American Bank Protection Co. v. Electric Protection Co.

• Decision Date: 03 January 1910
• Docket Number: 851.
• Citation: 181 F. 350
• Parties: AMERICAN BANK PROTECTION CO. v. ELECTRIC PROTECTION CO. et al.
• Court: U.S. District Court — District of Minnesota

181 F. 350

AMERICAN BANK PROTECTION CO. v. ELECTRIC PROTECTION CO. et al.

No. 851.

United States Circuit Court, D. Minnesota, Fourth Division.

January 3, 1910

[Copyrighted Material Omitted]

Paul &amp Paul, for complainant.

John E Stryker, for defendants.

WILLARD District Judge.

This case involves an alleged infringement of certain patents, to wit; C. Coleman, No. 11,626, August 17, 1897; C. Coleman, No. 626,670, June 13, 1899; C. Coleman, No. 627,054, June 13, 1899; C. Coleman, No. 632, 513, September 5, 1899; C. Coleman, No. 667,115, January 29, 1901; F. C. Robinson and J. E. Green, No. 708,496, September 2, 1902; W. H. Robins and J. F. Jacoby, No. 771,748, September 2, 1902; W. H. Robins and J. F. Jacoby, No. 771,749, October 4, 1904; W. H. Robins, No. 850,101, April 9, 1907; J. L. Grass, No. 880,020, February 25, 1908.

The bill of complaint alleges infringement of 12 patents. At the time of taking complainant's testimony in chief, counsel for complainant gave notice of withdrawal of two of the patents, and the record has been made on the other 10 patents, above named.

Robins Patent, No. 850,101.

As to this patent the complainant says in his brief:

'The novelty in this drop of patent No. 850,101 consists in combining with the drop plate, or 'drop,' as it is called in the claims of the patent, a spring-pressed pin which is normally in the local circuit and in contact with the drop.'

The defendants in their brief say:

'The alleged invention consists in substituting for the flat spring of Robinson and Green or other old patents a coiled spring surrounding a follower pin, actuated in the same way and performing the same functions as the flat spring. This is a case of equivalents where the substituted element performs the same function in substantially the old way and by substantially the old means.' That this new drop with the coiled spring and the follower pin does not perform the same function in substantially the same way and by substantially the same means as the drops formerly used by the complainant or other persons is apparent from the testimony of defendants' own witness Jacoby. He said, in stating the difficulties with the former drops:

'The drop is really, as it were, the heart of the system. It was very important to have a good article, something that would work without fail at the critical moment, and in attempting to better it I produced a different arrangement of these contacts. * * * But this platinum contact on the upper spring and on the shutter was put on there by solder, and the break was not very sudden, because of the angle of incline of this contact surface, and the arc that was formed at the time of this break in testing the system, or the alarm, would melt the solder and cause it to flow over the top of the platinum and cause the platinum to roughen, and the shutter would often stick up and not fall as it was intended to, being pressed down wholly by gravity, caused this caused a great deal of annoyance to our company from the patrons, caused us a great deal of expense to send experts out to fix it, and it didn't keep fixed. It didn't stay fixed.'

As to the object of the new device he said:

'The whole object was to have something to support this plunger which would give a direct pressure upon this shutter-- a downward pressure upon the shutter, instead of a sliding pressure. The object of the plunger was so that we might have something to increase the speed of the falling of the shutter by this spring pressure, but to have a limited motion to the plunger so that the break might be both sudden and of sufficient space to prevent arcing of this gap. This direct motion of the plunger also avoided all the friction of the sliding contact on this drop. Defendants' Exhibit, Complainant's Drop No. 2.'

The complainant's witness Robins, speaking of the objections to the old drops and what was accomplished by the new drops, said:

'Since we first started we had considerable trouble at times with our drops. The old original drop, D-8, we found had too short a break, and very often it was the case it would arc and burn off the contact. To overcome that this drop, D-9, was the next one out. That one was intended to eliminate those other troubles by making a longer break; but in this drop frequently it would burn, and the contact points would get rough so that the shutter would stay up instead of dropping when the armature came back. And in order to overcome all these troubles I invented this drop, D-7.

'Q. 48. Now what is the difference between that drop D-7 and the preceding drops you have referred to there, D-9 and D-10, and in what way does it overcome the objections?

