NEW YORK FILTER MANUF'G CO. V. ELMIRA WATERWORKS 00.
4:59
criticism of the specification in this case can be availed of to deprive complainant of any part of the patentee's actual invention; and, second, it is plain that the respondent's machine was built up on the complainant's machine, and is the result of a studied effort to secure its essential advantages. The respondent bas so arranged the various parts which he claims vary from the complainant's elements that thf' substitution of one size of pulley for another can be made by the rewith no disturbance of any other part of the machine. By slightly varying the shaft carrying the respondent's pulley, pulleys of various dimensions might at once be attached to it, and the complainant's precise construction would be the result. We do not think the patent can be lawfully evaded, as the respondent has attempted it. The respondent's set of several pulleys of differing diameters is only compla!nant's cone pulley divided into sections through its axis; and the fact that the set of .several pulleys differs, in that it is more cumbersome, and involves delays, is only an ordinul'y feature of colorable infringementl'l, which are characterized by a mere imitative capacity, without the spirit of invention. The respondent's machine has in it the essence of Grosselin's invention, and we must p.old that it infringes. Another point of importance remains to be considered. The preamble of the complainant's patent cOlltains a recital of several foreign patents which were taken out for the same invention. This recital is erroneous in several particulars, but the record fails to show that there was any intentional misrepresentation. So far as we can discover, the requirement of a reference to foreign patents in the preamble of an application is a mere regulation of the patent office, which is so far reasonable that it may bar the issue of a patent until it is complied with, but which cannot invalidate a patent once issued unless perhaps when the recital is erroneous through a willful misrepresentation or some fraudulent purpose. Rev.St. §§ 4887-4892. But the French patent No. 141,170, issued February 16, 1881, to Grosselin Pere et Fils, expiring 16 years from its date, is for the same invention as that now in issue. Grosselin Pere et Fils are, for all practical purposes, the same as the patentee in the case at bar. Therefore the patent in suit expired after this appeal was taken, and no injunction can now issue. The decree of the circuit court is reversed, with costs, and the case remanded to that court, with directions to enter a decree for an accountIng, but to deny an injunction, on the ground that the patent expired after the appeal was taken.
NEW YORK FILTER MANUF'G CO. v. ELMIRA WATERWORKS CO. et al. (Circuit Court, N. D. New York. September 20, 1897.) PATENTS-INFRINGEMENT-METHOD OF FILTRATION.
The Hyatt patent, No. 293,740, for an ImprOVed method of clarifying water by introducing into it a coagulant simultaneously with its passage through the filter, thereby avoiding the use of the settling basins of the prior art, and making- the process continuous, held infririgedby a process in which cisterns or tanks were introduced, through which the water passed
82 FEDERAL REPORTER.
with a continuous flow In eddying currents, and which, therefore, were not the settling basins of the prior art.
