4.87
HARMON
et ale
t1. STRUTHERS
etaZ.
(Circuit Court, W. D. PennsyZvanw.. August 18, 1890.) 1. PATENTS FOR INVENTIONS-PATENTABILITY.
Letters patent No. 248,277, granted to Frank L. Bliss, October 18; 1881, for an improvement in reversing gear for steam-engines, sbow an invention especiallyapplicable to engines for drilling and operating oil-wells, consisting in the combination of an elbow a lifting-bar havinlf a sloloted connection with the stoll on the englne frame for supportmg the lever, whereby the lever lS relleved from an jar or vibration due to the movement of the reversing link. HeW, that· the .inventionwas one of great merit and of a primary character,and the patent should be liberally construed, and the patentee accorded the full benefit. of .the doctrine of e q u i v a l e n t s . . . , . . . . ..
In the defendants' device, instead of a stop on the engine. frame, the .end of the horizentalarm of the elbow lever is provided witJl a downward projection or l!IP-' pimdage, w,hieh engages the. engine frame, and, in lieu of. a slot in the lifting-paJ;', Whereby Bliss'slotJ;ed connectic;m is made, tbe upper end pf the defendants' liftmgbar'is reduced in diameter,andfasses loosely through a hole in a swiveled eyebolt " attaohedto the borizontal arm 0 the lever, and thus :b.as,free vertical playfoT ,th.e , purpose of taking 'up the Vibration and relieving the lever of all jar when. resting. ,." on the engine frame. HeZd, that the defendants' device infringed the Bliss patent. S; USE. " ' . , . ¥or£l than two years before his application for a patent, the inventor, Bliss t with-, , out profl.t tOhi.mself,and solely for the purpose of testing the effiCiency of nis in'vention.bypractical use in the oil-field, placelthis.device, then in the form of·a pusb. reverse, upon engines manufactured by his emplqyers, who 'sold all those engines to'a brother'in-Iawofone of the vlllldors,'on excePtional terms,' the subi ··stantial purpoae being with ·a view to experimental use;' HeW, that this was. not a pUPlic use or sale, within the meaning of the patent law, ''-
2.
SAME-INFRINGEMENT.
4:-SimL
',.'
,
'l'he push reverse embodied the combination described bland covered by the patent,:but the expe.rimental use in oil-field proved that, as an oPllrative reversing " gear, it was nota practical success; and thereupon, after turtherexperimenting, ..' Bliss changed the device so as to convert it into a pull reverse of the form described , in his specification and drawings. Iield1 that the two-years priol',public use,un'del' the statute; did not begin to run until he had thus made tiis device practically , emoient. .
_In Equity. D.
Bill to restrain infringement of patent. for defendants.
W. Bakewell <to Sons, for complainants. ACHESON,S. The defendants are charged with the infringement of letters patent No. 248,277, for an improvement in reversing gear for steam-engines, ,granted to Frank L. Bliss, October 18,1881, upon an application filed March 8, 1881, the title to which letters patent became ve13ted in the plaintiffs by assignment from the patentee, dated, 1887. The s,pecification states that the invention isespeciallyapplicable to engines employed in drilling and pumping oil-wells. These engines, the proofs show, are operated under conditions. The epgine is necessarily located. at a distance, usuaHy about 70 feet, from vrhere, the operator is required to be. .In practice, an . gineer is not employed, but the driller standing in the derrick handles It is very important that the engine shouldbe 4tall times, uqder his ready control, as it is otten necessB,Tythat it instantly i'sinotlon reversed.. In oil OPerations, sucbenginesare n]B,ved ·vlnce . <10 qp.on, qF '
438t
FEDERAIJ : REPORTER:,
