RAILWAY REGISTER:MANUF'G CO. v.THIRD AVE. RY. CO.
31
himself. This view of the law is further strengthened by a reference to the rule of the Southern district, which provides that "in all cases in Which persons convicted of offenses against the statutes of the United States shall be sentenced . tq irpprisonIl1ent, and the sentence shall not also specify that the partY.he keptat;h,ard labor, it shall be the duty of the marshal to 'cause such partyto in anyone of the prisqns within .the city and, county of New York which he may select for that purpose." 4 541.. court has the powerto make such an order before sentence, why not exercise the same right afterwards? If the place of imprisonmentlllay thus be fi.;::ed by an order of the court when the presence of' the prisoner is impossible, it follows that the order is not an essential part of the judgment,and his presence is not necessary when it is made 322; after. the sentence is pronQunced. See De Puy's (]ase, 3 Ben. Weed v. Pecple,31N. Y.46Q. .. .A case exactly in point has not been cited by counsel, or found by the court, and, in the absenoe of authority, the court should to release the prisoner upon a ground purely technical in' charaeinvolving, it would seem, no substantial right. If she had been brought back by the marshal from Auburn to Brooklyn, neither she nor her counsel would have been consulted, and the court was under no obligation to consult them, regarding the order which changed the place of .' imprisonment. It follows that the discharge must be refused.
RAILWAY REGISTER MANUF'G
Co. v.
THIRD AVE. Ry.
Co. and others.
(Oircuit Oourt, S. D. New York. October 15,1887.) PATENTSlI'OR INVENTIONS-FARE REGISTERS-LIMITATION 011' CLAIM-INll'RINGEKENT.
Claims 1, 2, 4 and 5 of letters patent No. 2.06,565, of July SO, 1878. to Charles B. Harris, for an "improvement in fare registers," must. by reason of the limitation of the boundaries of the invention in the descriptIOn and in view of the prior state of the art as indicatedby the Morgan-Brown British patent of August 15, 1877, (Which sets forth three Italian fare registers and modIfications thereof, the invention of Joseph Mazari. of Italy.),be limited to the specific mechanical devices which constitute ,the novelty of the combination. These devices are the employment of a direction indicator so organized in relation to the registering mechanism. both trip and permanent, that it cannot be changed to indicate a different directioll of travel without first bringing the trip 'register to the starting point and so adapted to co-operate with the regIstering mechanism as. upon such change, to effect a transfer from the trip to t1),e permanent register of the record of fares collected. So limited, these are not infringed by a fare register in which the permanent register is not actuated by the act of resetting the trip register, but only when the trip regJster is making its original record, and in which there is no locking device to detain the direction indicatOr, so that it cannot be moved until the trip register is reset at zero.
In Equity.
Bill for injunction.
82
FEDERAL REPORTER.
:E·. ,W. Dickerson, Jr., for complainants. Prost &: Coe, for defendants. WALLACE, J. The issue in this cmse involves the alleged infringement by the defendants of the first, second, fourth, and fifth claims of letters patent No. 206,565, bearing date July 30, 1878,granted to Charles B. Harris for "improvement in fare registers" and owned by the complainant. The charge of infringement of the fifteenth claim of the patent has been abandoned by complainant upon the hearing. The defendants insist that the fare register used by them is not an infringement of these claims, when limited, as they contend should be done in view of the prior state of the art, to the specific mechanical devices which constitute the novelty of the combination; and they also insist that the claims are void for want of novelty, unless thus limited. No other issue is presented by the proofs, and the defendants rely wholly upon documentary evidence, as explained by their expert, to sustain their position. The iniprovements set forth in the patent belong to a class of devices which are designed to guard against the fraudulent manipulation of fare registers used on the cars of street railways, and analogously, by requiring the collector of fares to make a registry for each· collection which cannot be omitted without exposure to detection, and which, when made, cannot practically be obliterated. As stated in the· patent, the object of invention is"To furnish a fare register provided with means, etc., whereby the amount ()f fares or collections made during the travel of the cars or vehicle in each direction, will be permanently recorded and ascertained," The patent describes the invention as follows: "My invention consists of a fare register having an indicator or sign by of travel may be known. so organized that the indicator which the may not be changed to indicate a different direction of travel, without first making a permanent record of the fares collected. It further consists of the combination, with the registering mechanism of a fare register, of an indicator or sign showing the direction of the