PACIFIC CABLE "
BY. co. ,,;
BUTTE CITY ST. BY. CO.
863
:: Court, D. Mqntana. November 21, 1m.)
,No. IS, 1. PATBIt't1l :rOB Il'lVi:lftIOlfll....,;ANTIOIPATION-pinORITT 011 INnNTIOlf-PRBIIUMP'l'lONII. No.8O!!I;,863" to.. Henry Root, for 8 track brake for railw,ay C8rs,Was
not anticipated by the prior patent issued, ,to Patterson, Sepwmber 25, 1888. for the Root patent was issued after a hearing cin an intorferencetberewith in the patent office; '¥ld in, if the two patents cqver inventiol\, the IBBuance of tbe· laIIll' one lB primafacl6 el'iaence that the patentee, tbereof was the 1irsli , inventor. ' " ' .,' The Rootilat.llnt IB 'not void as being'a mere: aggregation of old element8,fortbe " bra1l;e COJ:lSifirW (If tW\ltoggle, levers, one operatingupOI1 ,the otber"whichis atac,' Jevin,g, a new, nt, w,hen aidell by and uliUity from the of the patent, to sUBtBln tbe!same.,' ", ",'", ' . , '.', ' , ",' 8" DIlIF,BRENOE. , ,,', :' The' pBtent is infringed' by' a car brake which Is the lIame hi construction and e,xeepllipg' that l,Q..the patent the :1irllt toggle. lever ,III, connected directly with the rock'shaft, while in defendant's device it.1a connected therewith by an intetmooi.te 'roll or link.. ", , ", : ' B. BAMB...:.lwn'ltTION-AooREGA.TION""';Cu BRARBB.
.· In the Pacific Cable Railway Company against the Butte Cify, Railway Company for infringement of a patent. 'Decree for cOlnpl.lljnant. ' " ,Wm. F. IloO'tli and Di:ron k Drennen, for complainant. Goo. 11. 1(night, F. T. McBride, and Goo. Haldorn, .for d,efendant. · . j , ' ,
KNOWr..ES, District JUdge. Plaintiff is the assignee of patent No. one Henry Root for a track 304,863, issued by the United brake fortailway.cars. Plaintiff sues defendant in this action for an infor fringement of these letters patent. The suit is one in equity, an accounting from defendant ,for the profits it may have derived by the use of saidbmke, ,and to''l'estrain defendant from any further use of said brake. devjce, atidfor other relief. The defendant makes several defenses to this a.ctiOD. of plaintiff. They are: Pirst, noninfringement of said letters patent; 8eCQ'1Ul, anticipation. of the device named in the patent; and, tAird,that the claim of plaintiff is for an aggregation of elements, and notp8ltentable., , ,Conl!idering the first defense, it appea.IrS'to the court.from the evidence that the two 'brakes' of plaintiff and defendant respectively are substantially the same. They are used in the Bame way, and iniended.to accomplish the llame end. ,There is no pretense on the part of defendant but aU themoohanieal'contrivances in tlie one are the same as those in the other, Bave .as' to one feature. This featUre is the matiner in which the knee toggle levers in each brake are connected to a rock shaft. ' Eacbdevice has called a rock or rocking sbaft,' and each bas. knee or toggle levers
864 attached to a block or shoe which presses upon the railway track. In Q,tQ1'thiohf8ie attached the other toggle levers, which are attached to the shoes, is connected directly with the rock shaft pi its in the deviceqf\;defendant the toggle lever, Q, is att.a'ched' to rod, which is attached to the rock shaft. I cannot see that in the operation of ;t4,e brake this rod acts in any other way than as a means of connection with the rock shaft. It is, then, a ,all ,toggle said rockabllft,' instead of'aiuirect one, "The, wJtness for the,complainhis , '"" ;,' ,,'.
