WESTERN ELECTRIC CO. V. HOME TEL. CO.
649
The device thus consists of two blades or wings, preferably reetangu-'. lar in shape, parallel with each other, and so arranged as to rotate in connection with a central shaft. When at rest, these wings extend one in front of the other as to overlap, and, when rotated slowly, the atmospheric resistance is substantially only that which would be made by one wing alone. As the speed is increased, the coil springs attached to the wings stretch out under the centrifugal force, so that the. blades or wings move past each other and overlap each other less and less; and, when the· utmost tension is reached, the blades are substantially in one plane,and expose the full surface of both to the atmosphere. In the specification of the patent the principal feature of the invention is stated to .be "the employment of wings, which, under rapid rotation, will gradually reduce the extent to which they overlap one another." The invention claimed by the complainant is the central shaft, combined with pivots parallel to it, so that the wings which are supported by these pivots, as the speed is increased or reduced, move in parallel planes, but in oppositedirections. Defendant's construction has a central blade attached to the central shaft, and rotating with it. At each end of this central blade is hinged another blade or wing, the free end of which is so controlled by a coil spring that when at rest it is folded against the central blade, and when in rapid motion the centrifugal force causes the auxiliary blade to open and extend beyond the central blade, thus meeting with increased atmospheric resistance. Defendant has introduced inevi· dence various alleged anticipating patents, including the Lahola patent of July, 1892, No.474,431; the Lochmann (British) patent of April, 1892. No. 8,027; the Powell patent of 1883, No. 291,001; and a description of a governor used in another music box in 1889. While complainant's construction shows invention, and is not anticipated, defendant's construction attains the desired end by materially different means, and, in view of the prior art, cannot be held to infringe. Let there be a decree for an injunction and an accounting as to the first claim of No. 500,370.
WESTERN ELECTRIC CO. v. HOME TEL. CO. et 81. (Circuit Court, S. D. Alabama. No. 202. February 9, 1898.)
1.
PATENTS-ANTICIPATION.
It is not sufficient, to constitute an anticipation, that the devices relled on might, by a process of modification, reorganization, or combination with each other, be made to accomplish the function performed by the devil'es of the patent sued on.
2.
SAlIE-NOVELTy-BURDEN OF PROOF.
To overcome, on the ground of want of novelty, the prima facie case made by the patent itself, the bnrden is on defendant to clearly establish that defense, and every reasonable doubt should be resolved against him.
'650 S. SAr.l:FlNFnftliGEMENT;
85 FEDFJRAL'
a!\JpoRTim.
, ,IlJ.,"" PAten,t for Improvements In multiple switch boards for telephone ex. changes, tile subject-matter Is not one in which form Is essential; and in determining questions of Infdngement 'the rule will be applied that, disregarding mere matters of form, the court will ascertain whether the several devices or elements perform the same functions In substantially the same way, to aCc,omplish the same result.
4.SAME-SWITCIt BOARD FOR TELEPHONE EXCHANGES,
The Scribner patent, 330,061, for Improvements in. multiple switch boards for telephone exchanges,. whereby is effected a direct connection of two subscribers' lines through the usual plugs and cords, at-the same time cutting out of the talking circuit thus formed all the separable contacbs belonging to such lines, and also the conductors leading to. the Individual annunciators, (l,eld not anticipated as to claims 2, 4, and 6, which disclose a pioneer invention; and cl8:lms 2 and 4 held infringed, and claim 6 not Infringed. " ' Decree will not go against officers of an infringing corporation, joined as defendants, when, It does not appear that, In their indiVidual capacity, they violated the complainant's ctghts, or derived any profit or advalltage patent sued on; and the bill will be dismissed as to them.
3.BAME-SUIT AGAINST CORPORATION AND OFFlCERS.
