439 The following is the explanation given | do better than to quote the description giv by counsel of the figures: "The drawings of the Willoughby patent of March 26, 1892, No. 5,924, as to the flanged channel, show the flanges in three different positions as to the solid rubber tire. en of them by Judge Thomas (91 Fed. 988), as follows: "The Willoughby patent, No. 5,924, Fig. 8, shows in combination wire connections, also described in the specification, very Fig. 8 shows the flange at right similar, save in location, to those used by angles of the rim; Fig. 8** shows the flanges Grant, and the figure shows also a very somewhat inwardly inclined with the two slight angle located slightly within the retaining wires, and Fig. 7 shows the flanges. The rim, however, is of the clingflanges vertical with two retaining wires, er variety; that is, the flanges incline inthe retaining wires in Fig. 8 being below wardly, and bind the rubber on each side. the outer periphery of the flanges, and the Such a tire thwarts the lateral play other. two retaining wires of Fig. 7 being central-wise permitted to the rubber by the wires, ly located, as to their openings, with the and, although almost imperceptible angles periphery of the flanges. In Fig. 6, however, which is a pneumatic tire (a tire appear, made by the sides of the rubber, when highly inflated is as solid as a rub they are not sufficient to give the immunity ber tire), the flanges are outwardly flaring, resulting from a well-defined angle whose and the two retaining wires are substan- vertex is within the flaring rim. Figures tially below the periphery of the flanges." 5 and 5 show rims shaped like the seg There are resemblances and differences ment of a circle, in which are seated spherin the figures to those of the Grant patent, ical rubbers held in place by a single wire. and we have let the rubber company set forth the resemblances. The differences are substantial. To represent them we cannot 31 S. C.-29. The rim is described in the specifications as U or V-shaped. A V-shaped rim must have flaring flanges, but the rim is quite unlike that employed by Grant, and in the¦ insisted, possessed all of the qualities which entire absence of the angle the functions at tributed to the Grant tire seem to be absent. Indeed, the freedom of action permitted by the wire in the rim used by Grant seems to be denied the tire, for the reason that the rubber is confined by the V-shaped channel. "The Willoughby patent, No. 18,030, shows wire connection, flaring flanges, and angle (see Figs. 26, 30, 31), and in mere coincidence of parts seems to be the nearest approach to the Grant tire. But look at these figures, and all possible conception of coincidence of function is dissipated at There is the flaring rim, in which is seated a rubber upon which is placed a steel outer tire, through which pass the openings and wires. The angle is far with out the upper edges of the rim, and it appears that neither function ascribed to the Grant tire is obtained." once. Willoughby patent No. 18,030, has no relevancy whatever. It is true it has flanges upon the rim, flaring and at right angles, and it is illustrated by figures showing what may be called retaining wires, to quote from the brief of counsel, "above the periphery of the flanges, another substantially on a line with the periphery of the flanges, and three of the figures showing the retaining wires substantially below the periphery of the respective flanges." It is manifest that the relation of the retain ing wires to the periphery of the flanges is absolutely unimportant in the tire. Wil loughby, describing his invention, says: "The object of my present invention is, as in my previous one, to provide a metallic outer tire or armor to rubber which is of itself flexible." The retaining wires hold the metallic exterior to the rubber bed. The utility of the Grant patent, therefore, was not attained in the Willoughby patent. The rubber company's conduct is confirmation of this. It uses the Grant tire, as we shall presently see, not the Willoughby tires. Let it be granted that they afforded suggestions to Grant, and that he has gone but one step beyond them. It is conceded, as we have said, that his invention is a narrow one,-a step beyond the prior art, built upon it, it may be, and only an improvement upon it. Its legal evasion may be the easier (Chicago & N. W. R. Co. v. Sayles, 97 U. S. 554, 556, 24 L. ed. 1053, 1054), and hence we see the strength of the concession to its advance beyond the prior art and of its novelty and utility by the rubber company's imitation of it. The prior art was open to the rubber company. That "art was crowded," it says, "with numerous prototypes and predecessors" of the Grant tire, and they, it is the dreams of experts attributed to the Grant tire. And yet the rubber company uses the Grant tire. It gives the tribute of its praise to the prior art; it gives the Grant tire the tribute of its imitation, as others have done. And yet the narrowness of the claims seemed to make legal evasion easy. Why, then, was there not evasion by a variation of the details of the patented arrangement? Business interests urged to it as much as to infringement. We can find no answer except that given by the tire company: "The patented organization must be one that is essential. Its use in the precise form described and shown in the patent must be inevitably necessary." That the tire is an invention is fortified by all of the presumptions,-the presumption of the patent by that arising