,nDJl:RAL RJI:POBTER,
vol. 50.
'WUiiiltended to furbhb remedy. .' TheinventioD r inquestioD WIlS for side-discharge SePal'tl:t0r, and undoubtedly it was an improvement to 'such centrifugal creaJibers, although the evidenoeshows that it did not entirely remove thedUticulty,luiJtbecream slot or notch, j,sometiIile8 beComes stoppedbyeJl!Uaneou8 Iilatter. But this can never happen in defendant's separator. 'As to who ig entitled I to the credit of originally devising the vertical 01lt or depression inthetnouth onhe rotary vesseLforthe top discharge of the cream we need not here inquire. It is sufficient to say that, in ' iview:of the prior state of the ,art,: the obvious and declared purpose of ,eItibQdiediin the first 'claim of tbepatent in SUit, and the specification it is so to construe 'that Claim it, tbe top <ireaindisch,arge orifice 9f the defendant's machine. Let a decree be drawn diSmissfug the bill. with costa. '8
a'
,
(Olircuit court, E. D. penmywanfa.
l899.) , "
,10, ,
Claim 1 of patent No; 860;036, for methodot girder raU., ClOIl· · in rolling down the' metal forming the side tram iii rolls provided with J>asses, in one or more ot which that portion of metal forming. the offset or head of the rail is subjected to elongating action, and that portion only forming ita side Vllm is ....to laci.ng or dum ..m.,y acti.O.n, does. not involve p.atentable iD .· ventioD since It was O.40t.to roll girder ralls with a dummy action on both the head .ide ana the tram slde,and it was old in other torms of rail. to turn the whole lateral. flow of .Jnetal to tlle tl'lUD side, aDd the chanj{es nllCe88ary to accomplish . result .in the rolls used for 'rollin&, girder rails were obvious to a skilled mechaDio. I.S.urB-LJJOTATJONS 01' Cr..AIH. Claim 1 of patent No. 860,036, if valid. is llmited to a procesa in which all the rolla described in .thespecification are employed, and in the sPeciflo form ,hown and deacrlbed, and is not infringed by a process of rolling in which the rolling of the tail. prior to their insertion· Into the dummy pass it performed by rolla of · subatan· t1allv di1rerent oonstruction. , . i, i
P,ATBN'I1! 1'0&
R.ln.a-.-INVENTJON.
d.l8p. .
InEquity. ...Suit by the . 1ohnson 'Company to enjoin the TIdewater Steel-Workstrominfringing letters patent No. 360,036, for method of and tolls rolling side-bearing girder rails, granted to Arthur J. Moxham, March 29, 1887. Bill dismissed. Gwrge J. Harding and GeOrge Harding, for complainant. William A.Redding. fot tespondent. ACHESON, Circuit Judge. The bill charges the defendant with the infringement of'.letters patent No. 360,036, dated March 29, 1887, for a "method· of and 'rolls for rolling side-bearing girder rails," granted to Arthur J. Moxhatn, and by him assigned to the plaintiff. This form of rails is used principally for street railways, andcollsists of an offset, upon which the wheel ofthe car runs; a side tram, at a lower level, and
, lRep01'Coed 1:17
Wilka Collet, Esq., of the Philadelphia bal'.
JOHNSON CO; ".TIDEWATER 'BTEIllL-WORKS.
