47 F. 586 -

586

FEDERAL REPORTER,

vol. 47.

both as to manufacture and to use." In Boesch v. Graff, 133 U.S. 698, 10 Sup. Ct. Rep. 378, a case where the alleged infringer haJ'purcha3ed in Germany patented lamp-burners from a persollwhohad authority to make and sell them in that country, and had imported them into the United States, and there was selling them in the usual course of trade, the court,' after q noting from Adams v. EHrke, supra, said:
"'.rhe right which Hecht had to make and sell tbe in Germany was allowed him under the laws of that country, and purchasers from him could not thereby be authorized to sell the a:rticles in the United States in defiance of the ,rights of patentees under a United States patent."

THedeCisiol1 in McKay v. Wooster, 2Sawy. 373, must be construed llndconfinedto the interpretation placed upon it by JUdge SAWYER in Grd,f.,'V, Boesch, 33 Fed. Rep. 279, and, when so construed, is eerta.inly pot in ,opposition to the' views r have expressed. Other authorities relied'upon by respondents relate to the use and not to the sale of the patented a.rtieles.Complaihant is entitled to a decree for an injunction and fQl' an accounting. Let the' usual decree be entered, as prayed for in bill.' .
. Ii

t.;'

J'OIINSON

Co. v. P..\.cliic

v.

ROLLING-MILLS

Go.

SAME

SUTTER ST.

Ry. Co.

.Tuly 27,1891.)

(Circuit

1.

Court, N.l). CaUjornia.

PATENTS FOR INVENTIONS-STREET-RAILROAD RAILS-ExTENT OF CLAnI.

head to the left of the vertical)ine of the web, and th,e whole of the upper face of , the flange'over (,he ,vhole width of'the web, must. in :view of the art, be limited to 'the form described, and is not infringed by a form in which the head is locatedvver the. web, and the flange is to the right of. the vertical line.

The claim of letters patent No. 272,554, issued to Tom L. .Tohnson, February 20, 1883, for an imnroved form of rails for street railroads,consisting in placing the

.2.

The form of rails described in said patent, as combining the principal features of the tram and but with a different disDosition of metal and combination of par,ts, so as to allow the, advantage of even fish-plating, aind still be adaptable to str.eet .service, is merely the result of ordinary mechanical skill, and does not involve. any patentable principle. T'I'irrJ,mer Co. v. Stevens, 137 U. S. 433, 11 Sup, Ct. Rep. 150, followed.

'.'

·

..

.

In EqLlity. Bills by the Johnson Company against the Pacific RollingMills Company and the Sutter Street-Railway Company for infringement of patent. Dismissed. ' WilUam F. Booth and Harding &: Harding, for complainants. Wheaton; Kalloch &: Kie1'ce and Naphtaly, Friede:nreich &: Ackerman, for respondent.
HAWLEY, J. These cases were tried together, and involve precisely the same questions. They are actions in equity, to recover for an al-

JOHNSON CO. V. PACIFIC ROLLING-MILLS CO.

