748 de9fde4·.tep
REPORTER,
vol.. 57.
of a jiJ,c]dng mech,anism to·oil·well wrencha was a advance m.ust be (,'.onceded, and to Forgie must be of suggesting its use; but advance, or even discov· e9",.. with invention. While he has made an adbeil! not such a pioneer in a new field as should make an entfreindustz:y subject to tribute. The wrenches were old, and still perform the same function, and in the same way. A segmental bltr affixed to tl:j.e floor of the drill house, having apertures, with whichtPe end of the pushing bar engaged, was also old, and the essep.(fe of the improvement was the mere substitution of the operating mechanism of the jack. Such a jack was taken in all its mechanical details, and adapted to the uses analogous to the purpose for wh,ich it had been used. The wrenches still operate simply as oil·yveUwrenches, the jacking mechanism. simply as such; neither Dlo.difles the operation of the other. It is the same jack, adapted to analogous uses, but performing no new functions, and the thus adapted npt even the product of the alleged modifier's bralJ:l... Weare of opinion thepll-tent is void for lack of patentabil , ;."
Circuit Judge, concurs.
DUFF MANUF'G CO. No. M.
T.
FORGIllL
(CIrcuit Court, W. D. Pennsylvania. July 10, 1893.)
L
Letters patent No. 312,316, Issued February 17, 1885, to Josiah Barrett, for an Improvement In lifting jacks, and which are restricted both I.ri the 8peclftcatlons and claims by the use ot the words ''In a lifting jack," and the additional term "a lifting bar," cannot be extended so as to cover an adaptation ot such jack to theproductlon ot a horizontal c1rou1ar motion. for the purpose of unscrewing oIl-well tools.
FOR INVENTIONS-CONSTRUCTION'
Ol!'
CLAIMlM-LI1I'TING JACKS.
.. SAllE-JACKS.
In letters patent Nos. 455,993 and 455,994, Issued to said Barrett on subse, quent applloatlons, he states that his Inventions relate "to the same gen, eral class ot jacks as are set forth" 'in his preceding patent, No. 312,316, and have "practically the same object In view;" but elsewhere In the specificl1t1ons be states that his Invention "Includes any device embodying Itsprinclple, whether the power Is exerted In a v·ertlcal, horizontal, or other line." .In No. 455,994 there Is express reference to a contemplated "curvllfnear" !Jlovement. In. the claims of both patents the broad generic expression "in a jack" is used. Hela, that these are broad enougb to cover anadaptatlon of such jack to the production of a horizontal, curvfllnea.r motion for the purpose ot unsorewing ofl-well tools.
'.In :Equity. Bill for infringement of patents. plainant. 'James I. Kay, for complainant. lWm:l:A. Pierce, for defendant.
Decree for com-
DUFF MANUF'G CO. t1. FORGm.
749
Before ACHESON, Oircuit Judge, and BUFFING'rON, District Judge.
