STANDARt> OIL CO.
'I!.
SOUTHERN PAC. R. CO.
109 et al.)
(STANDARD OIL
eo.
v.
SOUTHtRN PAC.
R.
CO.
'Oircuit Oourt, N. D. OalilJ'om'la. October 12. 1891.) PATENTS FOR Il'rVENTIONS-COMBINATION-OlIr(JARS.
Letters patent No. 216,506, issued JuneJ.7, 1879, to M. C. Brown, for an improve.ment in cars, consisting in a division of the car into two or more parts, some of which shall be constructed as tanks for carryinlS oil, while others are .fitted for ordinary merchandise, the object being to carry such m.erchandiseon the return trip, and thus obviate the necessity for haulng empty oil·cars for long distances, are void for want of patentable combination.
In Equity. Pill¥bu7)Y Oc Blandi.ng and .Langhorne Oc Miller, for complainant. JoJm,,·S. Boone and S. O. Denson, for respondents. 'HA:WLEY, J. This is'8, bill in equity for the. infringement of letters patent'No. 216,506,gtarlted to M. Ca!DpbeIl Brown, June 17, 1879; to complairiant, for" in oil-cars." Thespeciticationin the patent reyites as follows: ' . . . ":My invention relates to.cars, and especially to that class of cars,designed for transporting merchandise and oil or other liquid8, and it consists. in .the pnrtsand: combination of parts hereinafter described and claimed. oils or other liq uids maybe safely transported in' the saIDe car with miscelIane· ()US merchandise. * * * The object, as briefly'above stated. of my device, is toproouce an improved form of car for the transportation of oils.andliquids in bulk, and which shall also be adapted for the transportation of ordinary mer· ehandise on roads where a load of oil ,or liqUid cannot be obtained on ret.urn trip, thus obviating the necessity of hauling empty over long dis-tances,as is now commonly done; and to this end the construction of the or· dinaryfrmght-car is modified as follows: The car space is divided into two 01' more compartmeIlls; but, for the purpose of the present specification, we will suppose it to be divided into three. The central compartment, as shown in the drawings, wonld embrace about two-thirds of .theentire length oLthe ear, and is designed and adapted for oIdinary storage, and for this purpose may be constructed in any proper manner. The two end eupy each about one-sixth of the entire length of the car, are located ill the ends thereof, over the trucks, and are designed aud constructed'to contain metalllc'tanks, * ... * which tanksl/o.re ildapted for safely containing and tl'ansportinK oil or other liquid. * * ... I am aware that the several featuresembodied in my improvement are not independently new, and I restrict the invention to the specific combination of parts set forth in the claim. What 1claim is: A car subdivided into two or more compartments, each end eompartment containing an oil-tank; said tank constructed with an inclined or. self-draining bottom, resting upon a floor, formed in counterpart thereto; said. tank also haVing a tapering or inclined toP. with a filling opening placed at or near its highest point, and in line with a filling opening hi the car-top, and there being a removable partition, separating said tank from the next adjacent compartment, all combined as substantially set fortb." , Is this invention a mere'aggregation, or is it a patentable combination? What is the distinction between mere aggregation and a patentable combination? Acornbination of 'well-known separate elements, each of wbiah. when cotubined, operates separately and in its old way, and in whioh· no
FEDEB'ALREPOBTER, vol. 48..
