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St. Louis Railway Company v. Wilson/Opinion of the Court

There is but one controversy in this case, and that is as to the duty of the railroad company to transfer to Wilson the stock standing in the name of the Seligmans on its books and to issue new certificates therefor. Upon the one side of that controversy is the plaintiff, a citizen of Missouri, and on the other the railroad company, a Missouri corporation. The sole purpose of the suit is to establish the duty and enforce its performance. This cannot be done without the presence of the company, for it is upon the company itself that the decree must operate. The Seligmans are made parties only in aid of the principal relief which is asked. As the stock stands in their names on the books, the company may well claim a judicial finding in the cause which shall bind them, if upon the final hearing a transfer is ordered. the suit, therefore, is in truth and in form against both the company and the Seligmans on a single cause of action, and cannot be removed unless separate answer of the Seligmans introduces a separate controversy. This we have held in Louisville & N. R. Co. v. Ide, ante, 735, is not necessarily the effect of separate issues under separate defenses to the same action. No relief whatever can be granted unless it is found to be the duty of the company to transfer the stock, and as to that controversy the company is an indispensable party Central R. Co. of N. J. v. Mills, 113 U.S. 249; S.C.., ante, 456; Thayer v. Life Ass'n, 112 U.S. 717; S.C.., ante, 355.

The order remanding the cause is affirmed.


text: Talk:St. Louis Railway Company v. Wilson/Opinion of the Court

license: Creative Commons - Attribution Share-Alike - https://creativecommons.org/licenses/by-sa/4.0/


text:
Sargent v. Hall Safe Lock Company

Edmund Wetmore and George Ticknor Curtis, for appellant.

E. N. Dickerson and W. C. Cochran, for appellees.

BLATCHFORD, J.

title: Sargent v. Hall Safe Lock Company


text: Talk:Sargent v. Hall Safe Lock Company

title: Talk:Sargent v. Hall Safe Lock Company


text:
Sargent v. Hall Safe Lock Company/Opinion of the Court

This is a suit in equity, brought in March, 1877, in the circuit court of the United States for the southern district of Ohio, by James Sargent, the appellant, against the Hall Safe & Lock Company and others, the appellees, for the infringement of letters patent No. 186,369, granted to Surgent, January 16, 1877, for improvements in time-locks. It was afterwards consolidated, as of November, 1879, with another suit in equity, brought in July, 1876, in the same court, by the same plaintiff against the same defendants, for the infringement of reissued letters patent No. 6,787, granted to Sargent, december 7, 1875, for improvements in time-locks, on the surrender of original letters patent No. 121,782, granted to Stephen W. Hollen, December 12, 1871. The circuit court heard the case on plead ngs and proofs and dismissed the bill. The plaintiff had appealed, but no claim is made in this court to recover on the Hollen reissue. The specification and claims of No. 186,369 are as follows:

'Be it known that I, James Sargent, of Rochester, in the county of Monroe, and state of New York, have invented certain new and useful improvements in locks for safe and vault doors, of which the following is a specification:

'This invention relates to certain improvements in locks for safe and vault doors, its object being to construct a time-movement in such a manner as to have it guard, and operate in conjunction with, a combination-lock, so as to render said combination-lock, when locked, inoperative and incapable of being unlocked until the arrival of the appointed hour, at which time the timemechanism will liberate or cease its guarding action on the combination-lock, and admit of said lock being operated and unlocked by the person having knowledge of the combination upon which said lock is set, so as to enable the bolt-work of the safe or vault door to be retracted and the door opened.

'My invention consists in combining a time-mechanism with a combination-lock, and adapting the same to operate in connection with the bolt-work of a safe or vault door, the time-mechanism being constructed to act in conjunction with, and guard, dog, or render inoperative, the aforesaid combination-lock, when locked, the said combination-lock having a bolt or bearing specially constructed and arranged, so that, when in one position, it will rest upon or receive the pressure of the bolt-work of the door when the latter is thrown out and the lock locked, and thus prevent the retraction of the bolt-work. This arrangement retains the bolt-work in a locked condition during the hours appointed for it to remain locked, and prevents the lock from being unlocked by any one having legitimate or surreptitious knowledge of the combination upon which the lock is set, until the arrival of the appointed hour, when the time-mechanism will cease its dogging or guarding action upon said combination-lock, and admit of said lock being operated by those in possession of the combination, so as to enable them to place the bolt or bearing of the lock in such position as to enable the retraction of the bolt-work, whereby the safe or vault door can be opened.

'The invention further consists in a certain combination, substantially as hereinafter set forth, that is to say, a union consisting of a combination-lock, a time-movement, and a yoke lever or connection, adapted to be placed upon a safe or vault door, to operate in conjunction with the bolt-work thereon, said yoke lever or connection being constructed and located in such respect to the combination-lock as to render the unlocking of the same absolutely impossible, when locked, and so remain locked until the arrival of the appointed or predeterminate time, at which time the said yoke lever or connection, through the action of the time-movement, is caused to cease its guarding or dogging action upon the combination-lock, at which time, or any time after during the time the time-mechanism has ceased its dogging or guarding action, the said lock can be unlocked by the person in possession of the proper combination upon which the lock is set, the peculiarity and novelty of this union being, that, when the said combination-lock with its time-mechanism, is arranged upon a safe or vault door, to operate in conjunction with the boltwork thereon, and all locked, the tumblers or combination-wheels of said lock, and the spindle of the same, together with its usual indicator, are all left free to be moved or rotated without exerting any unlocking action or rtrain whatever upon the mechanism composing the combination-lock, or the delicate mechanism composing the time-movement.

'In the drawings, figure 1 represents a portion of a safe or vault door, illustrating therein a bolt-work, and a combined time-mechanism and combination-lock, with covers removed, the bolt-work being thrown out into the jamb of the door, and the combination-lock locked and guarded by the time-movement. Fig. 2 is a detail view, illustrating a voke lever or connection adapted to connect with the dog, angle-bar, or fence of the combination-lock. Fig. 3 represents a portion of a safe or vault door, having thereon a boltwork, and a combined time-mechanism and combination-lick, the combination-lick being unlocked and the bolt-work retracted.

'Referring to the drawings, the letter A designates the case of a combination-lick, the lock-works of which may be of any of the well-known forms now in use, provided the same is supplied with a lock-bolt, or a bearing, constructed and arranged so as to connect with, or receive the pressure of the boltwork located on a safe or vault door, when said lock-bolt or bearing and the bolt-work are placed in a position for locking the door.

'The combination-lick illustrated in the drawings is one known as 'Sargent's Automatic Bank-Lock,' upon which letters patent were granted August 28, 1866, reissued January 2, 1872. Said combination-lock is shown as applied upon a safe or vault door, B, upon which is arranged a bolt-work, consisting of the usual bolt-supporting bars, C, bolts, D, carrying-bar, E, having a tongue-piece, F, said carrying-bar serving as a medium for projecting or retracting the bolts into and out of the sockets, a, constructed in the jamb of the safe or vault, for the purpose of locking or unlocking the door, as shown in Figs. 1 and 3. The bolt-work has the requisite projecting or retracting motion imparted to it from the outside of the door, when opened or closed, through the medium of the usual knob, b, and the spindle, c, which spindle passes through the door, and connects with the carrying-bar by any suitable fastening, such as a slot, d, pin, e, and suitable fastening-nut. The lock-bolt or bearing of the combination-lock may be of a circular, segmental, or other desired form, provided said lock-bolt is arranged and adjusted so as to turn upon a suitable axis or bearing, and is so constructed that, in one position, it will prevent the retraction of the bolt-work, so as to retain the safe or vault door locked, while, in another position, it will admit of the bolt-work being retracted for the purpose of allowing the safe or vault door to be opened.

'In the present example, the lock-bolt is shown as provided with an offset or recess, f, which offset or recess is brought in or out of coincidence with the tongue-piece on the carrying-bar, to admit of the bolt-work being projected or retracted through the medium of a sliding-bar, H, which carries a dog, fence, or angle-bar, J, having a hook, g, which engages with the bit, h, of the cam, K, secured upon the dial-spindle, i, which spindle passes through the safe or vault door, in the usual manner, and serves to operate the series of tumblers or combination-wheels, L. The sliding-bar, H, is connected with the lock-bolt or bearing in any suitable manner, its object being to impart motion to said lock-bolt or bearing, to secure the objects above specified. The said lock-bolt or bearing, it will be perceived, is located in its casing, so as to rest closely in the rear of the tongue-piece or connection secured upon the carrying-bar, and is isolated, so to speak, from the tumblers or combination-wheels and the other main working parts of the lock, and, therefore, any strain which is brought to bear upon it by the heavy bolt-work will be expended upon the bolt or bearing, and its axis or bearing, and not upon the tumblers or combination-wheels.