from the utility of the tire. And we have said that the utility of a device may be attested by the litigation over it, as litigation "shows and measures the existence of the public demand for its use." Eames v. Andrews, 122 U. S. 40, 55, 30 L. ed. 1064, 1069, 7 Sup. Ct. Rep. 1073. We have shown the litigation to which the grant tire has been subjected. We have taken for granted in our discussion that the Grant tire immediately established and has ever since maintained its supremacy over all other rubber tires, and has been commercially successful while they have been failures. The assumption is justified by the concession of counsel. They do not deny the fact, but attribute it to "three subsequent discoveries and conditions" since the *Grant patent, these being (1) "that the tire can be held in place and fixed upon its base by straining the wires to a clamping point; (2) the production, by mechanical means, cheaply and expeditiously as a commercial product, of the channel rim in straight lengths, to be applied to the wheel; and (3) the improvement of the rubber itself; the demand of the public for a solid rubber tire, and the wealth of the complainant, advertising in the market, and pushing and exploiting the tire." The first ground is a somewhat distant assertion that the tire does not involve invention, but as to that we have sufficiently expressed opinion. The second ground is an inversion of cause and effect, and there is an obvious answer to the third ground. Without suitable rubber, there could have been no rubber tires, and the desire for them necessarily induced their manufacture, and Grant exercised invention to produce an efficient one. We can understand that some advertising was necessary to bring it into notice, and give it a certain 442 use, but the extensive use which it at- | channel, and shall not be cut on the flange tained, and more certainly the exclusive use of the channel," and yet shall "be mobile which it attained, could only have been the in the channel." We agree with the court result of its essential excellence, indeed, its of appeals that "this was not the result pronounced. superiority over all other of chance or the haphazard selection of forms. Here, again, in our discussion, a parts; his [Grant's] success could only comparison is suggested between it and have been achieved by a careful study of other tires, and the inquiry occurs why the scientific and mechanical problems neccapital has selected it to invest in and ad- essary to overcome the defects which renvertise, and not one of the tires of the dered the then-existing tires ineffective prior art, if it be not better than they? But and useless." [80 C. C. A. 590, 151 Fed. the effect of advertising is mere specula- 238.] This conclusion is not shaken by the tion; to the utility and use of an article testimony and argument urged against it. the law assigns a definite presumption of its character, as we have seen, and which we are impelled by the facts of this record to follow. To what quality the utility of the tire may be due will bear further consideration, if for no other reason than the earnest contentions of counsel. Aside from those contentions and the ability by which they are supported, we might point to what it does as a demonstration of its* difference from all that preceded it, that there is something in it, attribute or force, which did not exist before,-something which is the law of its organization and function, and raises it above a mere aggregation of elements to a patentable combination. And we may say, in passing, the elements of a combination may be all old. In making a combination the inventor has the whole field of mechanics to draw from. Leeds & C. Co. v. Victor Talking Mach. Co. 213 U. S. at page 318, 53 L. ed. 812, 29 Sup. Ct. Rep. 495. The tire company gives a definition of the "something" as tipping and reseating power. The rubber company earnestly denies the existence of the power, and, as we have seen, the courts of appeals of the sixth and second circuits divided in opinion on its existence. We think such power is possessed by the tire. This is shown by the evidence, and was shown at the oral argument. And it is the result of something more than each element acting separately. It is not the result alone of the iron channel with diverging sides, nor alone of the retaining bands or the rubber. They each have uses and perform them to an end different from the effect of either, and they must have been designed to such end, contrived to exactly produce it. There can be no other deduction from their careful relation. The adaptation of the rubber to the flaring channel, the shape of that permitting lateral movement and compression, the retaining band, holding and yielding, placed in such precise adjustment and correlation with the other parts, producing a tire that "when compressed and bent sidewise shall not escape from the use The contention of noninfringement is very hesitatingly advanced, suggested rather than urged. It is conceded that infringement existed in the prior litigations, but it is said that if, under the closer analysis of the Grant patent "as here presented, and as considered as contended for, if to be confined to exact angles and relations of angles and precise configuration of parts," the rubber company's device does not infringe. And this is attempted to be supported by the testimony of a witness who found, he said, in the rubber company's tire, "the three fundamental mechanical elements" of the Grant patent in suit, which, he interjected, were