
Rv. Co. ".
SIOUX CITY CABLE
Rv. Co. et al.
(Oircuit Oourt, N. D. Iowa, W. D. June 2, 1890.) L PJ.TENTS FOR INVENTIONS-NOVELTy-CABLE
Claim 1 of letters patent 179,016, to A. S. Hallidie, for a device used in operating cable railways, was for the combination of a diagonal tube, interposed betwp.en the main tubes containing the cable. with a longitudinal slot therein connecting with the slot on the cable-bearing tUbes, so that when a cable-car passed from one track to another the grip device could pass through it from the tube on one track to that on the other. Held, that the claim was not novel, since before the patent was issued cars were passed from one track to another by means of a track diagonally between them. and all that was necessary in the case of cable-cars was to construct under such track, and diagonally between the two cable-bearing tUbes, a similar tube to conduct the grip. The third claim in the patent was for a pivoted switch rail and spring,Bo·arranged as to obviate the obJection of the opening .made at the meeting of the slot in the branch tube with that in the main tubes. The rail was pivoted on one elld, and worked freely at the other, 80 that the grip, in passing fr.om the branch tube, would press it asid4il,the spring pressing it back into ,place, thus leaVing the slot ill-the Dlain tube unobstructed. Held, that the .combination was novel and patentaQle1 thougll there was uSed before a switch rail on rallroad tracks pivoted at one eun'
TUBES.
9.
SJ.KE-PIVOTBD SWITCH RAIL J.ND SPRING.
680
,ll'EDERAL REPOR;rER,
vol. 42.
and free at the other, kept against the rail by a spring, so that the flange on the wheels of cars passing in one direction on the tracks would press it from the rail, and pass throug-h, while cars in coming from the other direction would cross on it to the other track. .
8.
S'AME-CONDUIT-ENDLESS CABLE.
, The first claim of ,letters patent No. 195,505, September 26, 1877. to A. S. RaUidle, which is for a combination of pulley", and a single tube, so arranged that an end· less cable can be run through two cables running in different directions, 'Is not patentable for want of novelty, sInce before the patent was issued a combination was known by which the SaIne result was reached by the use of two separate, tubes.
The'
III Equity.
Bill, to restrain infringement of letters patent. to which reference is made in the opinion is as follows: A. S', H,allidie.
No.119,016.
lIndless Traction Railway.
Patented June 20. 1876.
C'bbum & 1'hacher., for complainants. Offield,it Powle and O. L. Wright, for defendants. 'SHI1us,l. The complainant corporation is the owner of letters' patent Nos.t79"QJ6and 19.5,505, issue!i to ,A. S. Hltllidie, for impJ;Ove-
NATIONAl, CABLE RY. CO. t. SIOUX CITY CABLE RY. CO.
681
ments'in the mechanism used in connection with cable railways, and claims that the defendant company, in its line of railway operated at Sioux City, Iowa, is using certain features of such patented improvements, thereby infringing upon the rights of complainant. The first and third claims ofpatent No. 179,016 describe the devices included in this patent which, it is charged, are infringed by the defendant company. The defenses relied on are substantially that in view of the state of the art no invention is shown in putting together the combinations described in these claims,' and that defendant does not in fringe the same even ifth e claims are sustainable. Claim 1 of this patent is for the combination of a diagonal tube interposed between the tubes containing the cable or rope, with Ii longitudinal slot therein connecting with the slot on the rope-bearing tubes. At the date of this patent it was well known that a connection between one line of railway tracks and another could be made by using a diagonal track between the Same. There is hardly a street rail way or a steam rail inthe country that did not show such mode of passing from one track to another. In a patent issued to William Eppelsheimer, dated August 24, 1875; No. 166,975, such use ofa diagonal track in tion with· a cable railway is shown, combined, it is -true, with a turntable, but the'diagonal track serves the purpose of passing the cable-car from one track to another. When it was sought to pass a cable-car from one track to another, it was not only necessary to construct a diagonal track for the wheels to pass along, but also a diagonal tube for the paSsage of the grip device; but this necessity was self-apparent. The mode for doing so, as shown in the Hallidie patent, was simply to place uri· der the diagclDal track the same opening or tube that was found in the main tracks, with the same longitudinal slot th.erein. This certainly did not demand the exercise of any invention, or the devising of any new mechanism, nor any novel combination of the respective parts. The