'It will be seen that to unlock the combination-lock the hook of the dog, angle-bar, or fence, J, will drop into the notches or slots of the tumblers or combination-wheels, when the notches are brought into juxtaposition by the operator who has possession of the combination upon which the l ck is set, at which time the bit, h, of the cam, K, will also engage with the hook, g, of the said dog, angle-bar, or fence, when, by moving the dial-spindle, the lock-bolt or bearing can be moved or rotated so as to admit of the tongue-piece or connection, with the carrying-bar and bolt-work, being moved back or retracted, as in Fig. 3 of the drawing, and the safe or vault door opened; but, when said combination-lock is locked, the hook of the dog, angle-bar, or fence, J, is elevated, due to the combination-wheels being disarranged, as in Fig. 1 of the drawings, and then no action can be had upon the connecting-bar, dog, angle-bar, or fence, or upon the lock-bolt or bearing, by turning of the dialspindle, and hence the tongue-piece or connection on the carrying-bar of the bolt-work rests upon, or connects with, the lock-bolt or bearing, and the bolt-work is securely retained in a locked condition. With such combination-lock, or one of substantially the same construction and operation, constructed to be applied for use upon a safe or vault door, to operate in connection with the ponderous or great bolt-work thereon, is combined a time-mechanism, the works of which may be of any of the improved or desired kinds, since its action is to measure time correctly, the object being that, during the interval that the combination-lock is locked and the time-movement wound up, the same, through a suitable connection made between it and said combination-lock, will guard the said lock, and prevent its being unlocked, even by a cashier or other person in possession of the combination upon which the said combination-lock is set.

'In the present example, a duplex or double time-movement is illustrated, such being preferable to a single time-movement, as a safe-guard against stopping. Each of the time-movements, which are designated by the letters, M, M, which may consist of a chronometer or clock movement, is supplied with a pointer or hand, attached to a spindle, l, in such a manner as to be capable of being moved backward to set any elected number on the dials, N, said dials being spaced off, or marked with a scale of hours and divisions, from one upward, to any desired number, according to the mechanism of the chronometer or clock. With each of the dials are combined adjusting disks or arms, O, or some equivalent mechanical device, each of which carries a stud, or a pin or projection, which acts upon a yoke or lever, which connects with and guards the combination-lock the number of hours or time for which it is designated said lock is to remain locked, and thus controls the action of its lock-bolt or bearing while the same is in a locked condition. The yoke lever or connection is designated by the letter, P, and it is pivoted or loosely fixed on its support or axis, as at m, or otherwise arranged so as to operate in conjunction with the moving or revolving disks or arms, O, the object being, that the yoke lever or connection and the disks can be adjusted with respect to each other, so as to connect with the dog or fence or other working part of the lock, and thus control the movement of the lock-bolt or bearing, and hence the locking and unlocking of the combination-lock.

'One end of the extension of the yoke lever or connection, in the present example, has a suitable hook, n, that engages with a pin, o, on the dog, anglebar, or fence, J, by striking under it, in which case it holds said dog, anglebar, or fence elevated out of contact with the tumblers or combination-wheels and the cam of the dial-spindle. The arms of said yoke lever or connection connect with, or rest upon, the axis or spindle of the adjusting disks or arms; and the arrangement of the studs, pins or projections on said disks or arms is such, that, when the indicators have reached the proper number on the dials, said studs, pins or projections will have acted upon the yoke lever or connection, and moved it sufficient to withdraw the cam-hook from beneath the pin, o, and thus allow the do, angle-bar, or fence to fall, ready to engage with the tumblers or combination-wheels and the lock-bolt or bearing, at which time the combination-lick can be operated by the person in possession of the combination, as the time-movement has ceased its guarding or dogging action.

'Notches, p, p, should be formed in the yoke lever or connection, to allow the studs, pins, or projections to fall therein, when the disks or arms and the indicators have reached the designated number, thus serving as stops for the adjusting disks or arms, and prevent the same from moving on beyond the prearranged hour, to reset the yoke lever or connection upon the studs or projections; for, if some such provision were not made, the combination-lock could not be opened until the disks or arms, with the indicators, came around again to said previously appointed hour; at least, there might be danger of such occurring.

'The double time-pieces are employed, as hereinbefore stated, so as to insure the releasing of the combination-lock, in case one of the time-works should stop or fail to come to proper position. A spring, r, or an equivalent, such as a weight, should be connected with the lower end of the yoke lever or connection, to produce the necessary reaction to bring the hook of the yoke lever or connection under the pin on the dog, angle-bar, or fence.

'Thus it will be seen from the foregoing that the bolt-work of the safe or vault door connects with, or rests upon, the bolt or bearing of the combination-lock, and that the yoke lever or connection of the time-movement connects with the dog, angle-bar, or fence of said combination-lock, rendering the said combination-lock inoperative when locked; that is to say, said yoke lever or connection has the effect of dogging or guarding the combination-lick during the time it is locked, and prevent its being unlocked until the arrival of the hour previously designated by the time-movement; and should pressure be exerted upon the great or ponderous bolt-work of the door, when locked, it will be received and arrested and retained by the lock-bolt of the combination-lock, and will not be transmitted to the tumblers or combination-wheels of the combination-lock, or to the time-movement, or to the yoke lever or connection. In lieu of the lever connecting with the dog or fence, it may be made to connect or operate on the lock itself, and thus secure the result hereinbefore recited. The time-mechanism may be in the same case containing the works of the combination-lock; or it may be in an apartment connected with the case of the combination-lock, or in a case separate and distinct from the case containing the combination-lock.

'The advantages of this invention over common time-locks is, that, when the time-mechanism releases the lock-mechanism, that is, ceases its dogging or guarding action, it does not admit of the unlocking of the bolt-work of the door, but simply leaves the combination-lock in the condition that it can be unlocked by the person in possession of the proper combination upon which said lock is set, thus securing the advantages of a combination-lock for use during the day, with a time-mechanism for guarding and protecting said lock during the night. This improvement is of the utmost importance, for, during the hours when the time-mechanism is set, no one, not even the officers of a bank or other institution, can open the combination-lock; and, when said time-mechanism is not set or adjusted, no one, except the holder of the combination upon which the lock is set, can open it. No one who has the combination, whether obtained surreptitiously or otherwise, can open the lock when the time-movement is set, for the simple reason that no connection can be made between the tumbler or combination-wheels, the dog, angle-bar, or fence, the spindle, and the lock-bolt, or bearing.

'Further: Another feature of the utmost importance present in the combination of parts brought together is, that the connection between he time-movement and the combination-lock is such, that, when the time-movement is set, the parts adjusted, and the safe doors closed, the combination-lock will be rendered inoperative until a predeterminate hour, during which interval of time the unlocking action of the combination-lock will be suspended by the time-movement, while the tumblers or combination-wheels of the aforesaid combination-lock are left free to rotate, if power is exerted upon the dialspindle for the purpose of twisting said spindle out of place, or impairing the lock-mechanism, and, by such, the working parts of the combination-lock cannot be injured or rendered useless for future action.

'I have made a special claim, in a separate application for letters patent, for the combination of a time-movement and a lock with a lever adapted to be connected with the dog of said lock, to hold it from falling into the slots or notches of the combination-wheels except when released by the time-movement. So, therefore, in this application, such special construction and arrangement of parts is not specially claimed.

'Having thus described my invention, what I claim and desire to secure by letters patent, is (1) the combination, substantially as hereinbefore set forth, of a time-mechanism and a combination-lock with the bolt-work of a safe or vault door, the time-mechanism being constructed to act in conjunction with, and render inoperative, the combination-lock when locked, said lock having its bolt or bearing constructed to receive the pressure of the series of bolts constituting the bolt-work of the door, when locked, and prevent the unlocking of said bolt-work until the arrival of a certain predeterminate hour. (2) The combination, substantially as hereinbefore set forth, of a combination-lock, and the series of bolts constituting the bolt-work of a safe or vault door, with a time-movement and a yoke or lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative, when locked, the tumblers of the combination-lock and its spindle being free to rotate, while the bolt-work is held in its locked position by the bolt or bearing of the combination-lock.'