foundations. The foundation commonly used consists of bottom mud· sills with cross-timbers laid thereon'; Rlld\theengine-lHock resting on and keyed to the isr\]n at t?-hjgh rate of speed, which causes! c6nsiderable'longitudi'hhl vibration Of tbEiengine upon its unsubstantial foundation. These ,conditions practically preclude the , ,reversing$ear as is usetl on locQm,otivesjllot to speak oLthe excesE\ive cost of the latter, which, of itself, its use. BYl'eas()ll of its rigid connecting me.chanism such a reversing gear wouldcuuse a distortion of the valve.',IJ} it keep gear In adjustment. Hence the only reversmg deVICe for OIl-well engInes in practical. use before Bliss' invention, consisted of a cord attached to, the' endbf'Jbe' reversing mnk, lind over an overhead pulley, and thence ,to ,the ..Toreverse the engine, the driller puUed this cord"and drewtheJink tip;;butwhen 'tbe:cord was released the link often failedtodrop,and,toi>revebt engine from running wild, Olqhe happenillg,pftbis i.t the general practice to employ a man to stand at the engine, and "tramp down" the link. The evidence that, Bliss'irt",entioll, many attempts were made, but without success" to provide an' efficjentreversing gear for oil-well engines. Cha.rles M.Yo1;lngj',a witness matters, testifies: Cl'.Jsuppose there have tlrne,'andmontiy SPElOt on revprse gears for oil-t'n.l{int's, which seemed Lo be the IlRsiest thlnllto lIIake, hut seemed to be in L):Ie oil territury." Thisisby no,mealis an OVllrgUl'tement. The problem was not solved revcl'$jng gear, the grent merits of which are now Bliss' in"'ention permits the univ,ersally;reQognized by of a: rod'; 01' other acu'llg hlstrumentality, operating from the derrick to s1art, reverse, stop, or slow tht:: engine, and yet obviates all the objections incidant:toairigid<lOhile?titl'gmechlUlism, and dispenses with all locking devices. 'fo this end,: he emplo,Vsan actunting lever, in the form of an elLow, or letter L, placed On the engine-bed. 'fhis lever and the reversing link lire rigidly, but flexibly, connected., The liNd'l'ests:brt' a I :stop oh' tfle:engitie uPtl, nnd is joined to the ,lirik by a s}otted,liJtirtg.bar,so 'that thecoiltiHbal vi'bratioll of' the link ianai transwiittedto the lever, but is takel1 i up ai loose or idle 'inotion hy the slot:· The'slottedconnection undstbl:> toke lill jnr or vibration from the' lever 'at rest on the stop. ,<The revJrslng link is practicllllyHisconthe reversing geltr is not neeted from the lever. In inacttlull1Se, it ispracticnHydiscO'nrl.ectedfhmi the engine. 'fnespeci. ficUtiiOll' ofthe patentdesci'ibes'8 roti, which may be compos'ed .conneded with the upright lIrnl of the e)l:'tenUhig [CHlny'delsiredpohit, ldr enabling the oper-lliwr tG (lahtroI the' 'tit any required distance from the engine. ,'-"Ulldel' ,this says the, specification, "it ,will ,be sef}tl·that the lhlk, B, can be Ii :pd.siti\'e: in either dh'ectlon,' or Ifor throwing it'<'lut of actioll, by cifitli thtow'upon 'the' swi block, lind thus
H'ARMON
439
stoppipg the, tAe valve." "The slotted lifting-bar, above ?f;. is in the patent a "link." The patent has a sillgle claIm, VIZ.. " -, , , elbow lever and Hnk a connection with the link, D, hl 9on;bination withtbe stop"or for reiie.ving the Iever!rom the vibratIon due to the 'movement of sald hnk. D. sUbstantially asdescnued; .. " 'Before, proceeding to the of illfringement, anr,l the defense of other, defenses made to, this ,suit will be COllsidered in their natural order. ' ' , " 1. It is by the defendants that reversing gear, ,whicherpbodied ,the invention Claimed in the patent i116uit, was in priofPQblic' usein 'the year 1878,on the,sfeanl-boat Shirley Belle,umallboat which plied the uPPl;lfwa1ersof th,e Allegl)enyriver at or nearWarren,Pa.,for a few but blown, up by tqe explosion of the boiler in the Jall of that year. To sustaiq this defense, the defendants three witnesses, all of whom ljlP611k from Iuere memory, after thc, lapse of 11 Years,. and who differ among themselves, very much in t/leir recolle9tion.rhe prippipal one oftl)ese witnesses is Robert Mackey, the under whose,patent', in 1888, tileyITj.anufacture 'the alleged infringing devices. He states that there were' hv() enand that he made two 'of gear gines on, the Shirley for the'boat, and that one was placed on each engine; but who him in the,work or 'applied the devices"to the boat he cannot tell. They 011, he thinks, about a month or six weeks before the boat blew lIP. ' '" Ite produces a Sketch, recently made from memory, for the purposes o[this case. whieh !lhows a construction ahnost identi,cal with what gear he made is disdosed in Bliss' patent, as illustrating the for the Shirley Belle. The other two of said witnesses, however, testify the boat only had one engine and one set of reversilig geat,and, this contradiction of itselftends to the discredit of Mackey's testimony: Frt;)d Shirley, the defendants' second witness uuder thi8 head, both as fireman and engineer on the boat until, the day before,'t4eexplosion; and, according to his recollection and description of the reversing gear, the elbow lever and lifting-bar had neither slot nor stop, lever vibrated. Anson H. Shirley, the defendants'other ,witneslJ uponthis point, describes the slot as in the lifting-bar, and not in the elbow lever, as Mackey states it was, and he neither describes, nor at all. a stop. He does 'speak (and he alone of all the witnesses) ofalittIe plate the top of the steam-chest, "to hold the lever when it was to work;" but, according to Mackey, the stop was bolted on the frame of the engine bed, and, as we have already seen, the stop is used asa rest for the lever when not at work. These three witnesses in matters of detail, and, upon the whole, their testi. mony is unsatisfactory, and inconclu$iv:e. On the side of the Moses ,B.! ,Shirley , who was a fireman on the Shirley at the time of the e;plosion,'and fOf:several months before, squarelycqn,tradicts :Mackey,\:anp-also Anson,:lL Shirley, as to the, ,construction' ,and of o[ the reversing used on the boatjalfd,accordillg ,to a . '", ,' .. .'.' ..,....' . . " ' . . .j., . · -," · '." .·
FEDERAL mO.RT:Jm,
vol.' 43.
sketch made by him, neither a slotted connection or stop, nor yet an elbow lever, was used,' and he is corroborated by another witness. In Cantrell v,. Wallick, 117 U. S. 689, 695, 6 Sup. Ct. Rep. 970, it is laid down that the defendant, in a suit for the infringement of a patent for aIdnventi6n, who sets up prior use and want of novelty as a defense. not only has the burden of proof upon him to establish the facts set up, but every doubt is to be resolved against him. Applying to the case thisstandatd of proaf, I have no hesitation in overruling thifJ defense. 2. It is contended by the defendants that, in view of the prior state of the art, there \vasnothing patentable in the combination described and but, under this proposition is altogether'111adlmsslble. The several elements 111 themselves may have been old, but the combination was absolutely new, and productive of novel and highly beneficial results. , Each of the elements is essential to th,e efficiency 'of device, and the new and useful results are due ,their co-ioperation. " ,So far from the: combination being an obvious, one for attaining thepropQsed results, it shown that nUmeroUs unsuccessful perimentshn4been- made, cotering a long period of time, to produce a reversing geat'iJaving the advantages which Bliss' device Hi,S invention, iniiei;ld, met a long-felt want in the oil trade, and the utility of his device are not to be gainsaid. and great "3. Again', 'the defendants allege and set up as a defense that the patented device was in public use and on sale for more than two years prior to the application for the patent. ·I find the material facts bearing on this defense to be as, follows : The firm of Harmon, Gibbs & Co., composed of C. G. Harmon, George H. Gibbs, and'Lewis L. Bliss, was formed in the spring df 1817. Frank L; Bliss was an employe of the firm., The primary purpose for which the firm was formed was tobuild an engine for oil-wells with a reversing gear actuated by steam, the invention of Gebrge H., Gibbs. This reversing device consisted of a miniaturecylinderplnced oil' top of the main steam-chest, the pis tOll of which was connected with an elbow lever having a connection with the reversing link, anq was to operate it by direct steam-power. It is not necessaty morep/irticularlyto describe this device. It is enough to say that it did not embody Bliss'invention. It is most clearly established, by the correspondence of the fh'm and otherwise, that the first engine of any kind Which' Hitrmon, Gibbs & Co. ever built was not completed