co.

II. KEPLINGER.

245

would not be added to by the oath. The 'approval of the form of the order providing that the, answer was to be considered to be and was thereby amended, by making the specific necessary insertions, was a waiver of any further oath, if otherwise necessary, and made good the notice without dependence upon the force of the order as made by the court. No further amendment of the answer, as a foundation for evidence of this defense, appears to have been at all necessary. The lines, arrows, and letters in red do, in view of the ,evidence,afterwards taken, give a wrong impression as to the movement of the water by the opera7 tion of the relief valves of those en?;ines. This is relied upon to su ppOft' the charge of falsehood. ' But it rested somewhat on opinion, and may have been, and probably was, an error of judgment, rather than a willful misstatement of fact, and honest, rather than wicked. Whichever it was, no ground whatever 'appears for anyeharge of fraud or wrong-dO.' ing in presenting' the affidavits and to the court in support of' the motion for leave to amend the answer. And if some misstatements or malpractice had intervened, although to be much the tion was proper, the answer was in effect amended; the evidence has r been taken on'eaoh side fol'what it will prove', and the order sought to' be vacated fully carried out. Undertbese circumstances, it 'Could not. now properly be set aside for that cause, any more'than'anexecuted' jtidgmentcould' be for perjuryof some of the Witnesses" which counsel. might have knownof or suspected. perjury;: fraud were sO groundless, ,and are made in thiS,n,iotiOll in such Ii:' sca.ilda]ous manner" that the, I!lotion, is drawn with unreasonable prolixity to greatly needless length, ought not to remain' upon the files of the court, but should be suppressed. ,'Let ail order be, entered denying all these motions, and overruling all,' objections to evi7; dence therein involved, andsl1PpressiI;lgthe motion to set aside the ofder granting leave toamend the answer,' and leaving the cause upon the .calendar to stand for hearing in ,due C9urse, upon the issues raised and remaining therein.

LAMSON CASH

Rv.

CO. ft. KEPLINGER.

'(OLrcw£t oO'U1't, N. 'D. Oh1.o, E. D. June 9.1890.)

1.

PATIINTS PO.1NVBNTION-NOVJWrT.

:t;

Claims 1 aJJ4 fa of patent number 8OS,006, Issued :August 6, 1884 to Harris H. Hayare not void for want of Jl,ovel!'>Y; den, for imp.rovementB in and invention. ' ,
, ,', , ,':' ,',,' , ;.

The Hayden patent desoribes a mechanical send-oft to Impart an Inltlal impetus' to the carrier as follows: ,"A repl1lllents a wille-war. B, the 8111)·ports; I, lIo' perforated slide,ooostrUoted to meW'e ireely on the way, and having a [llug:er,p; a ,is pnl1e1', .·uPPQ1't.ed by an arm,"E,exteDdiDg' ,from the the sUPPPr!t B; 0,$ pprd I>aBsi;ngfrc:lmtJ:!e · slide, OV6t".'t'he puney&, and extending tOlloJlolni wlthm reacb o,t the operator.", · When Qoorl'isr isln contact with:the'ftnger of tbeslide, a sudden pull or- the ¢brd' w.U1, 8lide· the way,and, ilqpart.. the qqttired· impqllle:tG: the..-

246:

nDERALREPORTER,

vol. 45. '

,,: camer. The claims ,ot paten1> ,do ullt specify the fluger of the slide as a part of, the combination. Patent No. 859,875, granted March 22} 1887, to David LiPPYr descnbes a mechanical send-dll' substantially the same as tnM of' the Hayden patenw llXcept that, in place of the finger attBQhed til slide in the Hayden patent, the Llppy ha.s the frllJIJ,e of"t,he carrier extended under tbew,ire-way so as to COO,le in difect contact with 'the':Bend-off, arid receive the impuise'from it, lleld, that the of the slide iii, notaI1' essential element of ,the Haydetl combhlation, and that send-off the HaYl!en patent.

plainlmt;' ' "

In Eq1:li,ty. , " , '' ,' ' '" .,'", Phili,pp,l?h,elps & Hovey, F.L. Baldwin, and Edwin o. Gilman, for comStockiny"
" " ' lI1Ult:r;and HenrylO. !ledges, for l'espondent.