An analysis of this specification to ascertain, in view of the state of the art and of the history of the application for the patent as it passed through the patent-office, what is the proper construction of the claims allowed, will conduce to a solution of the questions involved. The object of the invention is stated to be to have a time-movement guard, and operate in conjunction with a combination-lock, to prevent the action of the combination-lock until a time previously appointed by the setting of the time-movement shall have arrived, in the ordinary running of the time-movement, at which time, and not before, the combination-lock will come into action, when operated in the usual way, as if there were no time-movement. In other words, by the setting of the time-movement, the connection between the combination-lock and its lock-bolt or bearing is interrupted so as to destroy the capacity of the combination-lock to unlock the bolt-work until the time fixed by the setting of the time-movement shall, by the ordinary running of the time-movement, have arrived, when the connection between the combination-lock and its lock-bolt or bearing is automatically restored through the action of the time-mechanism. The combination-lock is to remain with its organization unchanged, but the time-mechanism is to alternately interrupt and restore its connection with its lock-bolt or bearing and the action of the bolt-work.

There are two parts to the invention, represented by the two claims. Both of them are claims to combinations of mechanism. The first claim is a claim to a combination, substantially as set forth in the descriptive part of the specification, of three elements: (1) a time-mechanism; (2) a combination-lock; (3) the bolt-work of a safe or vault door. But, as the claim says hat the time-mechanism is to be constructed to act in conjunction with, and render inoperative, the combination-lock, when locked, it follows that the expression 'time-mechanism' includes the means of connection between the time-movement and the parts on which the combination-lock operates. Otherwise, there could be no operative coaction of the three elements named in the claim. The expressions 'time-mechanism' and 'time-movement' are carefully used in the specification and claims, as having different meanings, the former including the latter and its means of acting in conjunction with the combination-lock. There is a limitation in the first claim, to the effect, that the combination-lock is to have its bolt or bearing constructed to receive the pressure of the bolt-work, when the lock is locked, and prevent the unlocking of the bolt-work till the predetermined time shall have arrived.

The second claim is a claim to a combination, substantially as set forth in the descriptive part of the specification, of four elements: (1) a combination-lock; (2) the bolt-work of a safe or vault door; (3) a time-movement; (4) a yoke or lever connection, constructed and located to render the bolt or bearing of the combination-lock inoperative, when the lock is locked. In the second claim, the time-mechanism of the first claim is broken up into a time-movement and a yoke or lever connection. There is a limitation in the second claim, to the effect, that the tumblers of the combination-lock and its spindle are free to rotate during the time the bolt-work is held in its locked position by the bolt or bearing of the combination-lock. This freedom of rotation is referred to in the specification as being peculiar and novel, and consisting in the fact, that, while the combination-lock and the bolt-work are locked, the tumblers or combination-wheels of the combination-lock, and its spindle, are free to rotate without exerting any unlocking action or strain on the mechanism composing the combination-lock, or the delicate mechanism composing the time-movement.

It is also to be noted that the specification states that the lock-bolt or bearing of the combination-lock may be of a circular, segmental, or other desired form, 'provided said lock-bolt is arranged and adjusted so as to turn upon a suitable axis or bearing,' and is so constructed as, in one position, to prevent the retraction of the bolt-work, and, in another position, to permit it. The kind of combination-lock referred to is indicated by the one illustrated in the drawings, and which the specification states to be the one of Sargent's patent No. 57,574, granted August 28, 1866, and reissued as No. 4,696, January 2, 1872. No. 4,696 states that such combination-lock has no sliding lock-bolt, but has combined with its working parts a bolt turning on a pivot or bearing, and so isolated or removed from contact with the combination-wheels, as to receive any pressure applied through the bolt-work of the door, and cut off the communication between such bolt-work and the wheels or fence lever of the combination-lock; and that such bolt turning on a pivot or bearing, instead of the sliding-bolt theretofore in use, is an important feature. The first claim of No. 4,696 is in these words: 'In a combination-lock for safe or vault doors, a bolt, I, which turns on a pivot or bearing, when said bolt, I, is used in a lock having no ordinary sliding lock-bolt, and in connection with the separate bolt-work of the door, and so arranged as to receive the pressure of the said bolt-work, without transmitting it to the wheels or other equivalent works of the lock.'

The history of the application of Sargent for No. 186,369, so far as it is important to the present case, is this:

On June 11, 1873, having his reissued patent No. 4,696, for his combination-lock, in the form shown in the drawings of No. 186,369, he made application for a patent for combining a time-movement with the lock-works of a combination-lock. The drawing showed the combination-lock of No. 4,696; and the specification set forth the invention to be so combining a time-movement with the lock-works as to prevent the lock from being unlocked by the release of the time-movement, and to require it to be unlocked by being set on the combination, after such release. There was a time-movement, consisting of two clocks, and a lever to hold up the dog or angle-bar of the lock, until released by the arrival of the predetermined hour. No bolt-work was shown or described. There was no idea of patenting any combination, of which the bolt-work formed a part. The specification had two claims: (1) 'In a combination-lock, I claim the combination with the lock-works, and with a time-movement that controls the same, of a connection, H, or equivalent, so arranged that when the time-movement releases the lock-works, the latter still remain locked, substantially as specified. (2) I claim, in combination with a time-movement, and a lock, the lever, H, or equivalent, connected directly with the dog, C, to hold it elevated from the wheels, substantially as specified.' The specification stated that Sargent did not 'claim broadly the combination of a time-movement with a lock,' that is, a time-movement or clock employed to prevent the unlocking of a lock till the arrival of a predetermined time in the running of the clock.

The first claim of the application was rejected, June 12, 1873, by a reference to patent No. 121,782, granted to S. W. Hollen, December 12, 1871. Nothing was said as to the second claim. Sargent then disclaimed Hollen's arrangement, as being the combination of 'a clock-movement with an ordinary key-lock, by means of a lever, so that, when the clockwork releases the latch, the latch remains locked;' and altered his claim so as to read thus: '(1) In a combination-lock, the series of wheels of which are set in succession and operated by a spindle, I claim the combination with the lock-works, and with a double-time movement that controls the same, of a connection, H, whereby, when the time-movement releases the lock-works, the latter still remains locked, substantially as and for the purpose specified. (2) I claim, in combination with a time-movement, and a lock, the lever, H, or equivalent, arranged so as to be connected with the dog, substantially as described.' The first claim was again rejected, June 23, 1873, by a reference to Newton's Journal of 1832, (Rutherford's patent of 1831,) as describing the application of a double-time movement 'to any bolt of a lock, bar, or other fastening,' and to the American patent of Holbrook, of 1858, as showing a double-time movement. The letter of rejection, referring to the Hollen patent, says, that Hollen 'applies the movement to a tumbler lock, which has to be operated by a key after the time-movement releases it. To double the time-movement in one lock is considered to be one and the same thing with doubling it in any other. To grant Hollen a patent for applying this time-movement to a tumbler lock, and then to issue other patents for using it with other locks, is simply to nullify Hollen's patent. Sargent is entitled to a limited claim for his way or adaptation, but nothing more.' This last observation meant that the second claim would be allowed, but not the first. The point of this ruling was, that it was not a patentable invention or combination to unite a time-movement with a combination-lock instead of with a tumbler-lock, each of which required to be unlocked after its release, or to double a clock in connection with one lock after it had been doubled in connection with another; but that the special arrangement of a lever connection between the time-movement and the dog might be patented.

Two new claims were then substituted by Sargent, as follows: '(1) I claim, in combination with a combination-lock having a spindle and combinationwheels, and with two or more separate time-movements, a single lever, or equivalent connection, H, connecting the lock and the time-movements; the whole so arranged that said lock is released either by a simultaneous action of the time-movements, or by one of them if the other fails, and the lock still remains locked, when so released, as specified. (2) I claim, in combination with a time-movement and a lock, the lever, H, or equivalent, connected with the dog, C, to hold it from falling into the slots or notches of the combination-wheels, except when released from the clockwork, as specified.'

