Eastman v. City of New York

• Decision Date: 15 December 1904
• Citation: 134 F. 844
• Parties: EASTMAN v. MAYOR, ETC., OF CITY OF NEW YORK.
• Court: U.S. Court of Appeals — Second Circuit

134 F. 844

EASTMAN v. MAYOR, ETC., OF CITY OF NEW YORK.

United States Court of Appeals, Second Circuit.

December 15, 1904

John R Bennett and John J. Delany, Corp. Counsel, for appellants.

Charles Benner and D. Walter Brown, for appellee and George L. Crum.

William T. Washburn and Mayo W. Hazeltine, for estate of Benjamin Richardson.

Richard L. Sweezy, for intervener, Frederic A. Davis.

This action was commenced November 13, 1877. The original opinion sustaining the patent on final hearing, was filed November 9 1881, and is reported under the title of Campbell v. The Mayor, etc. (C.C.) 9 Fed. 500. The opinion sustaining the demurrer to supplemental bill is reported in 35 F. 14. The opinion dismissing the bill on rehearing because of public use for more than two years prior to the application is at 35 F. 504, 1 L.R.A. 48. The opinion reopening the case for additional proof upon the question of public use and permitting the complainant to show that such use was, as to the inventor, surreptitious and fraudulent, is at 36 F. 261. The opinion denying complainant's motion to suppress testimony is at 45 F. 243. The opinion reinstating the original interlocutory decree (9 F. 500) on the ground that the prior public uses occurred without the knowledge of the inventor and while he was using due diligence in perfecting his invention by experiment is at 47 F. 515. The opinion on exceptions to report of master is at 81 F. 182.

Before WALLACE, TOWNSEND, and COXE, Circuit Judges.

COXE Circuit Judge.

This is an equity action for the infringement of letters patent, No 42,920, granted May 24, 1864, to James Knibbs, assignor to himself and Marcus P. Norton, for 'Improvements in Pumps for Steam Fire and other Engine Pumps.'

The inventor conceived the invention April 21, 1860, and applied the device to a steam fire engine April 29, 1860. The application was filed May 13, 1864.

The Patent.

As stated in the description the nature of the improvement consists in the employment of a pipe by means of which the force or discharge part of said pump is connected to and with the suction or supply part, so that one or more discharge pipes or hose may throw streams of water at the same time and stroke of the piston. This is accomplished without waste of water, by the opening of a valve or discharge pipe, to enable the pump to work successfully and without injury in throwing streams of water.

The description states that prior to the invention great difficulty had been experienced when an engine was required to throw a less number of streams than its total capacity permitted. In such circumstances, the suction being greater than the discharge, relief could only be obtained by opening a waste valve and discharging the water upon the ground. If this were not done the pump would become strained and flooded and the engine would cease to work. This primitive method of relieving the strain was injurious to the engine, wasteful, inconvenient and resulted in flooding the street, thus making it difficult for the firemen to operate, particularly in winter when ice was liable to form. All these difficulties and disadvantages were obviated by the invention. By connecting the force part with the suction part of the pump the extra quantity of water thrown into the force part and not discharged through the hose is conducted back into the supply or suction pipe, thus relieving the force part from any excessive quantity of water.

The connection between the two sections of the pump, as shown in the drawings, is made by means of a pipe placed on the outside of the pump, the excessive quantity of water to be returned through this pipe to the suction part, being regulated by a valve which remains closed if all the hose pipes are discharging. If less than the whole number of pipes are discharging at the same time or stroke of the piston this valve must be opened sufficiently to allow the return of the water which cannot be discharged by reason of the closing of some of the hose pipes.

The claim involved is the second, which is as follows:

'The connecting of the discharge or force part or section of a steam fire or other engine pump to and with the suction or supply section thereof by means of the tube GG and the regulating-valve H, or an equivalent therefor, substantially as and for the purposes herein described and set forth.'

The invention, though simple and easily comprehended, was one of unusual merit and contributed largely to the success of the steam fire engine. The testimony shows that prior to the application of the Knibbs device to the engine it was not an effective and reliable machine; afterwards, there was little difficulty in operating with a limited number of hose pipes without waste of water or damage to the engine.