587

leged infringement of letters patent numbered 272,554, bearing date February 20,1883, granted to Tom L. Johnson, for a street railroad, and by him assigned to the corporation complainant in both cases. The alleged infringement is for the manufacture and sale of eertain rails by the Pacific RoIling-Mills Company in one case, and in the otber case for the use of said rails by the Sutter Street-Railway Company. The specifications of the patent are quite lengthy. The following quotations therefrom have more or less bearing upon the points
"The object of my said invention is to improve the form of that class of railroad rail used principally by street railroads, which combine the principal features of the tram-raH, ordinarily used for such purposes, and those of the T-rail, used on steam-railroads. I am aware that rails embodying the general features above mentioned are old,' and I therefore disclaim the same, and confine myself to the form hereinafter particularly described and claimed as new. "Referring to the accompanying drawings, which are made a part hereof, and on which similar letters of reference indicate similar parts, Fig. 1 is a perspective view of a portion of a rail formed in accordance with my in vention, and Fig. 2 a transverse vertical section of the same. Fig. 3 shows a section of a street-rail way bed, and ordinary rails, as commonly laid. In flaid ;Figs. 1 and 2 the letter A indicates the flanged portion of the rail; B, the head the rail; C, an offset under the head of the rail. abutting the web. E, on the'side of said web opposite to that continued Ollt into the flange, A. The web,E, extends from the foot, D, to the angles respectively formed on opposite sides by its union with the offset,C, and flange, A; thus securing a uniform depth of web proper for the fish-plates to clamp. In Fig. 3. the letter G indicates an ordinary cross-tie; the letters. H, H. stringprs, snch as are ordinarily used upon street railways; and K, K, an ordinary form ot street rail laid thereon. The letters, x, x, indicate the edges of the adjacent and underlying road-way. "A and important feature of this rail is the offset, C. which, while serving the purpose of a close fit for the splice-bar or fish-plate, as above mentioned, also serves another equally 01' more important purpose in the general conformation of and peculiar disposition of metal in the rail. * * * The splice-bar offset. C. is a large factor in the proper retaining of this ballast, for· it is large enough, with its square corner, in connection with the curved or arched shape of tbe lower part of the head and T-shaped foot, to allow the surrounding and Buperincumbent traffic to press the balll'l.st-gravel and stones of tbe streets-into and against the rail instead of (as shown in Fig. 3) cutting away the surface of the street from the rails."

There are six claims to the patent, but only one-the fifth-that it is cOXl.tended is infringed. This claim reads as follows:
"(5) In tbe combined tram and T rail described, the web, E, located relatively to the flange, A, and head, B, offset at C, as described, whereby a maximum capacityof outside pocket is secured, with a minimum quantity of metal consistent with the proper stability of the rail, SUbstantially as set forth."

The defenses to this patent set up by defendants are (1) non-infringement; (2) non-patentability. 1. In 'construing the patent it is the duty of the court to confine its deliberations to the fifth claim, as that is the only one that is claimed to he infringed. It is also proper to resttict the interpretation of the pateni to the particular class to which it belongs, viz., to patents for mere

588

FEDERAL REPORTER

I

vol. 47.

form, as distinguished from patents involving mechanical action, or patfor some particular kind of process. This case js one "where, in view of the state of the art, the invE'ntion must be restricted to the form shown and described by the patentee." Duff' v. Pnmp Co., 107 U. S. 639, 2 Sup. Ct. Rep. 487. The fifth claim requires the web, E, to be located relatively to the flange, A, and head, B, as described. - This relative location, when compared with the drawings and specifications, places the head, B, to the left-harid side of the vertical line of the web, E, and the whole of the upper face of the flange, A, over the whole width of the web. The form of the defendants' rail, in this respect, locates the head over the web, and the flange is to the right of the vertical line of the web. The difference in the relative location of the different parts of the patented rail and of the defendants'rail is shown in the cross-examination of complainant's expert witness Breevort, who, in answer to questions, testified as follows: "Question 8. In the patented rail. there any part 9f the head that is over the web in a vertical line? Answet. No. Q. 9. In the defendants' rail, is the head in vertical Jille over the web or' not? A. The head is over the web. Q. 10. Then. in thiS respect, referred to in the last two questions, is the relali ve location of the head and web the sarne in the dt'fendants' rail as it is in the patented rail? A. It is not. Q. n. In the patented rail, is the flange in a vt'rtical line over the web? A. Yes. Q. 12. In the defendants' rail. is the flange'in a vertical line over the web? ,A. No. Q. 13, Tllen, in this respect, is the relative location between the web and the flange the same in the defendants' rail as it is in the patented rail? A. No." If, therefore, the patent is to be limited to the form that results from having "the web, E, located relatively to the flange, A, and head, B, * * *as described," it would seem to follow that there is no infringement by the defendants'rail. The relative location between the web, the head, and the flange is made-by the fifth material part of the form of the patented rail, as distinguished from the prior state of the art, and, in connection with the offset, C, constitutes the "improvement in street-railroad rails" for whieh the patent was obtained. \Vhen a claim is so explicit, the courts cannot alter or enlarge it. If the patentee has not claimed the whole of his invention, and the omission was the result of inad vertence, he should have sought to correct the error by a surrender of his patent and an application for a reissue. He cannot expect the courts to wade through the history of the art, and spell ont what he might have claimed, but has not. Since the act of 1836, the patent laws require that an application for a patent shall not only by a specification in writing fully explain his invention, but that he "shall particularly specify and pol nt out the part, improvement, or combination which he claims as his own invention or discovery." This provision was inserted in the law for the of relieving the courts from the duty of ascertaining the exact invention of,the patentee by inference and conjecture, derived from.a laqorious ,examination of previousinventions, thereof that claimed by; him. This duty is now and a cast upon the patent-office. There his claim is, or is supposed. to be, examined, scrutinized, limited" made to conform to what he is en"