The first claim was again rejected, July 5, 1873, on the ground that the change in it did not take the case out of the references; and, on the twentyeighth of July, 1873. It refers to the board of three examiners in chief. The decision of the board sustaining the decision of the examiner was rendered October 7, 1873. It refers to the English patent of Rutherford, of 1831, and says: 'The patent of Rutherford describes an ordinary key-lock, to which the time-movement is so connected that it may be set for a given hour, before which it cannot be unlocked, but may be at any time thereafter. Rutherford also foresaw that one time-movement might stop, and suggested two. Rutherford, as the references show, is not the only one who has thought of thus connecting a time-movement to a lock. It happens, however, that the locks shown in the references are all key-locks, while applicant's is a combination-lock; and it is upon this that the claim is founded. While it is undoubtedly true that the combination-lock is the better, there does not appear to be, in any true sense, any new combination in what applicant claims. It may be said that he has substituted in the Rutherford combination, (for example,) one well-known element for another, and that the result, namely, the security against unlocking before a given hour, is exactly the same in both cases. And it must be remembered that this is the whole end and scope of the combination claimed, not to prevent breakage, or picking, or bursting with gunpowder, but simply unlocking before the hour appointed. It is true that the lock connected to the time-movement in the manner shown is rendered secure against unlocking by unauthorized persons who pick up the combination, when the dog rests on the periphery of the cams; but it appears clear that this results from the peculiar mode of application, and is covered by the second claim. Whatever the advantage, then, arising from the substitution for the key-lock, so far as has been pointed out to us, it results from the superiority of the former over the latter, and not from the combination. Nor, so far as we see, has any invention been exercised. The time-movement was originally invented to prevent locks from being prematurely unlocked, and, when once the combination had been invented, it is obvious that it was as applicable to one form of locks as to another; and, to grant a patent for the union of the time-movement with every old form of lock, or with every new form which might appear, would manifestly place unjust restrictions on the original invention and defeat the very purpose of the law. We understand only the first claim to be rejected.' These observations are true, as the record in this case shows, and it also shows many patents in which, prior to 1873, one clock or two clocks were employed to relieve, at a predetermined time, the bolts of a door from a dog obstructing their retraction, so that the door could be opened when that time had arrived, but not before.

Nothing more was done with this application till March 18, 1875, when Sargent presented a new specification and claims, making prominent the feature of the free rotation of the tumblers of the combination-lock, through the medium of the lock-spindle, during the suspension, by the time-movement, of the unlocking action of the combination-lock, and changing the claims to read thus: '(1) The combination of a time-movement with a combination-lock and a lever constructed and located to render inoperative such combination-lock until a predeterminate hour, the tumblers of the combinatio -lock being free to rotate through the medium of the lock-spindle, while the unlocking action of the combination-lock is suspended by the time-movement. (2) I claim, in combination with a time-movement and a lock, the lever, H, or equivalent, connected with the dog, C, to hold it from falling into the slots or notches of the combination-wheels, except when released by the clock-work, substantially as described.' On the twenty-fourth of March, 1875, the first claim was again rejected by references to the Hollen patent, of December, 1871, and the Rutherford patent, of 1831. The letter of rejection said: 'Hollen shows the combination of a time-movement and a lock, with a lever constructed and located to render inoperative such lock until a predeterminate hour, the tumblers of the lock being free to rotate through the medium of a key, while the unlocking action of the lock is suspended by the lever. Rutherford shows (Figs. 1, 2, 3, 4, and 5, sheet 2) the combination of a time-movement and a lock, with a lever arranged to engage with the bolt of a lock and render inoperative such lock until a predeterminate hour. To merely substitute the ordinary combination-lock, such as shown, for example, in the patent permutation-lock of James Sargent, August 28, 1866, for the lock shown in either of the above references, is not regarded as a patentable difference. * *  * The second claim is not objected to. The first claim is again refused.' This application was not further prosecuted.

On the twelfth of July, 1875, Sargent addressed a letter to the patentoffice, entitled in the case, in which he said: 'So many amendments and actions having been made in the above-entitled case, I desire to withdraw and abandon it, for the purpose of filing a new application. I, James Sargent, have this day filed said application for the invention, and request that the model of the case above named be applied as a model in the application filed to-day. I intend and request that this application be a substitute application for the one so withdrawn.' Up to this time no bolt-work had been shown or described. The object of the new application was to introduce bolt-work as an element in the device. The drawings were the same as those in No. 186,369, showing bolt-work, with the time-movements and the combination-lock. Bolt-work was added to the former model. The specification contained three claims, as follows: '(1) The combination, substantially as hereinbefore set forth, of a time-mechanism and a combination-lock with the bolt-work of a safe or vault door, the time-mechanism being constructed to act in conjunction with and render inoperative the combination-lock when locked, said lock having its bolt or bearing arranged to rest upon and receive the pressure of the bolt-work of the door when locked, and prevent the unlocking of said bolt-work until the arrival of a certain predeterminate time. (2) The combination, substantially as hereinbefore set forth, of a combination-lock and the bolt-work of a safe or vault door, with a time-movement and a lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative when locked, the tumblers of the combination-lock and its spindle being free to rotate while the bolt-work of the door rests upon the bolt or bearing of the combination-lock. (3) In combination with a time-movement and a lock, a lever, or its equivalent, adapted to be connected with the dog of said lock, to hold it from falling into the slots or notches of the combination-wheels, except when released by the time-movement, substantially as described.'

On the thirty-first of July, 1875, claims 1 and 2 were rejected by references to the patent of Hollen, of December, 1871, and that of Rutherford, of 1831; and a time-lock arranged in connection with the bolt-work of a door, in the time-lock of Little, patented in January, 1874, was referred to. Those claims were again rejected, September 6, 1875, in a letter which said: 'The empl yment of locks of various kinds for securing the bolt-work of a door is too common and well-known to require further references. Either Hollen's or Rutherford's lock can be applied to the bolt-work of a door without the least change being made to adapt it thereto. The mere substitution of one well-known kind of locks for another kind equally well-known has been decided again and again as not a patentable difference.'

On December 3, 1875, an interference was declared between claims 1 and 2 and four other applications; and between claim 3 and four other applications. On February 12, 1876, the interference as to claims 1 and 2 was dissolved, and they were again rejected. A further amendment of the specification was made February 15, 1876, and claims 1 and 2 were altered, so as to read as follows: '(1) The combination, substantially as hereinbefore set forth, of a time-mechanism and a Combinationlock with the bolt-work of a safe or vault door, the time-mechanism being constructed to act in conjunction with and render inoperative the combination-lock when locked, said lock having its bolt or bearing constructed to receive the pressure of the series of bolts constituting the bolt-work of the door when locked, and preventing the unlocking of said bolt-work until the arrival of a certain predeterminate time. (2) The combination, substantially as hereinbefore set forth, of a combination-lock and the series of bolts constituting the bolt-work of a safe or vault door, with a time-movement and a lever connection, said lever being constructed and located to render the bolt or bearing of the combination-lock inoperative when locked, the tumblers of the combination-lock and its spindle being free to rotate while the bolt-work is held in its locked position by the bolt or bearing of the combination-lock.' The claims were not allowed, but a new interference as to them was declared, March 8, 1876, with the same four applications, the subject-matter being, 'the combination of a time-mechanism, and a combination-lock, with the bolt-work of a door.'

On the eleventh of January, 1877, the application was amended by withdrawing claims 1 and 2. Two days before this, and on January 9, 1877, Sargent had filed the application on which No. 186,369 was granted. The special construction and arrangement of parts, a claim for which, as the specification of that patent states, was made in a separate application, was covered by the claim of patent No. 198,157, granted to Sargent, December 11, 1877, in pursuance of the application of July 12, 1875, that claim being as follows: 'In combination with a time-movement and a lock, a yoke lever or equivalent, adapted to be connected with the dog, fence, or angle-bar of said lock, to hold it from falling into the slots or notches of the combination-wheels, except when released by the time-movement, substantially as described.' The present suit does not involve any infringement of No. 198,137.

