902 :'i r nJ:,:1
FEDERAL REPORTER. :;,
vol. 59. I
,i",
.
BRAKE-SaOE co. et aI. v. DETROIT S'J.'EEL " SPRING CO. et aL Court, E. D. Michigan. 8,235.
, , l'"
January 25, 1894.)
1.
PATBNTS-lNVEN'l'ION-ERROR IN DRAWINGS.
An error in 'thedrawings made by a solicitor can have no weight in disparagement of the invention, where it is such as to suggest, to persons familiar with the art, a practical Identity with a prior device, and to warn them that the language of the inventor In the specifications, clearly deaCl'lblng the actual invention, is rather to be followed than the Inacdrawing.. " In a claim for railwll.y brake shoes, the use of the words, "or otherwise so .shaping them as to bear upon the :flange and those portions of the tIre which arc not worn In rolling," cannot operate to shut out subsequent inventors, when the specifications and drawings fall to exemplify, in a practical form, the Idea of bearing on the parts not worn by the rail.
2.
SAKE-ANTICIPATION-IDEA NOT EXE\,£PLIFIED.
8.
One Who, by overcoming difficulties which for years have baffied all others, perfects a device which satisfactorily supplies a long-existing and Imperative need, and supersedes all other appliances, both at home and aQrQad, :proves the exercise of inventive faculty, notwithstanding that the from existing devices seems comparatively slight. 4. SAMJl::.....nAJLWAY BRAKE SnoEs. The Ross patent, No. 292,861, for a railway brake shoe, shows patenta: ble Invention over the English patent to Steel, No. 1,763, of 1875. 47 Fed. 894, reaffirmed.
SAKE-INVENTION-WHAT CONS'l'ITUTES.
In Bill for infringement of a patent. A preliminary injunction was. heretofore granted. See 47 Fed. 894. Decree for com The complainants are the assignees of the Ross Brake-Shoe Company, a New Jersey corporation, to which !:\ad been assigned by George P. Ross all his right, title, claim, and interest in.le,tters patent of the United States No. 292,861, for an improvement in railway brake shoes, granted to said Ross February 5, 1884. The bill, of complaint charges that defendants are infringing the right secured by the letters patent, and prays an injunction, an accounting, and decree for profits. The answer asserts the invalidity of the Ross patent, and denies "that George P. Ross was the original or first inventor of the thing patented in said patent, or of any material or substantial part thereof, but says that the same had been, prior to the alleged invention by him, shown and described.ill! the United States pate:nt of George W. Brill, dated February 22, 1876, No: 173,890, and in the English patent of James Steel, dated May 11, 1875, No. 1,768, and in the printed publication, Spon's Dictionary of Engineering, published in London, England, by E. & F. N. Spon, in 1870, in volume 2 .of' said publication, article 'Brake,' p. 589, and that said Ross patent is therefore wh()lly null and void." In fact, the defense is based solely on the want of patentable novelty and Invention. ' The motion for i:njunction WllS fully argued before Judge Brown upon' affidavits and counter affidavits, and the prior state of the art was discussed by counsel and duly considered by the court. Judge Brown sustained the patent, and granted the injunction. His opinion is reported in 47 Fed. 894. The case is now here upon pleadings and proofs. It is claimed by the defendants that their proofs make a stronger showing against the validity of the patent than that made upon the argument of the motion for injunction, and are further supplemented by the original drawing of the Ross patent, which was not introduced on the argument of the motion.
CONSOLIDATED BRAKE-SHOE CO. V. DETROIT STEEr, &; SPRING co.
