CONSOLIDATED PIEDMONT CABLE CO,

v;

PACIFIC CABLE RY. CO.

385

are cut the movable car whiCh supports the cable pulley, and upon'which'itis journaled, as in plaintiff's patent, is let down so that the car which carries the cable wheel and the car (if it can be called a,car,-in the plaintiff's patent the namels "rails or which carries the chain wheel moves ontha same track. This change involved 'minor alterations, which are not necessary to detail.· It is manifest there is an infring-ement. ,The purpose, principle, and operation of the macb,ines are the same, and the defendant's escapes exact similitude of construction to.the plaintiff's only by a few alterations. It is not a case of using the elements of a combination less than all. It is a case of using the same number of elements, and altering the form of one, aJ;ld not materially altering the relation of any to· the others. The objection of defendant to the question addressed to the witness Bell, 1io the function of ,certain parts of the plaintiff's and defendant's devices, is treated by counsel as involved in the other assignments of error, and must be considered as disposed of by the decision on them. Besides, if elTor, it cannot be said to have been a prejudicial one. Judgment is affirmed.
CONSOLIDATED PIEDMONT CABLE CO. v. PACIFIC CABLE RY. CO. (Circuit Court of Appeals, Ninth Circuit. No. 50. October 24. 1892.)

1.

PATENTS FOR INVENTIONS-INFRINGEMENT-C01dlIINATION OF OLD ELEMENTS - EQUIVALENTB.

The third claim of letters patent No 189,204, issued April 3, Hl77. to Wil· liam Eppelsheimer. for an "improved clamp apparatus for tramways or street railways." which covers a combination of five old elements. one consisting of friction rollers, is infringed by a device containing four of the same elements. and a fifth consisting of a bell crank or a toggle; for both of the Iatter are well-known devices, and the equIValents of the friction rollers.

2, SAME,

While a combination claim. composed of old elements. may not be infringed by using all but one of its elements, yet infringement results if an equivalent is substituted for the omitted element. 1

Appeal from the Circuit Court of the United States for the Northern District of California. In Equity. Bill by the Pacific Cable Railway Company against the Consolidated Piedmont Cable Company for infringements of letters patent No. 189,204, issued April 3, 1877, to William Eppelsheimer, for an "improved clamp apparatus for tramways or street railways." The circuit court entered a decree sustaining the validity of the third claim, finding infringement thereof by defendant, perpetually enjoining the same in future, and refelTing the cause to a master to take an account of profits and damages. From this decree, defendant appeals. Affirmed. The patent contains seven claims, but at the trial the issues were confined to the third claim, which reads as follows:
"The combination with the shank, E. as described. of the hinged clamping jaws. e 3· together with the operatjng slide, F, its crossbar, f2. and bearing rollers,. f. as and for the purpose specified. " JSee note at end of case.

v.531;'.110.3-25

,the f¢pping device is
extending longitUdinally through shank,E, is arranged N'" rod, j". Upon ,)o:w:er end of tlul ,sbank, E, are hinged the p,etween which., or channels, b', ,faces. the cable'ls grasped.. ''I'he outer .faces of these jaws are In. t'llHied out'fltardly from the thinge joh'l!{, tC!l tlleir lower ild'ges, as shown at e4 , Fig. 8,llincitlpotlithese faceS8re.arranged . t o J>ear'frictipll f, mount· ed,09 aXIllSef' and fixed io" by., a cross5 i.s a 'pin set in one piece, .is fixed, on low:er end' of .the slide:. F.. e of tlie hinge joiDt oftbe Jaws. above one of :lIaid ii-Iction rollers" fj j. , ' " , " .,' ' ,
" f