until the lllonthdf December, 1877; and that ellgine was equipped with the steam revershlg gear just mentioned. Therefore, when H. H. Argue,the defendants' witness, states that in the'month of October, 1877, an engine built by Hlrimon, Gibbs & Co., and equipped with the push reverse, (of which particular mention will soon:be made,) -was used in drilling an oilwell at DerrlGkCity, on the Carter lease, he is undoubtedly mistaken. The first engine built by thatnrm, and which, as already stated, was equipped with Gibbs' steam reverse, was boup;htby his brother-in-law, J. J. Carter; 'and in February, 1878, it was put in the field at an oilwell on Carter's lease, at'Derrick City, to test its efficiellcy. As tried in
the
o
is
,HARMON. ,.,. $'l'RU'IBERSe
the shop, the steam reversing gear gave a great show of success, but, when put to practical work, it proved to be a failure. Frank L; Bliss was sent to the well to overcome the difficulties, and this he attempted. He put on a heavy brass link and a rope, and afterwards attached a spring pole to the bottom of the link to pull it down. These expedients failing, and after making other experiments, he devised, in the month at'March, 1878, a reversing gear, designated a "push reverse." The first one was "a crude affair,"'and, it would seem, was made for the engine at Carter's well, upon which Bliss had been experimenting, to take the place of the steam reverse. In this push reverse, an elbow lever was pivoted to the steam-chest of the eligine, and attached with a slotted. cl)nnection to the lifting-bar of the reversing link; and. there was a stop to arrest its downward motion located on the valve-stem box, and the link was raised by pushing a rod which extended from the engine tothe derrick. Duri:ng the spring and summer of 1878, Harmon, Gi1::>bs & Co. built and sold several oil-engines, upon each of which this push reV,ers was placed. Fmnk L. Bliss was then without means to thoroughly test the device himself, and he testifies, and I have no doubt truly. that he put, the device on those engines in order that it might have "a good workingte8t." He derived no profit from this Use of his device, for he made no bargain with Harmon. Gibbs & Co. until after he applied for a patent, on March 8, 1881, when it was agreed that the firm should pay the cost of patenting,aud,in consideration of the same, should have a shop right: The evidence, I think, fairly warrants the concl1,lsion that all the engines having Bliss' reversing device thereon which we.resold or in useduriilg the year 1878 and the early part of 1879 were purcbll,Sed. by Mr. Carter, the brother-in-law of George H. Gibbs; aJ;ld, ifapyof them went into the hands or other persons, it was through Carter, 8J;'ld in f1,lrtherance of his purpose "to. demonstrate the qul;l1ity" ,oftheengine. Mr. Carter testifies that lle told Gibbs "the only way to d.etermine the quality of his engine was to put Won a drilling well, and let it stll,nd or fallon its merits," etc. Carter also states that all the engines 4e took from Harmon, Gibbs & Co.during that time were boughtfor that purpose, and becuuse of his relationship to Gibbs. He further the price he was to pay Gibbs for these engines was $$50 each, "but experiments conducted in pelCfecting them brought down the pri:Ce p.e received on the first .engine to $225; * * * and like reductions. though not in all cases as large as this, were made on the price of the other engines." The push reverse did not work effectively I and there was a general complaint by the users. Carter reported ,to Bliss it was a failure, and that .hecouldnot handle. the engine with it. , The main difficulty wasin the bending of the fod when pushed by theoperator to raise the link. Bliss endeavored to remedy the defects in ,the push reverse, but failed, and he then conceived, and, after experimenting, adopted, the present form of device. He took the elbow lever off the steam-chest, and, turned it around, and bolted H,to, the guides Qf. the engine, so tbakthe linkmight be :raised by pulling, and hestrajghtenec;l the lifting.,bar,. which had ,beenin. a ben t P.\liU
DJ)ERAfJ. RKI'ORTER,
voL4S.
