National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co., 1,416.

CourtUnited States Courts of Appeals. United States Court of Appeals (8th Circuit)
Citation106 F. 693
Docket Number1,416.
PartiesNATIONAL HOLLOW BRAKE-BEAM CO. et al. v. INTERCHANGEABLE BRAKE-BEAM CO. CHICAGO RY. EQUIPMENT CO. v. SAME.
Decision Date28 February 1901

106 F. 693

NATIONAL HOLLOW BRAKE-BEAM CO. et al.
v.
INTERCHANGEABLE BRAKE-BEAM CO.

CHICAGO RY. EQUIPMENT CO.
v.
SAME.

No. 1,416.

United States Court of Appeals, Eighth Circuit.

February 28, 1901


Syllabus by the Court.

A patent is a contract, and its construction is governed by the same canons of interpretation that control the construction of other grants and agreements.

A machine or combination which is not designed by its maker, not actually used, nor apparently adapted, to perform the function of the patented machine or combination, but which is discovered in a remote art, and was used under radically different conditions to perform another function, neither anticipates nor limits the patent. [106 F. 694]

Unsupported oral testimony of a prior use is always open to suspicion, and it cannot prevail over a patent, unless it is sufficient to establish such a use beyond a reasonable doubt.

A new combination of old elements, by which a new and useful result is produced, or an old result is obtained in a more facile, economical, and efficient way, may be protected by patent as securely as a new machine or composition of matter.

The extensive use of a machine or combination which is clearly without novelty does not dispense with that statutory requirement, and it will not sustain a patent.

Where the question of novelty is fairly open for consideration under the law, the fact that a patented device or combination has displaced others which had previously been used to perform its function, and has gone into immediate and general use, is pregnant and persuasive evidence that it involves invention.

The second claim of letters patent No. 361,009, to Philip Hien, dated April 12, 1887, is valid, and secures a novel and useful invention.

The function or result of the operation of a machine or combination may not be the subject of a patent under the acts of congress. The means by which the function is performed, and those alone, are patentable.

A combination of an earlier combination of mechanical elements and a function of that earlier combination is not the subject of patent.

A patentee is entitled to all the uses to which his patented device or combination can be put, and all the functions it will perform, whether or not he was aware of or described them when he procured his patent.

The second claim of letters patent No. 361,009, to Phillip Hien, April 12, 1887, secured to the patentee the exclusive use of the combination there specified, whether resilience or camber in the beam is utilized or not; and it anticipates the first, fifth, and seventh claims of letters patent No. 480,194, to Phillip Hien, dated August 2, 1892.

One who invents and secures a patent for a machine or combination which first performs a useful function is protected thereby against all machines or combinations which perform the same function by equivalent mechanical devices; but one who merely makes and secures a patent for a slight improvement on an old device or combination, which performs the same function before as after the improvement, is protected against those only who use the very device or improvement he describes and claims, or colorable evasions thereof.

The term 'mechanical equivalent,' when applied to the interpretation of a pioneer patent, has a broad and generous signification. When applied to a slight and almost immaterial improvement, it has a very narrow and limited meaning. When applied to that great majority of inventions which falls between these two extremes, its significance is proportioned to the character of the advance or invention under consideration, and it is so interpreted by the courts as to protect the inventor against piracy and the public against unauthorized monopoly. [106 F. 695]

The doctrine of mechanical equivalents is governed by the same rules and has the same application in a case in which the infringement of a patent for a combination is in question as in cases where the issues are over the infringement of patents for machines or compositions of matter.

Mere changes of the form of a device, or of some of the mechanical elements of a combination secured by patent, will not avoid infringement where the principle of the patented invention is adopted, unless the form of the machine or of the elements changed is the distinguishing characteristic of the invention.

Where the advance towards the desideratum is gradual, and several inventors independently form several combinations, which accomplish the general result with varying degrees of operative success, each is entitled to his own combination, so long as it differs from those of his competitors, and does not include theirs.

Acquiescence in the rejection of a claim on references cited in the patent office, and the acceptance of a patent on an amended claim, estops the patentee from maintaining that the amended claim covers the devices shown in the references, and that it has the breadth of the claim rejected; but this is the limit of the estoppel.

A patentee who has acquiesced in the rejection of his original claim, because it was said by the examiner to be anticipated by references he made, is not thereby estopped from claiming and securing by an amended claim every new and useful improvement he has invented that is not disclosed by those references.

The description in a specification or drawing of the details which are not claimed to be essential elements of the patented device or combination, and are not such, is the mere pointing out of the better method of using it, and does not limit it to those details.

A reference in a claim of a patent to a letter or figure used on the drawing and in the specification to describe a device or an element of a combination does not limit the claim to the specific form of that device or element there shown, unless that particular form was essential to, or embodied the principle of, the improvement claimed.

