Wagner Palace Car Co., 38 Fed. Rep. 416. The record in that case by stipulation is made a part of this record. It is said that the deposition of Sessions in that case, as to the scope of his invention, is somewhat in conflict with his present position. It is true that Sessions there testifies that his buffer is attached to a Janney buffer as modified, but he nowhere says that he was the inventor of this feature, and he now directly and positively swears that this was suggested by Pullman. As to the position which the learned counsel for the complainant in that case took before the court, respecting the proper interpretation to be given to the Sessions patent, I do not see what it has to do with this case, but, admitting that it may have a bearing, I can detect no serious inconsistency in the grounds then urged to sustain the Sessions patent and those now brought forward by the complainant. Prima facie a patent is good. It is for the defendants to make out in this case that Sessions was the inventor of the Pullman invention. Here is a most meritorious invention, and the credit is due to one or the other. I cannot upon a comparison of the two patents, taken in connection with the evidence of Sessions, hold him to be the prior inventor. It seems to me it would be an act of injustice for the court by inference to incorporate the Pullman invention into the Sessions patent, and thus prevent both inventors from deriving any benefit from this improvement; because it is manifest that, if we destroy the Pullman patent, Sessions can derive no benefit from the Pullman invention, because he nowhere describes or claims it in his patent. The proceedings in the patent-office are brought forward by defendants, as tending to prove priority of invention in Sessions. It is true that the Pullman patent was not granted until May 14, 1889,two years after the application was filed. It is also true that the application was rejected mainly on reference to the prior Atwood and Sessions patents. The original specification and claims were, in great part, rewritten, Pullman disclaiming anything contained in the Sessions pat In his affidavit of April 1, 1889, forwarded to the patent-office, Pullman states that he completed his invention prior to the date of the filing of the Sessions application. The point is consequently made by the defendants that Pullman finally obtained his patent because the patent-office believed that his invention was prior to Sessions's, and not that it embraced anything patentable outside of Sessions's. In the absence of record proof, the court has no right to assume that the patent was issued on this affidavit or for this particular reason. The ground taken by the patent-office in finally granting this patent does not appear, but it does appear by this record that Sessions swears that what Pullman said in his affidavit as to his invention was true in point of fact. The statutes of the United States provide how a patent may be obtained. Where the claims of a patent are rejected, in whole or in part, it is the duty of the commissioner to notify the applicant, in order to enable him, if he desires, to make his description and specification of claims more specific and precise. The Pullman application took the usual course, and the patent was granted. There is nothing in the patent as allowed that was not contained in the original application. The struct ure described is the same. Inventors work more or less in the dark. They may not know in the beginning how well they have built. Pullman may not have realized at first about the motions and restraint of motion necessary to a solid vestibule train. But he did describe in his original application, and showed in his drawings, an apparatus which produced these results. He knew what that apparatus was, and he knew it worked successfully, since he had already built and run a train of cars so equipped. The fact that, in its progress through the patentoffice, the specification and claims of the patent were made more clear and accurate, so as to express his actual invention, affords no reason for casting doubts upon the validity of his patent. The question of infringement alone remains. Upon the construction now given by the court to the Pullman patent, I have no doubt that the structure used by the defendants is within the patent. The defendants hinge the arch-plate to the buffer-plate. This is the only important difference in the two structures. If the hinges in the defendants' model were pinned fast, and the latches on top of the arch-plate removed, you would have the construction mentioned in the patent in which the archplate, the buffer-plate, and the foot-plate are all mounted so as to have the same motions, and be restrained to the same line of central motion. The arch-plate, the patent states, is to be firmly attached to the bufferplate, and in the preferred construction it is riveted to the buffer-plate. The defendants seek to avoid infringement by hinging the arch-plate to the buffer. The patent defines, however, what is meant by "firmly attached," because it states that the arch-plate is so secured as to be capable of the same motions, and restraint of