r .. :,
'J!'EDERAL REPORTER,'
vol. 52.
in rthe:patent by the conllolidation to 'the new company, or whether some D1st:r(iment I'm writing' must ·stilL be i exeouted .to make such transfer· oom· continuing sufficiently: to. consummate thede.Johition whrchthecorisolidation act provided for ,""':'see'Ediaon Electric LiJ;;htOo.'V.Ne:w Haven'1iJlxJctric Co., 35 Fed. Rep. 236,) the,new company wOlllid have the right 1loepntinue, under the name of the old one, pending:litigation which are ,in fact its own, with the same forclr and: effect as if it were itself complainant. 'We do not find in the va.riau.l introduced in evidence sufficient warrant; for holding interest in the subject of thecontrpvetsy to enable ,it to maintain the bill in its own name without joiningotberparties," norido,thefacts make out such a case that injunctioo,should be refused on any ,theory,of'laches or equitable estoppel by reasonliof·undue' delay'in,bringingsuitji,or acquiescence in known infribgerrients. ' .· , The deeree: of the oircuit'oourt is' therefore affirmed, with costs.
as
VALVE
CO. ,,,.COALE No.1&'
SAFETY VALVE
Co. et
Courtol4ppeaZs, FOurth. Circuit. ,'i
11, 1892.}
, Claim 1 of letters patent ,No. 200',119, issued February 12,1878, to Henry G. AshtOn, for all· improvement Iiii' safety valves, consisting substantially of an ordinary spring yaJ,veW\th a POP-Vltll\\"8 chamber added, in combination with a valve seat, an inclosed spring discharge chamber, is void because of anticipation by the English! patent of 1872; No. SIll, to Giles. fiG Fed. Rep. 100, af;' firmed. ':': ' " ,!. ' J, ' "
ro.
:J;NVENTIONIh-Al!TTIOIPATIOllf....,SUBTl.' VALVES.
9. BAME-]);l[UNT9J' PLAUt/:.
In his specHlcations Ashton statel! that his combination is very important "in alloalles where the steam'le prevented in any way from escaping freely from , the as is, ott!,n, the case,"· In another place he states that he proventll in the spring for the escape of such steam as may enter it, but these vents. are not mentioned in the claims, which cover merely the abQvecqmblJ»ltio,D, "a11'1'JlongEld to operate'as desllribed. Hetd,that the patent did hot coVill' th:e'ilsErof the vent holes.. 50 Fed. Rep. 100. amrmed.
Or
8.
Lettel'll Patent No. 299,1>081 lesued June 8,' 1884, to Ashton, for a combination of "muming chamber, surroundlDg a safety valve,' with a pipe communicating from the spring chamber to the 'outSide' air, was anticipated by patent 297,066, issued April 15, 1884"to Coale, whichcOVl/fs practically the same featuI'es, complainant haVing a preponderance of the evidence that Ashton was in fact the first failed to show inventor. 5OF1ed. Rep. 100; affirmed. ' ':',
A.ND JUNiOR P>ATENTS-EvIDENCE.
Appeal fromcthe CirctIit Court of the-United States for the District of Maryland. In Equity. Suit by the Ashton Valve Company against theCoal& Muffier & Safety Valve Company and others for infringement of patents. In the circuit C(1)urt the bilbwaa dismissed. 50 Fed. Rep. 100. Complainant appeals. :Affirme!i.
ASHTON VALVE CO.
V.
COALE· MUFFLER
&
SAFETY VALVE co.