well-known method of passing a car from one track to another, by means ora diagonal intersecting track, was simply applied toa cable track, and there was no display of invention in the application of the method or in the mechanism used therefor, as described in the first claim. The third claim in the patent is for the pivoted switch rail, Il, and spring, Z. At the points of junction between the slot in the diagonal tube and the slot in the main rope-carrying tube the open space would be enlarged, or, to use the language of the patentee in his specifications: "At the point where the slot in the main tube connects with the slot in the branch tube it is evident that an opening of objectionable size would be made by the meeting of the two slots. 'fo obviate this diffiCUlty, 01" rather, Objection, I emploY a pivoted V-shaped switch rail, L, at the meeting angle, which is pressed by a spring, Z, so as to force its point against the side of the slot in the main tube, and across the end of the tube in the branch slot, thus closing the end of the branch slot, except from pressure applied in one direction, while it leaves the slot ill the main tube unobstructed." The novelty of this combination is attacked on the ground that Bubstantially it appears in patent No. 1,759, issued to N. Eaton in 1840; and patent No. 44,376, issued in 1864 to Allison and Halliwell. Inthe
FEDERAL REPORTER,
Eaton,plloten,t, issued for an "improvement in the connection of railroad is, shown a. rail' pivoted at one end, .the free end being kept against the main rail by a spring pressing against it. When direction of :thewheel, overcoming the pressure ofthEl will separllte the safety rail from the main railanc1 pass through t1)eopening thus,preated, but as'soon as the wheel passes beyond the end of the, movable rail t:he pressure of the tipring will carry the against ,the mainrl;til. In the EatOll combination the wheet'\cts upon the free end of the pivoted rail, the same. as the shank in the Hallidie combination acts upon the pivoted switch In the Allison and Halliwell patent, which had reference to railways, ,js found a shifting tongue piece or guide in the tubef()j:'t,hepul'pose of ailling in shifting the direction of the piston when iE! 'Crossing from one track to another. These, devices, and especi$11y tpat shown in the Eaton patent, show thatapivoted switch rail, wiij} a spring to hold it in plnce, had been known long before of the Yet it is not clear that the mode of the use,ij:l,ereqfwas such as;to preclude a claim for.invention in so c,ombiniI/-iPiL pivoted switch aDli .!lpring inconnectioDwith the tubes of a Elystem as to obviate the difficulty caused, by .the,large opening fortQ.eP·by the junctior,l ofJhe slot in the diagonal tube with that in the .In "iew ,of the Eaton patent, Hallidiecannot successfully obi-im, he was the inventor ofa piyoted switch J.'lLil, nor of a spring such f!tU to keep IUn place, ,and to return it to place .fter,the passage oia qa,r over the Mme. If, however, he has perfected a tl;1ese devices with the slotted t\lhesof the cable-car sys,llu.ch form as W overcOJ;ne the difficulty presented by the large openipg caused by,the intersectic!Dof the slot in the diagonal tube with that in ,the main tube, I think there is sufficient novelty and utility in the!(Oll;lbiriatiQn, to sustain a patent therefor. It I!! urged that the device ul'ed by defendant is nohn infringement, because the spring used therein is not,located in the position shown in the drawings attached to the patent. The Patentee not, however, in his claim, locate the position in his, specification hlil states that this difficu1tr,or, I employ a pivotelil, V-shaped switch rail, the mooting angle, ,which is pressed by a spring, Z, so as to force its pqipt agllinst the side of the' slot," etc. ·The mere location of. the left ?pen to be determined by thel;1xigen,cies pi each parand the nlera fact that in the drawing the Elpring is shoWD1U a :particular location doeE! not confine, the claim in the patent to that Particular mode of applying the spring ,'to the rail., Although the invention covered 'by this claim is clearly uarrowin its limits, I think tMclainHssustainable; and that it appears that the defendant company is \lSlrigltbe device de$cribed ,and, that thelillegation of infringement in this particullii- 'must be [lIt Jlfl fllrtheqlharge<J, in thebijlthat the 'defendant infringes the first ju Wlt.ent No.,],9!5,,505, issued to Hallidie on September 26, 1877, saW,q1aiqJ;,reading as folloWEl;
NATIONAl. CABLE BY. CO. V. SIOUX CITY CABLE RY. CO.
683'
"The combination. with the underground slotted tube or tunnel, A, with its double line of pulleys. d ·. e. rope. D. and end pulleys. U. of the tuhe or siding. I. pulley, K. and horizontal pUlley, l. l, substantially as and for the purpose described."