borrowed by Grant, "both individually and in combination, from the prior art long antedating his alleged invention," and then proceeded to declare a difference between the "angles and relations of angles and precise configuration of parts," to counsel's language, of the two tires, and briefly summarizing his conclusion, said that he did not "find the alleged invention, combinations, and devices of either of the claims of the Grant patent in suit embodied in or contained in either of the exhibits introduced in evidence professing to represent the defendant's tire." We are unable to concur in the conclusion. The exhibits demonstrate the contrary. And we are fortified in this by the conduct of the rubber company in the circuit court. The defense of nonfringement was not there seriously urged. After considering to what extent the case, as presented, differed from the prior litigation, Judge Holt said: "Of course, if your defense was that this defendant does not infringe, that would be an entirely different question; but the only question argued here is as to the validity of the patent." In the opinion of the court of appeals, noninfringement received no attention; presumably because that defense was not pressed upon it. * The final contention of the rubber company is that, the Grant patent having been declared invalid by the circuit court of appeals of the sixth circuit and by the circuit court for the district of Indiana in ⚫445 ⚫444 REMANDING FOR DISMISSAL. 2. A decree of a Federal circuit court dis the seventh circuit, the rubber company | Appeal and Error_(§ 1176*)-Judgment— should not have been enjoined from the handling or sale of tires manufactured in the sixth and seventh circuits, and cites Kessler v. Eldred, 206 U. S. 285, 51 L. ed. 1065, 27 Sup. Ct. Rep. 611. missing, apparently on the merits, a bill which, on its face, shows that the court had no jurisdiction, will be reversed by the Federal Supreme Court, and the case remanded to the circuit court with directions to sustain the demurrer for want of jurisdiction, and on that ground dismiss the suit. [Ed. Note.-For other cases, see Appeal and Error, Dec. Dig. § 1176.*] The court of appeals practically reserved the question. It modified the decree of the circuit court so far as it prevented the handling, using, or selling tires and rims authorized by any judicial decree, recognizing, as it said, the applicability of Kessler v. Eldred. But it is further said: "Whether it should be given a broader interpretation is a question upon which Submitted March 14, 1911. Decided April we express no opinion, deeming it more prudent to wait until the facts are fully developed. "There is no occasion for attempting at this time to anticipate the future, and to provide for a contingency which may not arise. To provide in a decree that the defendant is not enjoined from making, using, and selling devices which do not infringe, or which have been licensed, seems unnecessary. The doctrine of Eldred and Kessler, if carried to the extent contended for by the defendant, will introduce radical and far-reaching limitations upon the rights of patentees. These questions may not arise in the case at bar, but if they should, the court should have the facts, and all the facts, before attempting to decide them." [89 C. C. A. 584, 162 Fed. 894.] We concur in these remarks. Decree affirmed. A [No. 109.] 10, 1911. PPEAL from the Circuit Court of the United States for the Western District of Oklahoma to review a decree which dismissed, apparently on the merits, a suit to enjoin municipal officers from violating a contract to take over the laterals of a drainage company. Reversed and remanded, with directions to dismiss the bill for want of jurisdiction. The facts are stated in the opinion. Messrs. B. B. Blakeney and James H. Maxey for appellant. Messrs. J. H. Everest, J. H. Woods, and W. M. Engart for appellees. Mr. Justice McKenna delivered the opinion of the court: It is contended that this case involves the construction or application of the Constitution of the United States, and that Mr. Justice Day and Mr. Justice Lurton therefore the appeal has been taken directly took no part in the decision. (220 U. S. 462.) SHAWNEE SEWERAGE & DRAINAGE V. FRANK P. STEARNS, as Mayor of the City of Shawnee; A. D. Martin, as Clerk of the City of Shawnee; John Lain et al., Members of the City Council of the City of Shawnee, et al. COURTS ($282*)-FEDERAL COURTS-JURIS DICTION-FEDERAL QUESTION. 1. A suit to enjoin the officers of a municipality from violating its contract to take over the laterals of a drainage company, to be paid for by tax warrants, can present no real or substantial Federal question respecting the impairment of contract obligations or taking of property without due process of law which will sustain the original jurisdiction of a Federal circuit court, without regard to the citizenship of the parties. to this court from the circuit court. The appellant, we shall call it the drainage company, is a corporation organized under the laws of Oklahoma; the appellees are the mayor, clerk, and the members of the city council of the city of Shawnee, a municipal corporation. The Walter Newman Plumbing Company and Walter Newman are also appellees. A summary of the facts as presented by the bill is as follows: The city of Shawnee, a city of the first class under the laws of the territory of Oklahoma, granted by an ordinance (No. 228) to De Bruler-Newman & Company, their successors and assigns, the right, for the period of fifty years, to build and maintain a system of sewerage, with the necessary branches and appurtenances essential to the same, "along certain lines" in the city. It was provided that the city should have the right to purchase the system at the expiration of a period of fifteen years, at the exact cost of its construction. And further, that if the city did not desire to make the pur[Ed. Note. For other cases, see Courts, Dec.chase, the ordinance should run for fifty Dig. § 282.