Brickill v. Mayor of New York
98 F. 113
U.S. Circuit Court for the Dis...
1899
Check Treatment
COXE, District Judge

(after stating the facts as above). The question to be decided may be briefly stated as follows: Is the water tank, D, shown in the drawing and described in the specifica-*116üon, an essential feature of tRe claim? If so, tlie apparatus used in connection with engines Eos. 8, 11, 24, 30 and 32 did not infringe, for no tank was employed. It is necessary to consider at the outset Row far the court is permitted to go in construing the claim. To what extent is the question an open one? If it has been decided by this court in the present action it is, of course, res judi- - cata; if decided by another court of co-ordinate jurisdiction, comity, as well as a decent and orderly ádministration of equity jurisprudence, requires that the decision should be followed, unless it can be shown that it was made upon an entirely different state of facts. It must be admitted, on all hands, that the , question was not decided in the original case. The record is not before the court, but it is manifest that the subject of infringement received but scant attention from court and counsel. If pot practically admitted, infringement was proved sufficiently to warrant an interlocutory decree. There was, therefore, no occasion for a careful construction of the claim. The defendants sought to escape by proving either that the patent was anticipated, or void for want of patentability, and the controversy was conducted along these lines. That the relation of tank, D, to the combination was not directly determined is obvious from an inspection of the opinion, and, it is thought that the proposition that it was determined indirectly or inferentially cannot be maintained in view of the fact that the language of which it is sought to predicate such a conclusion was used with no thought of the present controversy. If the opinion had interpreted the claim to include the tank as an essential element this court would be controlled thereby. The opinion does not do this, and if the record be appealed to nothing is there found to justify the inference that the judge intended so to construe the claim. Indeed, as often happens in patent litigation, the position of the parties seems to be completely reversed since the trial. Then the defendants were contending for a broad construction in order to prove lack of novelty; now they are asking for a narrow construction in order to escape infringement. The complainants, on the other hand, were seeking to limit their claim to the structure described in order to escape anticipation and now they seek to broaden it so as to include devices not originally before the court. This legal necromancy may not be entirely consistent, but it so often occurs in the course of patent litigation that the court, if it cannot decorate the practice with the seal of commendation, must, at least, recognize it as familiar and venerable. In any view it is entirely plain that the decision does not deal with the question now under consideration. The Hartford Case makes a distinct contribution toward the proper interpretation of the claim. It is authority for the proposition that there are only two members of the combination — the- heater and the engine — and that the tank is not a member. The vital question whether the use of the apparatus, minus the tank, would constitute infringement is, however, left undecided. The Baltimore Case, when the same was considered on demurrer, decides nothing more than the Hartford Case, namely, “that there are but two elements in the combination — one a steam fire-engine and the other a *117healing-apparatus.” When, however, the cause came on for trial it was necessary to construe the claim and the exact question now in dispute was decided. It would be difficult to conceive of language more explicit and distinct than that used by the court. There can be no doubt that the subject was presented in several different aspects and as often decided in favor of tbe broad construction. Thus tbe court said, tbe patent “is broadly for a circulating heater connected with detachable connections with a boiler of a steam engine.” “Tbe tank, D, * * ⅞ forms no part of the invention set out in the claim.” And again, “Brickill does not claim as pari: of his invention the . ..tank which was to prevent the overheating of the water receptacle in the heater during the absence of the engine. That was a mere supplementary device for a particular purpose for which any other device accomplishing the same result * * might be substituted without touching the invention which he claimed as new.”

It is argued for the defendants that the question now presented was not involved in the Baltimore Case, and that the charge of flm court is, therefore, not authority here. This proposition is based upon the fact that one of the rulings that the tank is no part of the invention was made in response to the defendants’ request to charge. On the other band, it is asserted in the complainants’ brief that one of the devices in the Baltimore Case was the exact counterpart of the apparatus which the master here ñnds to be an infringement and which dispenses with the tank and substitutes therefor a connection with the city water. It is not possible from the meager record of the Baltimore Case which is before the court to reach a perfectly accurate conclusion regarding all the issues involved and the manner of their presentation to the court and jury. It is, however, not necessary that this should be doue. It is beyond all doubt that in a bona Me suit upon the patent the court in the body of its charge found it necessary to construe the claim and did construe it to cover a combination of which the tank is no part. This is enough, and the rule thus laid down is a guide which neither tbe master nor this court should ignore. Were the, question an open one much might be said on both sides, but such a discussion at the present time would only tend still further to complicate tbe situation. The entire case, including the original decree, can be reviewed on appeal unhampered by considerations which con strain this court, and, in any aspect, it would seem unwise to send the case back to tbe master with tbe consequent delay and expense when tbe rights of all parties, so far as this question is concerned, can lie fully protected upon the record in its present form. The exceptions in controversy are overruled.