;T., ,The assignee and owner of letters patent No.· for, certain new and, n6eful iQIprovements in storeservice ,apparatus, issueq to Harris H. Hayden, see:ks by its bill to restrain the defendantfroIU the alleged infringexnent thereof, and for an account. The defenses principally relie,d on,are lack of novnon-infringement. While said letters patent elty: and olaim several improvements, the onJy one involved in the preserttS\lit'is thlltrelatiI)g to tbepropulsion of the carrier, in respect to wlli cll says: "InsQme classes of store-service ,apparatus it III d,('sirable to impart an,inltial ilDJ>4ltuS to the wJJereby it is caused to tia,vel by momentum UpOIl the ways; . such impeths, generally b",en imparted directly by the hand of the operator, nece/ls.itatirigthe hanging ofthew'ays low down. placing the op('rator in an. eleVated position,' while the force which can be applied to the carrier intMs .way fsseldom sufficient to propel the carrier for any ,To avoid tbenecessity of lowering the way. or placing the :9peratorin an elevated ,lI,nd at the same time effectually apply 8,Il will sufflce topl'Opel, the ,carrier for,the IIJngest requh'ed distance, I ('mploy 8 mecharlical send-o(f under the cO,ntrol of the operator. send-off is construct('d,so as to be mbvedor by the operator to imparta'forcible and sUdilen movem:etili to the carrierupo'n the way, and such' send-offs are placed at the opposite ends of the way, Of at one end only." i The specifications then describe two propelling devices. The one first referred to is not in controversy, and need riot be noticed. The other form of propelling device, which it is claimed defendant wrongfully used, is described as.follows: " ;: '''; , "A construction which is most effective is illustrated in Figs. 1 and 2, in which A ftlpresents a wire.way; B, l,lIW' of . the terminal supports; I, a perforated slide, constructed to move fret'ly on the way or other like support, and havinl! a terminal finger, p; a is a groo\'ed pUlley, supported by an arm,E, extending,frOIn the support; 13: b, a, guide pulley on tbl' SUPPOl·t. H; and c, a cord passinrfrom tbe sllde'overtbe t>lllleys;8nd extending to a point witl'Jin reach of the opel'ator. where it may be provided with a handle or, connected
to 8

;

),

,,

of

t. mnB de.cnbl34' in the

specifica.tign:

fudotted Hill'S, 2) a sudden ,dQwnward movetnent of the, cQrd1c,bnparted by the operator. will propel the slide. I, qUickly and ilQpart the required impulse to tthe carder. ' A

il in eontact w.ttbthe ftrIgeu p, 'of the slide, Rnd

seco,nd 2, a may be ,used to retract thfl 'tt wilt however, that In' most Instances the momentum of the incoming'can'iers will catry'the propelling devices to the backward positions. " , " The, fesults ,s,eyured or scribed: ' .
,

",

,

by this propelling,device are thus4e,,' "