travel of the vehicle, inclosed in the same casing or receptacle with the registering mechanism, the indicator being so organized that it cannot be changed to indicate a different direction ()f travel, without first bringing the register to zero, or in a position indicating no registry. It further consists in the combination of primary registering mechanism, secondary permanent or transfer registering mechanism, and an indicator or sign shOWing the direction of travel, the indicator being so organized that it cannot be changed to indicate a different direction of travel, unless the primary register is at zero, or at a point indicating no registry, the setting of the primary register back to that point after a registry has been made transferri ng its record to the secondary or permanent registry. It further consists of a fare register provided with a window or opening to permit of inspecting the registering mechanism or record, and with a window or opening to permit of inspecting an indicator or sign indicates the direction of travel of the car or vehicle. It further consists in the combination, in a single case, of registering mechanism. alarm mechanism, an actuator, handle or push bar for working the register and sounding an alarm, and an indicator which indicates the direction of travel, whereby the sounding of the alarm announces the registry of the fare, and the indicator shows in which direction of travel of the car or vehicle the registry was mada. It also con·
RAILWAY REGISTER
MANUF'G
CO. V. THIRD AVE. RY. CO.
33
sists in the organization, construction, aod arrangement. of the various de. tails of the mechanism, as will be pereinafter speci fically set forth." After describing the casing or receptacle in which the registering mechanism and indicator are mounted, the specification states as follows: "The registering mec):lanism consists of two sets-a primary mechanism for temporarily registering the fares collected on each separate trip or direction of travel of the car or vehicle, and a secondary mechanism, to which a transfer of the record of the primary register is made at the tel'millus of each dil'@ction of .travel, to obtain a permanent record of the fares collected, the transfer being accomplished during the act of resetting or moving the primary mechanism back to the zero or starting point, in readiness to commence the registry of fares to be collected on the return or back trip of the car or The specification then proceeds to a detailed description of a primdry register consisting of two disks or dials provided with figures. so constructed and arranged as to record and display the number of fares c9rresponding with the number of actuations of the registering mechanism, through an aperture in the face of the receptacle, actuating mechanism, alarm applrratus, the secondary or permanent registering mechanism, suitable means for transferring the record made by theprimary mechanism to the permanent mechanism, . a'lld an indicator or sign which is displayed tgrough apertures in the face of the receptacle to denote to the passengers the direction of travel of the car or vehicle. The specification continues as follows: "To prevent the indicator being changed or shifted to' indicate 'a different direction of travel, without first making a permanent record of the fares collected, and without moving the primary registry back to zero or the starting (beyond which the registering disks cannot be carried, as the disk, £', will be locked by a paul, b', mounted on a stud or arbor, b", on the casing,) I provide the indicator-plate with notches, 8, with which engage the tooth or projecting end of one arm, T, of a three-pronged latch, 'the latch being provided in this instance upon the arbor of the ratchet-wheel that atesthe bell-hammer, and is acted upon by a string which tends to keep the arm, T, normally in engagement with one of the notches, 8. The other arms, T l,T 2, of this three-pronged latch are adapted, when the register is at zero" to vibrate the arm, T1, into a notch, t 1, in the unit disk. B, of the primary register and the arm, T 2, into a similar notch, t 2 , in the disk,B 1, of said register. This will permit the indicator to be turned so as to bring the sign desired, indicating the direction of travel, 0PPQsite the window in the casing, the locking-arm ,T, riding out of the notch, s, of the plate, and the other arms Vibrating into the notches in the registering disks. When, however. an operation of the register takes place, the notches in the primary disks are taken out of line with the prongs, T 1, 'r, of the three-pronged latch, whiclh will effectually prevent the indicator-plate from being turned, as an attempt to turn the plate, except when the register is at zero, only brings the arms, T 1, T 2, in contact with the curved edges of the disks, which is not sufficient to carry tbe arm, T. out of the locking-notch." The patentee closes the description of his invention in the specification as follows: "I do not intend to limit myself to the precise construction and organiza. tion of the various parts of my improved register, they being sUlIceptible of conlJiderable variation without departing from the spirit of my invention., I
.
