STEINER FIRE, EXTINGUISHER CO. 11. CITY OF ADRIAN.
731
greater he may defeat the action altogether." . Whitney v. Allaire, 4 Denio, 554. In this case, the damages, as clainled, did not equal $100,000. point is that a new trial should be granted The defendants' because the Jury allowed one half of the amount paid for the, Glann judgment, whereas, if they found for the defendants upon that iten1, the whole should have been allowed. The jury were instructed, if they found that allY sums were to be deducted from the $100,000, on the ground of misiepres6ntation, to state separately the amount which they found upon the three items which were claimed by the defendants, viz. , amounts paid by them for grading, right of way, and the Glann judgment. The jury returned a verdict for $100,000, with interest, less $7,503.75, with interest, andwere inquired of what that amount was for. The reply of the foreman did not show, to my mind, that the jury found for the defendants upon the Bubject of misrepresentations, but were of opinion that there were equities in fa"or of the defendants upon the Glann judgment, which should be worked out by allowing them one half of the amount which has been paid. That part of the verdict was a compromise. Upon a motion for a new trial of an action, in a case involving $100,000 and which occupied 10 days, I am not disposed to set aside the verdict because the jury were illogical in respect to $7,500, especially as the plaintiff had an equal right to say that he is the sufferer hy the compromise. The motion for a new trial is denied.
STEINER FIRE EXTINGUISHER
Co.
t1.
CITY
OF ADRIAN.
W£rC'l/lU Court, E. D. Michigan.
December 14,1891.)
Letters "patent No. 147,422, issued February 10, 1874, to Jobn H. Steiner, cover in claim 4 a chemical fire engine, consisting of a wheeled frame, prOVided with a generator or extinguisher, and with a hollow-journaled reel, the latter having its journal connected permanently to the generator by a pipe, and being provided with a hose coupled to it, so that the fiuid may be forced through the hose while wound on the reel, and the reel may be unwound to any desired length without kinking. Held, that this claim is void because of anticipation by patent No. 142,488, issued September2, 1873, to O. R. Mason, for an apparatus fortbawing ice from water and gas pipes; and by British patent No. 100, granted January12, 1865, to William Russ, for "an improved apparatus for distributing liqUid manure;" and British patent No. 2,510, granted August 12, 1868, to Edward· P. G. Headley, for an apparatus for watering streets, etc., and extinguishing Jires,-since all these patents show the leading idea of a hollow-journaled reel, and hose connected thereto, and there was no invention in applying the same to a chemical fire extinguisher by making the necessary connections with the other well-known elements of such a machine. The Steiner patent cannot be sustained on the ground that the journaled reel, the hose coiled thereon, and its connections in the combination, promote the perfect neutralization of the carbonic acid by the alkali, and diminish the liability to discharge any free acid which may have escaped from the generator; for the patentee did not invent the instrumentality by which this result is achieved, and his specifications contain no hint that he either sought or expected such' a result.
9.
SAllIE-NEW RESULT.
In Equity. Bill by the Steiner Fire Extinguisher Company against the city of Adrian, Mich., for infringement of a patent. Bill dismissed.
732
FEDERAl- REPORTER,
voL 52.
.Farlieti Jc Burwn,
for complainant.