"By the of a send-off or provellingdevice as described, the carriers,are not only operlloted upon elevate\! ways. by attendants. upon the floor of the store, but It is' possible to impart such a powerful impulse to the carriers that they may be. sent long distances upon level ways or up inclined ways, thereby dispensing with continuously operating conveyers, heretofore consideri!d necessary, while the speed is ,increased in proportion to the force; of the i The first and second claiItisM the patent. afe' as , " "(1) .10' a store-service C9.1n Wnation, with 'a way or pI one or more carriers, propelUng devices constructed to pUSh the carrier's, and applianees, SUbstantially as described,extending from tile propellingdeV'ices to'theopel'aOOr'sdesk, wherebj':sllid propellingdevi<ieS tuay be moved by the operator toimpart initial mOVemflll:t to the set forth. (2) The combination, in a stor,e"Il,erv,iceapPllol"atulJ. ofa way supporting, q/¥l or more carriers, a movable, pr.opeller to push thtlcarrierl!on the way, to lm' part initial mC?yements thereto, an4, .appliances,. alJ :whereby the said propeller may be duectlyoperated by the 'attendant f'l'I:lJD the counter below the way, sUblltantially,as set forth;'" 1 ':
.' "', '. _ ,,: ',;,' ,\ .' t

two, claim!! ,tMy .cover the sara"coll1bination, device. io appara.tus, aod be conlljdere<lseparately. ;Tlle CQIn-binatioo thus described. and embodying the improvemen,t cOIlBists of" follo;Wing elem611ts, viz.: w.j\' 00 which tlleicarrier is to travel;: second, with \Vheels.sp an!! as to run read,ily frow Qneenq.. of the way to ,the other; third, a propeller pr for pushing ,the carriers io suell way !!-nd ,for jm part to it momentum suffipieotto carry it the oitha ,-.way, the proposed Jorm of J;B,ovable being ofa perfqrp,ted slide orb.lock :s,\;tpported upon, and moving backward oyer, the wiretway; fourth, of.a.cord from proPEllling slide qowIl;tqt4e salesW8,n"so thl10t operator, by givin,gthe pull orJ;novement, JAoves propelling device, ",hi(;lh,pushes th,e carrier,and,imparts to it such momentum as to over tp destinatioo. 'rhe defendant has set up in his answer, evidence, .a J:)er of patents, and which it apticipated ;the J1!lyden patent. ,,;The .qJ;l qevices wQjcp. :tjcipatedtbe one St;t13d on ,too nUJ)1er,ous. to I\oti,cedand analyzed., The is ,to: 1,3: of :s!lig whicJ;1 ;Ware fayor. It is oot claimed. or by; an)" .QJ;le c;>f ithes,aid Pll,tents or. the w ;fqrm . the .91: the

'. While

248

FEDERAL BlCPoRTER,

vol. 45.

o

ever, expresses the opinion that, in the light of said earlier patents, no invention was required to make the combination of devices found in said Hayden patent; that, in view of the state of the art as shown in the several patents submitted for his examination by the defense, nothing more was required than ordinary mechanical skill to accomplish the combination embodied in the patent sued on. On the other hand, comexpert, Foster, testifies that no one of said. patents introduced in evidence, norall of them taken tol>ether, sets forth or suggests the combinatj,on,patented by Hayden, and that Hayden's patent does involve invention. After a careful examination of the various patents relied on by defendant as anticipating the Hayden improvement in store-service apparatus, pr as showing that his combination requires nothing more to effect, the court is clearly of the opinion that the defepse of want of novelty in said Hayden, patent is not sustained; .that thec<;>wb.ination set forth in first and second claims of said pat·entdid involve invention, and constitutes a valid patent. All the structures or :devices set up by defendant fall far short of either anticipating or of suggesting the Hayden combination; and in none of them were there any propelling devices such as is shown in the Hayden patent to push the carriers on their way for a certain distli.nce. and impart to them such momentum all to carry them to their destination, whe,ther the distance was long or short, and whether the way or track was level or inclined, and 'so constructed as to be directly operated by a single movement or pull upon a cord by the attendant. Tne court is, therefore, clearly of the opinion that claims 1 and 2 of the }>l1tent sued on are not lacking hi novelty, and that the combination therein described consti" tutes Ii. valid patent. The proceedings in the patent-office, as shown by the file-wrapper and contents, in no way limit ori'esttict the combination on which Hayden was fiilfilly granted his letters patent. An examination of these proceedings will show that Hayden's Claims were originally so broad as to cover any propelling device. They were properly disallowed, from time to time, until he Was brought down to the combination contained in his particular structure, and for which the patent was issued. His is in DO sense an origina1'or underlying invention, entitled to a broad cOilstructioIl , but mereiy a combination patent, whose claims should be fairly and reasonably construed in the light of the specification and description given by him of his invention or improvements. This is all that is claimed for it, and thus far the law protects his patent. The 'authorities on the question are too well settled and understood to take time in citing and commenting on them. It is next daimed for defendant that the patent sued on should be 80 construed as to read into said combination an additional element, conon the propelling slide,wI;1ich strikes or comes in sisting of the contact wi'ththe carrier frame below the wheels; that without said finger extending forward in advance of the frame or body of the slide or propelling device the latter would not, according to the specifications and drawings, e<)me into contact with the carrier so as to impart to it any impulse Qrmovement whatever., This claim is made and rests upon the