As before remarked, the specification of No. 186,369, the patent here sued on, contains the following statement: 'The lock-bolt or bearing of the combination-lock may be of a circular, segmental, or other desired form, provided said lock-bolt is arranged and adjusted so as to turn upon a suitable axis or bearing, and is so constructed that, in one position, it will prevent the retraction of the bolt-work, so as to retain the safe or vault door locked, while, in another position, it will admit of the bolt-work being retracted, for the purpose of allowing the safe or vault door to be opened.' This clause had not appeared in any of the specifications from and including that filed June 11, 1873, until it was inserted in the one filed January 9, 1877, on which the patent No. 186,369 was granted. It is a limitation without which, it must be assumed, in view of the numerous prior rejections, the claims allowed would not have been granted. The same clause was inserted May 7, 1877, in the specification of the application of July 12, 1875, as it remained after claims 1 and 2 there n were withdrawn, January 11, 1877, and that clause appears in the specification of No. 198,157, as issued December 11, 1877.

The defendants' lock, which it is alleged infringes the two claims of No. 186,369, is of the construction shown by the following drawing, made by the plaintiff's witness Millward:

In that drawing, A is the case of the lock; B, the bolt; C, the dog, pivoted in the bolt at c, and engaging, when held up by the time-mechanism, behind a fixed stump, D; E, the arbor of the lock, the hook, e, of which engages with the hook, f, of the dog, and throws the bolt, B, back, when the dog is released by the time-mechanism. The same hook, e, by running on the surface, g, throws the bolt, B, out to lock the door. F is the time-attachment, which has a lever, G, the arm of which, extending through the case of the lock, has the hook, H, at its lower end, which holds up the pivoted arm, I, and through it the dog, C.

Another form of the bolt-work of the defendants' lock is shown by the following drawing:

It is contended for the defendants, that each of the combinations covered by the two claims of No. 186,369 must be limited to the particular devices described in the specification and shown in the drawings, and to their mode of operation, both claims being limited by the words 'substantially as hereinbefore set forth;' and that, under this construction, the defendants do not infringe. The second claim imposes on the combination claimed in it the limitation, that the tumblers of the combination-lock and its spindle shall be free to rotate, while the bolt-work is held in its locked position by the bolt or bearing of the combination-lock. This is enforced by the language of the specification, which, in stating in what the invention consists, states that 'the peculiarity and novelty' of the union or combination, consisting of a combination-lock, a time-movement, and a yoke or lever connection, is, that 'when the said combination-lock, with its time-mechanism, is arranged upon a safe or vault door, to operate in conjunction with the bolt-work thereon, and all locked, the tumblers or combination-wheels of said lock, and the spindle of the same, together with its usual indicator, are all left free to be moved or rotated without exerting any unlocking action or strain whatever upon the mechanism composing the combination-lock, or the delicate mechanism composing the time-movement.' Again, the specification says: 'Another feature of the utmost importance present in the combination of parts brought together is, that the connection between the time-movement and the combination-lock is such that, when the time-movement is set, the parts adjusted, and the safe doors closed, the combination-lock will be rendered inoperative until a predeterminate hour, during which interval of time the unlocking action of the combination-lock will be suspended by the time-movement, while the tumblers or combination-wheels of the aforesaid combination-lock are left free to rotate, if power is exerted upon the dial-spindle for the purpose of twisting said spindle out of place, or impairing the lock-mechanism, and, by such, the working parts of the combination-lock cannot be injured or rendered useless for future action.' This feature, thus declared to be peculiar and novel, of the free rotation of the tumblers, is not shown to exist in the defendants' lock. The plaintiff's expert, Mr. E. S. Renwick, testifies that this peculiarity is not found in the defendants' lock, and that, for that reason, that lock does not embody the combination of claim 2 of No. 186,369.

As to claim 1, it is limited, by the language of the specification, to a combination-lock having a bolt or bearing which turns on an axis, or revolves. The defendants' lock has a sliding-bolt. It was not new, at the time of Sargent's invention, to apply a time-movement to dog the sliding-bolt of a lock; and it is plain that he imited himself to a rotating bolt. The specification makes it as necessary that the combination-lock should have a turning or revolving bolt, or bearing, as that such bolt or bearing should have the quality or receiving the pressure of the bolt-work, when locked. This turning or revolving feature of the bolt or bearing is made, by the specification, as necessary to the combination-lock of claim 2, as to that of claim 1.

In patents for combinations of mechanism, limitations and provisos, imposed by the inventor, especially such as were introduced into an application after it had been persistently rejected, must be strictly construed against the inventor and in favor of the public, and looked upon as in the nature of disclaimers. As was said in Fay v. Cordesman, 109 U.S. 408, 420; S.C.. 3 SUP. CT. REP. 236, 244, 'the claims of the patents sued on in this case are claims for combinations. In such a claim, if the patentee specifies any element as entering into the combination, either directly by the language of the claim, or by such a reference to the descriptive part of the specification as carries such element into the claim, he makes such element material to the combination, and the court cannot declare it to be immaterial. It is his province to make his own claim, and his privilege to restrict it. If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted device is supplied by an equivalent device or instrumentality. Water Meter Co. v. Desper, 101 U.S. 332; Gage v. Herring, 107 U.S. 640; S.C.. 2 SUP. CT. REP. 819.'

These considerations lead to the conclusion that the decree of the circuit court was correct and must be affirmed.


text: Talk:Sargent v. Hall Safe Lock Company/Opinion of the Court


text:
Electric Railroad Signal Company v. Hall Railway Signal Company

''Chas. E. Perkins and G. H. Christy'', for appellants.

S. E. Baldwin, for appellee.

MATTHEWS, J.


text: Talk:Electric Railroad Signal Company v. Hall Railway Signal Company


text:
Electric Railroad Signal Company v. Hall Railway Signal Company/Opinion of the Court

This is a bill in equity for an injunction to restrain the alleged infringement of letters patent No. 140,536 for an improvement in circuits for electric railroad signals, issued July 1, 1873, to Frank L. Pope, of whom the appellants, who were complainants below, are assignees. On final hearing the bill was dismissed by a decree now brought here for review by this appeal. The drawing which accompanies and illustrates the patent is as follows:

The following is the substantial part of the specification, together with the claims: 'My invention consists in a peculiar arrangement of electric circuits, in combination with a battery, and with two or more circuit-closers operated by moving trains or otherwise, whereby a series of two or more visual or audible signals, situated at intervals along the line of a railroad, may be operated by currents of electricity derived from a single barrery, thereby obviating the inconvenience and expense of employing, as heretofore, one or more separate batteries situated at or near each signal for the purpose of actuating the same.

'In the accompanying drawing, A, A, represents a portion of the track of a railroad. At intervals of, say, a mile, more or less, sections of the said track, a, a 1 insulated from the remainder in a manner well understood, and therefore requiring no detailed description. B is a galvanic battery, of any suitable construction, and placed in any convenient location near the line of the railroad. Two wires or other conductors, C and Z, are attached to the positive and negative poles, respectively, of the battery, B, and extended to any required distance in a direction parallel or nearly so to the line of the railroad. The conductors, C and Z, may be placed on poles, and should be suitably insulated from each other and from the earth. The conductors, C and Z, are virtually prolongations of the positive and negative poles of the battery, B. Each of the insulated sections of track, a, a 1 point at or near which it is desired to erect a signal, and any required number of these may be employed to meet the requirements of any particular case. M, M1, and M2 are the electro-magnets, which actuate or display the respective signals. The said signals may be of any suitable construction, and should be provided with some suitable means of retaining them in position or action after the circuit through the magnets, M, M1, or M2, has been interrupted. m, m1, and m2 are magnets so arranged as to release, reverse, or stop the action of said signals, which have previously been brought into action by the magnets, M, M1, and M2.

'The operation of the apparatus is as follows: Suppose a train moving along the track, A, A, from left to right in a direction indicated by the arrow. Upon reaching the point, a, the wheels and axles of the train will form an electrical connection between the opposite insulated rails, and a circuit will be formed between the conductor, C, and the conductor, Z, traversing wires, 1 and 2, magnet, M, and wire, 3, and the signal attached to M will consequently be displayed. Upon the arrival of the train at a1 the same operation will be repeated, and another connection formed between C and Z, traversing the wires, 4 and 5, magnet, M1, and wire, 6, while at the same time a portion of the current will traverse the branch-wire, 7, magnet, m, and wire, 8. Thus the signal attached to M1 will be act ated, and simultaneously the action of the magnet, m, will release or reverse the action of the first-mentioned signal. Upon reaching the point, a2, the closing of the circuit by the train will, in like manner, cause the signal attached to M2 to be displayed, and the signal last displayed by M1 to be withdrawn. In this manner any required number of such signals may be operated by means of a single battery.