At the date of this patent the use of a single track, with proper sid· ings for the passing of cars going in opposite directions, thereby saving the expense of a double track, was not a novelty in street railways. The fact that the endless cable, used in connection with the cable-car system, could be carried around a pulley or drum at the ends of the track, lind returned back underneath the same track, was known. One form of this construction is shown in the patent issued to William Eppelsheimer, August 24, 1875, in which the cable passes both ways under one track, but through two tubes or conduits. Analyzing claim 1 of the patent sued on, we find the combination includes an underground slotted tube or tunnel, having a double line of pulleys therein for carrying the cable. Did it require invention to substitute for two smaller tubes placed alongside of each other, and each having a line of pulleys therein for carrying the cable, a single, larger tube, with two rows of pulleys? That this change is a valuable improvement will not be questioned, but there are many valuable improvements on pre-existing structures that are not inventions within the meaning of the patent law. It is well known that in the building of a given structure improvements will almost always be suggested through the practical knowledge of the skilled mechanics employedin its construction. It is through these improvement!! that nearly all the original inventions are perfected and rendered of practical use, and, when the improvement of such a nature that it would readily sugitself to persons of skill in the development of the particular structure to which it is applied, it cannot be classed as an invention simply because" of its practical value. It seems to me that the substitution of one larger tube for two sinallerones, for the purpose of carrying the cable when moving in opposite directions, cannot be said to involve any exercise ofthe inventive faculty. Of the other elements named in the claim, to-wit, the rope, D, the end pulleys, g, of the tube or siding, I, pulley, K, and horizontal pulleys, l, l, it cannot be said that Hallidie was the inventor of anyone of them. In the argument of counsel, stress was laid upon the ment of the pulley, K, and horizontal pulleys, l, l, in the siding, I, but. nothing nO'7er is shown therein. When the cable passes from the main track into the side track, its line of direction and pressure is changed, and the pulleys supporting the cable are also changed so as to conform to this change of bearing in the cable; but this pr(:sents no new solution of the problem always present when there is a change made from a vertical to a horizontal pressure in a rope or cable passing over supporting pulleys. The patentee himself, in his specifications, expressly negatives' any claim to novelty in this element of the combination by the statement that"I am aware that bearing pulleys have'been used in tubes for sustaining,' the 'rope at the points where the Ii ne of direction bas been changed vertiealI,n · and sucb 1 do ,I1ot claim as wy in vention. It . '.
684
FEDERAL REPORTER.
Th/3siding, I, so far as it is merely a side track to receive one car while the other passes on the main track, is certai!1ly not a novelty. So with the main tube, and intended far as it is a separate tube, to carry the rope when it is deflected from a straight line in order to carry the car onto the side track, Can it be said thatitrequired invention to supply two tubes in place of one, when it is shown that the original method of running cable-cars was to use two tubes for the passage of the cable in opposite directions ? It is first claimed that it required invention to combine the pre.:existing double tubes into one tube for the purpose of carrying therein the cable when moving in opposite, parallel di· rections, and then, when it became desirable to change the direction of part of the· cable that it required invention to sepal'ate the single tube into two tubes, which,in effect, was only resolving the single doublecable tube into its original elements Of two' tubes with a single cable. FaiHngto find in any of the several elements named in claim 1 I)f the paterlt declared on any novelty in the form or use thereof of a character sufficient to constitute invention, it follows that to Elustllin this claim it must appear that the combination thereof works out a result of sufficient novelty and utility tt> confer upon it the requisite character ofinvention, as distinguished frOm meChanical improvement. Granting that the combinationdescribed is operative, the immediate result is that by its use an endless cable can be operated under one track, ina, single' tube, instead of using two tubes, as shown in the Eppelsheimer patent No. 166,975. ,Thus we are brought back to the question whether it required the exercise of'the inventive faculty to conceive of the plan of merging the two tubes into one,and it would seem that this transformation did not demand; anything more than the "exercise of such mechanical skill as would belong to one acquainted with the previous state of the art. But if it be held that the combination, as a whole, does possess sufficient novelty to sustain the claim as a patentable invention, it is entirely clear that it cannot be broadly construed upon the question of infringement. None of the elements therein combined are 'new, nor was the ultimate purpose of running cars in opposite directions, upon a single track, with side switches, a novelty. Unless, therefore, the defimdant uses the combinationas presented in the patent, it cannot be said that the charge of infringement is sustained. The claim in question includes the end pUlleys, g, as elements in the combination. In the specifications the location and uses of these pulleys are thus deGcribed: "At each end of the tUbe, I mount a single horizontal pulley, g. one of which is a driving pulley, and this pUlley is connected with the engine which furnishes the power." In the drawings attached the patent the pulley, g, is located at the and of such relative size to end of the tube, in close proximity the tube. that the cable coming along one side oUhe tube will pass rectly around the pulley, and at once return into the tube, being sup,portedJlpon. the d and.e, shown in :the end of the tube. As the drawings the pulley ,g; is smaller in diameter than tlia' tube, and it is clear that it was the: intent of the pat-
to
NATIONAL CABLE RY. CO. 'V. SIOUX CITY CABLE RY. CO.