Bill·iIi! E:quity for Infringement of a Patent. Barton & Brown and Geo. L. Roberts, for complainant. & Hanaw and Chas. B. Tilden, for defendants. TOULMIN,District Judge. This is a suit in equity, brought by the Western Eiectric Company on letters patent oftM United States No. 330,061, dated November 10, 1885, as the assignee of Charles E. Scribner, to whom the patent was granted, against the Home Telephone and Adam Glass. The patent is for imCompany, Albert provements in multiple switch boards for use in telephone central offices or exchanges. The complainant is a corporation under the laws of the state of illinois, and has been engaged in furriishing apparatus for telephone exchanges, it appears, for some years 'past. The defendant company is an Alabama corporation, and the in'dh'idual defendants are Albert S. Lyons and Adam Glass, citizens of Alabama, and residents of Mobile, and, respectively. the president and treasurer of this company. The bill is of the usual form in patent infringement suits, and charges the defendants with infringing the patent stated above by reason of the defendants' use at their telephone exchange in the city of Mobile of certain apparatus called "multiple switch boards!' Originally it was charged thatclaims 2, 3, 4, and60f thee Scribner patent were infringed. On the hearing claim 3 was withdrawn from such charge. This leaves before the court only claims 2, 4, and 6 of this Scribner patent, No. 330,061. , , , The nature and purpose of the invention embodied in this Scribner patent, and the patent .itself, will need to be first stated, in order to have a clear understanding of the issues involved. The patentee says: Invention relates to multiple switch-board signals, and is designed to enable the operators at the different boards to test, to determine, what lines are in use, while'the circllits are so arranged that any two lines may be connected together upon anr one of the boards, without Including in their circuit the re-
WESTERN .ELECTRIC CO. V. HOME TEL. CO.
651
slstance of ,the contact P9ints rQf the switches... In all these, systems heretofore used, the contact points of tbe switches have been Included In the circuit of the two lInes when connected together. My invention is designed to avoid the resistance of these contact points by the use of circuits and apparatus more simple than any hert>tofore devised, while the operators are enabled to make the usual tests to determine whether any line wanted is already in use at another board. It is evident that this arrangement of circuits may be used with various kinds of switches other than the spring jacks having insulated frames, as descrihed, and as shown In Fig. 1. In Fig. 2, I have shown simple connecting bolts, c', d', e', for making the line corinectlons; means being provided, as shown, for breaking the circuit, f', when a connection is made at either bolt. With circuits thus arranged, any two lines may be connected directly on either of the boards, without inclUding the resistance of the contaot points of the spring jacks in their circuit, while such signals and: tests may be made as may be desired."
Scribner, the patentee, testifying for complainant, states the object of his patent, and among other things says: "The'patent in suit, No. 330,061, Is for a multiple switch board. The r.esult sought to be accomplished by the Invention of this patent Is the connection between any two subscrtbers' .lines in a telephone exchange, ,the exclusion or' contact points from the circui(ot SUch COllnecpons, while, .atthe SRmetime, tl1e fudicator annunciators of sucb connected Unes are temporarily cut off from their respective lines." ,
In defining his invention, as embodied in this patent,by way of aiding ill an understanding of it, Scribnel' further testified: "l'he invention of the patent In suit proVides a spring-jack switch upon each of the several switch b()ards for each lIue, the spring-jack switch being constructed to provide a contact piece to which the plug made contact When l)1troducedlnto the spring jack, a spring normally resting upon a contact point and circuits with which the line Is to be connected. By this construction the line wire Is directly connected with a portion of each spring jack, this portion being that with which the plug Is designed to make contact.' The line wire Is also connected with all the contact points, and all of its spring jacks, and thence through the indicating annunciator and battery and to ground return. The introduction of a plug into any spring jack gave a contact between the plug and that portion of the spring jack directly connected with the line wire, while at the same time the contact points of the jack In which the plug was inserted were open, and the circuit to the Indicating annunciator Interrupted, and this, too, no matter which spring jack of the line was'. employed. A plug, when inserted in the spring jack and having a conducting cord leading to another plug, would serve, upon the Introduction of the second plug into a spring jack belonging to any line, to connect directly together the two lines, without the contact points and any of the spring jacks being Included in the connected circuit. This construction, with Its results, is the principal feature of the patent In suit."
Minnis, a witness for defendants, in his twenty-second answer says: "Without going into any long dissertation upon the specifications and claims of the patent in sUit, and their interwoven one to the other, I think that I can safelj' boil this down Into one specific combination claim, to wit: A multlplp. telephone switch board, so arranged that talking circuits can be established thereon without inclUding in said talking circuit any of the separable contacts of any of the jacks of either, of the lines incorporated In said talking circuits, and without preventing or Interfering with the operation of the usual apparatus commonly employed for the production of what is generally knpwn and described as a 'busy test,' substantially as described;"
I do not perceive any substantial difference, if any difference at aU, in the statement of the invention by these opposing witnesses. Lock.