315
J."E. Maynadier, for appellant·· W. J. O'Brien and H.T. Fenton, for appellees. Before GOFF, Circuit Judge, and HUGHES and SIMON'fON, District Judges. HUGHES, District Judge. This suit relates to safety valves applied to steam boilers, particularly to those used on the locomotive engines of railroads. It presents two questions for adjudication.' One is whether the first claim in complainant's patent, No. 200,119, was patentable, and has been infringed by defendant in the safety valves which it manufactures and sells, one of which is exhibited with the evidence. in this cause. The other question is whether the defendant, in making and using his combined safety valve and muiRer described in patent 297 ,066, one of which is exhibited, infringes complainant's combination of safety valve and muffier, described in patent 299,503. The court below decreed for the defendant on each of these questions. To this decree the complainant has filed 20 assignments of error. It is hardly conceivable that the court below could have fallen into as many as 20 distinct, different errors in passing upon the two questions at issue; and this court will not enter seriatim into an examination of these several assignments, but will treat the subject in a more compendious manner. Between 40 and 50 exhibits have been filed in the evidence in this case, consisting, for the most part, of patents granted to various persons by the United States and Great Britain, illustrated by copies of the original and several of them also by models of machines in actual use. They show the evolution through which the steam safety valve has passed in the last quarter of a century. They show that neither one ofthe patents, 200.119, 297,066, or 299,503, with which .we are immediately concerned, embraces any novel principle, and that these patents embody only some change of mechanical form, arrangement, or combination more or less variant from safety valves and muffler attachments previously in use. The utmost claim of their authors (with an exception that will appear in the sequel) is for novelty in the combination of known devices, and not novelty in any principle discovered. It is true that the combination of known devices in such manner as to produce results new in kind or character is patentable; yet, when patents for the combination of known devices in such manner as to produce results new and better only in degree than others previously produced are brought before the courts, they are held to be nonpatentable. In further introduction to the subject before the court, a few things may be premised about safety valves and mufflers. The original safety valve was used in connection with a spring,-usuaUy a spiral spring,by which the amount of pressure to be allowed in the boiler before escape could be regulated. This spring safety valve was at first notinclosed from the outer air. Afterwards a metallic cylindrical chamber or box was placed over it, with more or less vent in the top for the outlet of any steam that might find its way into this box, as a safeguard
316
FEDERAL REPORTER,
against back pressure. Experience with this simple form of safety valve taught that, while it was easy enough to contrive a valve which would relieve the boiler, yet it was difficult to devise one which, while it opened against the increasing resistance of the spring. would dose quickly under the pressure of the same spring against the steam. It was .found in practice that these valves were liable either to open too long, allowing too great an escape and a waste of steam, or not long enough to permit the escape of the amount of steam necessary to safety. Then came the valve called the "pop valve," invented by Richardson, patented in 1866 and 1869, whioh consisted of an addition to the ordinary safety valve. Its inventor, describing it, says in substance: It consists in forming the valve with an additional surface outside of the ground joint for the escaping steam to act against; this additional surface being surrounded with an oyerlapping lip, rim,or flange, which downwards sufficiently to leave but a narrow escape for the steam when the valve is open, but which, although of greater diameter than the valve seat,yet, by means of the lap, presents a less area of opening for the escape of steam than.is produced at the valve seat; so that the steam which escapes through the area between the valve and seat shall exert pressure against the additional surrounding surface, and thereby not only open the valve completely, but hold it up until the pressure of steam in the boiler falls below the pressure by which the valve was opened. Thisqhuddling of the steam after its passage through the valve by means of an additional'chamber having a restricted outlet, f(!)rmed by ,its lap, or fla1;lge, whichrea.ches down nearly to the surface surtoupding the valve seat, accomplished thedesideratwm. which the simple safety valve failed to do;' the ;additional chambrlr,its flange, and. its restricted oiltlet, for the what has become know-nas the" pop valve," The discharge of steam from the simple va:lve and the pop valve was either)nto the open air or into a cham bel' called! the "discharge chamber." If it is made to pass into such a chamber, the outlet from it is generally unrestricted; and it is to this discharge chamber or its outlet that apparatus for preventing the noise attending the escape o[steam, called ,the "muffier," is attached. !tis with this discharge chamber.and the muffier attached to it that we have to do in the case under consideration. Henry G. Ashton, the inventor of the apparatus patented by No. 200,119, described it in two claims, with the first of which only have we any concern. His language in this first claim was: "What I claim as my invention is: (1) In a safety valve. the valve. h, having the chamber. s, in combination with the seat,j, cylinder. d. and Casing, f, n, arraJ;lged to operate substantially 88 described." His chamber, 8, is the pop chamber. His cylinder, d, is the cham-
ber inolosingthe spring of the valve. His j is the valve seat, and his casing, i, n, is the cylinder constituting the. discharge chamber, covered by a hood. So that his first claim, written in words instead of letters, is of a combination m·ade up of a safety valve consisting of the ordinary spring valve, having the pop-valve chamber added, in combination with
ASHTON VALVE CO. fl. COALE MUFFLER .t SAFETY VALVE 00.