685
entee to have it so constructed, for if it was made larger than the ropebearing tube the cable, in leaving the tube, would be deflected from a straight line, thus tending to draw it away from the pulleys, d and e, and to bring it into contact with the sides of the tube. Reading the claim in the light thrown by the specifications and the drawings, it is entirely clear that it was intendeo by the patentee that the pulleys, g,' should be so located with reference to the end of the tube, and should be of such a relative size thereto, that the cable passing along the line of pulleys represented by dshould pass directly therefrom to the pulley, g, and from it return into the tube upon the line or pulleys represented bye. According to the plan shown in the drawings and specifications this cannot be done except by having the pulley, g, located at the end of the tube, and of a size not exceeding the diameter of the tube. In the system in use at Sioux City, at the .one end of the line, the pulley, is not found. The cable passes around a pulley or wheel much larger than the tube, and is not returned therefrom into the same tube, but passes into anotheli tube, which is ultimately united with the main track by means of a.Joop. This is the constructional' the line at the point most distant from the power house, and it cannot he held that the pulley, g, of the Hallidie combination is used at tbat end of the line. The evidence'fails to show the construction of the line at the end nearest the power.house, and hence complainant has failed to show that the pulleysj g, forming an essential element in the Hallidie combination, are found; in defendant's structure, or, in other words; it is not shown that the com· bination described in claim 1 of the letters patent sued on is in fact used: by defendant. The identity or great similarity of many of the elements. found in defendant's structure with those shown in the claim is notsuffident, in a case of this character, to establish the charge of ment of the combination. It must be held, therefore, that in this par-. ticular the complainant has failed t08usta.in the allegations of the bill., In view of the fact that the charge of infringement of complainant's rights is sustained in only the one particular, and of the furtherfact that the complainant permitted the defendant company to construct its lin.e without hindrance or notice of its purpose to assert its claims under the, patents sued on, and as the use by the defendant of the device. sustained . in the foregoing opinion is only upon its own line, and does not fere with complainant's rights in any other way there does not seem· to. be need for the issuance of an injunction at the time. ILia a case that the parties should settle upon a money basis·. If the parties! cannot agree as to the sum to be paid for the future use of the device held to be infringed, it will be open to complainants to move for an junction against such future use, and the cause will be continued for that! purpose; but for the prest:nt no injunction will be ordered, in the. beliefr that the 'Parties will be able to reach a the need of an inj unc,tion. I \.'_i'
688
nDERAL .REPOR'fER,
42. fl. FLINT
.. DABr.;E GRAIN
SHOVEL CO.
et al. l
(Otrcu.it Oourt; N. D. Itl,inois. March 81, 1890.)
. ,'Under Act Congo March' 8; 18119, (5 810 at Large 854,) which'provides tbat any pereQD' who has purchased or constructed anynewly.invented machine befote the inveJ:ltOr's. apphcation for a patent may use and !!ell such machine without liability to the 'inventor, it is'a complete defense to an action for infringing a patent that the Used by the deftlndants was for thel)], by the patentee bef?re he aPl'lied for the patent, though after obtaiDlng it he demanded compensatiOn for the'.use of .said machine, which was refused.
FOR INVENTIONS-AcTION'
INtRINGEMENT-DEFENIlBS.
AtiLaW"
William Zimmermann, forplaintifl'. BannWigj.Banning &: PayB<m, for defendants.
BLODGETT,J. This is an action at law for the .alleged infringement of a patent issued to John Dable on the 7th day of August, 1866, tor an "improvement in machineS for unloading railroad cars," and a patent granted 'to the said John Dable on the 28th day of July, 1868, for an improiY'funent upon' said til'$t-mentioned patent, which patents, it is averred,were on the 8th: day of Deeember, 1880,. duly assigned to the together with all claims and rights of action for past use of said patented de\1icesj and by this action plaintiff seeks to recover damages fori'thettSlJ of the said Ipatents, not only since it became the assignee thereofVbut for the use of the same by ·defendants before such assignment, . Defendants have interposed numerous pleas in the case; but I deem it necesSary, to consider only !the fourth, which is, in substance, that the only machines for unloading grain from railroad cars ever used by defendants'd,uring the life of either of said patents wereconstrncted and put into use in defendants' grain elevators by the said jJatentee, John Dahle, and with his consent and allowance, while he was in their employ as superintendent of machinery, and prior to his application for either ofsaid letters patent, whereby defendants claim that they became possesst>d olthe right to use all of said/machines dudng the lite of each of said patents; withoul.liability to the said John Dahle or the plaintiff, as his l:l1Jsignee.· The. parties hav-e also filed a 8tipulation in· the case admitting that the facts stated in the fourth plea 'are 'true, but with the further fatit, to in connection with the facts'stated in the plea, that the patentee,when he obtained the patents in question, demanded compensation of the defendants for the use of his said invention:By ,this stipUlation tht'l'question submitted to thecllurt is whether the plea :states, a valid defense tOJthe' 'action, admitting the fact that Dahle, when bis pateDts,were'issued;' demanded: compensation from defendants for their use. Section 7 of the act of March 3, 1839, in relation to patents, (5 St. at Large, 354,) which was in force at the time I
Reported by Louis Boisot, Jr., of the Chicago bar.