91
to the opposite side; upon which the wheels of ordinaryvehic1es may
travel; a vertide or girder web and base flanges on the opposite sides of the foot Of the web.' 'The object of the invention, as described in the specification,"is to reduce tt>a mihimuin the number ,of the dummy passes required in rolling the side-train girder rail, and' also, if desired, to dispense with the use oftongu'es in said passes." The specification defines "dummy passes" as those in which a special part of the entering masf'l of hot metal is subjected to a widening action, or transverse flow across the rolls, instead of being rolled out in the direction of the rolls' rotation,while the rest of the billet is subjected to that amount of elongation only which will prevent distortion during thepassllge of the mass. The "tongues" referred to as used in such passes are protrusions on the grooves of the rolls, which press upon the central mass. and, as the specification states, form "a line of neutral. flow of metal," and "thus tend to prevent the distortion that would otherwise occur from the difference in flow of metal on either side of said tongues." The patent drawings illustrative of the invention show three sets of rolls, having altogether twelve passes, numbered from 1 to 12, each pass hava special configuration. The described rolling is eflected by entering the hot bloom first into pass No.1, and, after passing it therethrough, then passing the hot billet through each of the other passes in regular order. By the successive actions of the first five passes the billet is .brought approximately to the general shape in cross-section of for the side tram having a side-bearing girder rail, the part been rolled down so as to project outwardly a greater distance than the part underneath, intended for the base flangej and, as the billet emerges from pass No. [), it is adapted in conformation to enter and be effectively acted upon in pass No.6, which is the only dummy pass shown by the patent drawings. The succeeding passes are all edging passes, the last, or No. 12, having the shape of the finished rail in cross-section. In pointing out "the essential difference in the treatment of the metal by the patented rolls from that before practiced," the specification states that it had been customary" to quickly work down in the rolls that portion of the metal which subsequently forms the side tram of the rail, and to produce this effect by providing tongues in the dummy passesj" but that "in the rolls forming the subject of this invention" the working down of the part intended for the side tram "is more gradually effected," and the necessity for the tongues is obviated, although their presence is optional. The specification further states that "in using a dummy pass, divided by a tongue as above mentioned," the requisite width of" head of rail"-that is, from the outside of the oBset part, or head proper. to the outside of the tram-was obtained by dummy action on both sides, -the head proper and the side tram; but by that operation there was not a snfficient lateral displacement or widening on the tram side to properly fill out the tram to the required width. The specification then proceeds: "Now, in order to obviate this defect. the whole lateral action of the dummy pass No.6, used in this invention, so far as displacement of metal is con-
of
,J'EDERAL . REPORTER,
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side of said pass,-the tram side; and the full the tram proper ,and the tram are thus secured without sacrificing any: of,the necessary thickness of the tram, a greater body of the metal being thus on to accomplisbihe desired purpose thap in the other case." It is added that, so is "this dummy pass," that girder rails may beroll.l'd with a less number of such passes than 'b,y anyoiberplan ofromng, so that in some cases, "as shown in the drawings at pass No.6," but one of such dummy pj1sses is necessary, though in some cases, depending \lpon the proportion and shape of the rail, it be advantageous to increase the number of such dummy passes. The defendant is charged with infringing the first claim of the patent, ' which is as follows: "(1) The methpd hereinl;le(ore described of rolllng side.bearing girder rails, cous1sLing in rolling down tile metal forming the side tram in rolls prOVided wlthpasses, in one or more of which portion of the metal forming the ofllset part or helld of the raU is SUbjected to elongating action, and that por. tionforming its side tram is SUbjected to displacing or dummy action only, whereby requisite elongation of metal is obtained without pinching the end of sllid tram, or excessivelyl'educing it in thickness, substantially as deand for the purpose set forth." The experts on both sides agree that in the described operation there must· of necessity be some elongation of the tram portion, and, as this i3undoubtedly the case, the claim should be read with the word "only" transposed thus: "And only that portion forming its side tram is subjected to displacing or dummy action." As I understand the matter, all concur ,in this reading. . The second and only other claim is for rolls whose passes have the respective configurations described; but,. as it is not alleged that the defe,nd(tnt infringes that:C1aim, it need not be quoted at length. . The defendant manufa.ctures side-bearing girder rails, a.nd in so doing employs rolls having 13 passes. The first eight of them differ from the plaintiff's first five preparatory passes both in configurations and result. The defendant's pass No; 8 is an oblique dummy pass, and its dummy action upon the hot billet taken from No.7 is upon the offset part, or head proper, and upon the diagonally opposite base flange, simultaneously. Then the billet of pass 8 enters pass Nos. 9, which is also an oblique dummy pass, and it acts simultaneously upon the side tram and upon the diagonally opposite base flange,-that is, the flange beneath the offset part. 'l'he succeeding passes are edging passes. The only dummy passes employed by the defendant are Nos. 8 and 9, and each of them is essential to the defendant's method. Now, it is clear that the defend· ant does not violate the first claim of the patent in suit unless it is by the employment of dummy pass No.9, in which the dummy action, as respects the head part, is concentrated upon the tram side, while the offset side is confined by the rolls, and subjected to elongation only. This pass,luLalready noticed, is arranged obliquely to the axis of the rolls, while the plaintiff's dummy pass No.6 is at right angles to the rolls: and aJ\lrther difference between these two passes is that in the plaintiff's there is no dummy action upon the base flange. Is the use
JOHNSON "CO. tl. TIDEWATER STEEL-WORXB.
