760

FEDERAL REPOR'l'ER,

vol. 55.

machinery, etc., · · · and all such claims as were by order herein made on the 31st day of January, 1890, declared to constitute liens on said railroad, and all property appurtenant thereto, superior and paramount to the lien of the mortgages llerein, and said road shall not be released or discharged from said liens until said debts iUld liabilities are paid."

It thus appears that prior to the present intervention the class of debts to which the intervener's claim belongs had been adjudged to be superior in equity to the claims of the mortgage bondholders, and that the property covel'ed by the mortgages was sold upon the express condition that the purchaser or purchasers at said sale, as part consideration therefor, would satisfy and discharge all of tha,t dass of claims. In view of these facts the present appeal is evidently without merit. \Ve cannot review the order of January 31, 1890, for the reason that it is not in the record, and for the further reason that the present proceeding is not an appeal from that order. For aught that we know, that order was made by consent of prurties, and was at no time subject to an appeal on the part of anyone who participated in the foreclosure proceedings. Rut in any event the appellants -are not in a position to· urge at this late date, with respect to the order of January 31, 1890, that the circuit court erred in holding that the debts therein mentioned were of a preferential ·character. \Vith full knowledge of the terms of that order, and the class of claims to which it related, they became purchas'ers ,at the mortgage sale under a decree which required them to accept the property subject to the burden of those claims. It is clear, we think, that they must stand by the bargain they have made, and should not be heard to complain. As the circuit court found that the claim now in dispute was in fact comprehended by the order of January in, lSHO, and as we cannot review that finding, it follows that the decree appealed from must be affirmed.
P ACIFC CABLE RY. CO. v. BU'l'TE CUY ST. RY. CO. Court, D. Montana.
"[\"0.

April 10, 1893.)

20.

1.

PATEN:TS FORINVENTIONS-INFRTNGE)1ENT-CABLE CARS.

Letters patent No. 182,663 were issued to Andrew S. Hallidie for an innmtion known as "Improvements in Railways," 'l'he claim wail: "In combination with the cars of a street or other railway, which are intended to be propelled by nwims of 1m endless cable moving in an underground slotted tunnel, the truck or dummy, E, having the permanently attached gripping device, H," 'l'he specification described a dummy in which the grip was locat"d uncleI' the forwa,rd axle,--there" being two,-and which was not pNvided with seats for carrying passengers. Held, that this is infringell by a car used for the same purpose, and constructed, save that the gr1p is midway between the two axles, and the car is arl'llnged to .car11' pasi'lengers.

2.

SAME.

The infringement is not avoided by so attaching the gripping device that it may be detacherl when required; for the terms "permanently attached," in the claim import, mel'ply; that the gripping device is an essential part of the cal', and not that it is incapable of removal.

PACIFIC CABLE RY. CO. V. BliTTE CITY ST. RY. CO.

761

3.

SAME-ANTICIPATION.

'1'his patpnt is not anticipated by the prior patents to G. '1'. Beauregar/l and to A. Ely Bpach, or by tilP fonner patent for a similar device issu"d June 1, 1875, to Hallidip himself. as the evid"llce shows that the present device was perfected before such former patents were i8sm·d. 'When the dl'fcnse to an suit is VriOl' usc, the bUJ'(10n is on d'Cfendant; and it is not E.ustained whcrc the pvidpnce shows that 'the a1Ipged prif)r use was only for pm'poses, and had with a view to perfecting the device.

4.

SAME-PIlIOH USE.