.,;:l'1i\:11i.11

G,' .are hingeq.,to t:be lower elld of the shank.'E, apd carrying upon one or 'both ends the guide rollers. g. each pair being arranged to eugage be· tween them tbe .cable,D, o)nd to support it and guide it to the jaws. e3· These frames are pressed downward. and tlJeir rollers thus held upon the cable by a spring. g', while an angle arm or stud; g2. fixed in one of them, as seen in Fig. 2. f2, on the slide. f, operates to swing the frame, and, consequently, to part the rollers, g, when the slIde is raised. and gripping de.,v.ice from.tbe.cable. half rollers. (carJ'l,ell, by spr,lDg h, whIch ex:tend downwaI;d from the shank. E. and pass unqer tlill f, cariilld ,by the slide. F, and which said rollers are form onerolll1r to $upportand guide the cable to the jaws, e8, qy the of the slide. t!le rollers, f. pressing upon the curves. h', in the, Arms, h,) may be, llmployed, Jnstead of the rollers. g. or they may be employed at one end of the jaws in connection with a single pair of tbe rollers,g. in fr!lmes,G, at the other end ,of ,the jaws, as shown in the 1.) · Tberolhirs, H, ar,8 operatedtorlliense the cable when tbe gripping device is therefrom by, the'raising of the slide. F. when, tbe spring arms, h, being relieved ftom pressure by the rollers, f. the two half rollers will separate from each other. and tllC/ \laple may pass between them. The slide and its shank piece, E. inay be conveniently raised or lowered by means of a . " lever. as shown lit I. Figs. 4 and 5" "TheoperatioD,of my in.veniiott fSlls foUows:* * * The shank is lowered until tbe ,rollerS or pulleys, e 2, rest upon 'he cable, atld the rollers or wbeels, e, rest. 0.0 the traclt or raU;c' ,The slide. F, is ,now forced downward in the shank, $: and, by means of the pressure of the rollers, f, on the outer faces of the jaws, tbe jaws lire, Closed upon tbe ollble.; and grip it tightly, while the rollers. g, Qr, H, suppo.,t 1lnd guide t)J,e, Cl\ble totbejaws. The truck or car is thus set in motion, the gripph;lg,device;moves alqng with the cable, it encounters in itll progresstbe lower pulleYs, d,and the upper pulleys, d '. "

a

Kierce, for W. F. Booth, for appellee. Before McJ:(ENNA, dp.ocuitJtufge, and ROSS and KNOWLES, Dis· trict Judges. '" Circuit Judge. alleged to be infringed by defendant is a clamp or grip for endless rope or cable railways. The , patentee calls it in his specifications an "improved clamp apparatus for

CONSOLIDATED PIEDM6NTCABLECO.

v.

PAcIFIC CABLE RY. CO.

387

tramways or street railways," which may be construed as conceding the existence of apredec/ilssor of some kind for·like purpose, the entire form and cOIDJ>arative utility ·of which is not shown. The patent, therefore, is a combination. of old. !'llements, .anlJconsists of seven claims, the third of which is alleged to beinftillged. It is a combination of five elements. The infringing de'Vice is also a combination of five elements, and four of them, it is conceded; resemble four elements of the plaintiff's combination. In thepl:;ii;ntiff's machine, the pressure which. secures the grip of the cable is exerted through friction rollers; in the defendant's machine, through what was caJled in argument a "bell crank." In the testimony it was assimilated by an expert witness· to a toggle joint. If it is either, it is an equivalent. A bell crank isa well-known mechanical device, and a toggle joint was held an equivalent to ex.ert pressure of friction rollers by Jndge Washington in Gray v. James, 1 Pet. O. 0.399. . It is urged by defendant's counsel that a combination claim composed of old elements is not infringed by using one of its elements less than all. But the qualification must be added that no equivalent be substituted for the olllitted element. This is established by cases cited by defendant, and which are unnecessary to repeat. The distinction between a primary and a secondary patent is not overlooked, of equivalents, the but, whether there is a strict or broad defendant infringes. The axles and rollers are the crosspiece of the operating slide of plaintiff's machine. Their counterparts in defendant's machine are the circular arms of its operating slide and the pins connecting them with the gripping jaws. Ex.tend the pin described in the specifications as "e5," which is set in one of the eye pieces of the hinge joint of the gripping jaws of plaintiff's machine around the roller, embracing them tightly, so that the jaws and rollers are one, there is revealed the defendant's device. The defendant's device manifestly escapes exact imitation of plaintiff's by only formal differences. It has the same number of elements in the same relations, and performs the same results in substantially the same way. Judgment is affirmed.
In this case and No. 55 petitions for rehearing were tiled. but the court postponed actIOn on them until the supreme court shall decide the question of jurisdiction raised in Columbus Watch Co. v. Robbins. NOTE·..
CmCUIT COURT OF APPEAI,S-JURISDICTION-INTERI,OCUTORY DECREE IN PATE:liT CASES.

It will be noted that in this. as.w:ell as in the preoeding, case, (53 Fed. Rep, 382,) the court goes fully into the merits of the cause, makes an apparently final decision on the questions of valiaity and infringement. and affirms the judgment below in toto. The appeal in each case was under section 7 of the act creating the circuit court of appeals. which allows an appeal from" an interlocutory decree granting or continuing" an inju'netion. Apparently no question was raised as to the extent of the review which the court is anthorized to make on such an appeal. This question, however has been under consideration in some of the other circnits, and has given rise to a conflict of decisions. In Dudley E. Jones Co. v Munger Manuf'g. etc., Co.· 2 U. S: App. 55, 1 C: C. A 158. 49 Fed. Rep. 61, decided In the fifth circt;lit. the court. as here. considered the case on the merits. held that there was no infringement. and remanded the cause, with orders to dismiss the bill. Afterwards the cOl;nplainant applied for a rehearing, and at the same time moved the court to vacate all its proceedings therein, and dismiss the appeal for want of jurisdiction, claiming that the decree