JOHNSON CO. V. PACIFIC ROLLING-MILLS CO.

589

titled to. If the office refuses to allow him all he asks, he has an appeal. But the courts have no right to enlarge a patent beyond the scope of its claim as allowed by the patent-office or the appellate tribunal to which contested applications are referred. "When the terms of a claim in a patent are clear and distinct, as they always should be, the patentee, in a suit brought upon the patent, is bound by it. Merrill v. Yeo'mans, 94 U. S. ,568. He can claim nothing beyond it. But the defendant may at all times, under proper pleadings, resort to prior use and the general history of the art to assail the validity of a patent or to restrain its construction. The door is then opened to the plaintiff to ref'ort to the same kind of evidence in rebuttal, but he can never go beyond his claim. As patents are procured ex parte, the public is not bound by them,but the patentees are; and the latter cannot show that their invention is broader than the terms of their claim; or, if broader, they must be held to have surrendered the surplus to the public." Ke 1Jstone Bridge Co. v. Phcenix 1ron Co., 95 U. S. 278. See, also, Rail:toad Co. v. Mellon, 104 U. S. 118; Sargent v. Lock Co., 114 U. S. 86, 5 Sup. Ct. Rep. 1021;Westem Electric Co. v. Ansonia Bm8s &- Copper Co., 114 U. S. 452, 5 Sup. Ct. Rep. 941; Clark v. MamJjflcturing Co., 115 U. S. 86, 5 Sup. Ct. Rep. 1190; Lock MClnUf'g Co. v. Greenleaf, 117 U. S. 558, 6 Sup. Ct. Rep. 846. 2. The contention of defendants with reference to the defense of nonpatentabiHty is"That the complainant's patent is absolutely void, for the reason that it is only for one especial form of the well-known girder rails. and that such especial form did not develop any new or unknown mode of operation." It is undoubtedly true, as has often been said, that no more difficult task can be imposed upon the court, in patent cases, than that of determining what constitutes invention, and of drawing the line of distinction hetween the work of the inventor and the constructor. It is very often difficult to determine what degree of improvement takes a case out of the mere exercise of mechanical skill and judgment, and places it within the domain of invention or discovery. Certain well-defined general principles have, however, from time to time, been announced, in plain, clear, and distinct terms, which are calculated to materially aid the courts in deciding cases of like character with the cases under consideration. The supreme court has repeatedly held that, under the constitution and the acts of congress, a person, to be entitled to a patent, must have invented or discovered some new and useful art, machine, ma.nufacture, or composition of matter, or some new and useful improvement thereof; and that "it is not enough that a thing shall be new, in the sense that in the or,form in which it is produced it shall not pave been betore known, and that it shall be useful, but it must, under constitution .and the statute, amount to an invention or discovery." Hill v. W'oostCT, 132 U. S. 700,10 Sup. Ct. Rep. 228. The cases on this subject are collected in Thompson v. Boisselier, 114 U. S. 1,11,12,5 Sup. Ct. Rep. 1042. To them may be added: Stephenson v. Railroad Co., 114 U. S. 149,5 Sup. Ct. Rep. 777; Lock Mamif'g Co. v. Greenleaf, 117

590

FEDERAL REPOR'rER,

vol. 47.