In Equity. Bill by the Pacific Cable Railway Company against the Butte City Street-Railway Company for infringement of a patent. Decree for complainant. \Vm. F. Booth and Dixon & Drennen, for complainant. Geo. H. Knight, P. T. }IcBride, and Geo. llaldorn, for defendant. KKOWLES, District Judge. The above-named complainant filed in this court its bill of complaint against the above-named defendant, and setting forth therein that defendant had infringed certain letters patent, No. 182,663, and which granted certain rights to one Andrew S. Hallidie for an invention known as "Improvements in Railways." 'l'he said Hallidie, it appears from the bill, obtained the said patent for said invention, and assigned the same to complainant. The claim of said IIallidie, in his patent is thus described:
"In combination with the cars of a street or other railway, which are intended to be propelled by means of an endless cable moving in an under'ground slottcd tunnel, the truck or dummy, E, having the perman0ntly attached grip,ping device, H, SUbstantially as and for the purpose described."

Respondent, in its answer to complainant's bill, makes the following defenses: First, noninfringement; second, anticipation and nonpatentability; and, third, two years' public use. The first question presented, then, is, does the respondent infringe upon complainant's patented device'? That is, does it subst:mtially nse the dummy car speeified in complainant's bill in combination with the cars of its street railway? Respondent owns and is operating a street railway at Butte City, 3Iont., upon which the cars thereon are propelled by means of an endless cable moving in an underground slotted tunnel. The evidence shows that defendant is using a car which may be called a "dummy C<'lr," to which is attached a gripping device which seizes the said cable, moving in an underground slotted tunnel, and to this is attached a car. The difference between the dummy car of complainant and that of respondent is thus described by Jesse M. Smith, a witness for respondent:
"Comparing the car uscd by the defendant with the dummy of tlle patent, it appears that the dummy is a car having two axles and fonr wllpels, aIllI in this partiCUlar it is like the grip car used by defendant. '1'11e grip of the car of the patent is located directly under one of the axles of the ear, while in the car of the defendant the grip is located midway between the axles of the car; and, therefore, del'S not have the advantage c1aimpd for the dummy cal' of the patent, with its grip located as specitied. The dummy car of the patent is not providpd with seats, and is not desib'lled to carry passpngers.

762

FEDERAL REPOR'£ER,vol.

55.

The grip car of defendant is provided with scats, and is designed to, and aoes, carry passengers, and is uSed with or without II trail car connected to it. The gripping device of the patent is stated to 00 pel1ll:!llcntlyattached to the dum· my car, while the gripping device used by defendant is not permanently at· tached to the car, and is designed to be readily detached from the C:11', and is, so detached, as often as may be required."

Except, perhaps, as to the last specification of difference, this' statement may be considered as stating correctly wherein the gTip, car of complainant and that of respondent differ. The first difference consists in the moving of the gripping device back from the front axle of the car to it point about midway between the two axles of the same. Is this a substantial variation? It is apparent, then, it operates the same as though it were placed under the first axle, unless it be upon very uneven ground. It can readily be seen that, in passing over a very short and abrupt rise or hillock in the car track, the gripping jaws attached to the grip arm or lever would always remain about the same distance from the bottom of the tube or tunnel through which the cable travels, if the gripping device was placed under the front axle of the car. When such an abrnpt rise does not occur in the car track, the jaws of the gripping device of complainant and respondent would act in the same manner, and maintain about the same position in respect to the bot.tom of said tunnel. I cannot, see that there would be any perceptible difference between their action or position. UecUl'ring to the claim in complainant's patent as to what constituted the invention of Hallidie, and we find that it is not limited to a gripping device attached to the gripping cal', under the first axle. Hallidie was required by the statute, (see Rev. 8t. U. 8. § 4888,) in his appli· cation for a patent, as his invention must be classed as a machine. "to explain the principle thereof, and the best mode in which he had contemplated applying that principle, so as to distinguish it from other inventions." It "\'ill be seen that he was not required to state every mode in which the principle of his machine might operate. but only the best mode he had contemplated applying it. This would imply that an applicant for a patent is not confined to this best mode of applying the principle of his machine, and that he can claim other modes of applying the same. The part of the patent in which the mode of applying the gripping device under the first axle of the car appears is in the descriptive part thereof. As before stated, it is not in the claim. It is not evident that what is claimed as the invention of Hallidie is not alone the gripping device under the first axle, but the whole car, in combination with cable in an underground, slotted tunnel, gripping device, and passenger car. I find that in the case of Tilghman v. Proctor, 102 U. 8. 707, the suo preme comt said of a patent for a process:
'''fllPre iI<, then. a (!f'I<cription of tile ])1'ocess, and of one practical mode in which it may be Perhaps the process is susceptible of being applied in lllany modes, and by the use of many forms of apparatus. The inventor is not to describe them all in order to secure to himself the exclUSive right to the procc>ss, If he is rc>ally its inventor or discoverer; but he must describe some particular mode, or some npparatus by whicll the process can be applied with at lenst some bem;ficial result, in order to I<how that it is capable Of being exhibit('(l and performed in actual experience."