J
v.33F.no.1-3
REPORTER.
dtJ1hot',c'hbwever, broadly claim a' fare register having a primary or temporary, and a permanent or secondary registeringmechanism, as that is not my illyentio:n. '1, Thefirst:five claims of the patent are as follows: '((I)'Thecbmbinatiim, substantially as hereinbefore set forth, of a fare registerw,ithadirection indicator, locked from indicating a different direction of travel, without making a permanent record of the'fares collected. u (2,) Theeombination, sUbstantially as hereinbefore set forth, with the registering mechanism of a fare register, of an indicator or sign inclosed in the same casing with the registering mechanism, and incapable of being changed to a different direetion-of travel, without resetting orbringing the tegisteJ: to the Zero'or 'starting point. ' u (3) The combination, substantially as hereinbefore set forth, of primary mechanism., secondary, Or permanent registering l!>pd an indicator or the direction of travel, and so organized that a different direction ,of tr,avel cannot be indicated, without bringlngthe ptimaryregister to zero or statting point, and transferring its reoordto thEl'permanent register. . ,', U(4), The,oombination,substantially,as, set forth,of lng indicator or sign.)lThich Indicate,9 the direction of travel, and a surr()u,lldiJ:lg ,casing provided with windows or openings therein,for the purpose (If inspecting tpe register and, thll direction indicator or sign. ""(5) as set forth, in a single case, 01 llillcbamsm, alarmmechaIilsm, an actuator, handle, or working the register and80unding an alarm, and an indicator which :indicates the: direction of trayel, .whereby the sQunding of the alarm of tbe,fare, and the indicator shows in which ti9n 91 Vt¥; Qf, car or vebicle the registry was made." ';I:tespecting'theprior state of the art,it appears from the testimony of. exp'Elrt for. the. defendants, in explanation of'the prior patents put in evid.ence,. tq;Which he refers, that the of a duplex register, that is, trip registerdn,g mechanism and permanep.t registering mechanism in fare registers 'was IiGtnew, and that such registering mechanism with alarm xnechanlsni 'actl1ated substantially after the mode of the complainant's paten't, ari'd. ic.ontained .in a casing exposing the' registering operation through or,apertures, had previously been employed together in fl,l.rel'egisWAs.; It was, because the prior state of the art is asth'\l;S tbat the,complainant's expert asserts infringement of the claims by the defendants upon the theory that Harris was the first to employ iIi coriibination with these several devices a direction -indicatQr snchasaescribed in the specification, and, therefore, that the claims bfPad1yconstrued to cover every combination ofsuch a directtorijU;di<;lah,>, w,ith the .several devipes'which is an, equivalent in p;J;'oducing the new,resulk. Helstates that the invention of Harris relates to a of the numfare'register oHhe kind ,"hich· contains a permanent ber of fares collected during a seriei:n:>f trips of the vehicle in which the r-agister is employed, and a trip register which exhibits at all times during single trip, ligures indicating the number offares collected upon tb.at trip. ,He,says: , HNarr·is"invention consists in combining with these two registers the ad':' ditiQnaletemant·ofa direction indicator, incapable of being changed to indiI
I
RAILWAY
THIRD AVE. RY.
co.
