General Ry. Signal Co. v. Great Northern Ry. Co., 8087.

• Decision Date: 15 September 1930
• Docket Number: No. 8087.,8087.
• Parties: GENERAL RY. SIGNAL CO. v. GREAT NORTHERN RY. CO.
• Court: U.S. Court of Appeals — Eighth Circuit

43 F.2d 790 (1930)

GENERAL RY. SIGNAL CO. v. GREAT NORTHERN RY. CO.

No. 8087.

Circuit Court of Appeals, Eighth Circuit.

September 15, 1930.

A. C. Paul, of Minneapolis, Minn., and Clifton V. Edwards, of New York City (Paul, Paul & Moore, of Minneapolis, Minn., on the brief), for appellant.

Thomas Ewing, of New York City, and Fletcher Rockwood, of Portland, Or. (F. G. Dorety, of St. Paul, Minn., Frank C. Cole, of New York City, and Thomas Balmer, of Seattle, Wash., on the brief), for appellee.

Before STONE and LEWIS, Circuit Judges, and PHILLIPS, District Judge.

STONE, Circuit Judge.

This is an action for infringement of a patent to W. K. Howe, No. 1,551,515, filed November 12, 1919, issued August 25, 1925, for an automatic train control device. The plaintiff, assignee of Howe, makes and sells a train control device following the Howe patent. The defendant is a railway company which has installed and uses a train control device made by the Sprague Safety Control & Signal Company. Without specifically determining the validity of the patent, the trial court held "that if the Howe patent involved invention at all, the claims can receive only a very narrow construction, and that Howe is practically limited to the exact structure described by him. * * * I do not hold the patent invalid, but I do hold that there was no infringement."

The defenses were lack of inventive novelty, anticipation, and no infringement. The patent in suit is a combination patent. Because of the character of the patent, of the defenses urged, and of the view taken by the trial court, it is necessary to examine the field of art in which these devices belong. There are various kinds of train control devices differing in respects which admit of certain classifications. The devices here involved are of the "intermittent inductive noncontact type" based on the block signal system. The particular devices here involved and the citations claimed to be anticipatory can be best understood through a logical process of sketching the entire art and narrowing down to that section of the art in which these devices lie.

General Sketch of the Art.

The safety of passengers and employees on railway trains has long been a serious problem. Several means of promoting such safety have proven successful. Among these are the air brake and the block signal system. The main purpose and effect of the air brake is to furnish a powerful braking energy upon all the wheels of the train through a single control device operable from the engine so that the speed of the train can be readily and effectively controlled or the train quickly stopped when danger becomes apparent to the engineer. The main purpose and effect of the block signal system is to give the engineer warning of danger before it might otherwise be apparent to him. The air brake is universally used on American railways and the block signal system is in general use.

Even with the block signal system, experience demonstrated that the engineer sometimes failed to notice or to properly interpret such warning or refused to heed it, thus causing accidents which resulted in death or injury.¹ To nullify or minimize the effect of these defects in the human element involved, devices were invented which were designed to protect the train by automatically slowing and/or stopping it as it approached a danger condition. These are known as automatic train control devices. The fundamental purpose of any train control device is, where a dangerous condition exists ahead of the train, to control the speed of the train automatically when the engineer for any reason fails to take proper action. This control naturally took the form of slackening the speed, of slackening the speed with ultimate stoppage of the train or of stoppage of the train as quickly as possible.

Some devices operated independently of any block signal system; others were adapted to act independently or in conjunction with a block system; still others were based upon connection with such system. The devices here are based upon the block system.

Some devices were designed to act only at fixed stations or locations on the track, and were called "intermittent" types; others were constantly subject to action, and were called "continuous" types. The devices here are "intermittent."

While all types made some character of use of the compressed air of the air brake system, some were otherwise purely mechanical, while some were electric or electromagnetic. The latter were put in operation by electromagnetic impulses received from the track or from track units inductively, and therefore were known as "inductive" types. The devices here are of the "inductive" type.

Some secured the danger impulse from the track element to the engine element through physical contact between such elements; some had no such contact, and were known as "noncontact" types. The devices here are "noncontact" types.

While all train control devices had the same broad general purpose, the above enumeration of recognized classes of such devices suggests that considerable difference existed in the ideas as to the lines along which the general purpose should be worked out, and also that such difference would result in a variety of devices. In spite of or as a result of such differences, there developed certain conceptions as to what were necessary elements and as to what were desirable elements in any train control device. As the automatic control was to be exercised on the air brakes, which were controlled on the engine, only when danger was ahead, it was evident that such control must be from an engine installed element which would actuate the brake system and that the engine element must be set in motion by some impulse from a track element which would indicate danger ahead. Also, when the brakes were automatically set, there must be some means to release them and to reset the device so that it would be subject to the next danger indication. These elements were necessary to the effective operation of any train control device.

Another element was deemed highly desirable. This element had to do with the control of the engineer over the automatic braking. Without some such control, the automatic device would apply the brakes even though the engineer were fully alive and obedient to the situation and no matter what the attendant circumstances. The stopping and starting of trains is attended with expense and operating delay. Under some conditions, automatic stopping was unnecessary; under others, undesirable; under others, dangerous. The railroads contended that it was very desirable to avoid this inescapable stopping if the engineer were alert, because his trained judgment could be relied upon to avert the danger and to take proper action under all the circumstances present. There was a decided difference among inventors and others² as to whether any such control should be given the engineer. The final conclusion was in favor of such control, and it is now recognized as a highly desirable element of an automatic train control system. Such permissive elements are variously, and somewhat interchangeably, called "hold off," "forestalling," or "annulling" devices (exactness might require hold-off and forestalling to apply to action to prevent automatic braking before it starts, while annulling would apply to nullifying a braking operation after it has started). The practical working out of this element naturally gave rise to different theories and resulting different devices. These theories arose from the various views as to the extent of such permissive control and as to the conditions and results of its exercise deemed, by the particular inventor, most consistent with safety and with facility of train operation, and also as to character of penalties to be inflicted on the engineer. It is important to keep in mind the existence of such differences in theory, because, while a theory is not patentable, yet the purpose of a device may have a bearing upon its novelty or its scope or upon its dissimilarity to other devices having the same or somewhat different purposes.

While the two necessary elements of (1) a train control element, made up of track and engine features, and (2) a resetting element combined with (3) a desirable hold-off element, were sufficient to comprehend a well-rounded automatic train control device, there was yet another feature developed which was deemed advisable by some. That feature was that the entire device should be protected from manipulation which would prevent it functioning in the manner intended. Thus was reached the final general conception of a complete train control system as being one including (1) automatic control, (2) reset, (3) hold-off, and (4) self-protection from improper manipulation. Naturally, this complete conception was reached piecemeal and only through the thought and efforts of many men, principally inventors, railway men, and the Interstate Commerce Commission organization,³ working alone or together. It was an advance with little chronology or regularity of progress.

For the purposes of this case, it is sufficient to know that every one of these four elements were known to and represented in the art when Howe entered the field.

Howe makes no claim to be a pioneer in automatic train control nor of such control by the intermittent inductive noncontact type based upon a block signal system. He makes no such claim as to any one of the four above elements. His is a combination patent which includes all of the four elements. His contention is that he came into the field with "a new plan of train control" which was realized through a novel device. Since Howe's device is based on the block signal and is intended to work as a connection between the existing air brake system on the train and the existing block signal system on the track, it is necessary to have an outline conception of those systems in order to appreciate the purposes of the...