John G. :EUiott, for defendant·
. SWAN, District Judge. This is a suit in equity, founded on the alleged infringement by defendant of the fourth claim of letters patent No. 147,422, granted to John H. Steiner, for an "ixpprovement in chemical tire extinguishers." The patent bears date February 10, 1874, and the application was filed January 5, 1874. The fourth claim of the patent is in these words: A chemical fire engine, consisting of a wheeled frame, provided with a generator or extinguisher, and with a hollow-journaled reel, N, the latter having its journal connected permanently to the generator by a pipe, M, and prOVided with a hose, 0, coupled to it, as shown. and described." The patentee precedes the statements of the claims which he makes by the disclaimer: "I am aware that a hollow-journaled reel snch as used by me in this engine is not new, and therefore I lay no claim thereto, except in connection with the generator and the connecting pipe, as shown." The defense denies the originality of Steiner's improvement and the infringement charged, and sets up twenty-six American patents of prior date to Steiner's as anticipations of the latter's patent, of which only three or fourareinsisted upon as material to the defense; and two British patents, neither of which is urged as embodying the improvement covered by Steiner's patent. The American prior patents mainly relied upon by the defense are No. 102,431, to C. F. Pinkham, dated April 26, 1870, .for afire annihilator; No. 131,414, to Stillson and Kley, for improveiiiElUtin chemicalfire engines, dated September 17, 1872; No. 142,488, to O..R. Mason,. for thawing ice from water or gas pipes, patented September 2, 1873; No. 142,637, for improvement in fire extinguishers(toF. Latte, patented September 9, 1873, on application filed January 6, 1873; I;l.ud No. 146,386, to John Dillon, for improveFlent issued on January 13, 1874, on application filed December. 1,1873. Upon the heliring there were offered in evidence, the state of the art, British letters patent No. 100, granted to William Russ,. dated January 12, 1865, "for an improved apparatus for distributing liquid manure," and No. 2,510, granted to Edward P. G: Headley, August 12, 1868, for "an improved hydraulic apparatus for wl.I.tE!ring streets, roads, gardens, and other places, extinguishing fires, attaching to fire engines, and other similar or analogous purposes." The first apparatus for the use of carbonic acid gas in the extinguishment of fires hya mingled stream of water and carbonic acid gas was the invention of William A. Graham, who filed his application December 27, 1851, upon which , July 9, 1878, letters patent No. 205,942, to his administrator, were issued. This had for its object "the extinguishing of fires in a more expeditious and effectual manner than has been attained by means heretofore useu," which it effected by the delivery of one stream, impregnated with and projected by carbonic acid
STEINER FIRE EXTINGUISHER CO. V. CITY OF ADRIAN.
733
gas, generated substantially in the manner now in use, either from a fountain or generator mounted on wheels similar to those of common fire engin6s j or from a stationary tank, through fixed pipes or tubes, arranged through a building. All subsequent machines using the combination of carbonic acid gas and water for the extinguishment of fires are simply improvements, real or supposed, of Graham's invention. As this agency can only be used beneficially in the extinguishment of incipient fires, the desideratum in all apparatus of this kind is celerity and certainty, or, as put by Graham in his specifications: "In extinguishing fires, time is money; time is life." Every later effort towards the improvement of Graham's invention has aimed to meet this need, and secure the prompt and efficient discharge of the mixed fluid as the perfection of its use for the end designed. Steiner's improvement is in that direction, and is professedly a combination of old elements, though the defense denies it even this merit, insisting that it is a mere aggregation of well-known contrivances. Its patentability is further assailed on the ground that all its co-operating parts, even if it be held a combination of old elements, have been employed for like uses; and their adaptation to the fire extinguisher is not invention,but required only ordinary mechanical skill. While it is elementary that a new and useful combination of old elements entitles its originator to the protection of the patent law equally as if all the elements of his device were entirely new, yet the doctrine is qualified by the indispensable condition that the combination must be the result of which tequires the conception and development into practical working form' of a new means or device for performing a useful function or functions. The conjunction of parts or mechanism for the production of theeft'ectmustbe of the inventor's own devising.. He must conceive its construction as an original ereation, not merely perceive the fitness of an existing contrivance to the required end. It must be the product of the constructive, not merely of the perceptive, faculties of the mind. This is simply stating in another form the settled rule of law that the application of a device to a new use is not invention. The inventor of a machine is entitled to the benefit of all the uses to which it can be put, no matter whether he had conceived the idea of the use or not. The application of an old process or machine to a similar or analogous subject, with no change in the manner of application, and no result substantially distinct in its nature, will not sustain a patent, even if the new form of result has not before been contemplated. Pennsylvania R. Co. v. Locomotive Engine Safety Truck Co., 110 U. S. 494, 4 Sup. Ct. Rep. 220; Robert8 v. Ryer, 91 U. 150. There can be no doubt upon this record that the combination employed by Steiner insured greater celerity, certainty, and efficiency in the application of the fluid upon the fire by the pipe connection and coupling between the generator and the hollow-journaled reel, and thence into,the hose wound upon the reel and permanently connected thereto,and necessarily, therefore, with the generator; and from the fact that the hose thus pla.ced and connected permits the flow of the fluid
734
FEDERaL, REPOR(l'E;n"
vol.' 52.