some othenllbdifications, and eventual:lycompleted the reversing gear in theiforfuJtleSCli'ibed in his speeifidation and drawings. George H. Gibbsdiediri September, 1878. There were thella number of un, finished engines in the. shop, some having the steam reverse on and some with; the push reverae.Theseengines were turned over to Gibbs' estate,gnd 'Mr. Carter, ib· b.ehalf of the estate, employed Bliss to finishtbetti.· Blissexplainedhis1uew ideas to Carter, and, by his di., rectionsl proceeded to tlile reversing gear on those engines to the There is satisfactOl,'y evidence to show that this work was done 'lncmtbofFebruary, 1879, ;anel that· the engines were not ready: to'leave the .sbopUntilafter the 4th of March. They were the first engines equippedwitb the device as patented. It is not shown that any of tllemiwete shipped, orin publieuse, two years before the appli"! cation fdr the patent in Buit.> It is true that David B. Ding., mail fixeihJuJl:6, 1878, as the time when Bliss' pull reverse was used at the· w.eU on one of Carter's leases, but .he does not speak with great pos... and,-aesuredly, his recollection. is at fault. In oiLpractice the engine is'6,s\ used:in drilling the well. In this work the revolutions areniaihly"'f(jrwaird.and the is not much: used. After the drilling j'$:cothpleted,' the engine iFl used; with morEforless frequency. and long intervalsofl'est, in pumping the well.or draw", iilg· the casing;: and the' indicates' that it requires' considerable time,-aildanumber ofel1gine.s wOl;king in the field, to make a satisfac., tory'testo:fftHe;pl'actical efficiency of a new reversing gear. The proofs discldse·thatitt this regard there had been many previous failures where .success seemed achieved. These fa<ltswere known to Bliss, and he testilies him to 'thoroughly test his device, and get it right, before applying for a patent,: and that the test was not complete before late; 'the l/illJ of ·1879.;' It iaurged by the defendants that the in and:covered by the claim of thEf patent in suit was embodtiEld'in thepushingl'everse which Bliss devised and put on Harmon, GiiPbs& Co.'s in the year 1878. But, conceding -this, was the'tHing patented' in i pnblic use or onsde for more than two fOf'&<patent, within the meaning of the statutE!?:I:ttlllink not; In thetli'stp1ace, the sales by Harmon, Gibbs &00. to in all their Circun::il>tall'CeS, were out of the ordinary eourse of.trade:,'and in fliirness I11ust regarded as made for thepurpos6 of IM'lav,,,rBoUer- W01'ks,22 Fed·. Rep. 780. AILthe cletHitlgs'hetwebrtCart.er- and'tJ!:le firm were with a view to experiment; That was,thesubstantial'purpose.:Then,as respects the inventor Blis8 hhnself('th'e traosRctiort,frbrn fitisttolasllj and in. all its incidents, was If he oou'ld not test the efficiency of his· device it'<:>n· h1s employers'engilies,and sending it 'out field for ptilctiealuse, he could. not testit at alI 1·andjunder.the evidence, '!;fim of theopfnionthll.t the reasonable, :bcith as regards its tent and duration.: These conclusions, I think, in 'accordance with the; rulings made and the ,principles by. the suprema court,ill
from theoonnection from· the bottom oithe link to the Ilev'er, and roade
t/'
of Elizabeth v.l'averrzent ('0,,97 U.S. JllIan1Ljactwring CO. Y. Sprague, 123 U. S. 249,8 Sup. Ct. Rep. 122. But then, again, the device in its original form of a push r,everse was imperfect, and the invention was incomplete. AIll an operative reversing gear, it was not a practical succei;S, and much less was it successful in a commercial sense. 'I'hedefects were serious. The device had been condemned by those who had used it. If a remedy had not been applied, it would never have cqme into, geperal use, b\lt W9wd have been abandoned as wor-thless. which Bliss made may appear now to have been simple, but at the time they requiredrefiection and experiment; and the result was a greatsu(ilpess where there had been failure. The, right principle, indeed; was in the push reverse, but Bliss had not yet discovered a factory, mode of applying that principle to effect the desired object. In the device lacked patentable utility, and Bliss was not ready to, go into the patent-oflice with his applic/l,tion until he had made it practic!J,lly efficient. 