new result is produced which cannot be assigned to the independent action of one Cl!r .the oth'er·of the separate· eJt>ruents,is an aggregation of parts merely, .and is not patentable. But if to adapt the several elements to each other in order to 'effect theiroo"operation in one organization demands the use of means without the range of ordinary mechanical skill, then .the invention of such fueans toijft'ect the mutuallirrangement of the parts would be patentable. The parts need not act simultaneously, if th,ey ;t;tI1itedly to a common 1'esult. It is sufficient if all the. devices co-operate with, respect to the work to be done, and in furtherance thereof, although each devicetnay perform its own particular function only. In Hailes WormeJ',Jpe . . "It musfbe conceded If it produces new ana useful resulls, is the eonstitllents of the combination were well known and in common use before the combination was made. But the produ¢ of the combin!ltlo.u. 8;1111 Dot a mt;1reaggrf>gation of sf:jyl'l'Rl each the Complete product of one of the combined elemen ts. Combhie4, resiiJtsare not Jleoossarily a novel result, nor are they an old raBult'<Jbtal'ned ina tiew and' Improved. manner. 1I1f>rely bringing old devices into juxtaposition, and there allowingl'acli to work out its own effect withoutthe·productionof some4lhll}g novel, is not invention. Noone, by bring·ing togt'ther several old devices wlthoutprodncing a Mw'and'useful result. the joint. product of the ;elements oftbe combination, and something than an aggregate of old r8sults,cari acquire a right to prievent others from using ther same, devices, llithersinglyor In other eVl'n if a new,andusetul result is obtained, cllnprevent othl'rs from using some of the delict'S; omitting otbers in the combination." 20 Wall.36B. Faber, the court said: . .'. to be pl\tpntllble, ml,istproducea,ditferentforce effect, rl'sult in that given by their separateparts,;;there wustbe a result produced by thelrnnion. If not it is only of separate eleUients." 92 8.,857· . In Pickering v:· McOullough, the court· said: . .. In apatentahlij combinatiQIl of old elements all the constituents must so enter il1to qualities ever, other., . * * .' * It must form t'ither a newmailbltle'ora Ilistlllct character and ft'nictlon, or. proumie a result due to the action of 'all the elemellts,.lnr4 whidl Is not the mere of separate cQntributioDI!." 318. Numerous 8uthorit:ies might be cited', substantially to the same effect.. The law is well settled, the principles clearly defined·. Thedi'between mere anci com'binations is case must fall upon the other.' Nocase' pivotal line. 13\ft ;the. facts ar,e often of such ",. 'i,t; to upon which side of borcledine'thecase· should be classed;" This difficulty arises in the applioati&it to the pdnciples of the law so frequently announced 'by the Eiupr.eme.¢Qurt'of; :United) States..." lfthe is COllsidered ·. d,(lmu,rrerto the bill; in order tohllve upon: the fi;Iil,al·h,ari.ng.,. Srondard.<Jil Co., Fed., Rep. 295,[ J'udgeSAWYEll"
STANDARD OIL GO. v; SOUTHERN "PAC. R. CO.
llL
for like reasons, would be'justified in cases of. gt,eat refuse an or dissolve II. restraining order if 'orie, issuEld., Standard Oil' 00. v; $otlthern Pac. Co., deeil1ed: by But when the case comes up on filial bearing it is tbe; iduty of the court to assume the responsibility, of actuallydetermitii'Dg upon which side of the border line the case falls. To properly decide this question the court should' constantly bear in mintinot only the principles of law applicable to such cases, but must keep in'view the reasons for the rule upon which said principles were 'rhe'S'everal features embodied in complainant's improvement are admitted Dot to be independently new. The contention is that. new and useful results are reacluid,that were not hitherto attainable under ,the prior state of the art. 'ThE' result claimed to be new is the cheaper trana.-, portationof oil in bulk over long hauls; that is, by the combined the patented car complainant is enabled to Sfl;V6 the expense of $95hith, 'elto'paid for the expense of the return oLan empty car. It, is:not claimed that the atrryingof oilon6. way co-operates directly with ,the performance of carrying dry merchandise thelother way, but p'Qjnt relied upon is that the two CO'-operate in the performance orearryinglherchandise both'ways, thereby producing a common result, viz., a reduction of the cost of transportation of, oils by successive acts performed in different parts of the service of the cari this result being, as before stated, in sa.ving the dead loss of hauling empty cars one i If this contention is sound, then the patent must be maintained. Is it tenable? 1 am of opinion that it is not. The construction of ,this patent,as contended for by complainant,would, in my audgment,be extending the principle of ,patentability of inventions beyond the rules laid down by the supreme court'of the United States in its recent decisiQns lipon this subject. The patentee admitS that the several features in his improV'ement "are notihdependently new." Upon the hearing prior patents were introduced, which embodied the general feature of carrying oils:or1iq,uid and dry freight at the same time, or "for liquid freight ia one direction and dry freight in the Do the elements of the; car and'of"the oil-tank combined: so co-operate as to produce a new result by their joint union? Successive action of old parts, where they all late to each other, and aU work to a'common end to perform a.common result; if the result is new,are patentable, but in all cases it 1I111st be a result which is due to the successive action of these parts. In Reckendorfer v. Faber, 8upra, numerous illustrations are made. There the combination relating to the manufacture of combined pencila and erasers consisted only of the llpplication of a piece of rubherto one end of the eamejieceof wood which makes a lead-pencil. The court as if a patent ,should grante<i for an article ,lie * * (lonsisting twelve inches long; on one end of which is an ordinary hammer, and oil the other end is a' screw-driver Of a tack-drawer. '. * '" It is the 'case Cltagarden-rake, on the 'haildleeild of which should be placed a hoe, or on tbe <ltberside of ,the same end of which should. be pll.!-ced a, boe.In all , ..