BUFFINGTON, District Judge. The Duff Manufacturing Company files· this bill against W. Forgie for alleged infringement of a jacking mechanism for screwing and unscrewing oil-well tools. Two devices manufactured by respondent, and known as Forgie Devices No.1 and No.2, respectively, are alleged to infringe as follows: No.1, all the claims of patent No. 312,316, issued February 17, 1885, to Josiah Barrett, for improvement in lifting jacks, and now .owned by complainant; and No.2, the third claim of said patent, the third claim of patent No. 455,994, and the fiTSt, second, and sixth claims of patent No. 455,993, both of said issued to Josiah Barrett, July 14, 1891, and are also owned by -complainant. A suit by Forgie against the selling agents of Complainant at No. 18, November term,1890, was heard, and decided at the same time as the present case. See Forgie v. Supply Co., .67 Fed. Rep. 742. As both cases involve the same subject-matter, we refer to the opinion therein for a statement of the parties, of the different sUbject·matter, state of the art, and the parties. Passing over these preliminary matters, we may say -that the question in device No.1 is whether the claims of patent No. 312,316 are broad enough to cover the mechanism therein em· ployed. If so, infringement is admitted. It is contended by. respondent that the patent is for a lifting jack, and that the claims are all limited by the term "in a lifting jack," and all save one by the added term "a lifting bar;" that neither of Forgie's devices are lifting jacks, nor have they a lift· ing bar. It must be noted the patent is not a pioneer one; it purports to be and is simply an improvement; nor in its specification or claims is it asserted that it pertains to any mechanism other than one variety of a large class, viz. to a lifting jack. Knight's Dictionary enumerates many different kinds of jacks, all designated by name, and a number of additional ones are noted in the Century Dictionary, where it is also stated that the character of the jack is specified by the use of a fitting word, so that the compound word designates the function of the particular jack. 'I.'he specification says: "My invention relates to all. improvement in lifting jacks, the object of said jnvention being to provide for a continuous mo:vement of the lifting bar, said movement, either up or down, being effected equally by both the up stroke and the down stroke of the operating lever; and to this end my inventioIJ. eOllsists, in general terms. in the construction and combination of parts,all as more fully hereinafter described and claimed."
The words employed throughout the specification, ''lifting jack," "to lower the lifting bar," "the down stroke," "the lower limit of its motion," "a toothed lifting bar," all show that the only species -of mechanism, power, or application in mind was in an up and down Iilotion; that it was adapted to a lifting jack; and th'at the
750
pfi,tentee awJN, remotest hint in specification or claim of its application to any other form of mechanism br variety of jack, a very different state of, facts from that appearing in, tP-e of Electric Co.v. La Rue, 139 -q. S. 601, 11 Sup.Ot. Rep. 670. is not a case where, as in Rey.St § 4888, has. explained "the principle thereof,. and the best mode oin which he has contemplated applying that prineiple;" but it is one where Barrett has explained the principle and the only mode to whicll he has cQntemplated applying it Wb.ile the doing of this in .the specification would not of itself nWl'1.'O'W the scope of h,is patent, yet, when qe has carried the same thinglntoh'is claims, lle cannot cOllJ.plain that he is now hampered by these self-imposed, It but equity for this court, Whenl),is principle has been applied i;n mechanisII!, other than a litti;ngjack, to restrict his rights wider the patent to a lifting-jack and this,. although .the· .adapted. mech,anism is analogOJlS, :tQ ! a lifting-jack .mechanism, in .the sense tl),at all jacking mechanisms are analogous, but .··atUlnO't analogous .,when measured, this instance" by the narrow. limits <:If. a. ,claim restricted to)ifting jacks alone. That is, tP-e new use is analogous, as we held in. the other opinipn noted, to the uses possible' under the mechanism devised by 13arrett; it i8,!1ot when measured by the, narrow and, restricted cl!:tiJp.s, of his patent. What he claimed, he should be 141()wed in letter and in spirit; what he did nqt elaipl, .either in letter, spirit;: Or suggestion, he must be held ,abandoned. .,Advance in the applications of jacks has shown that his claims,:,perhaps, might have been wade broader; indeed; that to the particular use. now in question his mechanism have been applie.d; his claims were limited, "sic ita scripta est," and patent l'lghtli1 rest on claims made, not claims omitted. .That the respondent's device is in no sense of the word Or in mechanical function a "lifting. jack" is plain. It does not a lifting-jack mechanism may be placed horizontally, and move bodies, it remains a lifting jack still, in name, but its' function. is no longer that of lifting. The principle of' its construction, as we have seen in the other case, could be adapted t() a forcing jack for unscrewing oil-well tools, but when 80 used it is not used "in a lifting jack." It is, indeed, shown that Barrett's lifting jack, if placed in a horizontal position, is capable of m()ving bodies horizontally. But in so acting the jack is not changed inform or otherwise. Its application,. then, to such use, might, with reason, be said fairly to come within Barrett's claims, or at least within the scope of his invention, if properly claimed. But the jack as described in the patent cannot be employed to couple anel' uncouple the' drill rods of. oil wells. To do that work the apparatns must be reconstructed. To us it is very clear that the use to which the plaintiff here seeks t() extend the patent was neither suggested nor contemplated by. the specification or claims. In a lifting j!1ck the weight above keeps the lifting bar in place
DUFF MANUF'G CO. II. FORGIE.