317
a valve seat, an inclosed spring chamber, and an inclosed discharge chamber, arranged to operate substantially as described. In the descriptive clauses of his specification he says that the main feature of his invention consists in combining a pop valve with a hood or casing to receive the escaping steam, and a cylinder into which the valve rises, making an under-discharge pop valve, that is to say, a pop valve in which the escaping steam is prevented access to the outer surface of the valve by means of a cylinder into which the valve rises, and in which it fits closely enough to prevent the entrance of any considerable portion of the escaping steam. More briefly, his claim consists in combining the spring valve and pop valve with the spring chamber and discharge chamber. He asserts that he is the first to combine the two features in one valve, and remarks that he "has discovered that this combination is very important in all cases where the escaping steam is prevented in any way from escaping freely from the hood or casing, as is often the case." It is this claim, thus stated and described, which the complainant insists has been infringed by the defendant in this suit. The patent is not fm an original discovery, but only for the combination which has Leijn described. But the patents of Ashfiel4, granted in 1869, No. 97,472, and of Prescott, granted in 1871, No. 121,659, show the combinasafety valve with a cylindricl\l chamber intion of an closing theElpringand protecting it from hack pressure of the escaping steam. Ashton's patent merely substitutes the improved pop valve in .the place of the simple spring valve. In this substitution there is certainly no invention; the result obtained being better only in degree, and not in chara<lter. Even if this were not. so, the English patent granted to Giles in 187.2, numbered 891, shows a pop valve with under-discharge, -that is toaay, with the spring inclosed from the steam by an inner casing,-in combination with an outer casing to confine the steam, so that the steam, the v.dve, ascends between these inner and outer casings,anq. then escape/] through perforations or other outlet in the hood or top of the machine. This patent of Giles anticipates patent 200,119 as to its first claim,and has reduced the complainant to the necessity of relying for novelty upon what it claims now to be a strictured outlet for steam in the discharge chamber.,-a pevice not claimed nor described ill the .application for patent 200,119. It is a settled principle of law enacted by statute and announced by the courts that a patentee and his assignees have no right to the exclusive use of anything patented which the inventor has not distinctly claimed in his application for the patent. It seems perfectly clear that the patentee did not claim a strictured outlet from his discharge chamber in his application for patent 200,119; Jet the complainant, in its twelfth assignment of errors, insists that the court erred in not that no safety valve was known prior to patent No. 200,119 in which steam could be prevented from escaping without crippling the freely from the outer casing (discharge safetyvalvej that the first claiJI,l in patent 200,119 covered
aaMy valves made and :.'$l1ld: my ,tha1;·vital, feature,and would be worthlEiSllJwitbout it. In its thirteenth' assigmqenJiOjt;says that the court erred the :facttkat'po structure, was known prior to patent200,1i19, [alld cla.imed' in thed:irsLclaim, in, which there was a strictured ohamhelfto' increase th'6 lif1lilng force of the valve, {meaning the pop chambeirb'second strictured chamber in which the escaping steam was confimid; the discharge chamber,) and ,anunstrictured chamber,{meaningthe spring-valve chamber,) whiGhshielded the valve from the ,pressure <io ·thE! secondstrictured chamber, or discharge chamber. And' in its .fourteenth assignmen!:it ·repeats . the:. 'asseveration that no structure'w8sknownprior to' piltetlt 200,H9inwhich the steam which escaped pa.st) the valve was compelled to paSS into a hood or casing, ftom whidh(]it·was prevented from-esca ping freely. Nothing, d8:nbe Dtore obvious"in this patent 2QO,119 than that no claim is made in its specifications for a restricted outlet from the discharge (jbialliber, l10W 9iSilerted to be a vital feature of the patent. The drawing: with the application shows quite a large outlet from the discharge which is not. lettered Or deseribed in the specification, and is Qpparentlyso Inrge as' to fail even to suggest a restriction of the steam passing out ofit. There 'is a sentence inthe specification already quoted in which the patentee says: "1 havediseovered that this combination is V'Elry important in all cases where the steam is prevented in any way from freely from the hood or casing, as