motion, as the buffer-plate. Any fastening, therefore, which is secure enough to obtain these results comes within the patent. It is clear also from the language of the specification that the patentee does not confine himself to the precise means shown in the drawings for supporting the arch-plate, foot-plate, and buffer-plate, but that various means may be employed for that purpose, so long as these parts have the motions before referred to, and are restrained centrally. The structure of the defendants may not work perfectly, but it contains the substance of the Pullman invention as set out in claims 1, 2, 4, and 5 of his patent. In defendants' car there is a faceplate, forming the open end of a vestibule connection when not coupled with another car, and a buffer-plate, both being pivotally connected with a spring-extended buffer-rod, and both having the motions, and restraint of motion, set forth in the patent, and it is, therefore, within the first claim of the patent. It has also the threshold, or foot-plate, combined with the arch-plate and buffer-plate, so as to have the motion and be restrained in the same manner; and it is, therefore, within the second claim of the patent. It has also the bellows-like connection when combined with other elements, so as to produce the same results, and it is, therefore, within the fourth claim of the patent. It has a vestibule provided with doors at the sides, in addition to the other elements contained in the fifth claim of the patent, and it, therefore, infringes that claim. Let a decree be drawn for complainant, as prayed for in the bill. FIRMAN et al. v. NEW HAVEN CLOCK Co. (Circuit Court, D. Connecticut. December 5, 1890.) PATENTS FOR INVENTIONS-SIGNALING APPARATUS-INFRINGEMENT. Claim 5 of letters patent No. 192,644, granted July 3, 1877, to Leroy B. Firman for improvements in automatic signaling apparatus, is for "the combination, with a call writing wheel, of a signal writing wheel, moved by the same power, when the latter is provided with a number of equal spaced teeth, which write the signal desired by making a certain number of equal spaced impulses." Two wheels acting in succession, but operated by separate acts of the user, and a single wheel, which made in succession the two impulses, had been previously known. Held, that the claim must be limited to the mechanism substantially as described therein, and was not infringed by an apparatus in which two wheels coacted to produce a similar result, one producing the impulses, and the other determining which of the im pulses should be transmitted. In Equity. George P. Barton and Wm. Edgar Simonds, for plaintiffs. SHIPMAN, J. This is a bill in equity to prevent the alleged infringement of the fifth claim of letters patent No. 192,644, dated July 3, 1877, granted to Leroy B. Firman for improvements in automatic signaling apparatus, used in the system known as the "district telegraph system," in which "each station is designated by a number, and the apparatus is constructed to write that number as a 'call,' and subsequently to write any one of several signals, at the will of the operator." The apparatus was an improvement upon the device described in letters patent No. 185,455 to G. S. Ladd and S. D. Field, which contained one circuit breaking wheel, described by one of the experts for the plaintiff as follows: "Having a certain set of teeth or notches upon its rim, extending partly around, so as to give a station number or call, the remaining portion of the rim being divided into teeth, placed at regular intervals apart, so that they will cause a series of equal spaced dots upon the paper of the register at the. receiving station, amounting altogether to one more than the number of special signals provided for." A movable plate, with enough to cover two teeth, is placed against one side of the wheel, and thus a dash is formed, instead of two dots, when these teeth pass the contact point. Any two adjacent teeth may thus be combined, and the special signal depends upon where the dash is formed. The operator determines the special signal by observing which two dots are united to form a dash. The patentee divided this single wheel into two wheels. Upon part of the rim of one wheel there were the unequally spaced notches, which designated the call, the remaining portion of the rim being without teeth, and connected with a segment of a cog-wheel, and upon part of the rim of the other wheel were equally spaced notches, which designated the special signal. The second wheel is brought into action after the call, which has finished its work. It is connected with another segment of a cog-wheel, the teeth of which are capable of being moved into position in which they will be engaged by the teeth of the segment on the first wheel. After the call has been given, the teeth of the segment of the call wheel are brought into position to engage the teeth of the segment of the signal wheel. This description of the Firman wheel is abbreviated from a longer description given by Mr. Quimby, one of the defendant's experts. Two signaling wheels are described in letters patent to E. A. Calahan, No. 129,526, and to T. A. Edison, No. 