112
FEDERAL
vat 48.
these cases there might be t,he advantage of carrying about one instrument of separate instead of two, or of avoiding the liability to loss or tools. [and the, court might have added that the cost of manufacturing the articles would be much less. and that the combined articles could besoJd cheaper than thlHeparate articles could;] The instruments placed upon the same rod might be more con venient for use than when, used separately. Each, howe\'er·.performs its own duty, and nothing else. No is praducedno result fol!ows...,...from the joint use o,f the two." Now, in the case of the lead-pencil and eraser, the hammer and screwdriver, aod with the garden-rake and hoe, there was not only a convenience and cheapness in the manufacture of the articles, as combined, but in their use. Time would be saved: iIi the work to be performed by having the artioles in the combined instrument; and, ,if the, sole question of cheapness in the Use was to :govern, then the deoision in the Faber, Case should have been the other way. The patent shOUld have been sustained. The new result to be acoornplished, in order to take the case out of the rule of aggregation of separate clements as laid down by the supreme court, m'ust be a ,result produced by the manufacture of the article or machine itself, fts operation, union,antl effect. Suchillustrati'<)lls are Inaode in'the case already 'cited,as, ,for instance, the frame in a saw-mill which advances the log, regularly tom!3etthe saw, and the saw which saws the log. The two co-operate and are simultaneous, in their joint action of sawing; throughithe whole log. Or in the sewing-machine, where one part' ad vances the cloth and another part forms the stitches, sewing. A the action being simuItaneousin carrying on a stem-winding watch-key is another instance. The office of the stem is to hold the watch or hang"the chain to the watch; the office of the key is to wind it. When the stem is made the key, the joint duty of holding the chain and', winding the watch is performed by the same instrument. A double effect is produced, or a double duty performed, by the combined result. In these and numerous like cases the parts co-operate in producing the final effect; sometimes simultaneously, sometimes successively. The result comes from the combined effect of the several parts, not simply from the separate action of each. In this case there 'is no joint operation or effect in the construction of the railway car and the oil·tank combined which is in any manner due from thesimultaneous or successive action of the two as combined. It is a mere aggregation of old elements, producing no neW result by the combination. I deem it unnecessary to notice the contention of complainant's counsel relative to the peculiar' construction of the car, further than to say tbat; I have carefully examined this question, and, while it may be ad,mitted,' for the purpose of this decision, that the construction is such as 'to distinguish this case in some respects from Densmore v. Schofield, 102 U. S. 375, which it is contended was for a claim for "tbecombination ,of a tank and a car, however united," it is not sufficient, in my opinion, take thill case out of the 'rule as stated in the' other :laSeS to which I :have referred. I have not, in the consideration of this case, overlooked the fact so frequently announced that ,pa,tents for inventions sho-q,ld always be liberally construed, and all doubts, if any exist, should be
to
140&8$ ".DOI4ESTIO SEWING-I4AOH. 00.