4. We are now brought tothe considerl1tion of the question of infringement. :prior to the filing of the bill, the defendants were, and they still are, engaged in manufacturing and selling engines for drilling and pumpiug oil-wells having an unbalancl'd slide-valve, with a reversing gear to be connected with and operated from thederrick by a rod. In their device the de.fendants employ the usual reversing link, a lifting-bar, and an elbow lever pivoted to the engine frame. Instead of a stop on the frame orbed of the engine to serve as a rest for the elbow lever when it is down, the end of the horizontal arm of the lever is provided with a downward, projection or appendage,which engagesJhe engine-bed and performs the precise function ,of the stop of the Bliss patent. In effect, it is the,BHssstop inverted.rhen the lifting-bar and elbow lever are flexibly connected in this manner, viz.: Near the end of the horizontal arm of the ·lever is a swiveled eyebolt. with a vertical hole through its side, and the upper end of the lifting-bar is reduced in diameter, and passellloosely through this hole, and is provided with shoulders a little distance above and below, the same, so as to permit to the lifting-bar free vertical play for the purpose of taking up the vibration, and relieving the lever of all jar when resting on the engine bed. This is practically the slotted connection of the Bliss patent. It is used for the same purpose, and with the same effect., Without enlarging upon the subject, I content myself with saying that a careful comparison of the of the two devices, with the aid of the explanatory testimony, has brought me to the conclusion that the changes which the defendants have made are differences in form merely, and not in substance. The two devices do the same work in substantially the same way, and accomplish exactly the same results. 'l'herefore, in the sense of the patent law, they are the same devices, notwithstanding the differences in name, form, or shape. Machine 00. v. Murphy, 97 U. S. 125; Cantrell v. Wallwk, ; I cabnotagree vmh the learned counElel for the defendants that the patentee limited himself to an adjustable stop., 'l'he specificati,ol1, I
supra.
444
FEDERAL REPOR'rER ,vo1043.
thirtk,disciosesilofridication olanysuch fntts' luoid statement of the com binatiol1 , the language touching this element is, "8 rest or stop for said lever, whereby, through the slotted connection with the reversing link, all jar or vibration is removed from the actuating lever;" and the claim itself contains no such express limitation as is suggested. The is rather to be regarded as one of the forms of stops contemplated by the patentee. . As already intimated, the Bliss invention was one of unusual merit. He was not a mere improver of an old mechanism. No pre-existing reversing gear met the needs of oil-well operators.. Bliss' device, and his only, so. With reference to the particular field ofindustry for which it was devised and to which it is especially applicable, his reversing gear was notolily altogether original, but was of immense value. It met new oonditionsand new wants. He accomplished results much sought after, which nO- One ·before him had been' able to achieve. He was the first to devise means whereby the driller, standing at a distant point, can give 1i. positive movement in either direction to the reversing link, while, upon the release of the actuating lever, the reversing gear, by means of the stop, will automatiCally adjust itself to a disconnected position. Bliss' device first made it possible to use, in drilling and pumping oil-wells, an unbalanced.' slide-valve, thereby avoiding a waste of steam, and promotingeconomy'in the consumption of fuel. The invention, then, was reallyoneofa:'primary charaoter, and the patent well deserves to be liberally dealt with, both in the lllatter of construction and in giving to the patentee and his assignees, in full measure, the bflnefit of the doctrine of equivalehts. . (JoriBolJidaWd, etc:., Valve 00. v. crosby, etc., Valve Co., 113 U. S. 157,·5 Sup. Ct. Rep. '513; Machine Co. v. Lancaster, 129 U. S. 263, 9 Slit>; Ct. Rep. 299. <Let a decree be drawn in favor of the plaintiffs.
THE L4 CH4MPAGNE. J SEW'ALLet al. · 1;' ' - ,
v. THE
LA CHAMPAGNE. V.' .
COMPAam GltNERALE TRANSAT1.NNTIQUE .'
SEWALLet
at; (two
cases.)
(Dtstrict Oourt, S. D.Nmo York. July 81,18110'1 BLOWING-LIGBTSMISTAKEN "
.
AND·DEI!'EC'I'fVE.·
The steam-ship'La on one of her regUlar voyagell from Havre t.o New 1:'ork., and when about 25 mlles south of Shinneoook.light, o.n the Long island coast, at about 5 olclock A..M., oollided with the sohooner'BelleHiggins, bound from to.Bath, Me., The evidence for the schooner }Vas to the effect that she flrl:lt m.lide th,e steamer's white light on her starboard bQw, tpen the red light nearly' on the' starboard beam. Thereupon she Showed a torch-light to the steamer, and then another, and afterwards tired a gun, notwithstanding which the collision ep;sJled..· testimony was that, when the torch was seen l'RePoi'ted
bi Edwaro G: Benedict, Esq., of the-New York bar. '.