The Defenses.

The usual defenses of anticipation, lack of invention and noninfringement were interposted and are reasserted by the assignments of error. We do not deem it necessary to discuss any of these defenses further than to say that were they the only obstacles in the complainant's path it would not be difficult to sustain the decree. Infringement, though not admitted, is not seriously disputed.

The principal controversy, during the quarter of a century that this litigation has occupied the attention of the courts, arises over the defense of public use for more than two years prior to the filing of the application. The application was filed May 13, 1864, so that a well-established case of public use, prior to May 13, 1862, will invalidate the patent. The defendant insists that the proofs show that before May 13, 1862, the invention was publicly on the fire engines 'Arba Reade' and 'Jason C. Osgood,' in the city of Troy, N.Y., on the 'Phoenix,' in the city of Hartford, Conn., on the 'Atlantic,' in the city of Lawrence, Mass., and on the 'Gov. Hill,' in the city of Concord, N.H. That the Knibbs device was placed on each of these engines and publicly used, prior to May 13, 1862, is established by convincing proof. The facts, however, differ in each instance, and, as it will subserve no useful purpose to state the evidence in its entirety, we have selected the prior uses in connection with the Osgood and the Phoenix-- and incidentally the Arba Reade-- as presenting all the facts necessary to a complete determination of the controversy.

The Arba Reade.

'Knibbs, the patentee, was the engineer in charge of the steam fire engine Arba Reade, manufactured by the Amoskeag Manufacturing Company, of Manchester, N.H., and delivered to the Troy fire department March 28, 1860. On April 21, 1860, while the Reade was operating at a fire in Troy, it became necessary, in order to relieve the pressure on the pump, to open one of the gates and discharge the water onto the street, thereby causing some damage. The idea immediately occurred to Knibbs of relieving the pressure by the means described in the patent. Before the 30th of the same month he had connected the discharge section with the supply section of the pump by means of a crooked pipe with a globe regulating valve seated therein, the mechanism being the exact mechanical counterpart for that described in the patent four years afterwards. On April 30, 1860, the Reade was taken out and publicly tested, the official entry being 'All worked well during trial at Fulton street. ' The device originally placed on the Reade remained unaltered for nearly three years, during which time the engine was in constant use by the fire department of Troy and was several times the subject of public exhibition. On one occasion, about the middle of July, 1860, when the agent of the Amoskeag Company was at Troy, for the purpose of receiving pay for the Reade, there was a successful public exhibition at Green Island during which the relief valve and water passage was the subject of examination, the agent remarking 'that it seemed to operate very nicely. ' Knibbs replied that they could hardly have gotten on without it and that as soon as he had it patented he would like to open a correspondence with the Amoskeag Company.

As early, then, as July, 1860, the necessity for a patent had occurred to Knibbs, not for any new or improved device, but for the mechanism then on the Reade, which, after a trial of nearly three months, had proved to be a practically successful operative device. If the apparatus were inchoate it is evident that Knibbs did not so consider it, for in his judgment it was ready for patenting in 1860. From the time it was placed upon the engine, in April, 1860, until February 12, 1863, when a larger pipe and an automatic valve were substituted, the engine was in constant use in circumstances which required the frequent operation of the relieving mechanism and seems to have given entire satisfaction. This use was frequent, satisfactory, successful, public, open and notorious. The device was explained by the inventor to many interested persons and among others to the employes of the Amoskeag Company, including its mechanical engineer. This company, it will be remembered, built the Reade and was engaged in the business of manufacturing steam fire engines. That the change of February 12, 1863,-- when a two-inch pipe one foot in length was substituted for a one-inch pipe two feet in length and an automatic valve was substituted for a hand valve-- did not go to the essence of the invention or change its character is demonstrated by an examination of the patent itself, which makes no reference to the diameter or length of the tube or the character of the valve. The valve shown in the drawing is a hand valve. Any valve-regulated connection between the two sections of the pump, whether the tube be large or small, inside or outside, is within the claim. The change was an improvement, but...