PACIFIC CABLE RY. CO. V. BUTTE CITY ST. BY. CO.

763

Taking this as a guide, and we come to the conclusion that when a person entitled to a patent, in his application therefor, describes one mode-the best-in which the principle of his machine acts, he should not be bound exclusively to that mode. If a variation from the best mode described in the application for a patent would prevent infringement, we are forced to the inquiry, how much of a variation would work this result? Take, for instance, the machine under consideration. 'Vould the removal of the gripping device one foot back from the front axle of the car work this result? If one foot would not, how many feet would? A change of form does not avoid an infringement of a patent, unless the patentee specifies a particular form as a means by which the effect of the invention is produced. Walk. Pat. § 363; Morey v. Lockwood, 8 Wall. 230; American Diamond Rock-Boring Co. v. Sullivan Mach. Co., 14 Blatchf. 119; Ives v. Haniilton, 92 U. S. 431. The change of the gripping device from the front axle to a place between the axles appears to me to be a change in form, only, from that indicated as the best form in which the car of complainant could be constructed. This change· does not affect materially the principle embodied therein. Respondent urges that there is also a material variation in the car described in complainant's patent and that of its car, in this: that its car is so constructed as to carry passengers, and that of complainant, as described in the patent, is not so constructed. The feature of respondent's car which furnishes seats for passengers is only an improvement, at best, on complainant's car. All the features of complainant's car are retained, and the passengers' seats are additional. a machine embodies a patented devil:e or combination with an addition thereto, it infringes the patented device. Carter v. Baker, 1 Sawy. 512--526; Pitts v. Wemple, 1 Biss. 87. It should be observed that the evidence in the case shows that, as finally perfected, complainant's car was so constructed as to have seats for carrying passengers, but the applicant, Hallidie, did not claim this as any feature of the car he patented. This contention of respondent cannot, upon the facts, and the law applicable thereto, be maintained. The next point presented for consideration by respondent is its contention that the description and claim in complainant's patent states that the gripping device was permanently attached to the dummy car, while that of its car is not so attached, and that, as a consequence, there is here a material variation between them. Considering the construction of complainant's car with the language used in the patent, and I think that all that was intended by the claim of the patent, that the gripping device was permanently atta,ched to the car, was that it was a part of the car,--one of its essential parts,-and was not to be taken off to be used on any other car, such as the passenger car. The idea sought to be expressed by the language was that it was not temporarily attached to the car. but constituted a permanent part thereof,-one of its essential characteristics. If it was attached to the same by bolts and screws, it would be permanently attached to the car, but could be removed.

764

FEDERALREPOR'l'EH,

vol. 55.

This claim in the patent maYibe<:onstrued in the light of the fact as to the manner in which the inventor, Hallidie, did attach that gripping device tohis car. '!'he evidence shows that it was attached thereto in such a manner that it could be removed when necessary. 'l'he rule is that the language in a patent should be liberally construed, with the view of maintaining the validity of a patent. In the case of Rubber Co. v. Goodyear, 9 'Vall. 788, the supreme court said:
"A patent should be construed in a liberal spirit, to sustain the just claims of the inventor. This principle is not to be carried so far as to exclude what is in it, or to interpolate anything which it does not contain. But liberality, ruther than strictness, should prevail, where the fate of the patent is involved, and the question to be decided is whether the inventor shall hold or lose the fruits of llis genius."