'A. This drop D-7, which has the plunger point contact, overcomes several of those other troubles. One of the main parts is that it does not stick. The shutter always falls when there is a contact. The spring throwing the plunger helps force down the shutter, which makes a better contact with the ringing circuit. The break is quicker, and eliminates a great deal of trouble of arcing.'

The new plunger drop was in every way a success. This is indicated by the fact that the defendants adopted it in its entirety without any change whatever, and are now using it.

This device, to my mind, indicates something more than mechanical skill, and involves invention. Thomson v. Citizens' National Bank of Fargo, 3 C.C.A. 518, 53 F. 250; Krementz v. S. Cottle Co., 148 U.S. 558, 13 Sup.Ct. 719, 37 L.Ed. 558.

It is true that the spiral spring had been used before. It appears in the patent to Wood, No. 383,933, of June 5, 1888; but it had never been used in the combination with an automatic drop, as it now appears in the patent in suit. Western Electric Co. v. La Rue, 139 U.S. 601, 11 Sup.Ct. 670, 35 L.Ed. 294; Potts v. Creager, 155 U.S. 597, 15 Sup.Ct. 194, 39 L.Ed. 275; Du Bois v. Kirk, 158 U.S. 58, 15 Sup.Ct. 729, 39 L.Ed. 895; American Tobacco Co. v. Streat, 83 F. 700, 28 C.C.A. 18.

In my opinion the patent is valid, and the complainant is entitled to a decree as prayed for in its bill, unless the defense now to be considered can be maintained.

It is claimed by the defendants that this patent is void because the drop was in public use and on sale by complainant for more than two years before the date of the application for the patent. This date is December 6, 1905. The use relied upon must have existed, then, prior to December 6, 1903. By far the most satisfactory evidence in the case upon this point is the testimony of E. Ward Wilkins, a witness for the complainant, who was at the time he testified, and for some years prior thereto had been, the secretary and manager of Patrick, Carter & Wilkins Company of Philadelphia. It was from this company that the complainant, while Jacoby was with it, had bought drops from time to time. Wilkins testified, basing his evidence upon correspondence between his company and the complainant, which he produced, that the first order which his company received from the complainant for the plunger drop was on the 23d of September, 1903. The complainant sent to his company at that time a sample drop and specifications, and asked for a price on 350 of them. A price was made at a dollar for each one, which offer was accepted by the Philadelphia Company, and it agreed to ship them before January 1st. One hundred and fifty of the drops were shipped on the 24th of December, 1903, from Philadelphia, and the 200 others on the 30th of December of the same year. I consider, therefore, that it is conclusively established that none of the drops now in use were bought by complainant to be placed in its system until September, and that none were actually received and used by it from other parties prior to January 1, 1904.

It is claimed, however, by the defendants, that other kinds of drops which had been used in the complainant's factory were remodeled and made into the plunger variety, and that this was done in the early part of the year 1903; such remodeled drops having been placed in the systems which were then put out. The principal witness to support this contention of the defendants is Jacoby. He testifies repeatedly that this plunger drop was used in the early part of 1903, and yet it is apparent from his own testimony that he has no definite recollection of the time, and no accurate knowledge as to the date when the first one was used. He said, for example:

'It was actually cold weather, we had heat in the building, and it was closed up at the factory at the time that Mr. Robins made the first plungers for us. I don't know how near the center of winter it was. Might have been the fall before. I am not real certain about that. I never tried to fix that in my mind in any way.'

Robins himself, who was a witness for the complainant, testified: 'I know it was in hot weather, for we had the windows up at the time that this first drop was invented; but I know a few days after that it was practically cool weather, because the windows was all down, especially the time we was testing these drops, etc. It was not a hot day. That I judge from my recollection of the time of year.'

Robins says, however, that, instead of being the fall of 1902, this took place in the fall of 1903.

That Jacoby is mistaken when he testified that the plunger drop was first made and used in the early part of 1903 is almost conclusively established by other testimony given by Wilkins the witness above mentioned. When he gave his testimony, it had already appeared from the evidence of Jacoby, Robins, and others that there were at least three, and according to one witness four, kinds of these drops made and used by the complainant between 1902 and 1904. Jacoby himself mentions three, the last of which, numbered 3, is the...