simultaneousLy. therewith, 'and can' beireadily unreeled' to any: req.u\red length, without, :liability to ,kinking,r;and. thus, by ,the, turning 'of the way'eock, theeqntentll of' the generator can be immediately, discharged upon the fire at ,the, will of the, pipeman. A, striking proof of theutilitJof the 'COmbination is 'found in the fact that.its main features have been largely adopted since its introduction iI'l the Steiner machine. The Adrian machine' clearly ,u$esthe same means to the same ends al;l those employed:in complliinant's. The apparent differences produced by the its generators, and the coupling' and pipe:connecposition tions, and the absence of a reel case, or covering, are formal, not sub, stantial. If, therefore, Steiner's improvement is ,a patentable device, Sind has not been anticipated byprior.inventions, the case made by the pleadings and' proofs entitles complainant to the relief prayed. We come now to that inquiry, and the examination of the American prior patents., Therejs nothing anticipatory,of Steiner in the Pinkham patent. Its scope is limited to a duplication of the generators, and the use of an issue or discharge pipe common to both, andconnectecl..to the generators by branch pipes furnished 'With stopcocks, by the use of which one generator can be refilled while the other is in use. The reel or spool is used merely ,to carry the hose "when not required, for use." In the Stillson and IGey,machine the hose is wound upon a solid-journaled reel, and is permanently attached to the discharge pipe leading to the generators.· The discharge. pipe communicates with both tanks or generators through cocks so arranged that when one is open the other may be closedjthuspermitting the successive use. of the generators. As compared,with Steiner's, the striking defect of the machine lies in the necessity of unreeling. all the hose asa prerequisite to the discharge of the fluid. While this difficulty is in part obviated by winding the hose on the reel simultaneously from each end, the machine is not capable of such facilellnd expeditious use as is Steiner's. Indeed, the funotion of the reel in the Stillson and IGey engine seems to be only the carriage of the hose, not in any way to facilitate its manipulation by the pipemen, or to adjust its length ,to the exigencies of the occasion. The chief, if not the only, feature common to this and oomplainant's improvement, is the permanent attachment of the hose to the discharge pipe. This machine does not suggest the advantage of Steiner's. In Latta's machine the cylinder of the tank or generator is arranged and used "as· a drum or spool upon which the leading hose that proceeds from the extinguisher is' reeled or wound." The objection to is the liability of the opening from the generator into the discharge pipe to be left, by the unreeling of the hose,above the water line eHhecontents of the generator, the effect of which would' be to permit the escape of the gas alone, instead of using it as force by which the fluid, must be ejected. In its present form it is regarded as unreliable, and inferior to later devices, including Steiner's. Dillon's fire extinguisher is stiltionary.andconsists of a partially tubular shaft, hung in half bearings, and revolved by a crank. To the tubular end of the shaft is connected anringress pipe, which, in its turn, is attached to the
a.
STEINER FIRE . EXTIr'<GUISHERCO.
v.
CITY' OF ADRIAN.