That interpretation which sustains and vitalizes the grant of a patent should be preferred to that which strikes down and paralyzes it.

One who appropriates a new and useful patented combination cannot escape infringement by the use of common mechanical devices to unite or operate its elements which differ from those which are pointed out for the purpose, but which are not claimed in the patent.

The combination of letters patent No. 609.396, issued August 23, 1898, to Francis B. Aglar, infringes the second claim of letters patent No. 361,009, issued April 12, 1887, to Phillip Hien.

The absence from a device that is alleged to infringe a patented combination of a single element of that combination is fatal to the claim of infringement. [106 F. 696]

Claims 3, 4, 5, 6, and 8 of patent No. 480,194, of August 12, 1892, to Phillip Hien, claims 1 and 2 of patent No. 466,984, of January 12, 1892, to Henry B. Robischung, and claim 5 of patent No. 486,218, of November 15, 1892, to Robischung, are not infringed by the device of patent No. 609,396, of August 23, 1898, to Francis B. Aglar.

Claim 6 of letters patent No. 345,093, to George Westinghouse, Jr., dated July 6, 1886, is void, because the combination it claims was abandoned and placed on sale by the patentee more than two years before he applied for the patent.

Claim 2 of letters patent No. 430,755, to Henry B. Robischung, dated June 24, 1890, is void because the creation of the combination it specifies involved no invention.

In the year 1897 the Chicago Railway-Equipment Company brought a suit in equity in the court below against the Interchangeable Brake-Beam Company for the infringement of letters patent No. 486,218, issued to Henry B. Robischung, for improvements in brake beams. At the same time the National Hollow Brake-Beam Company and the Chicago Railway-Equipment Company exhibited their bill in equity in the court below against the Interchangeable Brake-Beam Company, and prayed for an accounting and an injunction on account of the infringement of letters patent No. 361,009, issued on April 12, 1887, to Phillip Hien, for improvements in brake beams for railway cars; letters patent No. 480,194, issued on August 2, 1892, to Phillip Hien, for improvements in brake beams; letters patent No. 345,093, issued on July 6, 1886, to George Westinghouse, Jr., for an improvement in railway brakes; letters patent No. 430,755, issued on June 24, 1890, to Henry B. Robischung, for improvements in clamps for safety chains and finger guards of brake beams, and for analogous cases; and letters patent No. 466,984, issued to Henry B. Robischung, on January 12, 1892, for improvements in brake beams. Each one of the parties to these suits was a corporation. The defendant interposed the usual defenses. The testimony in the two suits was taken, and they were heard together. When the hearing was reached the title of the complainant to the various patents was established, and all controversy over many of their claims were eliminated; but there remained 14 upon which the parties demanded the opinion and decree of the court. Each of these claims was carefully considered by the circuit court, and thereupon it dismissed both of the bills, for the reasons stated in its opinion, which will be found in 99 F. 758, 777. The defeated parties appealed from the decrees dismissing their bills, the two suits were consolidated by order of the circuit court when it allowed the appeals, and all the questions now at issue in both suits have been heard and determined in this court in the consolidated case.

Paul Bakewell (F. W. Ritter, Jr., on the brief), for appellants.

George S. Payson (John W. Noble and George H. Shields, on the brief), for appellee.

Before CALDWELL, SANBORN, and THAYER, Circuit Judges.

SANBORN, Circuit Judge, after stating the case as above, .

Four of the fourteen claims in issue upon these appeals involve the cardinal principle of the appellants' hollow metallic brake beam. The...

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182 practice notes
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182 cases
  • Stead Lens Co. v. Kryptok Co., 4052.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (8th Circuit)
    • May 7, 1914
    ...attaches to a patent unless it is at least clear and convincing. National Hollow Brake-Beam Co. et al. v. Interchangeable Brake-Beam Co., 106 F. 693, 694-703, 45 C.C.A. 544; Parker v. Stebler et al., 177 F. 210, 101 C.C.A. 380; Albright v. Langfeld (C.C.) 131 F. 473; Continental Rubber Work......
  • Freeman v. Altvater, No. 9602.
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    • July 24, 1933
    ...Paper Bag Co., 210 U. S. 405, 415, 28 S. Ct. 748, 52 L. Ed. 1122; National Hollow B.-B. Co. v. Interchangeable B.-B. Co. (C. C. A. 8) 106 F. 693, 710; Mallon v. Wm. C. Gregg & Co. (C. C. A. 8) 137 F. 68, 78; Anakin Lock Works v. Dillon Lock Works (C. C. A. 8) 292 F. 45, 47; Moslank v. Kulag......
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    • November 21, 1923
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