D.' S. 554, 6 Sup. Ct Rep. 846; Gardner v. Herz, 118 U. S. 180, 6 Sup. Ct. Rep. 1027j Holder Co. v. Ferguson, 119 U. S. 335,7 Sup. Ct. Rep. 382; Hendy v. Iron- Works, 127 U. S. 370, 375, 8 Sup. Ct. Rep. 127,t}j Holhtnd v,'Shipley, 127 U. S. 396,8 Sup. Ct. Rep. 1089; Plow Co. v. Kingman, f29·U. S. 294, 9 Sup. Ct. Rep. 259; Brown v.District of Colttmbia, 130 U. S. 87, 9 Sup. Ct.Rep. 437; Day v'. Railway Co., 132 U. S.98, 10 Sup. Ct. Rep. 11; Watson v. Railway Co., 132 U. S. 161, 10 Sup. Ct. Rep. 45; Marchand v. Emken, 132 U. S. 195,10 Sup. Ct. Rep. 65; Royerv. Roth, 132 U. S. 201, 10 Sup. Ct. Rep. 58. In the light of these principles, the facts in these cases, as shown by the evidence, must be applied and considered, in order to enable the court to determine upon which side of the border line the patent falls. The prior art is represented by the ordInary T-rail and the California street-rail. Neither Of these rails possessed an the advantages of the patented rail. In fact, the object of the patentee in changing the form of the rail-as stated in his specifications heretofore quoted-was to secure in one form all the advantages possessed by the rails then in public use. The general features of his invention were admitted to be old, and he therefore disclaImed the same, and confined himself" to the forrilhereinaiter particularly described and claimed as new." The advantages testified to by complainant's witness Breevort, that the patented rail "is adapted to be placed on a sleeper below the street level, so that the paving can be brought up to it. It has a head for the bearing of the wheel, a flange which permits ordinary street traffic, a vertical web and foot,"-w8re an 'possessed by the California street-rail. of the California street-rail, the witness said:
"The said rail has not got the same disposition of metal or the same combination of' parts, as claimed in the fifth claim of the patent.' It is true that the sample of Tail shown me has a head. a flange, a web, and a foot, but these part,s are differently shaped, and are differently located in regard one to the other, when compared with either thedefendants' or the complainant's rail. The rail shown me has no offset under the head; and, if such a rail was used with fish-plates, one set Of _fish-plates would have to be used for the side of the rail on which the head ,was turned, and another and narrower set of fish,plates would have to be used for that side of the rail on which the flange is t,urned: Botli in the defendants' and complainant's 'rail, the offset under the head enables fish-pIatt'S of like size to be used on both sides of the raIl, besides furnishing strength to the head. In the sample of rail shown me, strengthfortl:j6 head has been obtained by a different disposition of the metal, and the offset has been dispensed with."

The flanged Pails are shown by the testimony of both parties to be advantageous, by reason of their adaptability for street paving. The California street-raIl is a flanged rail, andinthipespect it was an improvement upon the T-rail. This advantage is secured in the form of the patented rail. The advantage of even fish-plating in the patented rail was obtained. by the use of the offset, C, and this is the most prominent feature upon which the invention of the patented rail is claimed. The form of the California street-rail did not admit of even fish-plating. The old T-rail, however, had that advantage. Its form was such as to allow

JOHNSON CO.'

v.

PACIFIC ROLLING-MILLS CO.