735
w'a.ter"Supply in a dwelling or other building. The hose is wire-lined, permitting the flow of water· while coiled on the shaft, which ;s used as a reel. The evidence in this record carries back the date of Steiner's invention to September, 1873, and therefore he was not anticipated by Dillon. This renders unnecessary comparison of the latter's device with complailnant's. The Pinkham, Stillson and Kley, Latta, and Dillon maehinesbeing thus eliminated' from the inquiry, the effect of the Mason ·,p'atentandthose'of Russ and Headley remains to be considered. Mason applied for his patent May 10, 1873,-four months before theeatliest date which can be assigned to Steiner's alleged invention. His is a device for thaWing ice from water or gas pipes, and in form and appearance is not unlike the reel' and connections which Steiner employs. Examination of its parts reveals a still closer resem" bHmce. . nis idea and mechanism were directed to thawing ice from gas pipes by means of !l jet 'or stream of heated fluid injected against the'frdzencontents of the pipe. "To this end," his specificain combining a flexible pipe with aretions say,'''the volving'reel or drum, the pipe being coiled upon the drum, the constructionof parts:btJing such that the heated fluid can be forced through said drum and any-desired length'of pipe.", The shaft of the reel, like is hollow part of its length, and to this part one end of the flexible pipe coiled on the reel is connected, while the open end of the reelshilJt is connected by a pipe to a force pump, which is used to force a hot stream through the pipe coiled on the reel, one end of which pipe is thrust: into the frozen water or gas pipe. "As the thawing out progresses,the stream of hot water can be made to follow up closely by unwinding the pipe from the drum; thus the heat can be applied just where the work is to be done." The specifications further state: "It is evident that a reservoir of steam might be connected with the open end of the shliLft, and carried into the water or gas pipe in the same manner as I introouce water through the pipe." The claim of that patent is: ffThecoiIibination olthe flexible pipe with theree1 or drum having the hollow shaft and coupling, through which the fluid is delivered to the pipe." . It is admitted ,that this patent shows two elements of Steiner's imviz., thE' hollow-journaled reel, and the pipe permanently connecting with it,' It is also admitted that "the wheeled frame provided with a generator or extinguisher, * * * and provided with a hose," are old, and had been combined before the issue of the Steiner patent; and that the nozzle, with valve, was an old and well-known device, understood as an essential part of a hose when used for fire-extinguishing purposes. The combination claimed as the patentable merit of Stahier's extingllisher is that of the hollow-journaled reel, with its connections to the generator,and the connection of the hose to the outlet to the hollow journal, and that thereby, "in an organized machine of that class of fire extinguishers, he secured by such organism useful results 'never before attained." While Steiner's device facilitates the manipUlation of the hose, and the certain and speedy discharge of the
736
FEDERAL lJ.EPORTER,
vol. 52.
its antitype in Mason's machine,:which itself is.at least ofquestipnable originality, and that Steiner has ,merely found a new use for the very of Mason. The latter's suggestion that "a reservoir of steam b,tlconnected with the open end ofthe reel shaft, " is, indeed, superfhlous to prompt that idea. i. Equally patent is the l;l.ttachment of the oooobination to the fire extinguisher. The use .of· the hose reel, the hosej nozzle, and connecting pipe in combinationJ>eing old, and "the fact that water will flow through a hose wound on a reel if the diameter oithe reel is large enough, and the curves or angles are not abrupt, beingamatter of common knowledge, which no one can appropriate to his own use to the exclusion or the public," as is said in Preston v.Manard, 116 U. S. 664, 6 dup. Ct. Rep·. 695, and, afortiori, the known fact that .water Can be forced throllgh a hose coiled on such a :reel by the expUlsive power of carbonic acid gas, left, in my judgment, no merit in Steiner'sdevice but the application of the elements of this combination to the fireextinguishet. The re8ulta he obtained by its use are the same in character those obtainedhy Mason and the British patentees Russ and Headley. The case· strongly r:esembles those of Roller-Mill Co. v. Walker, 138 U. S. 124,132, 11 Sup. Ct. Rep. 292; Electric. Co.v. La Rue, 139U. S. 606, 11 Sup. Ct. Rep. 670; Blake v. San Franci8co, 113 U. S. 679,5 Sup. Ct. Rep. 692. See, also, Pennsylvania.R.c:;o·. v. Locomotive Ji)ngine Safety Truck,Co., 110 U. S. 490, 4 Sup. Ot. Rep. 220, and cases there cited. The argument