903
In describing his invention, Ross states In bis speCification: "The object ot this invention is to avoid the unequal wearing of the wheels by the track, or, more correctly, to cause them to wear more evenly, and thereby avoid the necessity of sending them so often to the shop to be turned up In the lathe. · . . " HIs brake shoe is constructed with two grooves, one of which con· forms to and fits the flange of the wheel, and the other spans that part ot the tread of the wheel which, in the revolution, ordInarily receives the well\' of the rall. From the outer side of the ordinary tread of the wheel-that is, from the outer line of rail wear to the outer rim of the wheel-the shoe has a bearing or friction surface. upon the portion· of the tread or surface of the wheel 'which is not engaged or brought into contact with the rail. A lug or rib coming down to the wheel between the inside of the flange and the inner line of the rail wear of the tread of the wheel constitu.tes the second bearing ot the shqe. A third bearing or friction is· afforded by the groove made to closely fit the flange. The side of the shoe brought into contact with the wheel Is a plain surface C'Onformed to the arc or surface of the. wheel at the bearing points, and attached to the brake-operating mechanism in the usual way. Ross' invention is limited to this single claim: "A brake shoe provided with th.e grooves, A', A', and the wearing portions, C, C', the portion or rib, E, projecting down to the wheel, substantially as and for the purposes specified."
William A. Redding, Henry S. Sherman, and James H. Raymond, for complainants. George Payson, for defendants. SWAN, District Judge, (after stating the facts.) The question arising upon this record is as to the patentability of the Ross railway brake shoe. The defense admits this to be the only issue, and insists that the prior state of the art and the simplicity of the device both negative the validity of the patent. The proofs taken in the cause since the granting of the injunction by Judge Brown afford no ground for varying the conclusions he then reached. The drawing of the Ross shoe in the patent office was made by his attorney, and shows that the lug or rib on the inner side of the flange was not carried down to the wheel, as is done in the shoe as constructed. Ross' first application was rejected in the patent office on this, and the further ground that the extension of the inner lug or rib to the wheel was not described in the specie fication, and therefore the Steel patent answered Ross' claim of invention. The error in the drawing was that of Ross' attorney. The patentee's own drawing showed the projection of the wheel. The examiner, however, was in error in the statement that the extension of the rib, 0, to the tread of the wheel, was not described in this specification. This expressly states that "between the grooves in tbe shoe is a rib, 0, which forms a portion of one side of the flanged groove, and projects down to reach that portion of the wheel not worn much by the track." Notwithstanding this error or defect in the drawing, it is plain that this explicit language not only sets forth unmistakably the inventor's idea, but also, in view of the declared purpose of the device,-to produce uniformity of wear in the surface of the wheel,-no mechanic of ordinary skill could have failed to make the device from the specifications alone. The specifications are addressed to those skilled in the kind of appli. ances deseribed by the inventor. Familial', presumably, with the
FEDERAL REPORTER,
vol. 59.
"struteofthe'artand the deficiencies of the use, it would qp"ce that the of the m at least, lS the mventor's ownwas rather to be followed than an inaccurate drawing, which on its face, in the state of the art, suggested its practical identity with the Steel shoe. The drawing;therefore, is entitled to no weight in disparagement of ROss' invention. His shoe hi designed and adapted to get its friction surface only from those portions of the tread of the wheel not worn by the rail, and 'thus to avoid increasing the rail wear upon the tread proper. The inventor e'Vfdently believed, mid it is the claim of his original and ,!lmended specification, that the wear of the shoe upon the wheel would practically equal, and thus offset, that of the track upon the wheel tread proper. I1is specifications indicate this, for, after describing the operation of .the shoe, he adds, as a result: "Those' portions of the which are not worn by the rail are worn down by the shoe, and the tread is thereby kept longer in its proper shape, as, while the track is wearing down one portion, the shoe is wearing down the other, thereby effecting a large saving in the wear of the wheel itself, and IIlso In the matter of re-turning the tires or wheels."