'The respective resistance of the several circuits should be so adjusted that they will be as nearly as possible equal to each other, as a much more perfect action of the apparatus will be secured thereby.

'On a railroad having a double track two separate series of signals, one series for each track, may be connected with the conductors, C and Z, of a single battery, if required. If preferable they may be also operated by means of separate batteries and separate conductors. In cases where it is required to operate a large number of signals, extending along the road for a distance of many miles, the two conductors, C and Z, may be extended the entire distance, and a number of batteries attached at convenient intervals, say, for instance, from five to ten miles apart. The several batteries should all be placed with their positive poles in connection with the wire, C, and their negative poles in connection with the wire, Z, when they will virtually form one large battery, and the principle of operation will remain the same as that hereinbefore described.

'I do not desire to confine myself to the use of any particular form of visual or audible signals, nor to the particular devices herein described for closing the electric circuit at points from which a signal is to be operated. Instead of the circuit being closed automatically by the train itself, it may be closed by a signalman by means of a key or switch, or otherwise.

'I claim as my invention: (1) The battery, B, in combination with the positive and negative conductors, C and Z, two or more electro-magnets, M, M1, M2, for actuating, or causing to be actuated, visual or audible signals, and two or more circuit-closers, a, a 1 a railroad, substantially as and for the purpose specified. (2) The battery, B, in combination with the positive and negative conductors, C and Z, two or more electro-magnets, m, m 1 releasing or reversing visual or audible signals, and two or more circuit-closers, a 1 railroad, substantially as and for the purpose specified. (3) The combination of the battery, B, conductors, C and Z, circuit-closer, a, and electro-magnet, M, for actuating a visual or audible signal, with the circuit-closer, a1, wires, 5, 7, and 8, and electro-magnet, m, for reversing, releasing, or stopping said signal, substantially as specified.

Among several defenses set up in the answer, the two chiefly relied on were-First, that Thomas S. Hall, and not Pope, the patentee, was the first inventor of the improvement claimed, and, second, that the devices used by the defendants were not an infringement of the patent. The decree below was based on the first of these defenses alone, the circuit court finding that Hall was entitled in law to priority of invention; but we have not found it necessary to discuss the questions of fact and law embraced in this issue, as we have concluded to dispose of the case upon the ground that the defendants did not, by the devices used by them, infringe for patent of the complainants. THESE DEVICES ARE ILLUSTRATED BY A DRAWING, of which the following is a copy: This diagram represents the plan of electric railroad signals, placed and put in practical operation, by the defendants, on the line of the Eastern Railroad near Boston, prior to the bringing of this suit. In comparing it with the drawing annexed to the patent, it is to be r membered that the latter represents a series of double signals in succession on the line of a railroad track, divided into blocks, while Exhibit C represents but one pair of such signals in one such block. To make it correspond with the other, as a representation, it should be imagined as being repeated in several successive blocks, constituting portions of one circuit, closed at fixed points by circuit-closers for that purpose. Mr. Pope, the patentee, drew this diagram, and, as a witness on behalf of the complainants, explains it in comparison with the plan described in the patent, with a view to establish their identity. He says:

'I have made a diagram which exhibits the apparatus which I examined, or so much of it as is material to this case, which I annex, and is marked Exhibit C. A battery of perhaps one hundred cells is placed in the station building at Chelsea. One pole of this battery-I think the negative pole-is connected to the earth. A conductor is attached to the other or positive pole of the battery, consisting of an insulated wire, extending along parallel with the track upon poles. This wire which I examined, extended to wards Boston, the end remote from Chelsea being disconnected, or, as it is termed, open. A second conductor, consisting of another similar wire insulated and attached to the same poles, was arranged parallel to the first one. The second wire was open at Chelsea, and connected with the earth at its remote end. The first-mentioned wire I have shown in the diagram, and marked 'positive conductor;' the second wire is marked 'negative conductor.' At a short distance from the station a semaphoric signal is placed, consisting of a red disk balanced upon a lever. This was placed in the cupola of a small building at the side of the track. An electro-magnet was arranged with its armature attached to said lever, so that when brought into action the red disk on the other end of the lever would be moved into a position to render it visible through an opening in the cupola. A latch or detent was placed in a position to fasten the lever after the action of the magnet had ceased, and thus continue the exhibition of the signal. A circuit-closer was placed upon the track at a point near the signal, which consisted of a lever so placed as to be depressed by the wheels of a passing train, which movement caused the circuit to be closed by pressing two springs together. When the circuit was thus closed by a passing train a connection was formed between the positive and negative conductors, and the electric current, in passing from one to the other, passed through and operated the magnet by which the signal was displayed. At a point, perhaps a mile distant, another signal was arranged in precisely the same manner in connection with a second circuit-closer, and the same positive and negative conductors. An additional circuit-closer, placed upon the track in the vicinity of this last-named signal, was arranged to form a connection from the positive to the negative conductor by the way of a third wire running upon the poles back to the signal first mentioned, where it passed through and operated a second magnet, which lifted the latch or detent, and allowed the disk to return to a position concealing it from view. I examined two of these signals, and saw many others along the line of the road.

'I find in this arrangement thus described the combination claimed in the first claim of said patent, consisting of a battery in combination with positive and negative conductors, two or more electro-magnets for operating visual signals, and two or more circuit-closers placed at intervals along the line of the railroad. Also the combination claimed in the second claim of the patent, consisting of a battery in combination with positive and negative conductors, two or more electro-magnets for reversing visual signals, and two or more circuit-closers placed at intervals along the line of the railway. I also find the combination claimed in the third claim, of a battery, positiv and negative conductors, a circuit-closer and electro-magnet for actuating a signal, with a second circuit-closer, wires, and a magnet for reversing said signal.'

Mr. Moses G. Farmer, an expert witness on behalf of the complainants, makes the same comparison, with the result, according to his opinion, of establishing that the defendants' system is essentially the invention described in the patent. On the other hand, Prof. Henry Morton, an expert witness on behalf of the defendants, points out two particulars, in which the plan, as practiced by the defendants and shown in Exhibit C, differs from that of the Pope patent so materially that they cannot be considered substantially the same: The first of these is, that in the patent, insulated sections of the railroad track, used, when covered by a locomotive or cars, as a circuit closer, are made essential to the combinations claimed, while they are dispensed with in the Hall system, other and independent circuit closers being employed. The second is thus described by Prof. Morton in his testimony: 'I also find a difference between the plan described in the patent and that shown in Exhibit C in another regard. In the plan of the patent, the conductors, C and Z, are connected respectively with the positive and negative poles of the battery, or, as the patent itself states, 'are virtually prolongations of the positive and negative poles of the battery.' In the plan shown in Exhibit C, however, the conductor, C, or positive conductor only, is connected with the battery, the other conductor, Z, or, as it is called, negative conductor, having no connection with the battery. In consequence of this difference of arrangement in the system of the patent, the positive conductor, C, carries the positive current in one direction, away from the battery, and the other, or negative conductor, Z, brings the positive current in the opposite direction, or back to the battery, and thereby involves the production of circuits of different resistance for each station. In the system represented in Exhibit C, on the other hand, both the conductors, C and Z, serve to carry the positive current in the same direction, away from the battery, and should, therefore, properly be both called positive conductors. As a result of this arrangement, the current always passes through the same or equal circuits, no matter at which station the connection is made, simple changing from one to the other of these equal parallel wires at the station where the contact is effected. It is for this reason that in this system no equalization of resistance, in the sense involved in the description of the patent, is required.'

It is upon these two points that the question of infringement depends. In considering them it is important to bear in mind that the patent is for a combination merely, in which all the elements were known and open to public use. No one of them is claimed to be the invention of the patentee. He does not claim them himself as separate inventions. It is simply a new combination of old and well-known devices for the accomplishment of a new and useful result that is claimed to be the invention secured by the patent. And the well-settled principles of law, heretofore applied to the construction of patents for combinations merely, must apply and govern in the present case. The object of the patented combination was the accomplishment of a particular result, that is, to work electric signals on what was known as the 'block' system, by means of circuits, operated by a single battery instead of many. But this result or idea is not monopolized by the patent. The thing patented is the particular means devised by the inventor by which that result is attained, leaving it open to any other inventor to accomplish the same result by other means. To constitute identity of invention, and therefore infringement, not only must the result attained be the same, but in case the means used for its attainment is a combination of known elements, the elemen § combined in both cases must be the same and combined in the same way, so that each element shall perform the same function, provided, however, that the differences alleged are not merely colorable, according to the rule forbidding the use of known equivalents.