LAMSON CASH·· RY· CO·. II. KEPLINGER.

249

a, over which passes the cord, c, by which the operator moves the slide,
I, is directly over the wire, A; along which the carrier travels, and operates to stop the carrier at the point where said pulley, a, is located; that, such being the. effect of tQe position of the pulley, a, the only way by which the propelling elide, I, can operate to give an initial impetus to the carrier is through, the projecting finger, p, with which the. slide is provided, and should be constructed to extend beyond said pulley so as to reach and come into contact with the hang;er of the carrier in order to give the latter any,impulse or forward movement. It ie conceded by defendant's said expert that the specification and drawings may admit of a different meaning; that they may mean that said pulley, a, is located on the side of the wire, A,so as to permit the carrier, in its backward movement, to pass beyond said pulley, and reach the propelli9g I, when the latter is in the position indicated by the dotted lines in Fig. 2 of the drawings. Complainant's expert, Foster, strongly tains and supports the lattflr meaning as the true and correct construction to be placed upon the specification and drawings. It is not deemed necessary to review in detail the opinions of these experts. In the ion of the court, the expert Foster has placed the correct construction upon the patent in respect to the location and operation of the little pulley, a.I;! the question was even more doubtful than it is, still the court should resolve such doubt in favor of the complainant, under the principle that a patent will not receive a construction which would ren<i:er invalid when it is susceptible of a different one consistent with its valid. ity. Goodyearv. DOIt'ia, 12 O. G. 1; Corn Planter Patent, 23 WalLIS!. While said finger, p, is mentioned in the specification, it is not described or referred to as an essential part of the appar!1tus, and is not made a part of either the first or second claim. The patentee having ,omitted,it .as an elem'ent of the combination covered by said claims, and it not being essential to the successful operation of the improvementsclaiined store-service apparatus, it should not be read into said claims purposeoflimiting or narrowing the patent by making the combination include an additional element to those mentioned in, said claims. The store.service apparatus .used by defendant is constructed in, sul:>:'Stantial accordance with a patent No. 359,875, granted March 22,1887, to David Lippy. The specification of this Lippy patent thus describes the operation thereof: "It will now be seen that. taking the car in the position shown in Fig. I, for Budden jerk upon the handle, L', will draw upon the oord, L, and starter, K, which in turn forces the car from its position with an impetus sufficient to cause it to travel to the opposite station. Although the motion imparted is sudden, still, by reason of the cord, L, passing oyer the pulley, P, the starter will travel nearly the entire length of the arm, thus imparting a pushing, steady motion. the impetus being sufficient t() carry t-be 'Car to the oppoSite station. '01< * * It is also apparent, by referring to-Fig. 5, that the impetus of the carriage will be sufficient to carry the starter, K. oo@f the receiving-istation, back to its proper position; so that,aU

theory advanced by defendant's expert, Massen, thl,tt the small pulley t

'lI'EDERALREPORTER,

vol. 45.