With this as a guide, I do not see how the contention of respondent can be maintained on this point. It would be a most narrow construction of the terms, "permanently attached," as they appear in the claims of the patent, to say that they imported that the gripping device should be so attached to the car that it could not be removed when necessary. I therefore find that the dummy car of respondent is substantially the same as that of complainant, and does infringe upon the letters patent owned by complainant therefor. L now come to the point that the car of complainant was antieipated by previous inventions, and hence not patentable. It is urged by respondent that a patent granted to G. T. Beauregard, (If Kew Orleans, La., for "improvement in. machinery for propdling cars," and that granted to A. Ely Beach for "improvement III str,('"t anticipated the invention owned by complainant. The Beauregard patent is used for propelling a car by means of a clamp or grip attached thereto on the side, or above the car, clutched to an rope or wire. This rope or wire is to be suspended from fl'aaliug along the road. The clamp is to be connected by brack,ts upon the top of the car, and to be worked by a screw which is mpved by an 'operating pulley, over which a cord extends to the l1l,ma/rer of the car. The Beach patent, I find, is somewhat dUnedt to (If scribe, without an extended reference to its parts. In it there is no such gripping device as is used in complainant's patent, amIno such cable combined therewith. In neither ot' these patents h; thd'e a dummy car. This is an important feature of complainant's patent. The patent of complainant is itself prinm faeie eyid01lce of novelty, and that the patentee thereof was the first inventor thereof. This can be overcome only by evidc'nce which l"hows want cf ]"wYelty, and that Hallidie was not the first inventor of the cal' chimed in his patent, beyond a reasonahle lloubt. '1'l1e burden of 8:'Jiu LJiI;hing want of novelty, and that Hallidie was not the first inventor of his car, as claimed, rests upon respondent, If, after wl-ighin 8 all of the evidence, the court hilS a reasonable doubt upon th,se points, he should find for claimanc. ·Walk. Pat. § 7G, notes 2, 3; Coffin v. Ogden, 18 Wall. 120; Cantrell v. 'Vallick, 117 U. 8. 696, 6 Sup. Ct. Hep, 970. With this rule controlling me, I cannot

PACIFIC CABLER)'. CO. V. Bl1TTE CITY ST. RY. CO.

765

find that the said inventions of Beauregard and Beach anticipated that of complainant. As to the previous patent obtained by Uallidie, it OIl its that it was an improvement upon the very street ruilway dcscl'ibed in the patent under consideration. It was obtained June 1, 1875. But before this Hallidie had invented the car alleg-ed to bE: infringed in this case by that of re,;;pondellt. The eddellce shows thai: Hallidie hadeommenced his experimental use with this car as early as 1873, and was a year or a 'year and a half in pl'rfeeting the same. This would show that the car was pcrfeeted before the patent was issued, June 1, 1875, 'which respondent offers in evidence. l;nder such circumstances the patent of June 1, 1137;), cannot be said to anticipate that of claimant's, under consideration, if it did refer to the same. Plow Works v. Starling, 140 U. S. 189,
11 Hup. Ci:. Rep. 803.