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construction as described in the a slight ;however,being intmduced,to.conform of tbeparticular car track to which the brake 1becb$llistli isattaellea. ,. ... · 'The modification which Ibave Illecbanism. or. its method of operatlDg, from that described in the patent. Exhibit A.," " In qf defendarlt, the orily thing that makes it differentftdin plaintiff's is that iottie brnJ,te as constructed by defendant the brake might be separated from the rock shaft, and opby:', ·one coulq, and. one 01?er. ated. Ids notpretended,However, that defendant's was operated by any dtner the rock shaft; orily that it might be otherwise -hqw, ,,10es It to operl1ted, the two devlces the ,same· me, then, . The conI1ecting ih'e' toggle lever, Q, with the 'rock shaft by'means of a rod or "link," as it is sometimes called, is only a colorable variation from the deviceofvplaintiff, and' does not 'prevent the device or mechanical structure of deferid{tnt substantially the:sanm as that of plaintiff,and lvesv.i Hamuton'8: Ex'r" 92 U. S. 426; -Muryhy,:·j}!1 tJ.,:S. '120. ";:' I do not think ,there, is Janydevicewhich fullya!'nticipatGS: plaintiff's, bnless itbe;thatofthe patent of Patterson. : That joints were used before is 'abundantly established. They were used iii· printing, and hay, and perhaps other, presses.' But not appear thp,t they were ever used in the :manner as here used by plaintiff, in a car 'brake, linless:ttley 80 used in the PattereD device. They were never used tot>roduce the result achie.ed in these brakes, and no device is shown that had the {omlof this. i'llliere may1benpatentableinventi()n' discovered when old 6lementsare 8.0 combined as te produce a new 8;I1du'Seful result. . Loom &. v. HiggiiuJ, This'; I think,occtirred in these car tirakes.· Did ithePatterson,brake'anticipate that of plaintiff? i That rarbrake is very 1similaldnllbme respects, if.notiti',all, tOthatofplain.'Thewitness·Jesse in hie "that it is' his opinion. that the fohn lot' connection in the- Fat1Jerson brake is not strictly.an equi!Valehtfdr:that in the patent of plaintiff."Hl.m not prei:
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PACIFIC CABLE' BY. CO. V"BU'l'TEerrY ST. BY. CO.
865
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that the'.two'brakes'are-llotsubstantiaUy,the 88J;lle. Both ptatfortntlie'slttrle ftinctidtllfin ab(;lut ..thesame 'Way. hamnot,howlforced t() deCide srlbsfunti9,l' identity intnechanismof tl,lese two "Thl;l*e}s' an'otHer satisfact?ry'to me upOn which I can rest my 'decision. il! that Henry of patent, had as early as 1882 prePared a m9del.of his brake, and"ih 1883, in the spring,had put bis inl9 practical 'street ,cars in Franhis application' forbIs' patent on February 10, 1883, and' the patent 'bears dilte'of September 25th of the same year. There is no evidence of any conneCtion between Root and The first lived and madebis·modelinSan Francisco, Oal., and the latter in Philadelphia,Pa. 'We have here, presented the question of priority. Which one of these must be considered the first inventor? "The, settled is that whoev'erfirstperfects a. machine'is entitled to spatrule of ent, and is the real inventor." , 'RUd v. Outtilt,l Story, 60Qi Agawam Co. v. Jordan, 7 Wall.602j Lmn 00. v. Higgim, 105 U. S. 680; Whiitelyv. Swayne, 1 Wall. 685. "There is but one issue offaet in'an interference suit. That issue relates to the dates wherein the interfering matter was respectively invented by the interfering inventors. If the complainant's invention is the older, the defendant's claim is void for want of noveJty." perfected Walk. Pai. § 817. , There is no evidence as to bis machine or invented the same. The granting of letterS'patent by the commissioner ofpatents, when lawfully is prima facie evidence that the patentee is the first inventor of that which is described and claimed in them. Seymour v. 08borne, 11 Wall. 516-538. Where there is an interferedce claimed before the' commissioner of the patent office, "the 'tecision of the commIssioner' is prima fade ,evidedce' in' favor of thepatentiast granted, because, it is said,' he would not have it it' he 'had 'not 'decided it 'to' Heen.titled to,' priority of' date of invention." Walk. Pat. § 318; Sewing Machine Co.:v. Steve'I18on,ll: iFed. Rep. 155; Folding Box Co. v. Roge;r8,82 Fed. Rep. 695. It would seem that there were two hearings between Root and Patterson as to interference of theirinventions. At the first, Root'i application was rejected; in the second, this ruling was reconsidered, and a patent awarded him. Under these circumstances, it would appear that, if there is any interference between the two patents, the commissioner must have decided in favor of Root. The commissioner of patents does issue at times two patents for tbe same invention, to different persous. In so doing he must, in effect, decide that the person who obtains the last patent was the first inventor. The evidence of the date at which Root made his model and put his invention into practical use is not disputed. Under these circumstances, I hold that Root was the first inventor of the car brake in evidence. I do not think that the point is well taken that this brake is only an aggregation of elements, and hence not a patentable combination. In the case of Seyrrwur v. 08borne, 8Upra, the supreme court said: v.o2F.no.10-55
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UNION SWITCH
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SIllNAL CO."'·. JOHNSOS RAILROAD SIGNAL
co.
