Dennis v. Great Northern Ry. Co.

• Decision Date: 15 July 1931
• Docket Number: No. 4341.,4341.
• Citation: 51 F.2d 796
• Parties: DENNIS et al. v. GREAT NORTHERN RY. CO. et al.
• Court: U.S. District Court — District of Washington

51 F.2d 796 (1931)

DENNIS et al. v. GREAT NORTHERN RY. CO. et al.

No. 4341.

District Court, E. D. Washington, N. D.

July 15, 1931.

Graves, Kizer & Graves, of Spokane, Wash., for plaintiffs.

Ernest E. Sargeant, of Spokane, Wash. (F. G. Dorety and John E. Stryker, both of St. Paul, Minn., of counsel), for defendants.

WEBSTER, District Judge.

The plaintiffs are the joint owners of letters patent, No. 1,308,583, dated July 1, 1919, covering a method or process for excavating tunnels and especially adapted to the boring of long tunnels through rock formations. They bring this action for the recovery of damages for the alleged infringement of the patent by the defendants in excavating the Cascade tunnel for the use of the defendant railway company.

It is admitted by the defendants that, in carrying out at least a part of their Cascade tunnel operations, the method described in the Dennis patent was employed. The defense is rested on several distinct and independent claims, each of which goes to the validity of the patent. It is contended that the alleged invention of Dennis was completely anticipated by prior publications relating to the method employed in excavating the Simplon tunnel through the Alps Mountains. It is also insisted that the field of invention was so limited at the time of the application for a patent that the method claimed by Dennis did not constitute patentable invention.

The single claim of the patent reads as follows: "In a method of tunneling consisting in driving an auxiliary heading outside of the main tunnel section, excavating cross cuts from the auxiliary heading, driving a main heading to connect the cross cuts, drilling from the main heading for enlargement to the full tunnel section, and then excavating to the full tunnel section."

The advantages to be obtained by the use of the method or process described in the claim are stated by the patentee in this language: "At the outset I wish to explain that at present the general practice of tunneling is to excavate a heading in advance of the main tunnel, the heading being enlarged by blasting into the main tunnel as the work advances. The result of this is that all the equipment necessary to the tunneling operations have to be brought into the tunnel past the location where the work is being carried on. With this form of practice, much time and labor is lost owing to one part of the work having to be held up for another and also on account of the various operating appliances having to be moved back during the blasting operation. With my method of tunneling I provide a working or pioneer tunnel outside the main tunnel and utilize this working tunnel for the purpose of ventilating the main tunnel workings; carrying pipe lines for compressed air and water to the advanced work around the main tunnel blasting and mucking; carrying muck from the advanced work around the main tunnel enlargement aforesaid and mucking so as not to interfere therewith; enabling the advance heading to be driven and enlargement drilling to be done without interfering with the work at the tunnel enlargement and also as a second outlet for the men in case one of the tunnels should become blocked. * * * From the above description it will be seen that all the advantages hereinbefore set forth as features of this invention are readily obtained through the driving of the pioneer heading and cross cuts to the side of the main tunnel location and while the cost of driving this pioneer heading may be considerable, still, it so facilitates the work of enlarging the main tunnel that it more than saves the cost of its construction in the complete tunneling operation."

As I do not understand that any claim of patentability is based on the feature of central heading with radial drilling, I shall not pause to discuss that aspect of the case.

The publications relied upon by defendants as anticipating the Dennis patent are principally three: (1) an article in the January, 1900, issue of Cassier's Magazine, by Axel Larsen, M. Inst. M. E.; (2) a paper by Sir Francis Fox, M. Inst. C. E., published in London by the Institution of Civil Engineers in 1907, and (3) chapter XIV of Modern Tunnel Practice by David McNeely Stauffer, published in 1911. All these publications deal with the method employed in excavating the Simplon tunnel, and from the file wrapper it seems that none of them was called to the attention of the patent examiners while the Dennis application was under consideration.

The file history of the Dennis application discloses that the applicant originally submitted six separate claims of invention, all of which were disallowed on reference to the See, Perin, and Sooysmith patents. Dennis acquiesced in this ruling, but subsequently submitted the single claim which was ultimately allowed by the patent authorities, and which we have hereinbefore quoted in full. In support of the claim which was allowed, the record discloses that the following contention was made: "The single claim now in the case is very specific to applicant's process. It is thought to clearly distinguish from the references because a new function is developed, that is, air is forced into the pioneer and allowed to escape through and out from the main tunnel, whereby all the explosion gases are exhausted and the workmen left unhindered. * * * See's patent would be entirely impracticable except in soft ground for if used in rock which had to be blasted, it would be impossible to get the smoke and powder fumes out of the chamber above his sub-tunnel. The doing of this very thing is the new function of applicant's pioneer." No suggestion was made that the Dennis idea differed from that of See in respect of furnishing a plurality of places for the men to work, or of supplying an additional means of access or egress. These features were characteristic of the See method. See's idea contemplated two tunnels, one above the other, whilst Dennis' process contemplated two tunnels side by side. It was the advantage in ventilation afforded by the Dennis process which was pointed out and stressed as the new function of the applicant's pioneer tunnel.

We call attention to this situation for the purpose of making it plain that plaintiffs must be confined to the specific claim which was allowed the patentee, and that their rights may not be enlarged by a construction which would give them the benefit of rejected claims, or which would broaden or enlarge their rights beyond those specifically granted in the claim actually approved and allowed. Morgan Envelope Co. v. Albany Paper Co., 152 U. S. 425-429, 14 S. Ct. 627, 38 L. Ed. 500; Hauser v. Simplex Window Co. (C. C. A.) 10 F.(2d) 457-460; Vanmanen v. Leonard (C. C. A.) 248 F. 939-941.

I come now to the Simplon publications. These articles are highly technical, and are illustrated by numerous drawings and diagrams impossible of reproduction here. In addition, they are lengthy, covering many pages of printed matter, and it would be quite impractical to set them forth in this memorandum. The defendants insist that these publications completely anticipated every element of the Dennis patent, and show conclusively that the method covered by the claim of that patent was actually used in the construction of the Simplon tunnel. Counsel for the plaintiffs insist that the Simplon operation contemplated from the outstart the boring of two tunnels, side by side, instead of a single...