98
by the defendant of pass No.9; in its method of rolling side-bearing girder rails;any encroachment upon the exclusive rights of the plaintiff? To intelligently answer this question we must first look into the prior state of the art of rolling rails for railways. It is quite evident, upon the face of the specification itself, that the invention which is the subject of the patent in suit was at the most a mere improvement in the art. But when w:e come to consider the proofs in the case it becomes still clearer that ,the invention was not one of any primary character. The rolls long-in prior usefbr making the well-known "T" rail,-which has a head central on a vertical web and a double-flanged base,-besides the preparatory roughing passes, were provided with both dummy passes and edging passes; and in one of the dummy passes the base flanges (both at the 8ame time, it is true) were spread out or widened laterally, while simultaneously the head and web were subjected to vertical compression and were thus elongated. Moreover, during this operation the web was unrestrained laterally. Again, many years before the date of the invention in question, flat, side-bearing street rails were made by rolling down the hot billet in rolls having flat passes, in which the offset part or head of the rail was confined vertically and elongated, while simultaneously therewith the side tram was widened. But, still further, the doublecflanged side-bearing girder rails shown in the plaintiff's patent were old, and had been successfully and perfectly made in rolls, furnished with. suitable passes. Such a side-bearing girder rail is disclosed in letters patent No. 272,154, dated February 20, 1883, granted to T. L. Johnson, and by him assigned to the plaintiff; the expressed object Qfthe invention there patented being to improve the form of that class of street-railroad rails theretofore used, and which combined the principal features of the tram rail and those of the "T" rail. From the numerous prior patents in evidence it appears that rails of the. most irregular shapes in cross-section had been rolled through passes of peculiar and diverse configurations. It was old to arrange in series for such purposes preparatory and finishing rolls, provided with rough. ing, dUlllmy, and edging passes. In rolling the rails it was common to apply dummy action to secure the lateral spreading, wherever it was desired to wide.n out a special portion of the mass of hot metal, while other parts of the billet were simultaneously subjected to elongating action, Moxham's patent, No. 312,213, dated February 10, 1885, shows a method of rolling flangeless, side-bearing girder rails, consisting in first rolling the hillet through the preparatory passes to bring it to the proper sectional shape, and then through dummy passes wherein the offset or head part is confined against lateral spreading, and is subjected to elongation under vertical pressure, while at the same time the side tram is widened out by dummy action, which is concentrated wholly on the tram side, and then the billet is put through finishing Moxham's patent No. 330,998, dated November 24, 1885, 10r rolls for rolling a hot metal hloom into a trilobe form, suitable for subsequent rolling into any of the ordinary forms of side-bearing gird,er rails, shows a three-sided action dummy pass l whereby simul-
DDERAL'REPORTEB,
vol 60.