652
, 85
FEDERAL REPORTER.
wood, an expert witness for complainant; in speaking of the separable contact springs, and the defective operation resulting from the failure to cut them out of tbe talking circuit, as made when subscribers are to talk over the line (his reference being to the art as it existed prior to the advent of the Scribner patent), says: "When such separable spring contacts are thus introduced Into an electrical circuit, it Is a fact that at eaCh pall' a certain resistance or opposition to the perfect passage of the electric current is Introduced Into the circuit; or, In other words, when two portions of the circuit conductor are held in contact by pressure only, their resistance is greater. than If, at such point of the circuit, the metalllc conductor, such as a wire, had been undivided. In many forms of applications of electrical circuit, this additional resistance at each spring contact makes no appreciable difference to the passage of the current; but the electrical cllrrent employed In speaking telephony Is very delicate and very weak, and requires that the resistance of the circuit shall be as low as possible, In order that its passage through the said circuit from oile subscriber's station to the othP.r shall be facilitated." .
Thus it will be seen that there were weighty objections to the multiple switch boards, priol' ,to the Scribner patent, because, in them, a talking Circuit composed of two subscribers' lines, and their connections effected in the exchange office, included the separable contacts of all the spring jacks of the two lines embraced in such circuit The several, ,or perhaps numerous, contacts, the evidence shows, were liable to, and often did, maintain poor electrical union,-often filled between their touching points, more or less, with dust or other foreign substance, which impaired, and even sometimes destroyed, their contact, electrically speaking, and such several separable contact points of each line at each board, or board section, also. constituted a series of breaks, or breakable points, in the talking circuit depended upon by users of telephones for the transmission of speech. The evidence in this casp. is strongly persuasive, if not wholly convincing, that the invention em bodied in the patent involved herein overcame and eliminated these difficulties, and produced a substantial and meritorious advance in this useful art. By means of this invention, as expressed in the patent and as shown by the evidence, the series of separable contacts of each of any two lines to be brought together are cut out of the talking circuit when any two of the spring jacks on a board, or board section, are electrically connected by a pair of plugs and their conducting cords. Thus, referring to Fig. 1 of the patent, if the upper plug is inserted into the spring jack, or switch, c, in the upper left-hand part of the figure, and then the lower plug is inserted into the spring jack or switch on the same left-hand board, the subscriber's line, a, and the subscriber's line, b, will become electrically connected for talking purposes. At the same time each of the upper spring jacks, or switches, d, and e, of the line, a, will. be cut out of the circuit, and each of the spring jacks or switches of the line, b, lowest under d and e, will also be cut out. A representation of Fig. 1 of this patent is given on opposite page. With this understanding of the patent, consideration will now be given to the defenses urged by counsel for defendants. These are: {l) That there is Buch failure and' insufficiency of proof adduced by
653' ,
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the complainant to establish the charge of infringement that no proper ·determination of such issue is possible. (2) 'fhat the state of the art prior to the grant of the patent in suit was such as to preclude the allowance of any claims having the scope and capable of the construction that can be inferred from the terms of the claim and from the face of the patent. (3) That by the well-known construction of the statute no original patent should have been granted for the subjectmatter covered or defined by the claims of the patent in suit; such subject-matter having been so far and so clearly disclosed by prior patents to the same grantee that the rights of the latter were thereby .gated to his remedy by reissue, and not susceptible to protection by this patent. (4) That the patent on which this suit is founded not
-Em