The first question we have to consider upon the issue as to infringement, is whether insulated sections of the rails, as circuit-closers, constitute an essential element in the combinations described in the patent. And that question we are constrained to answer in the affirmative. These insulated sections of track are shown and marked on the drawing which accompanies the specification, and in its descriptive part they are referred to as parts of the arrangement. It says: 'At intervals of, say, a mile, more or less, sections of the said track, a, a 1 remainder in a manner well understood, and therefore requiring no detailed description.' And again: 'Each of the insulated sections of track, a, a 1 which it is desired to erect a signal, and any required number of these may be employed to meet the requirements or any particular case.' And in describing the operation of the apparatus, if further says: 'Upon reaching the point, a, the wheels and axles of the train will form an electrical connection between the opposite insulated rails,' etc. 'Upon reaching the point, a2, the closing of the circuit by the train will in like manner cause the signal attached to M2 to be displayed, and the signal last displayed by M1 to be withdrawn.' It is true that the patentee also says, in the specification: 'I do not desire to confine myself to the use of any particular from of visual or audible signals, nor to the particular devices herein described for closing the electric circuit at points from which a signal is to be operated;' but that he does not thereby indicate any intention of dispensing with insulated sections of the track, as a necessary part of the mode of forming and closing the circuit, appears from what immediately follows: 'Instead of the circuit being closed automatically by the train itself, it may be closed by a signalman by means of a key, or switch, or otherwise.' This language evidently implies that the insulated sections of the track are constant factors in the plan, the only alternatives proposed having reference, not to a substitute for them, but merely to another mode of using them in closing the circuit. So in each of the three claims, the circuit closers, a, a 1 part of the combination claimed as the invention of the patentee. The use of insulated sections of the railroad track thus repeatedly appears in every part of the specifications as an unchangeable and characteristic feature of the invention, and there is nothing in the state of the art at that date, as disclosed in the evidence, to show that the patentee would have been justified in applying, or that, if he had applied, an application would have been sanctioned by a grant of a patent for a combination as large and undefined as that now claimed by implication and construction, so as to cover every form of a circuit-closer then known or thereafter invented. For that employed by the defendants as part of the Hall system, was not only not known and in use at the date of the patent, but was a device invented by Hall himself or one by Snow, for which the latter obtained a patent dated October 21, 1873. It dispenses altogether with the use of insulated sections of the track, and employs instead a separate instrument placed near the track, and worked by means of a lever connected with the track, so that the wheels of locomotives and cars passing on the track depress the outer end, the lever being raised again and held up after the train has passed by means of a spring, which holds it in place. Upon this point, the case seems to fall clearly within he rule declared in Prouty v. Ruggles, 16 Pet. 336; Silsby v. Foote, 14 How. 218; McCormick v. Talcott, 20 How. 402; Vance v. Campbell, 1 Black, 427; Eames v. Godfrey, 1 Wall. 78; Dunbar v. Myers, 94 U.S. 187; Fuller v. Yentzer, 94 U.S. 288; Imhaeuser v. Buerk, 101 U.S. 647; Gage v. Herring, 107 U.S. 640; S.C.. 2 SUP. CT. REP. 819; Seymour v. Osborne, 11 Wall. 516; Gould v. Rees, 15 Wall. 194; Gill v. Wells, 22 Wall. 1; McMurray v. Mallory, 111 U.S. 97; S.C.. 4 SUP. CT. REP. 375; Fay v. Cordesman, 109 U.S. 408; S.C.. 3 SUP. CT. REP. 236.

On the second branch of the issue as to infringement, we think the case is quite as clearly for the defendants. In the patent, the entire circuit operated by the single battery, and which is closed at intermediate points for the purpose of displaying and concealing the signals, is described as formed by means of two wires or other conductors, C and Z, attached to the positive and negative poles of the battery, extended to any required distance in a direction parallel, or nearly so, to the line of the railroad. These wires may be placed on poles, it is said, and should be suitably insulated from each other and from the earth, and they are declared to be virtually prolongations of the positive and negative poles of the battery. Throughout the two conductors are designated as metallic, and insulated from the earth, and they are embraced under that description in each of the claims. On the other hand, the defendant's plan does not include a metallic circuit, composed of two conductors as thus described, but uses a circuit composed in part of the earth itself. The material difference in the principle or mode of operation of the two plans, as distinguished in this particular, is indicated by Prof. Morton in the extract from his testimony already quoted. It will become more apparant on further explanation.

The object proposed by the plan of the patent is to operate with one battery instead of several, along the line of a railroad, an electric circuit of considerable length, divisible into a number of subsidiary circuits, for the display of signals at many stations, by means of circuit-closers operated automatically by passing trains in definite and predetermined succession. It is obvious that the battery must have sufficient power, being placed at one end of the entire circuit, to operate efficiently at the other extremity. The force necessary for that purpose would be much greater than would be needed for the subsidiary circuits, all of which, it will be observed, are different in length; and this difference of force in the battery might be so great, owing to the required length of the whole circuit, as, when expended upon a shorter intermediate circuit, to destroy its capacity for working the signals by overheating. It becomes, therefore, a matter of importance, in some way, to equalize the resistance of these varying circuits. The patent itself contemplates this necessity, and undertakes to make provision for it. It is said in the specification that 'the respective resistances of the several circuits should be so adjusted that they will be as nearly as possible equal to each other, as a much more perfect action of the apparatus will be secured thereby.' The specification does not point out any particular methods for that purpose, but it is stated in the evidence of experts that such means were well known at the time and in common use; such as by varying the dimensions of the wire on the magnets, or the introduction of resistance coils into the nearer circuits. These devices would be independent of the apparatus described in the patent, and would have to be adjusted to the peculiar situation of each line of signals in practical use.

In the Hall system, as used by the defendants, no such necessity exists. According to that plan, there is no necessity of equalizing the resistance of the several subcir uits, for they are all exactly equal by their construction, as the electric fluid in working the signal at any point, when a subcircuit has been formed by a circuit-closer, nevertheless traverses the whole extent of the large circuit, and returns by means of the connection formed by the earth to the battery. So that, in effect, the Hall plan forms its apparatus, counting the connection through the earth, as though it were a continuous wire, as it might be, by means of three lines of conductors, of which two are combined by connecting wires with the magnets which operate the signals, at points where the circuit is closed for that purpose, carrying the positive electricity throughout the whole distance to the extreme point of the entire circuit, and then returning it by the third line, which is the connection by means of the earth. And inasmuch as a wire might be used for this purpose, instead of the earth, it would then show three metallic conductors; and Mr. Farmer, the complainants' expert, is quite right in saying, as he does, that the equalization of the resistances in the several subcircuits, accomplished in the plan of Hall, 'is due to the arrangement of the wires wholly, and not at all to the fact that the earth is used as a portion of the conductor.'

This arrangement is altogether unlike that of the patent. It introduces into the plan of the defendants new elements, a new combination, and a new result. The two wire conductors are not the same, for, in the patent, one conducts positive electricity, the other returns the current and completes the circuit, while, in the other, both the metallic conductors carry the current forward, while the earth returns it, and in this mode the desideratum is obtained of securing equality of resistance by making all the circuits equal in size.

The device cannot be regarded as a substitute or an equivalent for anything contained in the complainants' patent. It is of itself an independent invention, and, as such, forms the sole subject of a patent granted to Hall and Snow, July 13, 1875. To explain more satisfactorily the mode of its operation, so as to show that it differs substantially from the arrangement of the complainants, the descriptive parts of the Hall and Snow patent, and the attached drawings, are here given: 'In the drawing, the letters, A, B, designate two wires, which extend along the line of a railroad track, or, in other words, form the line-wires of a telegraph line. The wire, A, connects by a wire, 10, with one-say the positive-pole of a galvanic battery, G, and the other pole of this battery connects by a wire, 11, with the ground. The battery, G, is supposed to be situated at one end of the line, and at the opposite end of said line the wire, B, is made to connect by a wire, 12, with the ground. Along the line are distributed a series of keys or circuit-closers, C, D, each of which is connected with the line-wires, A, B, the connection of the circuit-closer, C, being effected by wires, 13, and 14, and that of the circuit-closer, D, by wires, 15 and 16. If the circuit is closed through the circuit-closer, C, the current passes from the battery through wire, 10, line-wire, A, wire 13, circuit-closer, C, wire 14, line-wire, B, and wire, 12, to the ground, and through the ground and wire, 11, back to the battery. If the circuit is closed through the circuit-closer, D, the current from the battery passes through wires, 10, A, 15, circuit-closer, D, wires, 16, B, and 12, to the ground, and through the ground and wire, 11, back to the battery. From these two examples it will be seen that whenever the circuit is closed along the line, the electric current has to traverse the whole circuit, and consequently the resistance is the same in all cases.'