lI&fY to ,be done is tdgive the handle, L', apull"and the carriage, with its c;ash or other article, will be quickly and transfened over the cable, 13, to the opposite station. " ' From this description of the' apparatuBllsed by defendant, and from the model thereof introduced in evidence, its construction and operation is practically identical with that of the Hayden patent. The combinatiOD extlbodied in defendant's store-service apparatus contains substantially the same elements, performing the same functions, and producing the'same results as in the Ha.yden patent. It consists of a track or cable"B, similarin all respects to the wire-way, A, of. the Hayden patent t of Ii .'earrier, called a "car" or "carriage," movable on and along said orway, between stations, the same as complainant's carrier t of a propelling device, designated"as a "movable block" or "starter," K, perforated longitudinally, so as to work upon said track or way, which passes through it, corresponding literally with the propelling slide, I, of the Hayden patent; and, lastly,ofa rope, cord, or chain, L,connected to the front portion of the "starter/, K, and passing forward along the top ofthearin, D, over the pulley; IS, and rearward under said arm, and over the pulley or roller, r, and extending down a convenient distance, where it is provided with aD operating handle, corresponding substantially, except i,n the loeationor position of the pulleys, with the appliances contained: in the apparatus for starting the "slide" or propelling patent the forward grooved pUldevice of the'Hayden. ley is sUpPbrtedby an arm extending from the support, B, while in the is supported by the wedge-shaped defendant's apparatus the pulley, arm,D, extending from a like support. In each, the propelling "slide" or "starter"'is limited in its furward movement by this forward pulley, ()ver which! the' cord passes. In each the carrier or carriage is pushed forward by: 'the propelling "slide" or "starter" to the point where the frOnt pulley is loeated,thereby imparting to it such impetus or momentum carry it to the opposite station. In each, the propelling device is supported in substantially the same manner, and is started or set in motion by the same means, viz., by the operator pulling upon the cord connected with "slide" ·or and passing! over the twopulin· defendant's· apparatus by which the cord is made to extend under the carrier or carriage, and over and under the 'wedge-shaped arm, so that a pull upon such cord will start the propelling slide or movable block, and force it against the car, thus impart},ng the requ,iaite tIle latter, presents no difference to that in complainant's apparatus. The pulleys and cord in ·the Hayden patent are located, but such difference of tion constitutes no substantiltl oi-material difference between the two devices. In ql>th;:the apparatus is,,9perated insubstantHtl1y the same waYt functiops, .lin,d 'produces the same result.. It is that tlle \:lsap by the def(;ln<lllnt has no proje,cting finger on the movable block or '1starter," like fiQger, p, of the com· plainant'sslide. Whilethis.may be. literally true, it.has already been

ra,

LAM::lON "OASH ·ltv.

co. 't:!.' QJ'LIli!GER.

251

shown that said finger, p, is not an element of complainant's combination. But, aside from this, it clearly; ,the frame below the wheels of the carrier employed by defendant projects endwise beyond the wheel to suchan extent that the propelling slide OJ; atarter will come in contact with this extended frame of the carrier without striking the wheel thereof; and thattheeffept of this projeeti,ng frame 'in-receiving the c::oncussion from the "slide" or "starter,",8ndprotectingthe wheel of the car,"isprecisely the same as that of the finger,p, upon complainant's "slide." ,In other words, defendant prevents the', contact of the propelling slide or movable block with the wheels of the carrier by extending th.e frame or hanger of the latter beyond the wheel, while the Hayden patentefl'e.cts the same object and result by extending the lower side or frame of the slide so as to reach. and come in contact with the frame of the carrier before the slide reaches the wheel of the car or carriage. The purpose of the arrangement in each case is precisely the same, viz.; to protect the wheel of the carrier, and avoid retarding itA initial movement. It is certainly not material whether the projecting part of the frame, called the "Finger, p," in the Hayden patent, is placed on the slide or on the carrier. In each case, such projection, whether on the slide or on the carrier, is Intended to serve, and does serve, precisely the same purpose, neither involves invention, and neither constitute an element of either apparatus. The court is accordingly of the opinion that the store-service apparatus used by the defendant infringes the first and second claims of the Hayden patent in suit. The conclusion of the court upon the whole case is that there should be a decree for the complainant sustaining the validity of its patent to the combination contained in the first and second claims thereof, and adjudging that the defendant infringes said claims in and by the storeservice apparatus now used and employed by him; that defendant be enjoined from using such infringing apparatus; and that he account to complainant roi-such damage as it may have sustained because of such infringement, to ascertain which the usual reference to a master, t() be selected, may be had.

