77 F. 432 | 8th Cir. | 1896
after stating the case as above, delivered the opinion of the court.
This appeal challenges a decree which dismissed a bill brought for the infringement of letters patent No. 300,828, issued to A. Wellington Adams, on June 24, 1884, for an improvement in electric motors for railway cars. The defenses that are now material were that there was no novelty in the alleged invention of Adams, a,nd that the claims Crf the patent were not infringed by the appellee.
The claim of the counsel for the appellant is that Adams was the pioneer in the art of mounting electric motors beneath cars so that they would practically and successfully propel them. They contend that: he was the first to perceive the necessity, and the first to conceive the idea, of mounting them upon the driven axles of the cars, so that they and their motion-transmitting gearing should always sustain the same positions relative to such axles, independent of the morions of the bodies of the cars, their truck frames, and their undriven axles. They insist that Adams first invented, and first disclosed in his patent, a combination of mechanical elements by. means of which this idea could be utilized, and that every other combina
Before reviewing the progress of this art, and marking its condition when Adams conceived and organized his device, it may not be unprofitable to note the general character and the essential elements of the combination described and claimed in his patent, and those of that which is alleged to infringe it. It is conceded that Adams did not invent any of the mechanical devices which he used to mount an eler-imc motor beneath a car. When he made his invention, electric motors, with their armatures and fields arranged in the form which he adopted, motor frames of various forms, cars, car-wheels, car-axles, axle-boxes, motion-transmitting gearing, — all the mechanisms which formed the elements of his combination, — were old. His patent was granted, and it must stand, if it stand at all, not upon the
The electric motors used by the appellee appear to have been manufactured under letters patent No. 324,892 and 406,600, issued to
We turn to the consideration of the state of the art when Adams made his invention and secured his patent. He filed his applica
“The boiler, engine, and machinery are all attached to the fíame, N, which frame liras suspends these parts, permitting of all necessary vertical motion of the same, thereby relieving them from all injurious shocks and concussions they would otherwise receive in being propelled over rough and uneven roads.”
“The horizontal frame, E, and springs, a, a, or any other device that shall operate as their equivalents, by suspending the boiler, engine, or machinery, and allow of vertical motion to the same, between the axle and parts which they support, without ungearing itself, or changing the distance between the axle and cylinders, as herein set forth.”
Suspend the free end of the motor frame of Hermanee, by its springs, below, instead of above, the body of the vehicle, and the motor frame of the appellee is, in form and principle, a reproduction of it.
On October 31, 1876, letters patent Ho. 183,970 were issued to Louis Ransom for an improvement in steam engines for propelling street cars. The engine frame which he described and claimed in this patent is intended to be placed beneath the body of a street car. It consists of two metallic bars, sleeved at one end upon the driven axle, and supported at the other upon a bail or cross-piece, the center of which rests upon a simple bar fixed in sockets between two cross-timbers of the car floor, or upon the end of a lever whose fulcrum is the undriven axle. If the lever is used, boxes are suitably placed upon the undriven axle, so that it may revolve without disturbing the lever, and the end of the lever opposite to the bail is firmly secured in its place. Ransom says, in his specification:
“With the lover, the entire weight of the engine rests on the car axles; with the bar, the cylinder end hangs on the car frame. By either arrangement, the front of the engine hangs on a single point, so that no torsion of the car, from derailment or other causes, can affect it injuriously. By thus suspending the engine, its cylinder end hangs loosely. It may swing or revolve around the axle, and be in perfect line at every point. The driving-axle sustains ¿11 the working strain, and is, therefore, practically the only foundation of the engine, which is a material feature of my invention. The valves may be set with the greatest accuracy, and with 'certainty that no motion of the ear or engine can disturb their action.”
His first claim was:
“(1) An engine frame connected with the crank-axle, substantially as explained, so that the whole engine may be revolved about said axle, and have no other foundation save the axle, for the purposes set forth.”
It is not perceived why the principle of mounting a motor to propel a street car in an independent frame upon the driven axle, so that all its parts shall be dominated by, and shall move in unison with, that axle, unaffected by the motions of the other parts of the vehicle, is not fully disclosed by this patent, and fairly embodied in the mechanism it portrays.