888

REPOR11l:R,

vol. 53.

belqw!'\Vhlch was tbe usual oX)e sustaining the patent, finding infrill;gement. and dlrecturg'an injunction and' accounting. was neitber Ii final decree, nor an appllalablelnterlocutory decreeutlder section '7. It was beld, however, tbat the CQurt,b,ad and tbat tbe complainalJt, by submitting the its merits, had waiyed his rig1;1t to object to a full determination of tbecontroversy, and couldJ'lot thereafter question tbe jurisdiction on a motion for rehearing: . The court. nevertbeless, modified its former decree, so as merely to remand,tbeeause, and di'reet that the Injunction be dismissed. In,th!tmeantime the case of Richmond v,Atwood, 5 U. S.App. 1, 1 C. C. A. 144, nap 910, had been decided the first circuit, and there again the case. was apparently conslde'ted' on its merits without. question. The decree, however,'wasmerely to the effect that "the complall:ulDt is not. entitled to an .and tbe decree Qf tbll Circuit court is accordingly reversed." Thereafter a petition for a rellearlng was filed. and on the hearing tbereof the court itself rlLised the question as to the extent of its jurisdiction, and as to the form of its 'mandate. to wit. whetber·it should simply order that the decree for an IDjubeti:on be reversed, or should direct tbat the bill be dismissed. Briefs were file4 pn thill question, and,a,fterfull consideration, the court held substantially as foll6ws: . . (1) That a decree which is rendered Aiter a full hearing on. the merits, and which sustains ,the validity; of the. patent; declares infringement, and awards a perpetu1l;! injunction and"an,accounting, is an "Interlocutory decree" an injunction, from which will lie under section 7. (2). That. the terin "interlocutory order or decree" was used in its broadest sense in·sectlon '7, aDd .should be given full scope. to the end that a party by an order or decree granting an injunction at any stage of the procelldiq!i\1amay have a speeAyre,medy by appeal. ... . (3) That, on such an appe.al in a patent case, where the whole record is before the circuit court of' appeals',' and;,ln 'order'to determine the rlg4tfulness of the injnnntion;tbe.conrt necellsariIy'examines the whole case on its merits, and *el;eis no.jnrringement, It may not only reverse the decreE!, dissolve t4e ipjupctipn.but ma.v also vacate the order for an accounting:alid' order the bill dismissed: thus rendering such a decree as the lower court, 'sh'(!l;uld' haYe rendered on the whole case. . case·lllcVol'ving this question is that of Columbus Watch Co. v..RobJ;>il?-'s, 52 ;I.<'1ld. :decided II?-' the sixth circuit.., There th.e decre.e below was tb El same as In the Munger and Atwood Ca,es, and the paruesto the appeal joined' in an; applichition to the: court to and tlnJ1.lIy determine the cause on its'in&tits. The held, however. that It could not take jurisdiction, even. of the controversy; that the ap.pE$I'only brought lip for review \hat:partof th ll decreeI;elatipg to t.he injunction, that all other llatts"of those relating to the v\tlidity of the patent, its infringement, and the' que:sUonsthat may' arise on the accounting ordered to ascertain damages and profits-had not yet left the jutisdiction of the trial court; and that the only question presented for determination was whether the decree forap :iJ:l;il'lngemant was providently g-ranted, In the legal discretion of the trial couJ't, queation -iovol:Ved only incidentally the question of the validity of the patent, and the infringement complained of. In Its opinion the court referred to the first decision in the Atwood Case and to both decisions in the Munger Case. It considered that the last pecision In the Munger Case indicated an opinion thatt1;1e court had full jurisdiction on the merits, and. In view of thia differeocebetween the two cirCUits, certified the question to the supreme court for decision, under section 6 of the act creating the circuit cOllrt of appeals. This important question i.thus in a fairway to be soon settled by ultimate authority.

,,/lao

,EAGLE PENCIL CO. v. AMERICAN LEAD PENCIL CO. (Cir'Cuit S. D. New York. December 17, 1892.)

I.

. Destgn patent No. 20,156, issued September 16, 189<1, to Chltrles W. BOmal:\:. for a fountain pen case, having a milled handle and a plain cap, both rouuded at the ends, with a bead around the handle at the end oJ: tAecap, is void for want of invention.

PATENTS-bi'VENTION-PEN CASES·