infringed by defendants, even if it be admitted, tentatively, that said patellt is valid and capable of a broad construction. (5) That the pat· ent in suit is void, as to the claims in issue, under the decision of the supreme court in Miller v. Mannfacturing Co., 151 U. So 201, 14 Sup. Ct. 310, and Thomson-Houston Electric Co. v. Winchester Ave. Ry. Co., 71 Fed. 192, and authorities therein cited. And (6) that if it be admitted, for the sake of argument, that the patent in suit has any legality Whatever, the claims in said patent can only be saved by the narrowest construction, rigidly restricting' them to the precise form, construction, and arrangement shown and described. ". The first objection indicated above seems to be based upon the position that ,the diagram drawing introduced by complainant, and marked "Complai*ant's Exhibit, Diagram Defendants' Apparatus," was not a correct representation of the multiple switch board admitted by de':endants to be used by them in their exchange..a t Mobile. .Aside from whether defendants are l'ight in contending that such exhibit is not an accurate representation of said apparatus, the defendants themselves offered in evidence, as a correct representation of the apparatus alleged to be an infringement, two diagram drawings, marked "Defendants' Exhibit A, Diagram of Defendants' Apparatus," and "Defendants' Exhibit B, DiagraID of Defendants' Apparatus." This done, the complainllnt rested its case upon this drawing. A, described by defend· ants' witness as a correct illustration of defendants' apparatus. A representation of defendants' Exhibit A is given on opposite page. There does not, therefore, seem to be any merit in this first objection urged :by defendants. The second defense urged will next be considered. The prior letters patent relied upon to sustain this proposition are Nos. 252,259, 292,865, 292,866, 330,059, 330,060, 294,482, and 269,238. The last two hE\re named, although not found in defendants' brief, are nevertheless in the record, and are referred to in complainant's brief. The point urged in this second defense is that, in view of the above patents, there is such an exhibition of the prior art that the patent in suit must be judicially construed, in respect of its claims, down to a scope nar· rower than the scope indicated by the terms of the claims and on the face of this patent. But defendants' witness Clark, responding to cross questions 48, 49, and 50, says he does not find, in patents Nos. 292,866, 330,059, and 330,060, that, when two lines are connected to· gether,.without reference to the particular board upon which the connection is completed,. there is a talking circuit which is free from all of the separable switch contacts of the spring-jack switches of the two lines thus connected, as such feature is· exhibited in defendants' sysin .the Scribner patent, No; 330,061, in suit. This witness was asked to distinguish and point out any differences that may eXIst between patents Nos. 292,866, 330,059, and 330,060, and, after detailing alleged differences, he, states that he finds that the patent No. 292,866.is the same as the patent No. 330,061, the patent in suit, with exceptions, whieh.b.e specifles... Whatever, then, be the merit or demerit, or the accuracY or these statements and disitreniains that the patents mentioned do riot,as tlies now exist; according to this witness, contain the invention coveted by com-
WESTERN ELEdTltlC;OO. V. HOME.TEL. CO.
655
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... plainant's patent, but, on the contrary, that changes must be made in them before it is even pretended that they will show this invention. The supreme court, in Topliff v. Topliff, 145 U. S.156, at page 161, 12 Sup. Ct 828, has said: . "It Is not sufficient, to constitute an anticipation, that the device re)ied upon might,· by modification, be made to accomplish the function performed by the patent in question, if it were not designed by its maker, nor adapted, nor actually used, for the performance of such functions." .
85
FEDERA:4
The t.orce.ofthis ruling, and the similar ruling in Clough v. Barker, 106 U. S. 175, 1 Sup. Ct. 188, is made manifest, in its practical application to the J,ights of parties, by the reflection that all earlier patents set up in defense.against a later patent sued upon are but the record evidence of the status the art has reached. The rights under such later to what this record evidence actually shows. To changE! this record, by permitting theoretical modifications of these would be the same, in principle, as to change, by interany other evidence between the parties. The witness Minnis (answer 24) discusses at great length the question of. whether there is anything novel and of a patentable character in the. patent in suit, in view of patents Nos. 292,865, 292l 866, 330,059, 330,060, 294,482, and 269,238. He does not say that he flnds the inpatents, but would ventionottl1e patent in suit in either, or all, of make it appear that, by changing some or all of them, or by combining sOIne of them together, thus resorting to the process of modifications and reorganizations, he would then arrive at this invention. For stance, he says: "Thus, it be seen, by means of these four patents, we have been brought up step by step to an arrangement and combination almost identical with that shown in the patent in suit."