It thus clearly appears that the difference in this particular, between the invention claimed by the complainants and the alleged infringement, is a difference in the arrangement of the parts and in the principle of the combination, with different elements performing different functions; and that the difference is something more than the mere substitution of a connection by means of the earth for one of the conducting wires. The case is, therefore, clearly distinguishable from that of Electric Tel. Co. v. Brett, 10 C. B. 838, cited and relied on by counsel for the appellants as in point, where the substitution of the earth for a wire as a conductor, being the sole difference, was held, under the English patent laws, not to be sufficient to destroy that identity between the two competing devices, which constituted in that case the infringement alleged, although the patent itself called only for metallic conductors. Were that the only difference between the two plans under examination in the present case, there might still be question, in view of our own patent laws, whether the patentee had not made a wholly metallic circuit a necessary part of his combination, to be determined by considerations which we have not thought it necessary to bring into view as bearing upon that point. For, as we have seen, the difference on which we ground our conclusion that the defendants are shown not to have infringed the complainant's patent, in this particular, is not merely that they have used the earth for the return of the current that completes the circuit, instead of a metallic conductor, but that they have arranged their conductors, in reference to the battery, the magnets, the rails, and the earth, upon such a system, and with such relations and connections, that, in operating their signals by a single battery, the circuits are equalized as to resistance; while in that of the plaintiffs the circuits are of unequal size and resistance, requiring for successful practical use the equalization of the resistances thus created by means of independent and additional devices. One plan proceeds upon the idea of unequal circuits, to be afterwards equalized; the other adopts and embodies the idea of avoiding the necessity of subsequent rectification by an original adjustment of equal resistances. The difference is inherent in the two combinations and is substantial.

On the ground that, in the two points mentioned, the defendants' system of signaling is shown not to be an infringement of that described in the patent of the appellants, the decree of the circuit court dismissing the bill is affirmed.


text: Talk:Electric Railroad Signal Company v. Hall Railway Signal Company/Opinion of the Court


text:
Thomson v. Wooster

The appellee in this case, who was complainant below, filed his bill against the appellants, complaining that they infringed certain letters patent for an improved folding-guide for sewing-machines, granted to one Alexander Douglass, of which the complainant was the assignee. The patent was dated October 5, 1858, was extended for seven years in 1872, and was reissued in December, 1872. The suit was brought on the reissued patent, a copy of which was annexed to the bill, which contained allegations that the invention patented had gone into extensive use, not only on the part of the complainant, but by his licensees; and that many suits had been brought and sustained against infringers. The bill further alleged that the defendants, from the time when the patent was reissued down to the commencement of the suit, wrongfully and without license, made, sold, and used, or caused to be made, sole, and used, on or more folding-guides, each and all containing the said improvement secured to the complainant by the said reissued letters be made, sold, and used, one or more folding-guides, great gain and profits from such use, but to what amount the complainant was ignorant, and prayed a disclosure thereof, and an account of profits, and damages, and a perpetual injunction. The bill of complaint was accompanied with affidavits verifying the principal facts and certain decrees or judgments obtained on the patent against other parties, and Douglass' original application for the patent, made in April, 1856, a copy of which was annexed to the affidavits. These affidavits and documents were exhibited for the purpose of obtaining a preliminary injunction, which was granted on notice.

The defendants appeared to the suit by their solicitor, May 3, 1879, but neglected to file any answer, or to make any defense to the bill, and a rule that the bill be taken pro confesso was entered in regular course June 10, 1879. Thereupon, on the second of August, 1879, after due notice and hearing, the court made a decree to the following effect, viz.: (1) That the letters patent sued on were good and valid in law; (2) that Douglass was the first and original inventor of the invention described and claimed therein; (3) that the defendants had infringed the same by making, using, and vending to others to be used, without right or license, certain folding-guides substantially as described in said letters patent; (4) that the complainant recover of the defendants the profits which they had derived by reason of such infringement by any manufacture, use, or sale, and any and all damages which the complainant had sustained thereby; and it was referred to a master to take and state an account of said profits, and to assess said damages, with directions to the defendants to produce their books and papers and submit to an oral examination if required. It was also decreed that a perpetual injunction issue to restrain the defendants from making, using, or vending any folding-guides made as theretofore used by them, containing any of the inventions desc ibed and claimed in the patent, and from infringing the patent in any way. Under this decree the parties went before the master, and the examination was commenced in October, 1879, in the presence of counsel for both parties, and was continued from time to time until November 3, 1880, when arguments were heard upon the matter, and the case was submitted. On November 12th the report was prepared and submitted to the inspection of counsel. On the 18th motion was made by the defendants' counsel, before the master, to open the proofs and for leave to introduce newly-discovered evidence. This motion was supported by affidavits, but was overruled by the master, and his report was filed December 10, 1880, in which it was found and stated that the defendants had used at various times, from January 18, 1877, to the commencement of the suit, 27 folding-guides infringing the complainant's patent, and had folded 1,217,870 yards of goods by their use, and that during that period there was no means known or used, or open to the public to use, for folding such goods in the same or substantially the same manner, other than folding them by hand, and that the saving in cost to the defendants by using the folding-guides was three cents on each piece of six yards, making the amount of profit which the complainant was entitled to recover, $6,089.35; and that during the same period the complainant depended upon license fees for his compensation for the use of the patented device, and that the amount of such fees constituted his loss or damage for the unauthorized use of his invention; and that, according to the established fees, the defendants would have been liable to pay for the use of the folding-guides used by them during the years 1877, 1878, and 1879, (the period covered by the infringement,) the sum of $1,350, which was the amount of the complainant'sdamages. The evidence taken by the master was filed with his report.

By a supplemental report, filed at the same time, the master stated the fact of the application made to him to open the proofs on the ground of surprise and newly-discovered evidence, (as before stated,) and that after hearing said application upon the affidavits presented, (which were appended to the report,) he was unable to discover any just ground therefor. The defendants did not object to this supplemental report, but on the tenth of January, 1881, they filed exceptions to the principal report, substantially as follows: (1) That, instead of the double guide or folder claimed in the complainant's patent being the only means for folding cloth or strips on each edge during the period of the infringement, (other than that of folding by hand,) the master should have found that such strips could have been folded by means of a single guide or folder, and that the use of such guides was known and open to the public long before 1877, and that such guides were not embraced in the complainant's patent; (2) that the amount of profits found by the master was erroneous, because it appeared that folded strips, such as those used by the defendants, were an article of merchandise, cut and folded by different parties at a charge of 25 cents for 144 yards; (3) that the profits should not have been found greater than the saving made by the use of the double guide as compared with the use of a single guide, or greater than the amount for which the strips could have been cut and folded by persons doing such business; (4) that the damages found were erroneous.

Other exceptions were subsequently filed, but were overruled for being filed out of time.

Before the argument of the exceptions the defendants gave notice of a motion to the court to refer the cause back to the master to take further testimony in reference to the question of profits and damages chargeable against them under the order of reference. In support of this motion further affidavits were presented. The exceptions to the report and the application to refer the cause back to the master were argued t gether. The court denied the motion to refer the cause back, voerruled the exceptions to the report, and made a decree in favor of the complainant for the profits, but disallowed the damages. That decree is now brought here by appeal.

J. C. Clayton and A. Q. Keasbey, for appellants.

[Argument of Counsel from pages 108-109 intentionally omitted]

Frederic

H. Betts, for appellee.

BRADLEY, J.

title: Thomson v. Wooster


text: Talk:Thomson v. Wooster

title: Talk:Thomson v. Wooster