35
cate adifferent dh'eetiorloftravel,'Witltoutresettingor bringing the ternpQrary to zeto ,or the starting point, and hence showing in' which ,tra,vel, of. the 'registry of fares; ll1¥e. of this contrhrance. the number of fares collected during a tl'ip, and thetlirection of ttavel of the "ehicle during 'whIch SUCh, fareswerll eol1ected,' are exposed to view so that they may be seen ata glance, not only by the inspector whose business it is to make a note of the indications of the apparatus at the end of each trip, but also 'at all timesduriqg the trip by passengers"anl!also,byinspectors, who are conductor, and may be, empI?yed to observe th{l register during the course of the trip." : The subordinate feaituresof tbe invention consist in inclosing the appa'rntus in a suitable casing provided with windows or openings to permit the inspection of the register and direction indicator, and providing an alarm mechanism:, whichJwill attract the attention ofpassengers to the proper maniJ>ulation of the'tlip register by the collector.' , · , The defendants rely up<>n the Morgan-Brown British patent Of August 15, 1887, which sets forth three Italian fare registers, and modifications thereof, the invention of JosephMazari, of Italy, as an anticipation of the first and second claimfl of the complainant's patent. ,That patent d&scribes and the'drawings illustrate a direction indicator employed in II. fare register, which fare register also employs a trip register and secondary registering mechanism. The direction indicator of this patent is -so organized' that it cannot be' changed without first 'bringing register to zero or the starting point, and this feature is distinctly pointed out. The apparatus differs materially in the arrangement and chatacter of the devices which are· combined in a fare register from that of the Harris patent. One object for which the apparatus is designed, is to indicate to the passengers, or to an inspector, what number of passengers are in·the vehicle at any given time. But it contains registerIng mech. anism with which the direction indicator co-operates, designed' to enable an inspeCtor to ascertain the number of fares collected on a single trip, and also the aggregate number of fares collected upon any number of trips, and is practically operative to effect this object. Whether this patent is of any value as an anticipation of the Harris patent or not, it is important 'as bearing upon the scope of his invention and the construction to be given to the claims. It is apparent, in view of the MorganBrown p'atent, that Harris was not the first to employ a direction indicator in a fare register, or to combine a trip register with a direction indicator, which could not be changed to indicate a different direction of travel, without first bringing the trip 'i:"egister to the starting point. Consequently, what Harris really did was to employ such a direction indicator with primary and secondary registering mechanism which was adaptlid to co-operate with such registering mechanism so as to effect a transfer from the former to the latter of the record of fares collected. The ap-pa:ratus of the Morgan-Brown patent did not do this. Harris by doing' it made an advance of utility. ' The directioniudicator is an element of each of 'the claims in controversy. It'is plain from the language of the description that it is one so organized in relation to the registering mechanism that it cannot be
36
FEDERAL REPORTER. ,
changed to indicate Ii. different direction of travel, without first bringing the: trip register to the starting point. To this end it is provided witha lockIng device,' and a desctiption is given of a suitable locking device by which the indicator 'plate engages witn a three-pronged latch. The trip register cannot be brought to the starting ppint without actuating thl:l permanent register f and transferring to that register a record of the fares received upon the trip. Consequently, the direction indicator cannot be chartgedwithduta permanent record being made of the fares collected on the trip. Although a direction indicator without this pecul. iar organization is useful, because when it has not been changed by the conductor at the end of anyone trip the fact is apparent to the gers in the car or to a detective, its, usefulness as a new safeguard for exposing any attempt at fraudulent manipUlation of the fare register to detection would be materially less i(it wereJ:).ot so organized in relation to the primary andsecolldary registering mechanism that whenever it is chl;\nged, whether at the end of the trip or at any other time, the record mad{j UpOll the trip register is not lost, but is transferred to the permanent .regil:1ter. The specification'describes an indicator of this character. The essential novelty of th(;'l several inventions specified in the claims, consists in, c()mbining such a direction indicator with the other parts. ,Altbough the 'fourth and fifth claim,S, unlike the first and second, do not in terms make such a direction indicator a constituent, they p,re to be J.:ead as though such a dire.ction indicator were specifically mentioned. No other indicator is described. anq they refer by implication to such an indicator. as is described in the specification. 'The expert for the complainant assumes that.thedirectionindicator of those claims is the same direction indicator as that in the first claim. Registeriqg mechanism substantially such as is described in the specification is also to be regarded as an element of each claim. As has been said, a claim for the combination of the direction indicator of the patent with any fare register, or ,with the registering mechanism of any fare register, literally construed, could not be maintained, because the novelty of such claims would be negatived by the Morgan-Brown patent. It is not claimed in behalf of the c<;>mplainants that registering mechanism which does not include secondary as well as primary registering mechanism is the registering mechanism of the claims. But it is insisted that tRe term does not necessarily refer to registering mechanism by which the record on the permanent regh,ter is made from the trip register in any .specified manner. It must be held that this contention is not tenaable, and that the registering mechanism of the claim is such as will acthe. transfer of the record from the trip register to the permanent register during the act of resetting the trip register. This characof the registering mechanism is distinctly set forth in the specificaiion, and cannot be eliminated from the clai:ms. The registering mech· anism is described as consisting of two parts, primary or trip, and secondary or mechanism, which makes a transfer at the terminus of each':direction of travel "during the act of resetting or moving the primary' mechanism back to the zero or starting point, in readiness to
BAILWAY REGISTER MANUF'G CO. V. THIRD AVE. RY. CO.
