Railroad Supply Company v. Elyria Iron Steel Company

• Decision Date: 21 May 1917
• Docket Number: No. 95,95
• Parties: RAILROAD SUPPLY COMPANY, Petitioner, v. ELYRIA IRON & STEEL COMPANY
• Court: U.S. Supreme Court

244 U.S. 285

37 S.Ct. 502

61 L.Ed. 1136

RAILROAD SUPPLY COMPANY, Petitioner,

v ELYRIA IRON & STEEL COMPANY.

No. 95.

Argued April 17 and 18, 1917.

Decided May 21, 1917.

Messrs. Taylor E. Brown and Clarence E. Mehlhope for petitioner.

Messrs. Frederick P. Fish, Frank F. Reed, and Edward S. Rogers for respondent.

Mr. Justice Clarke delivered the opinion of the court:

On March 26, 1909, the Railroad Supply Company, petitioner, commenced this suit against the Elyria Iron & Steel Company in the circuit (now district) court for the northern district of Ohio, claiming infringement of claim No. 8 of United States letters patent No. 538,809, granted May 7, 1895, of claims Nos. 1, 2, and 3 of patent No. 691,332, granted January 14, 1902, and of claims Nos. 7 and 9 of patent No. 721,644, granted February 24, 1903. All of these patents, granted to B. Wolhaupter, were acquired by the petitioner, and each of the three purported to describe a new and useful improvement in railroad tie plates.

Such proceedings were had in the case that on March 4, 1912, the district court decided that the petitioner's patents were not infringed by the device manufactured and sold by the defendant.

On appeal to the circuit court of appeals for the sixth circuit, that court, on April 7, 1914, affirmed the decree of the district court, dismissing the bill, and held in its opinion that the claims of the patents relied upon were void for want of patentable novelty. This decree is now here for review on certiorari.

A railroad tie plate, sometimes called a 'wear plate,' is a rectangular piece of metal, originally with both surfaces flat, designed to be placed upon the tie immediately under the rail, for the purpose of protecting the tie from the wear, which, in soft wood, is very great, incident to the vibration of the rail caused by passing engines and trains, and for the purpose of holding the rail more firmly in place than it could otherwise be held by the spikes without the plate, thereby preserving the gauge of the track.

In the early days of railroading, when engines and cars were small and light, when speed was comparatively slow, and when hardwood, which held the spikes firmly in place, was abundant and cheap, such plates were little used; but the increase in weight of rails and rolling stock, the higher speed of trains, and the necessary use of the cheaper soft woods for ties, have brought them into extensive use. The general use of these plates with heavy rolling stock and traffic presented the problem of making them as strong and inexpensive as possible, and in a form such that they would adhere firmly to the ties while doing the least possible damage to the fiber of the wood.

The statement of this problem shows convincingly that even at the beginning it offered a very limited field for invention, if, indeed, it presented any field at all for the exercise of that inventive genius which it is the policy of the law to protect and reward with a monopoly for seventeen years.

The claims of the patents declared on are as follows: Claim 8 of Patent No. 538,809 reads:

'A railway tie plate formed on the under side with devices more or less sharpened adapted to penetrate and engage the tie, and on its upper side with a series of flanges on which the rail rests, substantially as described.'

It would be difficult to write in more general terms a description of any plate, whether channeled, corrugated, grooved, or ribbed on both sides.

Claims Nos. 1 and 2 of Patent No. 691,332, differ so slightly that No. 1 will suffice:

'A railway tie plate provided on its upper side with one or more flanges on which the rail may rest or by which it is directly sustained and on the under side with one or more tie-engaging flanges extending parallel with the upper flanges and directly beneath the latter, substantially as described.'

Claims 7 and 9 of patent No. 721,644 are so similar that only No. 7 need be quoted:

'A tie plate provided in its rail-supporting surface with transverse grooves or channels, and at one margin of said supporting surface with a transverse rail-abutting shoulder.'

Wolhaupter, the grantee of the three patents, was a civil engineer employed by a railroad company, and he testifies that he first turned his attention to tie plates for the purpose of improving them 'in the year 1893 or early in 1894,' and the earliest of his three patents in suit is dated May 7, 1895.

The earliest patent for a 'wear' or tie plate by that specific name, which is shown by this record, was issued in 1881, and between that date and the date of the issuing of the first patent in suit to Wolhaupter in 1895 twenty-six patents were issued, and in the seven years between 1895 and 1902, when Wolhaupter's second patent in suit was issued, nineteen more patents were issued for various forms of this simple device.

Thus it is seen that Wolhaupter came late into this narrow, and even then much exhausted, field of investigation, and in his first patent (not here in suit), dated December 11, 1894, he claims invention for placing one, or permissibly two, 'elongated divided ridges' on the under side of such a plate to engage the tie, and on the upper side a series of ridges parallel with those on the lower side, but adapted, after being rolled, to being cut away to form a seat for the rail. There is no claim as to the relative positions of the ridges on the two faces of the plate.

In his second patent (the first in suit), his claim of invention is for 'one or more' flanges 'more or less sharpened' (not divided now) on the under side of the plate to engage the tie, and on the upper side a series of flanges (ridges) on which the rail may rest. The flanges (ridges) on the upper surface must not be placed vertically above the flanges or ridges on the lower, and there is no provision for cutting them away for a rail seat as in the first patent. The dominating thought of this patent is the cutting of the plate 'on a diagonal line with relation to the rail flange,' but as this form of plate is not claimed by the patentee in his later patents, and as no merit is claimed for it in the testimony in the record, it will be neglected.

In his third patent Wolhaupter's inventive genius placed the flanges on the under side parallel with and directly beneath those on the upper side of the plate, instead of between them, as in the second patent, or regardless of either position, as in the first.

In his fourth patent the flanges on the lower side are given a position 'transverse' to the ridges on the upper side.

In the first three of petitioner's patents the flanges on both surfaces of the plate are for use parallel to the grain of the tie and transverse to the length of the rail. In the fourth patent the flanges on the under side are described in the specifications and drawings as tranverse to, but in claim four as parallel to, the grain of the tie.

The minute and obviously wholly tentative variations, thus described, in the plates in the Wolhaupter patents, are fairly illustrative of the slight differences in form given to this simple device, on which this record shows forty ...