will
But this "almost/, with its indefiuite bounds, forms the missing linkl and, it is thought, brings this form of attack on complainant's patent substantially withiu the rule pronounced in Topliff. v. Topliff, supra, an:!l, Clough v. Barker, supra, and is also within the objection to such a course. pointed out by Judge Coxe in the case of Johnson v. Railroad Co., 33 Fed. 500, where he says: "The defendant assembles every similar device, description, or suggestion, 1D the particular art not only, but also in analogous, and even remote, arts. Every, thing wJ;licbhas the least bearing upon the subject Is brought in and arranged by a skillf\ll expert in an order of evolution which resembles most clearly the invention which is the subject-matter of attack. Having thus reached a point where but a single step, perhaps, Is nece&sary to success, and knowing from the inventor exactly what that step is, the expert is asked if the patent discloses Invention, and, honestly no doubt, answers 10 the negative. There is always the danger, unless care is taken to divest the mind of the Idea added to the art by the inventor, that the Invention will be viewed and condemned In the light of ascertained facts. With his description for a guide, it Is an easy task to trace the steps from the aggregation to the invention,"
"In the law of patents, it is the last step that wins," says Justice Brown in The Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450. Bearing in mind that defendants' witness Clark distinguishes between the patent in suit and such of these alleged prior patents as he considers, and that defendants' other witnesses, Paca and Minnis, do not point out the invention in suit in these earlier patents, it is pertinent to consider the rebuttal offered by complainant, through Scribner, the patentee, who discusses all of these· alleged earlier patents, as also patent No. 306,669, offered by defendants in connection with the Clark deposition, but not discussed by any of defendants'witnesses. Scdbner, in answers 1 and 7, points out that these patents, three of which are his own, do not contain the invention of the patent sued on. Complainant's witness Haskins also considers these patents, and testifies
657
that he does not find in them the invention in question; and I concur in this view. This discussion disposes of the third proposition of defendants, to the effect that the patent in suit should not have been granted, because the same subject-matter was disclosed in prior patents to the same patentee, and that his rights were relegated to his remedy by reissue, and not to an original patent. It is not clear, from my view of the "prior patents" to this patentee, how they could be reissued for the subject-matter covered bv this one patent. These considerations dispose, also, of the fifth contention of defend· ants that the patent in suit is void, as to the claims in. issue, under the decision in Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310, and Thomson·Houston Electric Co. v. Winchester Ave. Ry. Co., 71 Fed. 192. In Miller v. Manufacturing Co., the later patent contained the same mechanism as the earlier patent to the same patentee, and the essential or only difference in the two patents was that the earlier claimed the mechanism in respect of its two functioD,!:'l. and the later claimed· the· mechanism in respect of one of those functions; the case presenting one in which there was no division of mechanism, but only a division of functions as between the two patents. There is nothing of that sort as between the patent in !!lUit and any of the patents offered by the defendants. In the additional brief filed on behalf of defendants. considerable space is devoted to showing that patent No. 321,390, dated June 30, 1885, issued upOn an application filed October 25, 1879, contains a substantial disclosure of the senarable contact, cutting-out feature; defendants contending that everything disclosed bv the patent in suit, except, possibly, the peculiar form of the apparatus and the particular form of the test circuit, belongs to the patentee's earlier patent, No. 321,390, and say that the idea of excluding one set of contacts at the same time connection is made with another set is clearly set forth in this patent, No. 321,390, and that the patent in suit was therefore void, or anticipated. This patent, No. 321,390, describes its spring jacks thus: "One part. B', of the switch, I term the 'line' portion, and the other part, B, .[ term the 'test' portion."
These portion!! are not used simultaneously, but each is used, when occasion requires, for its own particular purpose. Defendants' witness Minnis (answer 23), speaking of these contacts in patent No. 321,390, says that: "Both of these contact switches being of a separable character, the Insertion of a plug would still leave in the circuit those contact switches between the plug and the point of entry of the line into the switch board."
It appears, then, that upon entering the plug of a connecting cord into any of the series of switches there would still be left, in the talk· ing circuit, the separable contact points of all the intervening switches located between the plugged switch and the point of entry of the talk· ing line into the switch board. This statement accorda with the testis.'') F.-42
658
: 85' FEDEi'tALREPORTER.
monY'6f,Wepatenfee,Seribneri"in,his answer to qriesti(}n 7, wherein he says: ' , j'In No. 821,390, 'Insteatl of a single switch upon eachi,multiple switch 'board,' there are two swltClhes ·for each telephone 'line; .lJnd these· two areln.sul9,ted from each (lth,er, and the contact points ofllll the swItc,hes of telephone line are Included ,In .the Une circuit of the telephone IlDc. A of any two' Unes of gives a talking circuit throngh these contact polnis, thus Introducing' ati objectionable reslstance,--Il. ,defect which the:plttetit In-suit was designed to and does obviate. NeitMrthe construction nor the result of the patent In suit. can be possibly secured by any IlDlployment of theapwratus of my patent No. 321,S90.", " '
The witness Haskins,. for the: <lomplainant, in answering question 8 in his deposition, says: "I will next COnsider Mr. Scribner's patent, No. 321,390, of June 30, 1885. This patent also contaIns the same objectionabie feature of Including in the talking clrcuitthe contacts of the switches when two subscribers are connected for conversation, and accordingly has no significance,"
ThenMinnis, in his twenty-third answer, spealrs of certain changes to be made in pl!-tent No. 821,390, to make it accomplish the result effected by the plttent in suit. ;For instance, he sayS that: ' "A ,SUbstitution of one bolt with two sets of contact switches would be an absolute equiValent of the two bolts, eacli:havlng a contact switch,"
Again, he says: "Golngalltep fnrther,and substituting forth!s bolt with two sets of contact switt'hes [of] a bolt with one set of contact switches and one sPlid switch contact, and. we have an arrangement under which the irlsertion' of' the plug in any switch would leave no separable contacts included in the circuit thus established."