37
o
commence the registry of fares to be collected on the return trip of the car or vehicle." The d.etailed description coincides with devices thus organized, and there is nothing in the specification to denote or imply that registering mechanism having this mode of operation is a preferable or subsidiary 8S distinguished from an essential feature. Unless het registering mechanism is of this character, it cannot co-operate with het direction. indicator in perfonning the functions assigned to the latter, because the direction indicator is required to be so organized that it cannot be changed without bringing the primary register to zero and transferring its record to the secondary register. The first and second claims are intended to discriminate between a combination in which the direction indicator cannot be changed without causing a transfer to be made from the trip register to the permanent register, and one in which it can be changed by being brought to zero without causing such a transfer. In either combination, a locking device by which the indicator cannot be changed unless the trip register be brought to zero, is indispensable. The second claim contains the further constituent of a casing to inclose the other parts. The fourth claim contains the additional constituent of a casing provided with openings. The fifth embodies all the constituents of the fourth together with alarm mechanism, and actuatitig mechanism for working the register and alarm machanism. It is to be observed that infringement of the third claim is not alleged, and that it differs from the first claim as that claim must be construed, only in a more particular spedfication of the parts required to make a permanent record of the fares collected, that is, in specifying the mode of operation of the co-operative devices. It would seerr. that this claim more particularly and distinctly points out the real invention of Harris than do the first or second claims. There is some doubt wh&ther the first and second claims are not void for want of novelty in view of the Morgan-Brown patent. There is room for fair argument that they are expressed in terms to comprehend, the first, any fare register having the direction indicator of the Harris patent, and the second, any registering mechanism of a fare register combined with such a direction indicator. The general statement in the patent of the essential features of the several inventions which are the subject of the patent, and the very guarded terms of the disclaimer at the end of the description, countenances the argument that these claims were intended to be as broad as their literal terms. The claim of the inventor in letters patent must be construed according to its terms; and, when its import is plain,resort cannot be had to the context for the purpose of enlarging it. A more liberal rule is indulged frequently when it is necessalT to restrict or narrow the ordinary import of the language in order to secure the real invention of the patentee, and, preserve the claim from destruction. But the language of the supreme court in White v. Dunbnr, 119 U. S. 47,52,7 Sup. Ct. Rep. 72, is applicable to both classes of cases. The court say: . "The claim is a statutory reqUirement, prescribed for the very purpose ot making the patentee define precisely what his patent is; and it is unjust to
,38
i,
;
'., r
FEDERAL' REPORTER. .'