751
automatically; and themol'e firmly, the heavier. It c.annot fly the track, and the inertia of a heavy weight which it was desired to move would have the same effect when the jack was used horizontally to push. But the forcing of wrenches, on different planes, and free to move up or down, presents a different problem. As was said in the testimony, and the statement was self-evident, and will bear no contradiction: "The Barrett jack, having a stationary base and a movable raok bar, is particularly adapted for lifting; while if you place it on the door of the derrick, and attempt to wrench a drilling-tool joint, one wrench being engaged with the tools much higher than the other, the outer ends would not come in line. Consequently the outer end would be hoisted in the air, and let go Its hold, and leave its position; and, if you did succeed in holding it to the door by any possible deVice, you would have to change the position of the base several times. in the process of wrenching up a joint which would make it practically useless."
Weare of opinion the claims of patent No. 312,316 are so limited that the respondent's devices do not come within them, and infringement is not made out. In Forgie's device No.2 infringement is claimed of sundry claims in patents Nos. 312,316, 455,993, and 455,994, as above noted. We have already disposed of the question involved in the first patent. On May 10, 1892, after the issue of the other two patentl!lto Barrett, Forgie made an application (serial No. 432,471) for a patent for the No. 2 device, in which his first, second, and third claims are in the identical language of the claims already allowed Barrett in the first, second, and sixth claims of No. 455,993, and his fourth claim is identical with the third claim allowed Bal'Tett in No. 455,994. The application has been placed in interference with Barrett, and is undetermined, but, as the case stands, the prima facies of Barrett's patents must prevail over the proofs of priority before us. The construction placed upon device No.2 by Forgie and his counsel in these claims thus made and still being followed up may be regarded as virtually such an admission of infringe· ment as renders a discussion of the mechanism of this device with the identical claims in the Barrett's patents, alleged to be infringed, unnecessary. Suffice it to say, we are satisfied no anticipation has been shown and infringement is made out, unless-First, the claims of both the Barrett patents are so restricted by reference to the lifting-jack patent No. 312,316, before referred to, as not to embrace the variety of jack used by Forgie; or secondly, because the curved track as used in the Forgie device is not embodied in the claims of the said patents. The first objection is met by the fact that while patent No. 455,993 states, "My invention relates to the same general class of jacks as are set forth in letters patent No. 312,316, granted to me February 17, 1885, and has practically the same object in view," yet in other parts a broader mean· ing or definition is given by the applicant to the term ''lifting jack" than we have felt constrained to put on it in considering that patent. This broader meaning he has a right to put upon
752
i'EDERAL REPORTER,
vol. 57·.
It so as to explain the scope of his invention, 'and,th.especification must be read in the light of that, definition. He, says,: "My invention relates to what might generally be termed 'lifting jacks,' that 1s, to .power .mechanism in whichp.. step by step movement back and forth isobtained,said being actively opefated in one dirootion to move o,r raise a lOad, and o.verative in the' other direction to control the movements of a load, such' as in lowering a load lifted by the jack. By such terms it is, of course, to be understood that the invention includes anydllvice em1;JOdying its principle, wllether the power is exerted in a vertical, other line." ,
N'o. 455,994 the language is still broader in some respects, and by the insertion, of a' contemplated "cp.rvilinear" movement in e:xpress terms. In both patents the claims now contended fO'I' are "iii a jack," using the broad generic term. We think the pat. ents COIrfe within the spirit of the decision in Electric Co. v. La Rue, 139 U. S. 601, 11 Sup. Ct. Rep. 670, and that the claims should not have the narrow construction cOhtendedfor. ,We are unable to readintoitheclaims,from the mere reference made in the specifications to patent No. 312,316, the limitations of a "lifting jack" and a ''lifting: bar" contained in the claitns of that patent. In to the' second point, weare of opinion that the use of a curvilin" ear .t1'8;ck.is such anaruilogous use as comes within the claims., In' deed, ,Buchta motion is expressly stated in the specification of one patent, as we ,have seen. We are therefore of the opin:ion device No; 2, mfringes the first, second"and sixth claims ofpa,tent No. 455,993{andthe third'daim of patent No. 455,994. Let a decree be· drawn. AOHESON, Circuit Judge, concurs.