While there is a marked similarity, which to a casual observer amounts almost to identity, in form and use, in the Ross and Steel devices, there is a substantial difference between them, which not oIily determined, in the patent office, the patentability of Ross' device, but has caused the former to supersede Steel's both in Great Britain and in this country. The Stilmant and Brill patents which are pleaded in defense may be laid out of consideration altogether. There is nothing anticipatory of Ross' invention in either. The issue is solely.between Ross and Steel. The aim of each was to produce a brake shoe whiCh would so operate upon the wheels of rail· way cars as to obviate, as much as possible, the effect of the rail wear upon the tread of the wheel, and insure .its constant profile. Both accepted, as a necessity for reducing the velocity or bringing ,to rest the moving car, the application of the restraining power or frictional energy directly upon the face or periphery of the wheel, and relied upon the grinding down, by the application of the shoe, of those parts of the tire upon which its pressure was exerted, to equalize the frictional wear of the tread proper by the To accomplish this result, Steel gave his device two bearings on the wheel,-one on the outside of the tread, spanning it from its outer edge with a groove or channel which extended to the upper part of the inside of the flange, at which point he formed another groove or, channel in the brake block or shoe, which engaged the rim or periphery of the flange, thereby constituting the second bearing of the shoe. Ross' shoe claims three bearings, viz.: one on the outside of the tread, one on the inside. between. the tread and the flange, and the third upon the periphery of the flange. The second of these bearings affords the distinctive feature of difference between the two appliances. In Steel's specifications he states expressly that "When the brake block is brought into operation, so as to stop or retard the motion of the train;it does not upon the part, D, D,
CONSOLIDATED BRAKE-SHOE CO. V. DETROIT STEEL & SPRING CO.
905
of the tire," (that is. the face of the wheel the outer bearings and the inside of the flange, as he delineates it in his drawing,) "which is subject to the ordinary wear and tear of rolling, but it acts upon those portions which are not so worn awaY,-that is to say, the portions opposite the parts Band E of the block," (which are, respectively, B, the face of the wheel outside the tread; and E, the periphery of the flange.) He adds: "Under a modification of my said invention, the brake blocks may be constructed without the longitudinal channel, A," which spans the tfead proper in both the Steel and Ross shoes; "that is to say, they are made solid at that part, the channel, E, however, being maintained as shown in the drawings." He states that what he claims as his invention is, "arranging or constructing brake blocks with or without a longitudinal hollow or channel therein. and otherwise so shaping them as to bear upon the flange and portions of the tire which are not worn in rolling." Under this proposed modification it is argued that no one following out Steel's instructions could help making the Ross shoe, and that Ross' change in the shoe was neither a change in the principle of the invention nor a new idea; and, further, that "the invention was whole and complete as soon as Steel had told us to make a brake shoe that should be so shaped as to wear only on those parts of the wheel not worn by rolling;" and, further, that there is no room, after that, for anything but the ordinary knowledge of the mechanic skilled in this particular art. It is very doubtful if Steel's specification can be extended beyond the form of brake blocks set forth in his drawing, notwithstanding his claim that they may be constructed "either with or without a longitudinal hollow or channel therein." This suggestion, and its. aceompaniment,-"otherwise so shaping them as to bear upon the flange and those parts of the tire which are not worn in rolling,"does not propose the substitution of a solid block extending to the flange, for the obvious reason that such a block must act upon the tread of the tire which is worn by the rail, while his leading idea, as expressed in his specification, is to avoid sud. contact, and