591

even fish-plating. The rails were even .on both sides, and the plates could be transferred fran), 011e side to the other, and on}y one size of plates were required to be purchased. It will thus be seen, stated by complainant's witness Breevort, that "the patent of Johnson described an improved form of rail, intended principally for use in s.treets for car ;;ervice and street-railway service. The said rail described in the patent designed Jopresent many .of the advantages of the .T-rail, and possessing also some of the advantages of the ordinary. tram-rail." The change in the. form of the raUso as to secure .these advantages, as shown by the evidence, was, in my. opinion, t4e result of ordinary mechanical skill, which did not require the exercise of the inventive faculty of the mind. In Trimmer Co. v. Stevens, the supreme court, in passing upon a similar question involved in that case, said: "Effort was made to show by other witnesses that the features in the Orcutt patent, specified in the statement of cOllllsel above quoted, are all patentable novelties, especially the 'combinationof them into one device. We repeat that, in view of the previous state of the art, we think otherwise. The evidence. taken as a wh6·le, shows that all of those claimed elements are to be found in various prior patents. some in one patent, and some in another, but all performing like functions in well:known iuventions having the same .ast/ie Orcutt. patent. and that the,re is no s)lbstantial diffl;rence between the Brown metal cutter and Orcutt's cuUer, except in the configuration of their moulded snrfaces. That difference, to 0111' minds, is not a patentable difference. even though the one cutter was used in the metal art and the other iR the leather art·. A. combination of old elements, such as, are in patented device in ,suit. not constitute a hIveD.twn. la7 U. S. 433, 11 Sup. Ct. Rt,p. 150. ..... The changes made by in the form of were changes of dp-gree only, and did not involve any pew pripciple... It was nation of old elements into a new form, without producing any new Il).ode 0(<;>pllrati9n. . It is, as WaS the supreme court ill.Bttrt v. E'voru, 10.3 U. S. 358, 10 Sup. Ct. Rep. 394".A mere aggregation of old parts, with only such changes of form or arrangement as .:;Lskillful mechanic could r!ll1dily devise.-the natural outgrowtp of the deve\opment of mechltnical skill. as dlstihguished from invention. The changes Jilllde .* *. in the construction * * * wenlchanges of degree only. and did not involve any new pruiciple, * * * performed no new

*

In Florsheim v. Schilling, 137 U. S. 77, 11 Sup. Ct. Rep. 20, the supreme court adopted the rule announced in Pickering v. McCullough, 104

U. S. 318:

"In a patentable combination of old elements aU the constituents must so enter into it as that each qualifies every otber. * * * It 111ust form either a new machine of a distinct character and function. or produce a result due to the joint and co-operating action of aU the elenwnts, and which is not the mere adding together of separate contributions. The combination of old devices into a new article, without producing any new mode of operation, is not invention."

Burt v. El'ory, 8upra. See, also, Hailes v. Van Wormer, 20 Wall. 353; Reclcend07jer v. Paber, 92 U. S. 347; Dottble-Pointed Tack Co. v. Two Riv-

592

FEDERAL REPORTER,

vol. 47.

ersManv!'g Co., 109 U. S. 117, 3 Snp. Ct. Rep. 100; Busseyv. Manujacturing Co., 110 U. S. 131, 4 Sup. Ct. Rep. 38; Phillips v. City oj Detroit, 111 U. S. 604, 4 Sup. Ct. Rep. 580; Stephenson v. Railroad Co., 114U. S. 149, 5 Sup. Ct. Rep. 777; Beecher Manuj'g Co. v. Atwater Manuj'g Co.; 114 U. S. 523, 5 Sup. Ct. Rep. 1007; Heating 00. v. Burtis, 121 U.S. 286,7 Sup. Ot. Rep. 1034; Hendy v. Iron- Works, 127 U. S. 370, 8 Sup. Ct. Rep. 1275; Campbell v. Bailey, 45 Fed. Rep. 564,

and authorities there cited. The contention of defendants is, in my opinion, sustained, and complainant's bills must be dismissed. It is so ordered.

JUTTE

v.

DAVIS.

(District Court, W. D. PenWlylvanta. May 7, 1890.)
ADMIRALTY JURISDICTION-LIBEL IN PERSO:lifAM-SUPPLIES AND SERVICES.

The district courts of the United States have jurisdiction of a libel in personam against the owner of a domestic steam-boat for supplies furnished to the boat and services performed for her.

In Admiralty. Libel in personam by Charles Jutte against John M. Davis, owner of 'the Bengal Tiger, for supplies furnished' to the boat, and services performed for her. On motion to dismiss for want of jurisdiction. Denied. Geo.C. Wilson, for libelant. Bartdn &- Barton, for respondent. ACHESON, J. Undoubtedly this court has jurisdiction generally of suits in personam upon maritime contracts; and as this is such It suit against the owner of the BerJgal Tiger to enforce a personalliability, and not a proceeding in rem against the steam-boat, the objection that she is a domestic yessel, and hence is not subject to a maritime lien for the claim in suit, is not well taken, and the motion to dismiss must be denied. And now, May 7, 1890, the motion to dismiss the libel is denied.