National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co.

• Decision Date: 24 January 1900
• Docket Number: 4,047.
• Citation: 99 F. 758
• Parties: NATIONAL HOLLOW BRAKE BEAM CO. et al. v. INTERCHANGEABLE BRAKE BEAM CO.
• Court: U.S. District Court — Eastern District of Missouri

99 F. 758

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

No. 4,047.

United States Circuit Court, E.D. Missouri, Eastern Division.

January 24, 1900

[Copyrighted Material Omitted]

Paul Bakewell and F. W. Ritter, Jr., for complainants.

Noble &amp Shields and Geo. S. Payson, for defendant.

ADAMS District Judge.

This is an action for infringement of the following letters patent of the United States: No. 345,093, granted to George Westinghouse, Jr., July 6, 1886; No. 361,009, granted to Phillip Hein, April 12, 1887; No. 430,775, granted to Henry B. Robischung, June 24, 1890; No. 480,194, granted to Phillip Hein, August 2, 1892; and No. 466,894, granted to Henry B Robischung, January 12, 1892. There are several claims in each of these patents, but complainants, in the present suit, rely upon certain of the claims only, which will be specified as each of the patents is taken up for consideration.

The complainants' title to the patents, while put in issue by the pleadings, is not assailed in argument, and will therefore be assumed to be as stated in their bill. The defenses are, in substance, want of patentable invention, want of novelty or anticipation, and noninfringement.

There are so many claims involved in the determination of this controversy that it seems to me proper to take them up for a separate consideration, in the order above chronologically stated.

The first one is the patent of George Westinghouse, Jr., No. 345,093, dated July 6, 1886. The sixth claim of this patent, which alone is now relied upon by the complainants, is as follows:

'In a brake beam, the combination, substantially as set forth, of a tie bar, a double-inclined truss bar, and an interposed king post or strut, having a slot for the reception of a brake lever between the tie bar and the truss bar.'

The particular novelty contended for in this claim is the location of a slot for the reception of a brake lever in the strut between the compression member and the tension member of a trussed brake beam.

The first defense to this claim is that its device lacks novelty. Several patents and one publication are pleaded as anticipations of this claim. They are as follows: The Wellington patent, No. 145,605, granted December 16, 1873; the Westinghouse patent, No. 149,902, granted April 12, 1874; the second Westinghouse patent, No. 243,416, granted June 18, 1881; and the publications or drawing found in the Car Builders' Dictionary, published in 1879, on page 488.

The first two of these patents show a slot in a strut not between the compression and tension members of the brake beam, but at the end of the strut outside of the tension member. The slot, and bolt running through it, as shown in these two patents, are obviously intended to serve the purpose, and perform the function, of a fulcrum for operating a brake lever, by means of which power is applied to the brake beam. It would seem that the location of this slot in the same post or strut between the compression and tension members, as shown in the sixth claim of the patent now under consideration, instead of outside of one of them, would be but a question of common mechanical expediency; but, if this were doubtful, it seems to be made clear by reference to the second Westinghouse patent pleaded as an anticipation, No. 243,416. This last patent shows that the location of the slot in the strut between the members, instead of at the end of one of them, was then a familiar mechanical device. It is true that patent shows a provision for bolting the brake lever to the side of the strut, but the other two patents, namely, the Wellington and first Westinghouse patents, already considered, had, eight years before the granting of the second Westinghouse patent, taught the use of a slot in the strut. A mechanic engaged in the construction of brake beams, therefore, had before him, in 1886, the date of the application for the patent in suit, both features of the former art, namely, the use of the slot in the end of the strut as the place for locating the fulcrum bolt of the brake lever, and also the insertion of a bolt through the strut, between the compression and tension members, to serve as such fulcrum. It is claimed that this last-mentioned device is the mechanical equivalent of the device of the patent, because, according to it, the brake lever straddles the strut, instead of having the strut straddle the lever, as in the patent. But, whether this be correct or not, the prior art, as shown in these prior patents, was such, in my opinion, as to very persuasively, if not irresistibly, lead mechanical skill and ingenuity to the very device of the patent in suit. The patentee had a problem before him, and that was, how and where to apply the brake lever. He knew, by the instruction of the prior patents, that it had been applied in a slot at the end of the strut. He also knew that it had been applied on the outside of the strut, between the compression and tension members, by the use of a bolt, bolting the brake to the strut, and thereby affording it a fulcrum. He was thereby necessarily taught that a slot had been used in which to locate the fulcrum of the lever, and he had also been taught that this fulcrum had been located between the members. It does not seem to me to require any inventive skill to apply this information in the way and manner done in claim 6 of the patent in controversy, by locating a slot for the introduction of the brake lever between the members. Not only so, but the prior publication in the Car Builders' Dictionary of 1879 plainly discloses the slot in the strut, between the compression and tension members, practically as called for in the sixth claim of the patent in suit. The diagram found in this dictionary presents to the eye very clearly the employment of the slot exactly as the same is called for in claim 6 of the patent. I therefore conclude that the device now under consideration is so fully anticipated in the prior art as to devest it of all patentable novelty.