On March 20,1877, letters patent Ho. 188,672 were issued to Louis T. Pyott for an improvement in running gear for cars. The drawings and specification of this patent show a steam motor suspended beneath a car upon the driven axle at one end and upon links attached to the car-bed at the other. Pyott says, in his specification:
“Another object of the invention is to provide" improved means for securing the engine or motor beneath the car-bed independently of the front and rear wheels and a radially-moving frame.”
On July 29, 1879, letters patent No. 218,092 were issued to John B. Waring for an improvement in engine-frames for street cars, which disclose a steam motor beneath a car body, supported upon an independent frame, which is sleeved upon both axles of the car, each of which is connected with and driven by one of the pistons of the engine.
On July 13,1880, letters patent; No. 229,991 were issued to Stephen T>. Field for improvements in propelling railway cars by electromagnetism. They describe an electric motor mounted directly upon the car to be driven, with its main shaft connected with one of the axles of the car by a belt.
On September 11. 1880, letters patent No. 232,253, for improvements in electro-magnetic locomotives, were issued to Stephen D. Field, in which the balanced form of motor which Adams adopted, with its armature between two stationary magnets, is shown mounted directly upon the frame of the locomotive with its main shaft connected with the driving wheels by spur-gearing. The patentee says, in his specification, that the electric motor may be of any well-known or suitable construction, and says he has “shown in the drawings one form which is well adapted to the purpose, and which consists of two large and powerful stationary electro magnets, D, I), having an armature, E. wound with coils of insulated wire, and arranged to rotate upon the shaft, e, within the field of force of the stationary magnets. D, D.”
British patent No. 583, issued to Carl Heinrich Siemens, for “improvements in the means and apparatus for conveying persons or objects from one locality to another by electro-motive power,” describes the same form of motor.
In the year 1880, Thomas A. Edison constructed an electro-magnetic locomotive and operated it at Menlo Park, N. J., for some months. TMs locomotive had a large frame of angle iron, which was supported upon the axles of the driven and undriven wheels. Tiie electric motor was mounted directly upon this frame. Belts and pulleys, friction wheels, and spur-gearing were used at different times to transmit the motion from ihe armature of the motor to the driven wheels of the locomotive. Edison was able to drive the locomotive and carry passengers upon it, but it does not appear that he ever placed the motor beneath the body of a car, or that the combination he used ever went into use.
British patent No. 3,891, issued to Peter Jensen in 1880, contains a general description of the means by which this motor was mounted, and of the devices used at different times to transmit the motion from the armature to the driven wheels.
On February 15, 1882, Joseph R. Finney filed in the patent office an application for an improvement for propelling cars by electricity. On September 18,1883, letters patent No. 285,353 were issued to him upon this application. The drawings and specification of this patent describe an electric motor and the necessary motion-transmit
The portion of the specification which explains this figure is:
“The motor-supporting frame is composed of the cross-bar, k, which extends between and rests upon the axle-bars, w, and two or more angle-bars, ki, one end of which rests upon the bar, k, and the other upon the axle, i, being provided with bearings, k2.”
. This specification contains the following statement relative to the purpose of this motor frame, if the letters of reference in it are omitted:
“To provide for a constant and reliable power-connection between the motor shaft and the axle or wheels of the car, I have placed the electro-motor on a framework or support which rests upon the axle bars, instead of placing it-on the body of the car, where it would be affected by the action of the springs of the car. In the latter case, the springing of the body of the car would.tend to raise the teeth of the pinion, either entirely out of those of the gear-wheel, or to such an extent as to interfere seriously with the operation of the propelling devices.”
In the summer of 1882, Finney mounted an electric motor under a street car in the way he described in this patent, except that he abandoned the cross-bar, k, and extended the supporting bars, k1, to, and supported them upon, the undriven axle. He successfully operated this motor, and carried passengers upon the car it propelled, upon a street in the city of Pittsburg, Pa., for several months. When he filed his application, his eighth claim was:
“(8) The combination of the ear axle, with an electric motor mounted on a frame or support independent of the body of the car, so as to be unaffected by the spring action of the same and power connections between said axle and motor, substantially as described.”