If patent No. 321,390 covers 'broadly' the identical.invention covered by the patent in suit, as is claimed by defendunts'counsel, why the substitution or change of bolts and contact switches, as sug-gested by witness Minnis? 'Why any change of construction. in the arrangement shown in patent No. 321,390, if it possesses all the 'functions of the pMentin Buit?"The grant of patent is priPla facieevidence that the patentee is the first inventor of the device described in the letters patent and of its noveHy\ ' The burden of overcoming the prima facie case made out by the production of the patent is upon the defendant, and the defense of want of novelty must be clearly established before a court will be justified in setting aside the patent on this ground. Not only is the burden of proof to make good this defense on the party setting it up, but it baa been held that 'every reasonable doubt should be resolved against bim.''' Cantrell v. Wallick, 117 U. S. 689, 6 Sup. Ct. 970; Palmer v. Village of Corning, 156 U. S. 342, 15 Sup. Ct. 381. This disposes of all of defendants' propositions, except the fourth ancl sixth.. which go to the point that there is no infringement by defendants of the patent sued on, and to the further point that the claims can only be saved by a narrow construction, restricting them to the exact' form, construction, and arrangement described by the patent in suit and illustrated therein. It does not seem to admit of doubt that ,this patent accbmplishes a new result, namely, the direct connection
WESTERN ELECTRIC CO. V.· HOME TEL. CO.
659
of two subscribers' lines through the usual plugs and cords, at the same time cutting out of the talking circuit thus formed all the separable contacts belonginlr to such lines, and cutting out the conductors leading to the individual annunciators. The instrumentalities employed to accomplish this result are not, individually, new instrumentalities,but they are brought together in a new relation; combination, or organization, and thereby produce this advance in the art of telephony, and which, according to the evidence case, is meritorious in respect to its practical utility, and the advantages it affords in the actual use of telephones, by simplifying the apparatus in telephone exchanges, and by improving the tone and efficiency of talking circuits, through the elimination of objectionable resistance to the low current employed in such circuits. As defendants' Exhibit A is accepted by both parties to the suit as a substantially correct representation of defendants' apparatus, as used in their exchange, that exhibit has been adopted by me as the basis of comparison with the patent sued on. Defendants' witness Clark, in answer 23, says: "The said defendants' Exhibit· A represents correctly the apparatus as used in the switch board at Mobile, Alabama, by the Home Telephone Company. This is a correct drawing."
Clark· was further· asked: "In defendants' system, the circuit of each telephonellne may be traced normally from the subscriber's station, through the separable contact of the different :;pring-jack switches of the line, and thence through the line annunciator, and thence back to the subscriber's station. Is not this correct? A. Yes, sir (cross answer. 78). Referring to Fig, 1, for example, of the patent in suit, is not each spring jack of each line provided with three contacts, one contact being normally open, and the other contacts being normally touching each .other or closed together?A. Yes, sir (cross answer 79). Is not the same true as to the spring jacks of defendants' system'! A.Yes (cross answer 80). When a connecting plug Is Inserted in a spring jack of the patent in suit, is not the normally open contact of the spring-jack switch closed to the plug to form a circuit to the telephone hne, Nhlle at the same time the separable are disconnected, 80 as to cut off the portion of the line or the branch which contains the line annunciator? A. Yes, sir (cross answer 81). Is not the same true of defendants' system? A. Yes, sir (cross answer Iil the ca_se of the patent, and in the case of defendants' system, when two lines are connected together, none of the separable contacts of such lines are included in the united circuit of the two lines; that is, In the talking circult. Is this correct? A. Yes, sir (cross answer 83)." .