to reI)' upon the wear of the block on parts of the tire. How far the solid block should extend is not stated. He suggests no mode or form of "otherwise so shaping the blocks" as to avoid this double wear, and the phrase itself is vague and indefinite, conveying to those skilled in the art no idea of the form of the alternative. . His invention shoul1 be limited to the device described in his specification. He could not close the field of invention to others by "an all-embracing claim, calculated, by its wide generalization and ambiguous language, to discourage further invention in the same departmi=mt of industry." Carlton v. Bokee, 17 Wall. 472. Nor was the invention complete when Steel proposed to shape the brake block so as to wear only upon those parts of the wheel not worn by rolling. If the idea of such a construction must be credited to him,. he failed to exemplify it so as to insure its object,-the even wear of the tire, and the avoidance of the cost of re-turning them. He
906
FBDERAL REPORTER,
evidently had :no jthouJ:tht of the,beal'ing UpoIi the faee of the wheel next to the flange, ,and made no pr,()vision for reducing its surface at that point to meet the wear of.,.the tread. and thus preserve the normal contour of the wheel.EJiPerlence has also demonstrated, as shown by the tel:1timony. that· necessary effect of the Steel shoe is to produce a or shoulder on the i:p.ner face and in the throat of thefiange. Without 'quoting at length from the testimony, it is enough to·say that the Steel shoe has failed to meet the need ,of the railroads. both in this. country and Great Britain. and has. been discarded·' as impracticable; indeed detrimental, if not the same idea of applying the resistance to the parts of a tire not. worn by the track, and after a long practical experience with theiordinary :flat shoe and a practical test with shoe, Ross, in 1883, eight years after Steel's patent had beim ,granted. formulated his conception in tna· device here in issue. It has been adopted on nearly three-fourths of the railroads itl, th(l!United States, and is also in use in Great Britain. Ross wa.; master mechanic of the New York. Lake Erie & Western Rail· at Buftalo from February, 1881, until April, 1885, and. at,suchi had charJ.{e" of all the repairs made on the locomotives of thatr company at· itg Buffalo. shops. In August, 1882, his attention.waa called ,to the excessive wear of the tires of the rear drivel's of a locomotive of tbe Mogul type by the action of the brake shoe with which it was equipped, which necessitated re-turning of the tires about every four monthS. He then suggested to Mr. Wilder, the 8uperintendent Of motive power, the use of a brake shoe which should have its friction surface only upon: the outside of the treadaI1d the periphery of the flange. Wilder objected that the proposed,:change would' sb:rrply transfer the objectionable 'wear to the flange of the wheel, .and possibly destroy it. In July, 1883, after the timS'eof this enw,ne had been three times re.tm:ned, he again mentioned to Wilderf:therapid;destruction of the tire, 'and <;onsequent\injury to then:utchinery. attributable to the shoe used, and, with Wilder1a permission. made and, applied SUbstantially the Steel brake shoe. This he tested by use for about a'month, but found that it produced a ridge or shoulder upon the flange, and also upon the outside of the tread. By cont,inued experiBiellts and close studYofrrthe l!lubJecthe .realized the necessity of a third bearing upon, the inside of the tread and the throat of the flange, and this he, obtained :by a lug or projection bearing' both upon the wheeland the top and -inside of the flange. This obviated the ridge formed in the throat of the flan,geby the brake shoe then in use, and, preserving the of thatllart of the shoefittiug the :flange, he practically equalized the friction surface of· the shoe on the flange alld the:inside of the tread with that 011 the outer part of the tread, and thusf:secured the equal wear of those partl" and put inexperimental,ulile ontha'same IMomotive a shoe of this pattern-the present Ross brake shoe-in August, '1883; and it remained in successful operation until he resigned his position on the New York, Lake Erie ';& Western Railroad, April 1, 1885. Ross'
CONSOLIDATED BRAKE"SHO'E CO. V. DETROIT STEtL & SPRING 00.
