Electric Protection Co. v. American Bank Protection Co.

• Decision Date: 18 November 1910
• Docket Number: 3,370.,3,349
• Citation: 184 F. 916
• Parties: ELECTRIC PROTECTION CO. v. AMERICAN BANK PROTECTION CO. AMERICAN BANK PROTECTION CO. v. ELECTRIC PROTECTION CO. et al.
• Court: U.S. Court of Appeals — Eighth Circuit

184 F. 916

ELECTRIC PROTECTION CO. v. AMERICAN BANK PROTECTION CO.

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

Nos. 3,349, 3,370.

United States Court of Appeals, Eighth Circuit.

November 18, 1910

On Petition for Rehearing, January 30, 1911.

John E Stryker, for appellant in No. 3,349, and for appellees in No 3,370.

Paul &amp Paul (A. C. Paul, of counsel), for appellee in No. 3,349, and for appellant in No. 3,370.

Before SANBORN and VAN DEVANTER, Circuit Judges, and REED, District judge.

REED District Judge.

The first of these cases is an appeal by the Electric Protection Company, a Minnesota corporation, from an interlocutory decree granting an injunction and an order for an accounting in a suit of the American Bank Protection Company, also a Minnesota corporation, against it and certain of its stockholders and directors for an alleged infringement of claims 18 and 20 of reissued letters patent No. 11,626 , to Clyde Coleman and others August 17, 1897, and claims 1, 2, 3, 7, 8, and 10 of patent No. 708,496, issued to Robinson & Green September 2, 1902. The second is an appeal by the complainant, the American Bank Protection Company, from so much of the decree as dismissed the bill as to the individual defendants, stockholders and directors of the Electric Protection Company, and three of the patents sued upon, viz., Nos. 626,670, 771,749, and 880,020.

The appeal of the defendant the Electric Protection Company may be first considered. Its defenses are invalidity of the patents and noninfringement. The reissued letters patent No. 11,626 is for certain improvements in electrical burglar alarms, the original patent for which was issued November 10, 1896. Briefly stated the alleged invention is for improvements in an electrical alarm system whereby bank vaults and similar structures are surrounded and protected by electrical conductors and devices which, in combination with a time mechanism, are intended to give alarm if attempt is made to enter the vault or protected structure at other than predetermined hours, or to injure or cripple the system at any time so as to render it inoperative. The claims involved in this appeal are:

'18. The combination with a structure or district inclosed and surrounded by electrical conductors, of an electric protective circuit or circuits including said conductors, an alarm device controlled thereby at a distance from the protected structure and time mechanism inclosed within the electrical barrier at the protected district for throwing off the alarm to permit access to the guarded structure, substantially as described.'

'20. The combination with a structure to be guarded and a housing, of an electrical alarm system having its parts so disposed as to protect both the structure to be guarded and the housing and cause an alarm to be sounded if either of them is entered, the alarm proper being arranged within the protected housing, and all other parts of the system that may be manipulated or injured so as to cripple the system being arranged within either the structure to be guarded or the protected housing, and time mechanism inclosed within the guarded structure for throwing off the alarm to permit access to the guarded structure, substantially as described.'

