61 F. 655 (E.D.N.Y. 1894), Electric Ry. Co. of the United States v. Jamaica & B.R. Co.

Citation:61 F. 655
Case Date:May 03, 1894
Court:United States Courts of Appeals, Court of Appeals for the Second Circuit

Page 655

61 F. 655 (E.D.N.Y. 1894)




United States Circuit Court, E.D. New York.

May 3, 1894

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Edmund Wetmore and E. M. Marble, for complainant.

Frederic H. Betts, H. W. Seely, and Eaton & Lewis, for defendant.

TOWNSEND, District Judge.

This is a final hearing on a bill in equity alleging infringement of letters patent No. 407,188, granted July 16, 1889, to Stephen D. Field, for improvements in electric railways, and assigned to the complainant. The defenses are: Denial of infringement, anticipation by prior patents printed publications and prior inventions, insufficient description and specification, want of patentable novelty, and abandonment.

The evidence of infringement applies to the first claim only of said patent, which is as follows:

'The combination, substantially as hereinbefore set forth, of a stationary dynamo-electric generator, driven by a suitable motor; a circuit of conductors, composed in part of an insulated or detached section of the line of rails of a railroad track; a wheeled vehicle, movable upon or along said insulated section of track; an electro-magnetic motor mounted upon said vehicle for propelling the same, and included in said circuit of conductors; and a circuit-controlling device placed upon said vehicle.'

It does not seem desirable at this point to review the history of the development of the use of electricity as a motive power. Such consideration of the state of the art as bears directly upon the questions decided will be presented in connection with the discussion of the elements of said claim and the defenses thereto. Except as to one of the details of construction covered by said claim, infringement is proved. The complainant admits that every element of the combination existed in the art at the date of the alleged invention, and that all had been employed in a variety of combinations. It further admits that, prior to Field's application for a patent, a printed publication, disclosing substantially the same combination, was filed in the library of the patent office; and that, prior to his practical application of his alleged invention, others had successfully operated electric railways embodying to a greater or less degree the elements of said combination. It is further admitted, or satisfactorily appears from the evidence, that, prior to Field's application, other patents had been granted, or other applications filed, which either fully described said alleged invention, or described every element except the specific circuit controller, or the particular kind of electric generator alleged to have been specifically claimed in said patent; and that practical circuit controllers were well known in the art long prior to said alleged invention. As to the generator, it is admitted that none of the improvements which resulted in the production of a machine were due in any way to the patentee, and that all he did in this respect was to select from among such well-known generators that species of

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generator which was capable of doing the work he desired to do. These statements are made in this connection, not for the purpose of showing that there was no invention on the part of the patentee, but because it appears therefrom, in connection with details hereafter to be considered, that Field was in no sense a primary inventor of an electric railway. The most that can be said of his patent is that, at a time when the art pertaining to the question of the practical application of electricity to the propulsion of vehicles had reached a stage of development which suggested greater adaptability to such uses, he filed in the archives of the patent office a caveat which, it is claimed, first described a successful union of the well-known essential elements in the art of electric railways. If, in said caveat, he did thus first state a complete conception of his combination, he is clearly entitled to a patent therefor, assuming such conception to embody invention, and not to be a mere carrying forward of other conceptions resulting in an improvement in degree.

The first claim of complainant's patent contains the following elements:

'(1) A stationary dynamo-electric generator driven by a suitable motor; (2) a circuit of conductors, composed in part of an insulated or detached section of the line of rails of the railroad track; (3) a wheeled vehicle, moving upon or along said insulated section of track; (4) an electro-magnetic motor, mounted upon said vehicle, for propelling the same, and included in said circuit of conductors; and (5) a circuit-controlling device placed upon said vehicle.'

The parties are in conflict as to the meaning and scope of the term 'dynamo-electric generator.' It does not seem material here to review the mass of expert testimony upon this question. The experts for defendant claim that in May, 1879, the date when Field filed his caveat, the term had no special significance. It was applied by some writers to all mechanical generators of electricity, applied by some writers to all mechanical generators of electricity, including self-excited machines or separately-excited machines, machines having permanent magnets or those having artificial magnets. Other writers confined the use of the term to those machines having a core of soft iron or steel, wound with wire, and which were artificially magnetized by having a current of electricity sent through the wire, as distinguished from the original and older machines, employing a permanent or ordinary magnet. It must be admitted that the nomenclature selected by Field is unfortunate, and possibly misleading, for even the expert for complainant, in attempting to explain the term 'dynamo-electric,' at first gave it such a meaning as would exclude the machine used by the defendant, and relieve it from the charge of infringement. Assuming, however, that the patentee intended to designate some machine composed of electro-magnets as distinguished from permanent magnets, it appears that no details of construction are indicated, and no principle of operation suggested, whereby a person skilled in the art would be guided in the selection of such a dynamo-electric machine as would be efficient to accomplish the desired result. The language used in the claim is 'a stationary dynamo-electric

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generator;' the specification says 'a dynamo-electric or other suitable stationary generator. ' It furthermore does not seem important that the patentee is claimed to have been the first to observe the capacity of dynamo-electric machines to automatically regulate themselves for changes in currents, because such self-regulating capacity is not peculiar to dynamo-electric generators, but may be possessed by any generator; because such capacity in dynamo-electric machines was known to electricians before the application for this patent was filed; because the specifications fail to indicate that the patentee had any idea of such capacity; because his alleged prior observations and experiments in this line were not applied to the running of a railway; because it appears that Thomas A. Edison was the first to apply a machine possessing such capacity to the running of an electric railway; and, finally, because complainant's expert admits that said earlier observations and experiments of the patentee in San Francisco did not mark any important advance in the art, or show any material difference between the arrangement of his machines and that of prior ones for similar purposes, and that the greater transmission of power was primarily due to his having larger machines. The facts stated in this connection will hereafter be referred to in connection with other matters, as bearing upon the question whether the patentee contributed anything to the art of electric railway propulsion, or by his statement so taught the world how such alleged conception could be utilized as to entitle him to claim the exclusive right to such conception. They seem to show that the only reason why a dynamo-electric generator was suggested was because it was well known that the permanent magnet could not be made to generate as much force as the artificial magnet. In other words, the use of this term by the patentee merely served to suggest that by a selection from a certain class of well-known machines a greater power would be obtained than had been obtained from the machines theretofore used.

Before proceeding to the consideration of the general claim of anticipation, it seems desirable to review the history in the patent office of said patent, especially as to its bearing upon the fifth element of the combination claimed,-- the circuit controller. On May 21, 1879, said Field filed in the patent office a caveat, the substantial portions of which are as follows:

'I propose to propel cars along tracks by means of electricity in substantially the following manner, referring to the accompanying drawings: I will station a dynamo-electric machine, A, at some convenient point along the track, and connect the positive and negative wires, b, c, of the machine with two rails, so that the rails will serve as conductors. All the wheels, d, e, on one side of the car, I will insulate from their axles. On board of the car I will place a secondary dynamo-electric machine, f, and gear it to one or both of the axles of the car. Now, if a current be sent from the primary dynamo-electric machine at the central station along the rails or along a supplemental conductor attached to the rails, the secondary machine on board the car will be actuated, and its power transmitted to the axles of the car for propelling it along the track. By using a suitable current reverser on the car, the direction of the current can be changed at will, so as to run the car in either direction.'

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'Having thus described my invention, as far as at present completed, what I...

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