*] For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes *463 464 years. There was a time fixed for the commencement and completion of the sys tem. The ordinance was amended by a subsequent ordinance (No. 241), by making the term of the right twenty-one years, and ratifying all the other provisions of the first ordinance. pensated it therefor, which suit was regularly tried and a decree rendered that the company had a legal and valid franchise, and that it "was authorized by such franchise to carry on the business of operating the said system of sewerage," and that the construction and operation of a sewer system by the city in the immediate vicinity On the 1st of February, 1902, De Bruler- of the company's system would confiscate Newman & Company assigned their rights its property and depreciate the value of under the ordinance to the* drainage com- the bonds thereon. The city was enjoined pany. The assignment was ratified by the from constructing its system until the comcity by an ordinance (No. 242) passed Feb-pany's main sewer should be condemned or ruary 26, 1902, and the drainage company purchased by it, and, in the event that it authorized to mortgage the rights and prop-should condemn or purchase the main erties in a sum not exceeding $25,000. The ordinance also provided that the city should have the right to purchase the system at the exact cost of its construction or any extension of it after the expiration of fifteen years. De Bruler-Newman & Company commenced and continued the construction of the system until the assignment to the drainage company, as above stated, and after the assignment, the drainage company conducted its construction "and extended its mains and laterals over and throughout the limits" of the city, and expended and invested therein $40,000, and issued its bonds and notes in pursuance of ordinance No. 242, and secured the sum by a mortgage on the property and franchises. The company performed its duties to the city, met all of the demands for sewerage purposes, and carried out the terms and conditions of the ordinance until the 22d of December, 1906, at which time it sold and transferred its main line to the city. The company is the owner of the rest of the property, which is of the value of $30,000, and which is regularly assessed and pays to the city its just property taxes. On the 1st of December, 1901, the city passed an ordinance providing that, whereever the system was extended, "all overground closets should be declared a public nuisance;" but after the company had extended the system, the ordinance was repealed, and the city has habitually and systematically discouraged, and by divers means has attempted to impair, the investment of the company. On the 6th of November, 1906, after certain proceedings had, a question was submitted to the voters of the city, whether bonds should be issued in the sum of $165,000 for the construction of a sewer system, which was duly carried. The drainage company then commenced a suit in the district court of the county to enjoin the city from constructing and maintaining a sewer system in the city without having purchased the company's system or com sewer, the mayor and councilmen were enjoined from preventing the company "from connecting with any main sewer of the said defendant (the city) free of charge, and to use the same by such connection with the district sewers and laterals" belonging to the company in operation at the date of the rendition of the decree. The legality of the election at which bonds were authorized to be issued by the city to the amount of $165,000 was adjudged. Subsequent to this decree, to wit, on the 3d March, 1907, the company and the city entered into a contract, Exhibit E, by which the company sold to the city all of its main line of sewer for the consideration of $6,900, it being provided that the city would recognize the company's rights to the laterals which were then laid in the city, and which were of the value of $30,000. It was further provided that at such time as the city should be divided into sewer districts for the purpose of laying and constructing laterals in the districts, the city would cause the property of the company to be appraised by a commission, in case agreement could not be had as to the price thereof. The price being fixed, the city was to "use all lawful means to tax up said laterals, at the price agreed upon, to the abutting property, and deliver the tax warrants to the" company, which should "be in full payment for such laterals, in so far as the abutting property" was concerned. It was provided that the city should not be liable for the payment of the warrants, and that it did "not attempt to bind itself any further than warranted and permitted by law." On the 1st day of June, 1908, the company, in order to comply with the contract above referred to, submitted to the city a proposition offering to relay and lower all of the laterals owned by it, to the depth required by the plans and specifications, and under the directions of the city engineer, and at his estimated cost, if any of 991 |