as

252

J'EDERAL REPORTER, vol. 45.

AMERICAN ROAD-MACHINE CO. 11. PENNOCK

&

SHARP CO.l

(Oircu1.tOourt, E. D. PennwZvanf.a. November 11, 1890.)
P",.'tBNTS FOB INVENTIONS-VALIDI1Y-COMBINATION-INVBNTION.

The novelty claimed in plainti1!'s pateilt was the combination with a common form of road-making machine of momentum wheels, adapted to act as a balance against the of the blade-lifting device. Smaller and lighter wheels had been used in a similar combination in road-makinR' machines, and wheels operating by their inertia to store power from the easier part of the operation to be expended during t4emore dlftlcult old, and been in fly-wheels, capstanwheels, street-car hrake-wheels, and old-fashlOned splllnlllg-wheeis. the adoption of the relative weight of the'wheels used in road-scraping machines and the weight of the scraper andattachmentB, so that the momentum of the wheels would be of essential value in the adjustment of the scraper, does not involve invention. Following Hollister v. Mantifacturlng 00., 113 U. S. 59,5 Sup. Ct. Rep. 717; DuBter 00. V'. Levy, 43 Fed. Rep.lI8I.

The suit is foriufringement of claims 4, 10, 11, and 13 ofletters patent NO.,331,920 issued to G. W. Taft for road-making machines. The claims read as follows: (4) The combination with a. diagonal scraper supported in connection with a wheeled carriage and adapted for upward and downward adjustment independently at either of its ends of an operating wheel (or wheels) for effecting such' adjustment, adapted to act as a momentum or fiy wheel as set forth, whereby the peripheral weight of said wheel is utilized to assist in the adjustment of the blade substantially as hereinbefore explained. (10) In a road machine, the combination ,of a scraper-blade adapted for ,upward and downward adjustment at its respective ends, an operating handwheeI(or wheels) connectedtherew,ith for effecting sueh adjustment and a brake '(or' bri£kes) acting againstsai'd wheel to arrest movement thereof, and retain the parts'substantially as set forth. . (11 )In a wheeled road-scraper, the combination of a scraper-blade adapted for upward and downward adjustment at its respective ends by a strap or chain {one or ;more) Ol,1e end whereof connects witMpe lift-bar or lever, whilft the other. end is arranged to wind onto the pinion or bub .on the hand-Wheel or onto a geared to the band-wheel hub. .' (13) In a 'road machine, the combination with an oblique scrapersllspended beneath a carriage or body mounted on front and rear wheels, of means forimparting independent upward and downward adjustment at the respective ends of said scraper prOVided with hand-wheel and pinion devices for imparting movement thereto, and stops or brake devices acting in connection with said band-wheels for retaining the parts at positions of adjustment substantially as described. The defense assails the patent, and denies infringement. Joshua Pusey, for complainant. West &- Bond and M. B. Philipp, for respondent.
BUTLER, J., (after stating the facts as above.) The combinations described contain nothing new unless it is the use of "momentum handwheels." Ordinary hand-wheels in similar combinations, for analogous purposes, are old. This is abundantly shown by the record. I need

'Reported by Mark Wilks COllet, Esq., of the Philadelphia bar.