is pressed that one effect of the hollow-journaled reel, the hoseooiled thereon, and its connections, in combination, is to promote the· perfect neutralization of the carbonic acid by the.aJ.j:{ali, and diminish,if it does not fully prevent, the liability of the discharge of free aoidwlaich' may have eacaped from the generatol'; that by the tationofthe fluid by the reel, and the retardation of \ts passage to the nozzle, occasioned by the coiled hose, the acid and alkali are;more thoroughly mingled. .While this may be true, the faQt remain!l that .Steiner did not invent the instrumentality by which that result effected; nor does he seem to have forecast, or even suspected, the effect. His specinciltionsal'e)barren alike ofstatement andintimation:frQm which it can be inferred that ,he either s9ught or expected thata:m.VIlDtage from the combination. ' Both on the ground, therefore,thltt this function of his devioe is notp",tentable, because the means used, to produce it are old, and for the teason that the: claim of the inventor canDot be expanded to include mote than his application warrants, this argument cannot avail. But, if wrong in the conclusion that there is practical identity in the Mason and Steiner devices, the state of the art, as shown by the apparatus covered. by British letters patent to Russ in 1865, and to Headley in 1868, seema to be conclusive that the very arrangement of parts for which Steiner claims was embodied in those machines; Headley's especially. He says in hig specification, for" hydraulic apparatus for watering streets,etc., extinguishing fires, attaching to fire engines, and other similar and analogous purposes." "Upon a suitable locomotive
flu.id, it is plain that the combinlltionwhich produces theS(iletrects has
as·
BRICKILL
THE CITY OF BALTIMORE.
737
frame, to be propelled by hand or otherwise, I mount a windlass or druID, the axis of which I make hollow. Upon this drum I wind any required length of flexible tube or pipe, one end of which I connect with the hollow axis of the drum upon which it is wound, and the free end of which tube or pipe I fit with suitable connections for attaching it to hydrants or standards supplying water under pressure. To the end or ends of the hollow axis or drum I attach suitable distributing media. The axis is fitted with a handle for winding the pipe, which runs off' as the frame is moved, and on again when required." The mode of using the apparatus is as follows: "The end of the flexible pipe being connected to the hydrant or standard, the frame, windlass, and coil of pipe are moved, as required, to a greater or less distance, and distribute the wa· ter as the apparatus travels; no locomotive tank or other water container being necessary." Russ' improved apparatus for distributing liquid manure is much like Headley's, except in particulars necessary to apply it to the special use for which it is designed. Both these machines seem to me to anticipate all that is embodied in both Steiner's and Mason's, and clearly to deprive both of any vestige of originality. These patents do not appear to have been called to the attention of Judge MORRIS, as appears from the transcript of the record in the case of &tingwi,8her Co. v. HoUoway, 43 Fed. Rep. 306. The bill must be dismissed, with costs.
BRICltILL
et at
11.
THE CITY
OF BALTIMORE.
(Ci1'ClIlf.t Cowrt. D. Maruland. " ...UNT8 TION.
November 11, 1892.)
I1n'BNTION8-AOTION8 roB ImmmGEMENT-BTATB
BT...roTB8
LDIrr...·
The weight of judicial opinion being that state statutes of limitation are not applicable to actions in federal courts for infringements of patents, a oircuit court of the United States, although of the contrary opinion, in the absence of any authoritative decisiOn of the question by any appellate court, will sustain a demurrer to a plea of suoh statute in an action on the case for infringement of a patent, where part of plaintiff's claim is within the saving clause of Act Congo June 18, 1874, reo peau.ng the previous limitation of such actions, and where there must be a trial in any event, and the question may be considered on appeal.
At Law. Action by William A. Brickill and others against the city of Baltimore for infringement of letters patent No. 81,132, issued to plaintiff Brickill, August 8,1868, for an improvement in "feed-water heaters for steam fire engines." A demurrer to the declaration, on the ground that the patent was void on its face for uncertainty, was overruled. 50 Fed. Rep. 274. The cause is now heard on a demurrer to defendant's plea of the state statute of limitations. Demurrer sustained. Raphael J. Moses, Jr., A. C. 7Wppe, and Arthwl' Stewart, for plaintiffs. Albert Ritchie, for defendant. MORRIS, District Judge. This is an action on the case for infringement ofa patent for improvement in feed-water heaters for steam fire enV .52F .no.8-47