The commissioner of patents rejected this claim as anticipated by the patents to Field, to which reference has been made. In answer
“As to claim 8 filed, it is believed that the references previously cited fairly anticipate this claim. The patent of J. B. Waring, No. 218,092, July 29, 1879 (railway cars, trucks), is cited as showing that it is old to support the motor of a car in the manner selected by applicant. To exchange 'a steam motor for an electric motor is not held to lie an invention.”
This ruling of the commissioner certainly raises a strong presumption ihat, 10 months later, when he allowed them, the commissioner did not place the broad construction upon the claims of the Adams patent for which the appellant now contends. Xor are we persuaded that there was any error in his holding that it is not an invention to simply exchange a steam motor for an electric motor. In our opinion, the applicability of the mechanism which would hold a steam motor in constant relative position to the driven axle of a self-propelling car, independent of the motions of all its other parts, to the new use of securing an electric motor in a like position, would occur to a person of ordinary mechanical skill! and undoubtedly did occur to all who undertook to solve this problem. In the late case of Potts v. Creager, 155 U. S. 597, 608, 15 Sup. Ct. 194, 199, Mr. Justice Erown delivering the opinion of the supreme court said:
“As a result of the authorities upon ihis subject, it may lie said that, if the new use ho so nearly analogous to the former one that the applicability of the device 10 its new use would occur to a person of ordinary mechanical skill, it is only a case of double use; but if Hie relations between them be remote, and especially if the use of the old device produce a new result, it may at least involve an exercise of the inventive faculty.”
There are -3,980 pages in the printed record in this case, and it contains printed publications, patents, and testimony to which no reference has been made in this opinion; but it contains nothing to weaken the force or significance of the facts to which we have adverted. The testimony of the experts for the appellant is instructive and interesting, and clearly presents their views. The arguments and briefs of its counsel were learned, able, exhaustive, and persuasive. They seem to us to have left nothing unsaid that: could make for the success of the appellant, but these facts stand proved by this record: The problem of so mounting an electric motor beneath a car that it would successfully propel the same was not new when Adams made the invention which lie described and claimed in his patent. In its essentials, it was the same old problem which must have presented itself to every one who had attempted to make or operate a self-propelling vehicle. Adams did not discover the principle which proved to be the key to its solution, namely, the mounting of the motor upon an independent frame so secured to the driven axle that all its parts should retain constant positions relative thereto, regardless of the motions of the other parts of the car or carriage. That principle had been clearly announced by Hermanee, Ransom, and Finney. Adams was not the first to devise a combination of mechanical elements by which this principle might become operative. Hermanee, in 1871, Ransom, in 1876, Pyott, in 1877, Edison, in 1880, Finney, in 1882, Adams, in 1883, and Sprague, in 1886, organized
Turning to the specification and claims of the patent to Adams, and examining them in view o'f this limitation, it is evident that the two principal elements in each of the combinations there claimed were an armature mounted upon the driven axle so as to revolve around it, and a field-supporting frame rigidly secured to, or formed in one with, the axle-boxes of the driven wheels. The contention of the experts and counsel for the appellant that the second claim of this patent is broad enough to cover an armature carried in any way upon the driven axle has not escaped consideration. After stating the object of his invention in his specification, Adams opens his description of the means by which he attains that object in these words:
“To this end I mount the armature upon the axle of the driven wheel or wheels.”
“The wheels, E, in this case are the driven wheels, and their axle, I), carries the armature, G, of the electric motor. This armature is fast upon a sleeve, li, mounted to revolve on the axle, and formed between its ends with an oil-chamber, a, supplied with a suitable lubricant.”