907
letters. patent bear date Febl'1lary 5, 1884. From October, until April, 1887, there were sold by the licensees under it 462,110 lbs. of the Ross brake shoe, and since the last date, and during the years 1887,1888, and 1890, the licensees have sold 1l,727,542Ibs. of those shoes, making the total sale since September, 1884, to and including the year 1891, 12,189,652Ibs. The proofs show that 164 of the railroads of the United States made purchases of the Ross shoe in 1890 to a greater or less extent. With the exception of the Chicago, Burlington & Quincy Railroad, which has assumed the defense in this suit, the railroads of this country have acquiesced in the validity of the Ross patent. This shoe has become the standard brake shoe for locomotive wheels upon the Pennsylvania Railroad and its leased lines. and is mainly, if not exclusively, used on the Old Colony Road. the Boston & Albany Railroad, the Pittsburgh Railroad, and many of the eastern trunk lines, and also upon the smaller roads of the Union. Seventy-five per cent. of the 30,000 locomotives in this country are equipped with it. The statistics of railroads for 1890 compiled by the interstate commerce commission give the number of j?;eneral officers of railroads of the United States, in 1889, at 47,039; engineers, 30,217; machinists, 25,214; and other shopmen at 75,959; and the total number of all their employes at 704,743. These fiWlres are. of course, considerably larger than those of 'previous years. as each successive year exhibits an extension of railway mileage, and consequently a corresponding ratio of increase in the number of employes. Excluding from consideration the total number of railway employes, and assuming that the general officers, as practical men, have studied the problems incident to the maintenance of railroad equipment, and that the engine men, machinists, and other shopmen are mechanics of average skill, and familiar with the rollinj?; stock, its usage, wear, the cost and frequency of its repair, and the causes thereof, it is remarkable that, during the 40 years and more in which the expense of re-turning tires has been so larj?;e a factor in the maintenance of the equipment, and "sharp and defective wheels have caused so many accidents, no one, in these armies of mechanics and experts, has discovered a preventive, or sugj?;estedan improvement on known appliances, until Ross had remedied their defects. Conceding that Steel's idea that the brake shoe should be made to bear only on the parts of the tire not worn by the rail is exemplified in the Ross shoe, whether this suggestion be styled a "principle" or an "idea," it was a mere abstraction and unpatentable; not a complete device or machine. Leroy v. Tatham, 22 How. 132; Burr v. Duryee, 1 Wall. 531; Fuller v. Yentzer, 94 U. S. 288. wng before Bell patented the telephone it was the general belief of scientists that speech could be transmitted by electricity if the requisite electrical effect could be produced. Bell discovered and perfected the apparatus and the process by which this could be done; and, although the previous labors of Reis in the same field had brought him almost to the point of success, he failed to reach his goaL Over 20 years before Bell's invention an eminent scientist
J'lCDJj:RAL REPORTER,
vol. -59.
j,n reference to ,the mode :()f transmitting speech by elec"Reproduce precisely these vibrations," to wit,: the vibrationi by the human voice in uttering syllables, "and you will precisely the syllables;" yet Bourseul neither claimed nor inventlildthe telephone. Like Bourseul, Steel told what to do, but not h9Wto do it. His conception of counteracting the rail wear by theshCi)e friction was meritorious, but not inventive. Its crude in his brake. block not only failed to meet its purpose, bptadded to the defects caused by the rail wear equally prolific sources of danger in the,.'jsharp flange," and the failure to equalize the .friction area of thesboo upon the flange with that on the tread;, These defects nQt Qnly caused its supersedure by the Ross shoe, bnt .·cqndemned it;s,.usefulness· and safety; Ross' device, though 'but slightly varied inform from that of Steel's, has not oI).ly demoll.strated its utility in years of use by prolonging the life of the tire, and obviating the great expense of frequent re-turning and the loss of use of the locomotive during such repairs, but has promoted ,the ,safety of railway travel by conserving the efficiency and contour of the wheel. Now that 10 years of successful use have established ,lt$ .merits, and since it has practically supplanted all others; and has been accepted in Great Britain, the home of the Steel patent, and ·after the skill of the mechanics and railway employes of both countries had been challenged in vain for eight years by the defects of the Steel shoe to the need of an effective device, it is too late either to refer the merits of this appliance to the suggestions of its imperfect predecessor, or to declare it merely the work of a mechanic of ordinary skill. Without essaying to define the line between the skill of the mechanic and the ingenuity of the inventor,. it may be safely affirmed that one who perfects a device of confessed utility, which satisfactorily supplies a long-existing and imperative need of any branch of industry, and which excels in operation and results other existing appliances, superseding them at home and abroad, and by its structure overcoming difficulties and objections which have for years baffled the ingenuity of his fellow craftsmen the. world over, including Steel himself, for whose conception so much breadth is claimed, has proved beyond cavil that average mechanical skill was not equal to what he has accomplished. His success is his individual achievement, the product of his inventive faculty, not merely that of his training or vocation. The merit and originality of his device is not to be determined by the application of a measure to its parts, or the extent of the difference of fom between it and a contrivance which fails to answer the same purpose, when that difference, as in this case, not only produces a desired local effect, but insures the proper operation of the entire device., 'The lug or projection in Ross' shoe bearing upon the wheel upon the flange and the inner side of the tread performs a double function. It preserves the normal shape of that part of the wheel and flange, .and aids to equalize the friction surface of the shoe on each. side of the tread. It also prevents the lateral vibration of the . It ill essential to the success of the device, and is lacking i
MISTER II. BROWN.