is often the ca.se,"--a sentence which merely suggests that the steam may, from some cause not defined, faU to escape freely from the diseharge chamber. But the patentee describe or evenmentiorl any specific means of preventillg'the free esbapejmuch less does be chl.im a strictured escape ofsteao:ifromthe 'discharge chamber as ltv-ital feature of his combination; In insisting now that the defendant ;has incorporated this vital its safetY' valve, the complainant seems to place itself of the supreme court in the case of precisely within Western Electric Man+J;jilg OJ. v. AnaoniaBra88 &- GYppe:r Co.; 114 U. S. 447, 5 Sup.Ct; Rep.' 941, where it '. "It bas 1Jeenheld by'this courtth'at the scope of letters patent sbould be limited to tbeinvention cl:ivered by the claim; and, tbough the claim maybe illustrated; it cannot M e.nlatged, by the language of other parts of tbe specification.The .elements of· the process under consideration cannot, therefore, be hald to be by the patent. Tbe contention. that the patentee it in hls process So the claim here of a device for restricting the outlet of steam from the discharge chamber of the Ashton valve is evidently an aJterthought. >It was not speoified in the claim accompanying the specification of pat· ent 200,119, nor described, and, even if hinted at at all, it was in terms 'so vague as to avail nothing as aclairn oithe vital feMure of a! patent. The patentMc1aitnednothing new in his specification Of' patent 200; 119 but thecoo:1hitiation of previouslyknowll devicesl'which combi11ation he therepre6isely described. Yet the coinplaimuitnow insists that that
..,}if safetY.va!Ve8 'with that vital feature
ASHTON VAJNE CO. V. COALE MUFFLER &: SAFETY VALVE CO.
'319
patent does contain something neWj the novel feature being a strictured escape of steam from thfldiJ\cbarge chamber, now ranked as the vital feature of No. 200,119. We havtl said enough to show that such conoutlet from the tention is inadmissible, andtpa;t the use of a discharge chamber by the defendant, in combination with an inclosed spring and po.pvalve, c.onstitutes nq infringement of patent 200,119. It may be well to advert, before concluding this branch of the to what is said in the brief and evidence of complainant concerning vents or outlets from the spring chamber of the Ashton valve for such steam as may enter it in escaping from the valve. 'In the for this stated that holes are provided to give free outlet to patent steam springyhamberj but this feature ,is not spoken of as an inventioI'ior dIscovery, and is not distinctly mentioned in either claim of the application. If it is claimed at all, it is done merely in combination with the patentee's peculiar form of popvalvej and, as defendant does not use this latter, there is no infrinp;ement in that respect. Thesec()nd question in this, suit relates to patents for mufflers in combination with safety valves,-one of them, belonging to the defendant, issued to Coale in April, 1884, numbered 297,066; the other, belonging tocomplainant,issued to Ashton in June, 1884, ntlmbered 299,503. Each of the two patents is for a combination of a muffling chamber, surroundings safety valve; with a pipe communicating from the spring chamber through its top or hood with the outer air. They are substantially the' same machinej and, although much evidence was taken upon, and much space given in the 'briefs to a discussion of, the relative merits and constituent parts of the two implements, it is quite upnecessary for the court to go into these matters. This branch of the case turns upon a simple questiopof law, into which no question of mechanical invention enters. The defendant's patent having been issued, before that of the complainant, upon an application filed in advance of the latter's application, the burden of proof is upon the complainant to establish a piioru.se of the machine by a preponderance of testimony over that of defendant to the contrary. This the complainant has failed to do. The defendant proves the use of a combined' muffler and safety valve equivalent to that described in patent 297,066 as early as 1882. The complainant attempts the same thing in regard to patent 299,503, but fails in the effort. Its witnesses speak chiefly from memory, in terms far from positive or conclusive; and, when referring to written memoranda; fail to antedate the year 1884. On this branch of the case the priority of its patent establishes the right of the defendant to the exclusive use'lof its' implement as against the complainant. What its rights are as against the rest of the world is not in issue in this cause. On the whole Cl1.se, this court is of opinion that there was no error in the decree of the court below dismissing the complainant's bill, which is therefore affirmed.
