Standard Oil Co. v. Southern Pac. Co.

42 F. 295 | N.D. Cal. | 1890

Sawyer, J.,

(orally.) I have looked over the question in this case. The main proposition raised on demurrer is, whether this patent presents a case of a mere aggregation of devices instead of a combination, which would produce some common result. It lies very nearly on the , border line under the various rulings of the supreme court. I am not prepared to say that there is not something more than an aggregation, at all 'events Upon demurrer. It is true that the carrying of oil one way does not co-operate directly with the performance of carrying merchandise the other way. But do not the two co-operate directly in the performance of carrying merchandise both ways-? Do not the two co-operate to produce a common result, that is a reduction of the cost of the transportation of oils by successive acts performed in different parts of the service? The result attained is a carriage at a much less cost. It saves the dead loss of hauling empty cars one way. In many combinations, each single operation by itself is not affected by the following or subsequent operations, but they all constitute one continuous operation and end in a common result. Is not that the nature of this case? One way oils are carried by these compartment cars, arranged expressly for the purpose of carrying oil, and then on the return voyage they carry other merchandise, in the intermediate compartments combined with the others, instead of hauling' back empty cars. Each carriage, considered by itself, is a separate performance, but what is the result? The result is a much cheaper transportation of the oil. Is not that a common result? And does not each carriage, though performed by itself, co-operate to produce that common result? As I said before, it lies very nearly on the border line of these cases which the supreme court have held to be a mere aggregation. In illustrating that very point the supreme court in one case said, speaking of the effect of a watch-stem operating, also, as a key to wind the watch, which performed the office of holding and carrying the watch, and also, the office of winding the watch, in distinguishing this from aggregation, the court says:

“The office of the stem is to hold the watch or hang the chain to the watch; the office of the key is to wind it. When the stem is made the key, the joint duty of holding the chain and winding the watch is performed by the same instrument, a double effect is produced, or a double duty performed by the combined result. In these and numerous like cases the parts so co-operate in producing the Anal effect, sometimes simultaneously, sometimes successively. The result comes from the combined effect of the parts, not simply from the separate action of each, and is, therefore, patentable.”

Now, here, with these cars — they carry oil one way, and carry merchandise the other way. They are successive operations, but they operate to cheapen the transportation, and in this sense does it not come within the illustration of the watch-key? It saves the operation of hauling the empty car one way at an expense without any contributory compensation. I am not prepared to say at present on §emurrer that the arrangement does not contribute to the common result of cheapening transportation and am not prepared to say that the arrangement is not patentable. I shall therefore overrule the demurrer, and reserve the question for further consideration if counsel desire, when the testimony all comes in, and I have the full case before me.

Mr. Boone. Does your honor take into consideration the fact that the result was not new?

The Court. Yes. I do not know but that it is new. If the result is the cheapening of transportation of oils, that result must be new. Iiow can it cheapen if-it does not do something which had not been done before? But, as I said before, I shall reservo it for further consideration, If the same oil could never have been carried before at so low a price the result was, necessarily new. I do not know but what the result is new with reference to the transportation of oil.

Mr. Borne. I think the patent itself says no, that it is not new.

' The Court. If it cheapens it must do something not done before. A contrary view would involve a contradiction of terms. I shall at all events, overrule the demurrer. Should counsel desire to further present the question, I will consider it on the further hearing. As I said before, it lies very near the line between an aggregation, and invention as illustrated by the decisions of the supreme court, and it is not very easy to determine on which side it falls..