113
solved ifi favor of the patentee. I .realize to the· fullest extent the importance and necessity of upholding, sustainingf and encouraging the inventive skill and genius of the country. To quote the language of the supreme court of the United States: "Patentees. as a class, are public benefactors. and their rights should be protected. But the'public has rights also. The rights of both should be upheld and enforced by an.equal1y tirm hand whenever they come under jUdicial consideration. to The bill is dismissed.
MORSS ",.DOMESTIC SEWING-MAOlt;
Co.
(Circuit Vourt,D.MaBBach<U8ett8. November'l; 1891.)
P A.TBNT8
Cla.iu!.l ofletterspatentNo. 288,239, granted October12,1880, to John Hall, foran improvement in dress-forms, whereby they' may be made more readllyadjustable to the v'"7ing styles, and of dresses, wl!os for" the combination, W\t1:\ .libs, 0, ot the spnngs, h, each pair of springs baving their upper ends secured to a single rib, and tbeir lower ends'to the two ribs next the said single rib, 8ubstantilillyas and for. the purpose specUled. "The specifications show. the ribs to be divided .into sections, with the two springs attached to t e upper section,.and spreading down:wards to the adjoining ribs ; and expressly disclaim as new the stretohers, blocks, rests, and band, and tbeir operation to expand and contract the dress-form at pleasnre. Beld, that the patent was limited to the specific device, and that the equiv&lent thereof was not contained in the patent of November 29, 1887,'10 William H. XJ1apPt having double. ribs qomposed of a single U-shaped wire extendm¥ in an unbroken piece their entire length, and rigidly attached to a segmented wauit-band. , " . ;' -,I " ,
!'OR
ALENT8-0l;)RBss-FoRM8.
In Equity.
Suit forinfringemefit of patent.
Charle8 F. Perkins and PaysOn E. Tucker, for complainant. John Dane, Jr.., for defendant. COf.-T, J. This is a suit broughtfor infringement of No. 233,239, granted to John Hall, October 12, 1880, for a new and useful
improvement Hall was also the inventor of an adjustable embodied in a patent of the same date as the one in suit. The patent in suit is for an improvement on this prior invention, whereby, by means of springs attached to the ribs, the form is made more adjustble: The specification says: . . "This invention relates tojmproved means for providing the ribs,ofadress. form with the desired spring and elasticity necessary in order to make the dress-form so as to conform to varying sizes. styles, etc., of dresses. ... . ' "'The ribs, n, C, instead of extending each in an unbroken piece for the entire length of the skirt, are provided with springs,h, h;bbth ribs and springs being preferably of wood. Each rib, c, is provided with two springs, h, extending to the next adjacent ribs; the rib being beveled, so as to allow the springs to set at the angle shown. · · '" It will be noticed that in the rear portion of the dress-form the springs, h, are cut off immediately after extending a trifle below the lower bands, k. while in front they are allowed to.extend down while the ribs,o', are cut off. '£he effect is the same in either v.48F.no.1-8
case;a$ belowtbe'lowertbands, k. the springs. hi cease to be springs., and perform the function ribs.· '" i"';Bymellns.of the application of thespriJigs. h.tothe ribs. Rnd milch better elasticity and spring are produced thl!.p when relied entirely ticity of R.n proJ>;en ' '. , ., ,>' .' ,
The first claim, whicbiisalone. in ,controyersy ,ia,as follows: )'Iil'l\ dtess-'!orm,the combinationpwnh rflls.cl'of the springs. h. each pair of springs having their upper ends secured to a single rib. and their lower ends to the two ribs next the said single fib. sulJstantially as and, for the purpose specified." '