146,812, each issued before the date of the Firman patent, for sending, when successively operated by successive and distinct acts of the operator, different signals by prescribed different systems of breaks of the circuit, but not for sending automatically these different signals. It does not appear that either of these inventions went into actual use. The improvement consisted in two wheels instead of one, which automatically and successively communicated to the central office the two sets of signals. It is thus described, in detail, in the first claim: "(1) The signal mechanism operated by suitable clock-work, provided with a writing wheel constructed to give the call or number of the station, and another adjustable wheel, which stands still while the call is being written, and is engaged by the mechanism after call has been sent, and is caused to turn through whatever space or number of teeth desired, by setting the pointer, substantially as specified." The fifth claim, and the one which is said to have been infringed, is as follows: "(5) The combination, with a call writing wheel, of a signal writing wheel, moved by the same power, when the latter is provided with a number of equal spaced teeth, which write the signal desired by making a certain number of equal spaced impulses, substantially as specified." The defendant uses an apparatus which is described in letters patent No. 321,073, dated June 30, 1885, to Frank B. Wood. It produces a compound signal by the joint action of two wheels. It has "Two signal wheels, which are geared to each other and to the clock-work, so that they both move simultaneously and in unison during the time that both parts of the compound signal are being transmitted. While thus in motion they are acted upon by opposite ends of the same electrical contact spring." The smaller wheel runs continuously, has a series of equally spaced notches, and tends to transmit a recurring series of breaks at equal distances apart. The larger wheel has certain portions of the periphery cut away. When both of these wheels are moved simultaneously in the same direction, the small wheel sends a continuous series of signals, but those which are not needed are canceled and prevented from being sent by the action of the larger wheel, with its spaces of "cut-away" periphery, and thus the final result is to give, first, the signal, and then the call. The result is, substantially, that of the Firman device. The plaintiffs claim that the equivalent of the Firman signal wheel is the small wheel of the defendant, which transmits a series of equally spaced impulses, and that the equivalent of the call whee is the large In wheel of the defendant, which has its periphery so cut away as to determine the numerical signal which is sent, notwithstanding that the actual transmission of the signal is performed by the other wheel, and that thus the defendant's device contains the call wheel and the signal wheel of the fifth claim. If a literal construction is to be given to the fifth claim, and the requisites of infringement are a signal writing wheel, with equally spaced teeth, which makes equally spaced impulses, and a call writing wheel in combination, regardless of the manner in which these two wheels operate to produce the result, the remaining element being power operating the two wheels in such manner as to transmit the compound signal at one operation, then the defendant infringes. my opinion, such a broad construction cannot be given, but the scope of the patent must be confined to mechanism substantially such as is described in the patent, viz., two wheels moving by the same power, in succession and automatically, one of which produces a part of the signal by its sole action, and the other of which produces the other part by its sole action. It is true that the Firman invention was the first one having two wheels which did both parts of the work automatically, but this step cannot give the device the character of a primary invention, and permit the inventor to include within his patent wheels which differ so widely from his apparatus as do the double wheels of the Wood patent. This seems manifest from the place which the invention occupied in the history of the art. Two wheels, acting in succession, but operated by separate acts of the user, had been known, and a single wheel, which made in succession the two acts or impulses, preceded Firman, whose ȧdvance was to make the single wheel into two wheels, one having equally, and the other having unequally, spaced notches, and to move. them by the same power, so that two signals should be transmitted successively by one operation; but this step did not entitle him to include in his patent two wheels which coact with each other and produce a compound signal, one wheel actually producing the impulses and the larger wheel determining which of the impulses shall go through the line and be recorded. These wheels cannot, in view of the limited character of the Firman invention, be properly styled the equivalents of the call writing wheel and the signal writing wheel of the patent, although they produce the same result. The bill is dismissed. |