tIlrieously dummy action' iis ',applied to .theotl'set or head patt, the tram-side part, alid the central web part aftbe billet. The Moxham and Trimter patent, No. 292,759; dated January 29, 1884,.described and shows. rolls' for rolling double-H.anged side-bearing roll girder bavdummy-paSses proVided with tongues and edging passes; and in each of thesei(l'nmmy passesthe.dummy· action is simultaneonsly upon botbthat portion oNhe 'billet whichgbesto formtbe offset part or head proper and that pUltion which goes to form the side tram, the metal spreading laterally in opposite directions I while the rest of the billet: is subjected to elongation·.. It is to be noted that during the twosideddummyaetion of the Moxham and Trauter rolls the web portion 'of the billet is unconfined and unrestrained laterally, which, as we ha-ve seen, is also the case in the mamlfil.cture of the liT" rail. This feature, common to the plaintiff's pass No.6 and to the defentlant'spllssNo. 9, is not referred to at all in the specification of the patent in suit. but, if it is a matter of any importance in securing the result,certainly it is not new. Enough has been said to show that at the date when Moxham devised his dummy pass No.6 the domain of invention with respect to rolls for making side-bearing girder rails had become very contracted. Now, what did Moxham really here do? Comparing the dummy passes of the prior Moxham and Trauter rolls with pass No.6 of the patent in suit. wefiIid:that he simply extended the coBar of the lower roll upwardly, so ,as. to bear against the outer end of the offset head of the billet, and thus turned the wholi3 lateral flow of the metal to the other or tram side. Did the conversion of the tWO-sided dummy action pass into a one-sided dummy action pass constitute invention? The idea of concentrating the entire dummy action upon the tram-side portion of the billet was old, and had been practiced in themanufil.cture of flat, side·bearing street rails; and it was also shown in Moxham's earlier patent for rolling flangeless,side-bearing girder rails. Was it. then, anything more than the exercise of ordinary mechanical skill and good judgment to carry up the coHar of the under roU to prevent the lateral flow of metal at the offset side, andoonfine the transverse flow to the tram side, where the metal was needed to fill out the tram? Looking at what had been accomplished in the art of rolling railroad rails of all forms, aiidhaving regard to the views and decisions of the supreme court upon the subject of what amounts to patentable invention, as announced in Atlantic Works v. Brady, 107 U. S. 192, 2 Sup. Ct. Rep. 225; Ho7,. liSter v. Manufacturing Co., 118 U. S. 59,5 Sup. Ct. Rep. 717; Thompson v. Boisselier. 114 U. S. 12, 5 Sup. Ct. Rep. 1042; Aron v. Railway Co., 132 U. S. 84,10 Sup. Ct. Rep. 24; Burlv. Evory, 133 U. S. 349, 10 Sup. Ct. Rep. 894; TrimnW1' Go. v. Steven8, 137 U. S: 423, 11 Sup. Ct. Rep. 150; and other cases,-! cannot avoid the conclusion that the change in the construction of the rolls; whereby the dummy action was confined to one side of the pass No.6, and thus was concentrated upon the tram, did not call into exercise the inventive faculty in the true sense. But, were a different conclusiooallo\vable, what construction should
lOHNSON"C<). 11. TIDEWATER S'rEEU:WORXS.
,be "given to, the first claim;of the patent? Undoubtedly it is for the -particular method rolling side-bearing girder railst . the ,Specification and; 'Rceompanyiog ," The methM hereinbeiore described," are, the opening words of theclaimj "llUbstantially 'as and for the purpose the closing words. Now, the use of pass No. 6 is but one of the steps in the described method. There are other co-acting rolls necessary to the specified operation. Mr. Hunter, the plaintiff's expert, correctlyappreherias the alleged invention as consisting "in subjecting the billet to successive rolling actions in a number of passes," of \Yhich it is to peculiar dummy action; and he truly' says: .. The billet, being subjected to- ,the pecullarllction in the pass wherein the dummy action!1I concentrated, upon the tram or,side bearin/I. mUl'lt a wJ1ich adapts it ,to enter the said pass, and \:>e capable,of permitti.ngthe intermediate stePll in the process being carried into effect.", ' That the, described preparatory steps are matter of substance seems very i::learjvhen we consider, in connection, with the words of the claim, thatpl\rtiof the specificatitln in which the patented method is contrasted with die 'prior method: ' , "It bas heretofore bl"Em customary to quickly work down in the rolls that portion of thametal which subseqnently forms the side tralli of the rail, and, to produce this effect. by providing tongues in the dummy