867
UNION Swrrcit:'&SiGNA:1.' CO. 11. JOHNSON "';l";:" f; :r" ,
RAILROAD
StaN-At
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Wircu(t CcrU"t;:b.Nm,o J'fJr,ey: 1.
Under letters patent No. 2M, 716) issued september l1,l883,to,George W. Blodg-' ettand George R. Hardy,:for "Improvements 'ill railroad signals," lIilioonse 'Wasl to a oortainraUroadcompany til, use" the patented .ar1;iole.! A, , learning that the company erect such signals .at a tail1 junction; submitted a proposal to furnish them complete at a certam p1'l00. Thlp, proposal'was accepted, and the lligualll were made' and accordmgly. B'tlld,that the transaction was that of manufact,1,lr:e, and 1181e on the one side and of JluJ;9base on /lther, and that the manufacturer was guilty ,of infringement, and coUld.' bot eXi1USe Ilimsclf on'the groundthatIn making the signals he Was the mere serVant or emptoye of the liool1see.· ', A licensee to ""make and use" a patented article Is not a necessary party com· plaiIl8nt in a bill,brough.tby the ownerQl thea patent for infringement. '
PATENTSPOR
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I. "S.!M:E-NEOESSARY PA.RTIES.
In Equity. Bill by the Union Switch & Signal Company against the John8on Railroad Signal Company for infringement of a patent. Decree for complainant. J. Snowden BeU, for complainant. GeorgeW., Millet, for defendant. GREEN, Dist!i(}t Judge. The bill of complaint in this cause chQ.rges the infringement by the defendantofJetters patent No. 284,71p,granw1 11, 1883, to GeorgeW. Blodgett and Geol'ge R.Hardy, fOl "improvements in railroad signals," and by them assigned to the complainant. The defendant, in its answer, practically admits the infcing&' merit as charged, but seeks,to avoid any responsibility therefor, upon: tpe ground that the Bostoll & Albany Company, for whom tli'e infringing signals had Qeenmariufa,cture,d by the defendant, had, previ. ously to the assignment of the letters patent to the complainant, been duly and lawfully licensed, by the patentees to make and use the said c'improvedrailroad sigl1 als" protected by said letters patent upon all linea. ,owned or operated by that company to the full end of the term of said letters patent, and .that in thEt manufacture of the. infringing sigIlals the defendant was acting solely as a servant or employe of that companY"and strictly under and in accordance. with the terms of the license. rne important allegations in the answer, are as followa: this furthllr admits that. the said Blodgett and Hardy executed to the cotriplainanta writing purporting to be a transfer of a certain interest,in said alleged patent, but denies that the same granted to the.complainant exclusive rights or privileges, but charges and insists that said rigbtso transferred was not an exclusive right or interest in said alleged letters patent, and dOes not purport to , be 'such, but that they expressly.re-. served to the Bosto,n ,& Albapy RaIlroad Company, itEl servants, agents,1'ssigns, or representatives, the rigbt, license, aqd priVilege to make and ,use said improvements coveted ,by said. Imeged letterS natent upon all lines owned or operated by the said Boston &; Albany .Railroad Company. to the full ehd of the term of the:sald patent: and this defendant denies that said complainant is; or ever has been, in full andexeJ usi ve possession. and enjoyment of the privlIeges