And said witness Clark was further asked: "Referring' to Fig. 1 of the patent in suit, do you not find a branch from the telephone line connected with the normally open contact of the spring-jack switches of such line? A. Yes, sir (cross answer 87), Referring to defendants' apparatus, as illustrated in defendants' Exhibit A, are not their contact springs, e1 and eo, of the spring-jack switches of the telephone line of station A, and are not these contacts, e1 and e3, both branched from the said telephone wire, and are they !lot norlllally open? A. Yes, sir (cross answer 88)."
Paca, another of defendants' witnesses, stated that: "Exhibits;A and B, diagrams of defendants' apparatus, correctly represent the arrangement' of the circuits and apparatus at the exchange of the Home Telephone Company In Mobile."
6,60
FEDjjJRAL RE;PORT,ER;.
The patentee, :Scribne!', was asked: "Bearing In mind', the prior state of the art, and that testimony [the testimony in behalf of defendants], In so far as the same relates to claims 2, 4, and 6, please state whether this system, as used at Mobile, contains the invention of the patent as pointed out In saId claims, giving your reasons at length for any opinions you may express. A. The Invention of the patent as set forth in claimS 2, 4, and 6, to which you call my attention, is, in my opinion, realized in defendants' apparatus. ,In fact, I think it will be apparent that the defendants have copied In their exchange the combination of devices described in each of the claims 2, 4, and 6 (answer 6)."
Some distinction the patent in suit and the defendants' apparatus is sought by counsel for defendants to be made in respect to the "open branch" in the patent (wire for connecting ,contacts of the several boards), and the wires, a2, a3, and a4, of defendants' apparatus. But their function is the same, and the difference between such wires and their arrangement is one merely of form. The SUbject-matter, however, of this patentl and the subject-matter ,of defendants' apparatus, for operative purposes, are not things whose essence is their form. Hence the rule of infringement laid down by the supreme court in Machine Co. v"Murphy, 97 U. S. 120, 125,seems applicable here. m that case the court says: "Except where form is of the essence of the invention, it has but little weight in the decision of such an issue; the correct rule being that, in determining the question of infringement, the court or jury, as the case may be, are not to jUdge of simiHlritles or differences by the names of things, but are to look at the machines, or their several devices or elements, In the light of what they do, or what office or function they perform, and how they perform lt, and to find that one thing is SUbstantially the same as another, if it performs substantialiy the same function, In substantially the same manner, to obtain a like result, always bearing in mind that devices in a patented machine are different, in the sense of patent law, when they perform different functions, or in a different way, or produce a substantially different result. Nor is it safe to give much heed to the fact that the corresponding devices In two machines, organized to accomplish the same result, are different In shape or form the one from the other, as it is necessary, in every special Investigation, to looli at the mode of operation, or the way the device works, and at the result, as well as at the means by which . the result is attained."
This patent was not "the mere carrying forward of new or more extended application of the original thought" shown in patent No. 321" 390, as claimed by defendants' counsel; nor was it "a change only in form, proportion, or degree, doing substantially the same thing, in the same way, by substantially the same means," as patent No. 321,390. It is true that it was a patent for new combinations of what were old elements when considered by themselves; but "a new combination, if it produces new and useful results, is patentable, though all the can· stituents of the combination were well known and in common use before the combination was made." Palmer v. Village of Corning, supra. My opinion is that the patent in suit accomplished an absolutely new and useful result,-that it was a pioneer invention. "The principle is well settled in the patent law that where an invention is oue of a primary and the mechanical functions performed by the machine. as" a, whole, entirely new, all subsequent machines which employ substantially the same means to accomplish the same result
WESTERN ELECTRIC CO. V. HOME, TEL. CO.
661
are infringements, although the subsequent machine may contain improvements in the separate mechanisms which go to make up the machine." Machine Co. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. 299. I will now consider the claims, specifically. in connection with de· fendants' Exhibit A, and interpolate numerals after the elements, of the claims, placing the same numerals on what I find to be the corresponding elements in the said exhibit. Thus, claim 2 reads: "(2) At a telephone exchange central office, the combination of multiple switch boards [1] with telephone lines [2 and 3], each permanently connected to a me· taIllc portion of its switch upon each board, each telephone li'ne being also connected through the contact points [5] of its switches and to ground, and means [6] whereby the circuit of the branch wire [7] of any given line Is opened [as at 8], when a connection [contact 9] is made with the line [2] at any board, whereby any two lines [2 and 3] may be connected together [as at 9], upon either of the boards [1], without inclUding in their circuits the contact points [5] ()f either of their switches."