.;
walIas an ,evasion of the law. to construe it in a manner differ.ent than frp.m the plain import of its terms." ThespecifiCil,tion calculnted. to admonish the public that Harris was the first to employ an indicating registedn combination or conjuncti(')l1 with a fare register or fare registering mechanism of any kind,andthelanguage of the claim is equally well to advertise the pretensions of the patentee to the monopoly of such an improvement. Nevertheless, this meaning is not to be ascribed to the claims unnecessarily; it is not necessary for present purposes to decide that they must receive such a construction, and the conclusion is reached that they should receive the narrower interpretation which has been indicated. The fare register of the defendants is one in which the permanent register is not actuated by the resetting of the trip register during the act of moving the latter back to the zero or starting point. In their rt'gister the permanent register is not actuated by the act of resetting the trip register, but is actuated only when the trip register is making its original record. At each actuation of .the trip register in their apparatus, the permanent register is actuated, and not otherwise. For this reason their apparatus does not contain tberegistering mechanism which is an element of each claim. Nor does the fare register of the defendants contain any locking device which detains the direction indicator so that it cannot be moved until the trip register is reset at zero. rt is this device in the Harris' invention, which, not only prevents the indicator from being changed until the trip register is reset, but also prevents it from being changed until the record of the trip register has been transferred to the secondary register. In the defendants' register the indicator not only can be, but must be, changed before the trip register is reset. This feature of the apparatus precludes the possibility of an accidental omission on the part of the collector to change the direction indicator when resetting the trip register. . Thus it will be seen that the principle of the Harris invention and of the defendants' apparatus differs in this: that while the former depends upon the locking of the direction indicator when the trip register is recording fares and the unlocking to reset the trip register and transfer its record of fares to the pel'manent register, the apparatus of the defendants makes both a trip registry and a permanent registry of fares whenever a single fare is registered, independently of the co-operation of the indicator, and the indicator must be changed before the trip register is reset. If Harris had been the first to employ a direction indicator with registering mechanism and had not circumscribed the boundaries of his invention by his description in the patent, the question of infringement would be presented in a very different aspect. Obviously it was not invention merely to employ an indicator in a fare register having primary and permanent registering mechanism when one had previously been employed in a fare register having only primary or trip registering mechanism. Invention could consist in a combination of an indicator with both or either registering mechanism, in which the devices would cooperate to contribute some new function 01' mode of operation to the
BLISS 'V. MERRILL.
39
other, but not in bringing them into such juxtaposition to allow each to work out its own effect and produce an aggregate of results. Although the patent had shown a combination between the indicator and trip register, it was open to Harris to invent a new one, or one between the indicator and a trip register and a permanent register. But after he had done this it was open to others to make a combination between the same parts which would accomplish a similar result by a different organization, introducing a different mode of operation. This has been done in the apparatus of the defendants. It follows that the defendants do not infringe, and the bill must be dismissed.
BLISS and another'll.
MERRILL
and another.
(Oircuit Oourt, 8. D. NetD York.
December 7, 1887.)
1.
PATENTS FOR INVENTIONS-INFRINGEMENT-SHIP LOGs.
Reissued letters patent No. 10,625, granted July 21. 1885, for an imlJrove· ment in registering logs of ships, the original patent being dated June 6, 1876, and the original application ftle4February 16,1876, for an elongated cylin· drical case containing the registering mechanism, with the shaft introduced axillary at one !lnd, in cOl1lbination with anti·friction rollers, eye, propeller, and connecting cord or wire, .1Leld to be infringed by a registering apparatus which has ail elongated cylindrical case containing the mechan· ism, It shaft introduced axillary at one end, and the anti·frlctionrollers and the eye adapted to receive the propeller cord. all substantially in the same combmation as the patent.
2. SAME.
Reissued letters patent No. 10,625, for a horizontal attaching-yoke, in com· bination with the elongated case, registering mechanism, and shaft of a ship log, is not infringed by providing the elongated case with eyes to which a rope may be attached in such a manner as to constitute lIifringement, there being no evidence that the defendants ever used it in thill manner. and the device . being susceptible of a perfectly innocent use.
S. SAME-PRIORITY OF INVENTION-FOREIGN PATENT. In an action upon reissued letters patent No. 10,625. granted to the complainants. July 21, 1885, for an improvement in registering logs of ships, the original patent being dated June 6, 1876, and the original application filed February 16; 1876, there was evidence that a patent substantially the same was sealed in England. July 27, 1875. Held, that the peculiar coincidence that the same idea. alike even in minute details. should have occurred to two persons on differel\t continents without having seen the other's device. in absence of satisfactory evidence, will not warrant the court in rejecting the positive tes· timony of the complainants that they conceived their invention prior to May 6,1875.
In Equity. Bill for injunction. Edwin H. Brown, for complainants. A. M. Pierce, for defendants. COXE, J. This action is founded upon reissued letters patent No. 10,. 625, granted,tooomplainants July 21, 1885. for an improvement in registering logs of ships. The original patent was dated June 6, 1876. The