The foregoing conclusion renders unnecessary any consideration of the voluminous evidence relating to prior use, relied upon by the defendant in this case.

The next patent, in order of time, is the Hein patent, No. 361,009, the second claim of which is alleged to be infringed by the defendant. This claim is as follows: 'The combination in a brake beam of a hollow beam, a strut, and plugs or caps, 8, and a truss rod, 3, which extends through the caps, 8, and is provided with nuts, substantially as and for the purposes specified.'

When this patent was originally applied for, the patentee claimed broadly as follows: (1) A hollow metallic brake beam; (2) the combination with a hollow metallic brake beam of a truss rod and strut; (3) the combination with a hollow metallic brake beam of a truss rod and end caps. It must be observed from the foregoing that the claim, as originally made, was very broad, with respect to end caps; in fact, the combination, as first claimed, contemplated any kind of an end cap. The patent office, referring to Westinghouse patent, No. 142,600, of September 9, 1873, and Hedrick patent No. 322,099, of July 14, 1885, refused to grant the patent, deciding that the invention was substantially anticipated by the references made. After argument by the attorney of the patentee, the same claims, with slight modifications, were again submitted for reconsideration. The patent office, after citing Westinghouse patent, No. 345,093, of July 6, 1886, and Eddy Patent, No. 176,522, as additional references, again refused the patent. Afterwards, the patentee amended his claims, canceling the first, second, and third claims above referred to, and substituted, in lieu thereof, claim 2 of the patent as now sued on, which, as already seen, calls for a combination in a brake beam of a hollow beam, a strut, and end plugs or caps, 8. As I construe this action of the department, it is the equivalent of saying that a combination of the hollow metallic brake beam with a truss rod and end caps, generally, was not, in the light of the art as it then existed, patentable. The patentee, instead of appealing from the decision of the examiner, acquiesced therein, and amended his claims so as to limit the same to a combination of a truss beam with the peculiar plugs or caps marked '8' in the drawings, and it is this combination to which the complainants are entitled, under the second claim of their patent, and nothing else.

It seems unnecessary to cite any authorities to the proposition that when the patentee limits his claim, after rejection by the patent office, he cannot be heard to contend that the claim allowed has the breadth of the claim rejected, or that he is entitled to such construction of his allowed claim as would be the equivalent of his rejected claim. He has voluntarily acquiesced in a limitation, and must be held to have abandoned or surrendered to the public the broad original claim, except as modified by the amended and allowed claim. Roemer v. Peddie, 132 U.S. 313, 10 Sup.Ct. 98, 33 L.Ed. 382, and cases cited; Brill v. Car Co., 33 C.C.A. 213, 90 F. 666.

Again this claim is for an improvement in brake beams for railway cars. Constructions involving all the elements of claim 2, except possibly the particular end plugs, 8, were old and well known at the time the application was filed. Such was the statement of the patent office at the time it rejected the original claims. The patent now under consideration is one of the many steps taken in the development of the modern brake beam. The inventive genius of many persons had been, and thereafter continued to be, employed in this field of invention. End caps of certain kinds and descriptions had been before that time resorted to for...