And claim 4 reads: "(4) The combination, with a telephone line [2 or 3], provided at each switch board (1] of a multiple system with a connecting bolt or switch [4, 5], of a portion [7] of sald line, connected through an annunciator [10] to ground [11], and means [6] for breaking said line [7] when a connection is made with the telephone Ilne [2 or 3] of either one of Its bolts or switches [4, 5], substantially and for the purpose specified."
From this comparison of the patent in suit with the model or diagram of the apparatus shown to be in use by the defendants, it seems clear to me that the defendant Home Telephone Company has adopted substantially the invention alleged to be infringed. "In determining the question of infringement, the court is not to judge about similarities or diff,erences by the names of things, but is to look at the machines, or several devices or elements, in the light of what they do, or what office or function they perform, and to find that one thing is substan· tially the same as another, if it performs substantially the same function, in substantially the same way, to obtain the same result." Cantrell v. Wallick, supra. There is no conflict in the testimony as to the fact that the invention covered by the patent in suit and the apparatus in use by defendants accomplish the same result, and there is no material conflict as to the construction and operation of the respective l:l.pparatus or devices shown by the patent and the admitted diagrams in the case; but there is a want of harmony in the conclusions of the witnesses on the conceded facts. There is a difference in their expert opinion on the question whether the two machines or devices are substantially identical, and employ substantiaIly the same means to obtain the result, which, it is conceded, is the same. But the comparison made brings me to the conclusion, agreeably, aIso, to the weight of the evidence, that claims 2 and 4 are infringed. As to claim 6, I think that the construction or details of the spring jacks, as elements, enter somewhat into the organization it sets forth, and, as defendants' detail construction of spring jacks is not clearly exhibited, my decision as to this claim 6 is that infringement is not shown. It is not shown in the evidence that defendants Albert S. Lyons and Adam G-Iass have in their individual capacity violated any of complain-
85FEDERAIIREPORTER.
ants'11ght$, 01' that they have individually derived any profitor:adVan. tage 'from the 'patent sued on. No reason is shown why adecl'ee should be tendered against them as individuals. As to them, therefore, the bill is dismissed at complainant's cost. Howard v. Plow Works, 35 Fed. 743; Boston Woven Hose Co. v. Star Rubber Co., 40 Fed. 167; Consolidated Fastener Co. v. Columbia Fastener Co., 79 Fed. 795. . The bill is sustained as to claims 2 and 4, and dismissed as to claim 6, and' a decree will be' entered accordingly,. and for an injunction and an. accounting of the profits' and in respect to clailUs 2 and 4, the injunction not to be operative uMn 60 days !;lfter the entry of the decree, on account of the public inconvenience tb,at .lllight result in summarily enjoining the defendant Home Telephone' Company in the use of its switch boards. .
WEST END ST.Ry. CO. WEST END ST. RY....CO. V. Nos, 234 and 235. 1. PATENTS-INFRINGEMENT SUITS-P'AR'J:IEll.,
CAR"7HEATING CO.
('Circuit Court of Appeals, First Circuit.' February 18, 1898.)
2. SAME':-CRARACTER OF CLAIMS.
One who has made a broad invention mllY state Its general principles and requisite features In one claim, and, in another, the general principles ancl requisite features, supplemented by a more particular desc11ptlon of the details Involved In the contemplated structure. The McElroy patent, No. 500,288, for an electrical heater for street-railway cars, construed, and held valid, and infringed as to both its claims.
8. SAME-ELECTRICAL CAR HEATERS;
Appeal from the Circuit Court of the United States for the District of Massachusetts. . . This was a suit In equity by.the Consolldated. Car-Heating Company against the American Electric Heating Corporation,' the West End Street-Railway Company, and certain individuals, for alleged Infrlngeme'nt of letters patent No. 500,288, Issued June 2fT,' 1803, to the complainant, aSllsslgnee 01' James F; McElroy. The suit was vohmtarily discontinued as to the Individual defendants, leaving merely the two which, by some of the allegations, were charged as 30lnt Infringers. The circuit court held that the first claim, of the patent was VOId, but that the second claim was Valid, and had been' Infringed. It found,however, that the proofs were insufficient to show a joint Infringement by the .two cqrporations, and therefore directed that, if the complainant to dismiss tpe bill against one of the respondents, It Illight do so on payment of costs; that, unless It did so, the blll would be dismissed. With costs; but that, i'f It disniissed as to one of them, a decree should be entered adjudging claim 1 void, cani:lfor an accounting 'and