The invention secured by these and other claims of the patent includes within the combination, time mechanisms for controlling the opening and closing of the main and alarm circuits at predetermined hours. The prior patents in evidence disclose that safes, vaults, and other structures were protected by electric alarm systems long prior to the application for this patent; also that clocks or other time mechanisms for automatically permitting the opening and closing of the doors of the protected structures at fixed hours, without causing an alarm, are a distinct feature of a number of such patents. The Walters patent of May, 1873, No. 138,965, discloses an electrical device in combination with clock mechanism for giving an alarm when the electrical circuit is broken; also a device operated by a time piece that prevents an alarm being given after a certain hour, thus preventing an alarm when the house or other protected structure is rightly open for use. The specifications also disclose that the system may be used in connection with safes, bank vaults and other similar structures. The Yeakle & Steuart patent, No. 370,439 (1887), is for an electric alarm system, which includes a time mechanism for automatically opening and closing the electrical alarm circuits at predetermined hours. The patents to Pierce, No. 287,775 (1883) and No. 322,317 (1885), are for improvements in electric time locks, whereby the doors of safes or like structures may be automatically locked and the safe or other protected structure closed against entry until a fixed time. The specifications and drawings show the clock mechanism to be placed upon the inner side of the safe door and beyond the reach of manipulation while the door is closed. The Stern patent, No. 315,408 (1886), is for an electric burglar alarm in which the premises or structure to be guarded or protected is in electrical connection by means of insulated braided wires with an alarm station separate and distinct from the protected premises in which an alarm will be immediately sounded at the alarm station if the connecting wires are broken or cut. The Smith patent, No. 251,071 (1881), is for an electric alarm system to prevent cabinets or other places where money or other valuables are kept from being burglarized without sounding an alarm. The Shivler patent, No. 197,416 (1887), is for improvements in electric burglar alarms for protecting safes, vaults, and like structures, and includes clockwork and mechanism driven by such clockwork for automatically opening and closing the alarm circuit at predetermined times. The Holmes patent, No. 63,158 (1867), is for electro-magnetic circuit breaking clocks, whereby the electrical circuits may be opened or closed at predetermined times. Other patents disclose similar devices. Mr. Coleman is conclusively presumed to have known of all of these prior patents at the time of his alleged invention and when he applied for a patent therefor. Mast-Foos & Co. v. Stover Manfg. Co., 177 U.S. 485, 493, 494, 20 Sup.Ct. 708, 44 L.Ed. 856. They clearly show the use of electric alarms for the protection of bank safes, vaults, and similar structures with time mechanisms in combination therewith for automatically operating the system and opening and closing the alarm circuit whereby an alarm may or may not be sounded during predetermined hours or periods of time. It may be that Mr. Coleman's invention, other than as shown in claims 18 and 20 of this patent, differs substantially from those of the prior patents. If so, he has presumably secured his invention therefor by such other claims, which are not involved in this appeal. The feature of claims 18 and 20, which distinguishes each from the other claims, is the location of the time mechanism 'within the electrical barrier at the protected district' which, under the specifications, means the 'guarded housing' at the alarm station, or 'within the guarded structure' itself. Claim 2 of the patent includes, 'suitable time mechanism' for operating a switch common to the main and alarm circuits but does not limit the location of such mechanism to any particular place within the system. Claims 5, 6, and 16 also include time mechanism for operating a switch common to the main and alarm circuits and each limits the location of such time mechanism 'within the guarded structure.' These claims are not involved in this appeal, and no opinion need be, or is, expressed as to their validity. The exact location of the time mechanism within his system is apparently not regarded by Coleman as an essential element of his invention, for, in the specification referring to the switch which operates the alarm and main electrical circuits, he says:

'It may be operated manually, but I prefer to operate it automatically by means of some suitable mechanism.'

To this end he shows a time piece so arranged with the electrical mechanism that it will break and re-establish the main and alarm circuits at a predetermined time, and says:

'It would not be desirable to place within the guarded housing the clock or other mechanism for automatically operating the switch, for the reason that it would be inconvenient to get at it to wind it; for this reason I prefer to place the time mechanism within the guarded structure and to connect it with the switch operating mechanism by means of wires with the wires of the main circuit.'

It is entirely plain that the clock or other time mechanism could be connected by wires with the main circuit wires if it is conveniently located at any place within the system, and its location in any particular system is a matter of convenience only to be determined in constructing the particular system. Claim 3 of the Yeakle & Steuart patent is as follows:

'In an electric burglar-alarm, a local battery circuit used for the lacing, or an equivalent of the lacing, of a place to be guarded, in which is included a circuit breaker connected with and operated by a time mechanism which acts to break the local circuit automatically at predetermined intervals, in combination with a time mechanism and a main line by the devices in the local battery circuit.'

The attention of Mr. Carter, complainant's expert, was called to this claim and he was asked if it did not suggest that the clock mechanism is to be placed within the guarded structure. He answered:

'I would not be able to conclude from this claim alone whether the clock mechanism was intended to be included within the guarded structure or not, but from

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