909
in the Steel brake block, which has no compensating feature. The difference between these contrasted devices is therefore not merely in form, but in their mechanical and economic results. This test, and the considerations above adverted to, establish the originality of Ross' shoe, and sustain its patentability. Examples of patented inventions which have been upheld by the courts, although they differed very little in form, mechanism, or operation from other appliances, are numerous. Krementz v. S. Cottle Co., 148 U. S. 556, 13 Sup. Ct. 719; Loom Co. v. Higgins, 105 U. S. 580; Consolidated Safety-Valve Co. v. Crosby Steam Gauge & Valve Co., 113 U.S. 157, 5 Sup. Ct. 513; Magowan v. Packing Co., 141 U. S. 332,12 Sup. Ct. 71; The Barbed Wire Patent, 143 U. S. 275, 12 Sup. Ct. 443, 450; Gandy v. Belting Co., 143 U. S. 587--594, 12 Sup. Ct. 598; Topliff v. Topliff, 145 U. S. 156··163, 12 Sup. Ct. 825. For the reasons given, and those mentioned by Mr. Justice Brown in awarding the injunction in this cause, there must be a decree for complainants, with a reference to a master to ascertain damages; and the injunction is made perpetual.
PUTNAM NAIL CO. v. AUSABLE HORSE NAIL CO. (Circuit Court of Appeals, Second Circuit. No. 40. Appeal from the Circuit Court of the United States for the Southern District of New York. Frederick P. Bellamy, for appellant. Livingston Gifford. for appellee. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. Affirmed on opinion of court below. See Putnam Nail Co. v. Ausable Horsenall Co., 53 Fed. 390. MISTER v. BROWN et at (District Court, D. Maryland. February 16, 1894.) FISHERIES-STATE OYSTER NAvy-SHOOTING BY OFFICER-LIABILITY FOR.
February 27, 1894.)
Code Md. art 72, which regulates the oyster fishery in the waters of the state, provides for the maintenance of vessels to guard the waters, directs their commanders to arrest all violators of the law and seize offending vessels, and authorizes them to use arms, in their discretion, for the enforcement of the law. Section 25 directs the board of public works to furnish the necessary arms and ammunition for the several vessels; and Act Md. 1886, c. 296, vests in it the appointment of a commander in chief and deputy commanders for the state fishery force, and the supervision of the commander in chief in his control of the force. Held, that the action of the board in appointing officers and furnishing ammunition is purely official and ministerial, and its members are not personally liable for the abuse by a deputy commander of the discretion vested in him by statute in the matter of using such arms.
In Admiralty. On exception to libel. Libel by Jacob Mister ;3gainst Frank Brown, Marion De K. Smith, Spencer C. Jones, 'Thomas C. B. Howard, and Waters Ford. Exception sustained.