The first claim of the patent is for a combination with other elements of an “electric motor whose armature is mounted to revolve on said axle, and whose field is attached to and carried by said frame.” The second claim is for the combination of motion-transmitting gearing, which is not mentioned in the first claim, with all the elements of that claim. In again enumerating the elements of the combination first claimed, the patentee describes the motor as “an electric motor whose armature and field are carried by said axle and frame, respectively.” The third claim is for a combination with other elements of “the supporting frame secured to, or formed in one with, said boxes or bearings, in combination with the armature mounted to revolve on said axle.” No other way of mounting or carrying the armature is described in the specification, or shown in the drawings. If the wprd “respectively,” in the second claim, has any significance, it means that the armature is to he carried by the axle, and the field by the frame. The electric motor described in the second claim is clearly the same motor referred to in the preceding and subsequent claims; that is to say, a motor whose armature is mounted to revolví; around the driven axle. The claims of a patent, limit the exclusive privileges of the patentee, and his specification may be referred to to explain and restrict, but: never to expand, them. General language in a claim which points to an element or device more fully described in the specification is limited to such an element or device as is there described. Mitchell v. Tilghman. 19 Wall. 287; Stirrat v. Manufacturing Co., 27 U. S. App. 13, 47, 10 C. C. A. 216, 220, and 61 Fed. 980, 984. In view of this principle, the true construction of the second claim of this patent makes an armature' mounted to revolve around the driven axle an essential element of the combination there claimed.
When an electric motor is started or stopped, the stationary magnets constituting the field of the motor have a tendency to turn, and, if held too rigidly, will cause jars and thrusts that are deleterious to the machinery and annoying to passengers in the car. If the field is suspended upon me driven axle at one end, and upon a spring at the other, as in the construction used by the appellee, this turning movement or torque will spend its force upon the spring, and the injurious effects of the jars and thrusts will be avoided. It has been strenuously argued that Adams constructed and mounted his field-supporting frame in yielding restraint:, and thus guarded against the evil effect of this torque. The only words in his patent which could indicate that he ever thought of, or intended to provide against, this turning movement, are in this sentence in his specification:
“With a view to preventing injurious thrusts of or upon the field-supporting frame, I prefer to interpose between its ends and the body, A, springs, 1.”
“I support the field in a frame, which is rigidly secured to, or formed in one with, the axle-boxes or journal-boxes of said wheels. * * * In this way the field and all other parts carried by the frame always occupy the same relative position to the wheels and armature, and are not affected or disturbed by the spring connection between the body of the car or truck and the wheels.” .
In each of the claims of his patent he describes this frame as a “frame secured to, or formed in one with, said boxes or bearings.” The ordinary boxes or bearings of the wheels of a street car can hardly be said to be held in yielding restraint, and, if they are not, the field-supporting frame of Adams was not. It will not do to say that the frame rigidly secured to the axle-boxes of the driven axle was given an oscillating movement by Adams to guard against this torque by means of the spring mounting of the body of the car, because he declares in his specification that, when so secured, it is not affected or disturbed by the spring connection between the body of the car or truck and the wheels. From these considerations it seems clear to us that an armature of an electric motor mounted upon the axle of the driven wheels of the car so that it can revolve around the axle, and a field-supporting frame rigidly secured to, or' formed in one with,- the axle-boxes or bearings of the driven wheels, are indispensable elements of each of the combinations described in the three claims of the patent to Adams.
The motor frame of the appellee, suspended at one end upon separate axle-boxes of its own, and at the other upon a spiral spring, carrying its armature upon a shaft sleeved in its sides, cannot be said to be the equivalent of a field-supporting frame rigidly secured to the axle-boxes of the driven wheels, and an armature revolving upon the driven axle, under the restricted application of the doctrine of equivalents imposed upon the claims of the patent to Adams by the state of the art. In the one the supporting frame is held suspended in yielding restraint, so that the jars and shocks produced by the torque of the field of the motor and by the movements of the car shall be received upon, and minimized by, the spiral spring at the free end of the frame. In the other, the supporting frame is rigidly secured to the axle-boxes of the . driven wheels. In the one, the supporting-frame carries and holds the armature in constant relative position to the field. In the other, the armature is not carried by the field-supporting frame, but upon the driven axle, and the relative position of the field to the armature is conditioned by that of the bearings of the driven wheels to their axle. The combination of the appellee, which contained elements so radically different from that of Adams, cannot be held to be a mere evasion of the latter. It is not the same combination. It mounts and supports the motor by different means, and possibly accomplishes a better result. If it does not, the appellant is f ree to use the combination of Adams. But the claims óf his patent cannot be broadened to cover the construction of the appel