'1'he last jlOint for consideration is the defense that the invention of Hallidie presented in this case was in public use for TWO yf'ars b('fol'e he made application to patent the same. This is ;1, which respondent must make out by a preponderance \If evidence. is such a thing as experimental use of a machine which is not a pnblic use. As an experiment, a machine may be tried in public, 1113 well as in private. "So long as an inventor is aetually engaged, in good faith, in testing the operation of a machine, to Hscertain if it will accomplish the desired result,. and show it to be a practicable invention, it is not a public use." Elizabeth v. Pavement Co., 97 U. 126. In regard to this invention, it appeal"S that then' was a period in which the use may be termed experimental. The car was first used about September 1, 1873. A. S. Hallidie, the inventor, il: his evidence, said he thought it was a year or a year amI a half after the first trial before the invention was perfected; that it was only after a considerable time, and variolls ehallges, that he succeeded in getting the dummy car to work; that during the time he was testing the car no other company than the om' he wa,;; connected with used the same, nor did he sell it to any one, and that the cable road upon which he used it ,vas the first actually built, and put into practical operation. The l'\ itnpf's l:ritton testified that they, referring to the compan,v with which Hallidie was connected, had great trouble with the 2,rip car at first; that after the first trials the whole affair was remodeled; that, for a year and a half or two years after they firRt started the grip car, it was changed and altered and fixpd over untiL "we mao the thing in the shape in which it is used to-day." Hespondent relies upon the evidence of Peter H. CampbPll, vv'110 says thnt when the Clay Street Hill road, in San Francisco, was started, in August, 1873, the first dummy car was a mere framework which carried the gripping apparatus; that the dummy, at first. would not run; that three or four months after start:illg the TOad th(' dummy car was fixed so it would carry passengers. He was not positive about this last statement, however. He finally said it might not have exceeded six months or a year. But nowhere in his ('vidence d()0s this witness positively say that the dUl1JIuy car

766

FEDERAL REPORTER, vol.

55.

wltsperfected within a·year after· starting up .the HU.I road, in San Francisco. According to the evidence, t4,esaill Clay Street Hill road was started about the last of August or the 1st 0f September, 1873. Hallidie made his application for the patent in question March 24, 1876. It. was then about seven months after the starting of said road before said application was made. As it appears that when started the grip car was. not perfected, and that for some time its use was experimental, I cannot say that the grip car was perfected, and in public use, for two years prior to Sllid application. Theburqen of proof was upon respondent to show that the patented device was in public use for that time, and I think it has failed. . Some ()f the legal questions involved in this case, it would appear, must have been presented in a ease tried by the circuit court of this drcuit, sitting at San Francisco, entitled Traction .Railway Co. v. Sutter. Street Railroad Co. . The judgment roll in was introduced in evidence in this case. So far as the court can see that the points of law necessarily invoh'ed in that case are the same as those .inYolved in this, it will and has been treated as persuasive authority. . . It will be seen that I have found all the issues presented in this ease in favor of complainant. It is therefore ordered that complainant have a decree as prayed for in its bill.

THE COLUMBIA. THE ELLENI;£ERON. SULLIVAN v. THE COLUMBIA et al.

(District Court, E. D. Pennsylvania. May 9, 1893.)

1.

SUIPPING-STEA}1EHS-!NJUTIlES TO BARGES-SWELLS-EvIDENCE.

The burgeE., loaded with brick, in tow with three other barges, going down the Delaware river in the customary course, well eastward of the channel, met the steamer C. at a narrow part of the channel, during ebb tide, going at full speed, and creating swells, the effect of which was to sink the E. by her in contact with the barge in front. Helct, that the steamer having faJled to slow down, as was her custom when meeting these tows on their daily trips, was liable for the injury. '1'he "swells" and violent commotion of the water, together with the positive testimony of libelant's witnesses, sufficed to overthrow the steamer's contention that she slowed down in time.

2.

SAME-EVIDENCE.

SAME-CONTRIBUTOHY FAUW'-EvIDENCE.

The steamer's claim of contributory fault on the part of the barge in being overloaded, in Dot having a longer hawser, and in the failure of her tug to sound a signal, could not be sustained; it appearing that the load was DO more than usual, that a lighter load. would have increased the danger from swells, and a longer hawser would have exposed her to other dangers; and, in respect to the signal, that the tug had every reason to believe, being in plain view, that the steamer would slow down as usual. The fact that another steamer passed down stream to the eastward of the tow immediately after the C. had passed to westward was

4.

SAME-EvIDENCE.