passes.. · · In the tolls forming the subject of this invention the working down of the side tralli oOhe rail ismtlre gradually effected, and any necessity for the presence of said tongul::sis obviated. though, their presence is optional." us to perceive the force of the opening words This language of the claim: "The method, hereinbefore described of rolling side-bearing girder rails. consistingJl1rolling tlownthe ,metHI forming the side tram In rolls provided with passes, in one or more of which." etc. True, in the words immediately following, great prominence is given to the pliBS or passes in which the dummy action takes place, but still theprevara:tory passes desdribed and shown for rolling down the part of the metal intended for the side tram are an essential part of the method as claimed. But, furthermore, in view of the gradual advances towards perfection in the art of rolling side-bearing girder rails, and the state of the art at the date of the invention here in question, the scope of the claim must, on well-settled principles, be limited to the specific fOrIns of construction shown and· described by the' patentee. Railway <:h. v. Sayles, 97 U. S. 554; Duff v. Punnp Co., 107 U. S. 636-639, 2 Sup. Ct. Rep. 487j Castor Co. v. Spiegel, 133 U. S. 360, 10 Sup. Ct. Rep. 409. The defendant's method of rolling is not a mere colorable departure from that of the plaintiff's. The differences between their rolls are substantial. I am, then, of the opinion that infringement is not shown. n maybe added that the conclusions I have here reached, both upon the question of patentability and the question of construction of the claim,
96
nDERAL REPORTER,
are in harmony with tbe views expressed by Judge HAWLEY Intbe'cue of Johfi,Mm ,v. PaciM ,RoUing-Mill8 00., 47 Fed. Rep. 586, which was · suit upon the JohnsoD patent for improvements in street-railroad rails, above referred to in connection with the discussion of the prior art. Let a decree be draw.n dismissing the bill with costa.
u..
DEDERICK ". GARDNER
etal. AprU 10, 1_)
cmrcuAt Court, N. D. Nf/W York. SoPAftlnos " ! 12"
t. 'SAMB-lNVBl\TTION-INPRINGEMENT.
Letters patent No; 145,029 and' No. 841,559, issued to Peter X. Dederick November lll119, and May 11, 18&S, the latter being upon a divisional application for an improvement in horizontal "continuous" baling presses" cover, as the gist of tbe invention, a devioe consisting of a loose connection, as a chain or rope, between the toggle and the horse lever, sl) that the toggle is pulled back and forth aoroBsthe center lhie by the vibration of the horse lever. Held that, in view of the fact that the press has into extensive use, the device must be considered tq have invention, over the /Iomewhat analogous device shown in patent 261,828, issued July 18, 1882, to George Ertel, and,whioh is adapted to an uprill'ht press. " ' ,
!'OB INvBNTIONS.....INVBNTIONS-BALING PBBSSBS.
Letters patent No. 282,400, issued to Petedr. Dederick, as assignee of ,Albert A. Gehrt, are for a method in a baling press, resisting the baokward movement of the traverser caused by tli.e expansion of the ha.Y, consisting of the application of friction, so as to stop the motion gradually. Claim 8 covers the combination, with the tl'lloVllrser havins- ,the rearward extension, of the lining, or planking and the se,t sorew for adjustlDg the same, substantially as desoribed: Be/,d that, if this inTolved' any patentable invention, it'is limited to the speoi:llo device, and is not infringed by the device covered by patent No. 849,934, issued September 28, 1886, to George Ertel., , .
InEquity. Suit by Peter K. Dederick against Henry Gardner aDd others for infringement ofa patent. Decree for complainant. Church Church, for complainant. G«Y1'ge H. Knight, for defendants. COXE, DJstrict Judge. This is a suit for the infriQgement of three patents,N<;>s; 415,029,341,559, and 232,400, granted to the complainant November 12, 1889, May 11, 1886, and September 21,1880, respectively, for improvements in baling presses. The latter patent, No. 232,400, was granted to complainant as assignee of Albert A. Gehrt. The application for the first two patents was filed October 31, 1882. This application was divided and a new one filed December 18, 1885, on which. No. 841,559 was granted. The invention of No. 415,029 relates to in the manner of horse lever to the toggle in power applying devices of "continuous" baling presses. Letters pate,nt No. 257,153 granted to complainant May 2, 1882, show mechanism qy which the toggle is pushed from one. side of the center line to the other, the back expansion of the hay operating to return the traverser and project the of the toggle alternately out at opposite of the press as the horse lever is, worked from side to side. ThiJ