This was a suit in equity by the New York Filter Manufacturing Company against the Elmira Waterworks Company and others for alleged infringement of letters patent No. 293,740, issued February 19, 1884, to Isaiah S. Hyatt, for an improved method of clarifying water. In a suit heretofore brought by the complainant against Schwarzwalder and Fink in the circuit court for the Southern district of New York, this patent was sustained on final hearing, and a decree entered for an injunction and an acconnt (61 Fed. 840), which decree was affirmed by the circuit court of appeals for the Second circuit in January, 1895 (13 C. C. A. 380,66 Fed. 152). Subsequently a suit was brought by the complainant against the Niagara Falls Waterworks Company for infringement of the same patent, which resulted in a decree for a preliminary injunction (77 Fed. 900), which decree was affirmed by the circuit court of appeals (80 Fed. 924). John R. Bennett, M. H. Phelps, and F. G. Fincke, for complainant. Frederic H. Betts, for· defendants. COXE, District Judge. I have examined with care all of the testimony relating to the only question now open-the question of infringement. In view of what has been said heretofore by this court and the court of appeals it will serve no useful purpose to discuss this question at length.. Suffice it to say that, in my judgplant infringes the Hyatt patent. The defendants ment, seem to entertain the opinion that they may use the Hyatt process if they use something else in connection with it. I do not think so. The real work of purification at Elmira is done by the Hyatt process. The cisterns underneath the filters may or may not be an improvement, but the. filters act in precisely the same manner as those which have already. been condemned by. the courts. The tanks are larger than in the Niagara Case and the sedimentation is greater, but the difference is one of degree orily. If a tank, through which a continuous flow of water passes in eddying currents, can become a "settling basin" the Niagara tanks are witb,in this category as fully as those at Elmira. Tanks of this type are "not the settling basins of the prior art to which the appellate court alluded in the closing sentence of its opinion. It would have been better for the complainant if the court had voided the patent in limine rather than place a construction upon it which enables anyone to infringe who has wit enough to pass the water on its way to the filter throu{'"'l a cistern where some of the impurities are caught. Upon the theory of the defendants, water of precisely the same degree of purity might be passed to the filter bed from two distinct sources; if conducted there direct it would be an infringement, but if passed through a tank, where the coarser impurities are caught it would not be. In each instance the water actually filtered contains the same amount of impurities, but in the latter it is found more convenient, owing to its g-reater turbidity, to arrest some of the coarser impurities before introducing it to the In both cases the Hyatt process is nseq.
THOMSON-HOUSTON ELECTRIC CO. V. HOOSICK RY. CO.
461
It is due to the defendants, I think, in order to avoid further misunderstanding, to say that, in my opinion, they cannot evade the patent upon their present theory. Even tho-Ugh they shonld increase still further the capacity of the cisterns through which they pass the flowing stream it wonld not avail them. The test at Elmira has been severely criticised by the complainant as unfair and misleading chiefly because lime was used and also an unusually large amouut of alum. There certainly is foundation for complainant's contention that the plant could not, with good results, be operated practically as it was experimentally. Assume, however, the test to be fair, I am of the opinion that the results obtained fail to show that the defendants' cisterns are settling basins in the sense so frequently alluded to. The motion is granted.
IDLECTRIC CO. v. HOOSICK RY. CO. (Circuit Court of Appeals, Second Circuit. 1. ApPEALS IN PATENT CASES-PRELIMINARY
July 21, 1897.) -SCOPE OF HEVIEW.
On appeal from an order granting a preliminary injunction in a patent case, where the court below bases its action entirely upon a prior decision in another circuit, sustaining the patent, the circuit court of appeals is not itself constrained to adopt the rulings of such other circuit court, but is at liberty to re-examine the same, and dispose of the questions of law conformably to its own convictions, giving to the former. adjudication only such weight as, in its OWIj. judgment. the same is entitled to. The Van Depoele patent, No. 495,443, for a "traveling contact for electric railways/' examinel1, a4d compared with the prior patent Xo. 424.695, to the same' inventor, and held to be for the same invention covered by that pateht so' far as concerns the claims' which relate to the combinations between the contact device and the suspended conductor and to the structural features of the contact device, and the later patent therefore invalid as claims 6, 7,8, 12, and 16.
2.
PATENTs-VALIDrfY-PRIOR PATENT FOR SAME INVENTION-TROLLEY RAIl,WAYS. .
Appeal from the Oircuit Court of the United States for the Northern District of N ew York. This was a suit in equity by the Thomson-Houston Electric Company against the Hoosick Railway Company for alleged infringement of a patent for traveling contacts for electric railways. The circuit court entered an order granting a preliminary injunction, and the defendant has appealed. Charles E. Mitchell, William C. Witter, and Robert N. Kenyon (Henry B. Brownell, of counsel), for appellant. Betts, Hyde & Betts, for appellee. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. WALLACE, Circuit Judge. This is an appeal from an order grant· ing a prelim.inary injunction restraining the defendant from making, using, or vending the apparatus specified in claims 6, 7, 8, 12, and 16 of letters patent No. 495,443, granted April 11, 1893, to the adminis· trators of Charles J. Van Depoele, assignors to the complainant, for