The patentee expressly disclaims in his specification, as not new in this invention, the stl'etchers, blocks, rests, and band, and their operation to expand and contract the dress-form at pleasure; in other words, he expressly limtts certain"specific impro\l'ements in an adjustable dress-form. The improvement covered by the first claim is having s;priQgs so arranged therefore limited: t9 that each pair of springs have their upper ends secured to a single rib, of the,detendapt 'lS cQDstructed accordmg to letters pat2,9,' 1887, to William A comparison that, in thel1'a)lpatent fails to of ribs and springs as 'fne ribain <le(endant's dress;form 'are It double rib, being U-a:haped.-t: the exte.nd,ing in annnbJ;oken piece their 'rhe ribsst:e in position by being rigidly attached to a 'waist-band divided into segments; this' segment waist-bllnd serving the purpose of g,t ()fthe Hall, patent·. In the Hall patent the at:e ,t,wo springs are attache<;l to the upper sections. ' . This lormof rIbs, vPth the sj>ririgsattached, is not found in the defendant's device. There is nothing in ueferidant's structure which corresponds, or .""bich is the equivalent, within the meaning bt' the the rrbs,and springE! ofthe :a:all pateht. "It the ingenuit,y ofthe complainant's to show that the. uribt'()1reti wire rib of the Knapp dress·form is of 'rib split into sections, and the the same or the 'springs attachedtheretoOf'theHallpatent. The ribs in defendant's "[otm continuous from' waist:blinu to base. ' TheY ha\7e no springs can; necting sections of ribs. If the ribs, or any portionthel'eof, are to be con'sidered 8S 'spring8,they have' noconhecition with ribsoh either side. )3earingin mind that the,H,4Ilpatent iso't':lly forao irpprovement in adl am of opinion that the does not inclaim of thepatept,and that,the billmUllt be dismissed. Bill dismissed. ent of the J{na:pp ·,.,r
,
(I I.,
· BROWN V.' YEATS.
IHj et aU
BROWN
et
YEATS
(Distrl.ct Oourt, S. D. Ne!If York. November 8,1891.) DBJroRRAGB-BROKERS' COMMISSIONS-GROSS AMOUNT 01' CHARTltR.
Where a charter provided for a commission to the ship-brokers of 5 per cent. "on the gross amount of oharter." and. also contained a stipulatio,n. allowing a certain sum daily fol" any detention by default of charterers, held, that commissioDs were due the broken on demurrage collected under the detentionrclause of the charter, as well as on the freight.
In Admiralty. Suit to recover ship-;brokers' commissions. Owen, Gray Sturgis, for libelants. ' Wing, Shcrudy Putnam, (0. O. Burlingham, of counsel,) for respondents. . BRQWN', J. The libelants, as ship-;brokers, effected in behalf of the resporidents a charter of their ship the Alex. Yeats, which contained a clause providing that "a commission of 5 per cent. on gross amount of this ilh,arter" should be due on the signing thereof. ,The charter wliS for from Manilla to New York, and contained a stipulation allowbig 45'}ay days for loading; and fur customary dispatch on discharge; arid (01' any detention by default of charterers, 8106.40 per day. The depiui'rage collected under this clause of the charter at Manilla amounted to $24,046.40, and the collected amounted to $15,308.11. The libelants, agreed to allow two-thirds of their commissions under the charter to the respondents' agents, now claim their one-third of the stipulated commissions on the whole amount of freight and demurrage collected under the charter. The respondents paid intO court the pro:. :portion of the commissions on freight, bat contest their liability for commissions on the amount collected for demurrage. I cannot sustain the defense. The charter expressly provides fnr commissions "on the gross amount of thischllrter." That expression faidy arid naturally imports commissions' upon the gross, amount earned by the ship ,uoder the provisions of the charter. The word "deinurrage" is not used in thucharter. But the provision for the payment of a spec'ifj.ed .sum per day for any detention of the ship, though in the nature ,of is one of the express contract stipulations of the charter, just liS explicit as the provision for the payment of freight at a sped,fied rate. The sum collected for detention is not by way of damages or pelli. alty, but for the possession and use of the ship at a rate specifically agreed on. So far as I can see, there is no reason for discriminating, as respects the right to commissions, between any of the provisions of the charter under which the vessel obtains compensation. 80 Jar as the language of the charter goes, freight or dead freight might be excluded as well 8S demurrage. The mlJin consideration urged against this view is the further provision of the charter that the commissions were due "on the signing hereof;"
IReported bl Edward G. Benedict, Esq., of the New York bar.