'820 I
DDERAL 'REPORTER,
,
",
. THE 'RAPID 'DEMING fii '
TRANSIT.'
et al. v.
THE RAPID TRANSIT.
,(DlnrLct (Jourt, D. Washington, N. D. October 3,1892.)
No. 414.
on
II. BuIP1'ING-D.lMAGE TO, FREIGHIl'--.FIRB. ,A ,team(lrwith a oargo, chiefly of lime, took fire, and was scuttled by the city
fire ,seland
that nC/ of ,a vessel be liablefC/r any loss happeniqg to the cargo by :dre unless caused by his deSIgn or neglEl(lt, the purchaser has a complete ,defellll6 against an action l.n rem against the vessel. ' A.wJ:iuGE-CARGO! ,1'N'JURED IN SI1PPRESSI1¢G FIRB.
cargo, whereby the lime was destroyed.
that being the only method of
Held; that under Rev. St.§4282,
a total loss of, the ves-
, :t'/le,oWt\!lJ;' ?foargo whioh is damaged by water in, suppressing fire is (lntitled to oompensatidbin general average. The Roanoke, 46 Fed. Rep. 297, followed., a part Of 'lmowner'sInterest in a ship, and incases of general of inllurauOe by him Should not be th,e value ofwhatW'as'sllved, for the pur'posEl of increasing the fund to be distributed. Th6 Q1t11 Pf.. I:mw:tQh, 6 Sup. ct.ll.ep;.1150" 118. U. S.468; The' Bcotla.nd, 6 sup.;:Ct:Rep. 1174, ItS,'(J. $. 507; and The Great Western, 6 Sup. Ct. Rep. 1172, 118 U. S. 520,followed;' ,'U " .... . . . , ..., CONTRIBUTION-INStJRANClE"; ,
4. S.ui"::BAMS:dg
5. ADMlwhf-CdSTS. '. . . ,. , A rem, suing on, theoontract of affreightment to recover damages for lOBS of, cargo, to of h,is pleadings, ,IlD,d iucrelj,sed' tae expellse' of ,the case by lUtrooucmgrmmatenal eVldence. He was allowed, . elVer, ,rep.o.vel' in goeD,eraJ.' a,.v.erl!'ge, but bad not attem p ted an. adjUstment, on that basis the SUIt. ,aeld; that he was not e'ltitledto full costs. to, ·
Libel in rem by Deming, Burntrager, and others Rapiq'rransit, Elmer E. Caine, claimant. for general 3,Yerage. ,,., " . '. . Applcg(lte &: Tiaow, for John H. for claimallt. · In !
Judge, On the 14th day of August, 1891, the steamer Rapid Transit,. i\Yith a cargo consisting principally of lime on board, by fire in the harbor of Seattle, and was, by the fire depl:I.rtment of the city", beached and scuttled for the purpose of extinguiElhing the flames. The sinking of the steamer caused a total destruction .of the lime, butthat was the only method by which a total loss of the vessel, as well a!jthecargo, could have been prevented; and it was effective. The libelants owned the lime which was destroyed, and this suit was instituted by them to recover the full value thereof upon their contracts of affreightment. Section 4282, Rev. St. U. S., provides that-
HANFORD,. District