In
CE1iTRAL TRUST CO.
v.
BRIDGES.
753
CENTRAL TRUST CO. OF NEW YORK v. BRIDGES et aL McBEE et aL v. CENTRAL TRUST CO. OF NEW YORK.
(Circuit Court of Appeals, Sixth Circuit. August 1, 1893.) No. 88.
1.
CIRCUIT COURT8-JURISDICTION-CITIZENSHIP-RAILROAD RECEIVERS-ANCILLARY BILL.
Where a suit is pending in a federal court for the appointment of a receiver and the foreclosure of a railroad mortgage, the court will take jurisdiction, without regard to the citizenship of the parties, of another bill tiled .by lien claimants, since their right to enforce their liens in the state court will be cut off when the federal court possession of the property; and their suit may be regarded as in substance an ancillary bill
2.
RA.ILltoAD COMPANIES-CONTRACTORS' LIENS.
Under the 'rennessee statute of March 29, 1883, relating to railroad contractors' liens, the contractor must deal directly with the company in order to secure It lien for his work and material; or, if a subcontractor, he can have no ·lien nnless he serves notice on the railroad company of the principal contractor's failure to pay him, and unless, at the time of such notice, the company shall owe money to the principal on the contract which the subcontractor has ·helped to perform; and the lien is limited to the amount so due the principal contractor. The fact that one who makes a construction contract with a railroad company is its princiIXl1 stockholder, and dominates and controls its action, does not render him an agent of the company, so as to make his individual subcontracts in law the contracts of the company, when neither he nor the company hold out to the subc{)ntractors the existence of any such agency, or, as between themselveB, had any intention of establishing such agency. While construction contracts made by a dominating stockholder with a rallroad company for his own benefit are looked upon with suspicion, and frequently condemned by the courts when drawn in question by other stockholders, bondholders, or by the corporation itself, yet their legal existence cannot be questioned by third persons who are not injured thereby, as in the case of subcontractors who dealt with the contractor in his individual character. Persons who convey a right of way in Tennessee directly to a railroad company are entitled to a lien for the purchase price prior to that of the mortgage bonds of the company. The dominant stockholder in a railroad company, having made a construction contract with tbe company in his individual character, failed to pay his subcontractors. Thereafter, in order to give to the subcontractors and material men a lien on the road under the Tennessee statute of March 29, 1883, their representatives, acting with the principal contractor, and by means of his control over the board of directors, obtained an acknOWledgment on the minutes of the company of an amount still due him, vastly more than was really due him, and more than sutlicient to cover all the claims. The contractor sued for this amount in a state court, and the oompany's attorney consented to a judgment therefor. HelilJ, that this jndgment was fraudulent as against persons injured thereby, and was of no pvidential force wben the claim was conte8ted by holdE'rs of prior mortgag-e bonds .of the company in a foreclosure suit in a federal court.
8.
SAME-CONSTRUCTION OF CONTRACTS-SUBCONTRACTORS.
4.
SAME.
5.
SAME-VENDOR'S LIEN-CONVEYANCE OF RWHT OF WAY.
6.
SAME-CONSTRUCTION CONTRACT-FRAUDULENT JUDmIENT.
v.57F.no.7-48