Railway Company v. Sayles

• Decision Date: 01 October 1878
• Citation: 97 U.S. 554,24 L.Ed. 1053
• Parties: RAILWAY COMPANY v. SAYLES
• Court: U.S. Supreme Court

97 U.S. 554

24 L.Ed. 1053

RAILWAY COMPANY v. SAYLES.

October Term, 1878

APPEAL from the Circuit Court of the United States for the Northern District of Illinois.

Argued by Mr. George Payson for the appellant.

Contra, by Mr. Albert H. Walker and Mr. S. D. Cozzens, the former on the question as to validity and accounting, and the latter on the question of infringement.

The facts are stated in the opinion of the court.

MR. JUSTICE BRADLEY delivered the opinion of the court.

This suit was commenced in the Circuit Court in December, 1861, by bill in equity filed by Thomas Sayles, the appellee, on letters-patent No. 9109, for an improvement in railroadcar brakes, issued on the sixth day of July, 1852, to Henry Tanner, as assignee of Lafayette F. Thompson and Asahel G. Bachelder. The bill charged that the Chicago and Northwestern Railway Company, from the 1st of June, 1859, to the time of filing the bill, infringed, and was still infringing, the said patent, of which the complainant had become the owner, and prayed for an injunction and an account of profits received by the defendant from the use of the invention patented.

The defendant answered, setting up prior invention and use by others of the improvement claimed, and denying infringement.

After proofs taken, a decree was rendered for the complainant in February, 1865, and a reference ordered. This decree was afterwards opened, and the defendant was allowed to introduce newly discovered evidence. A decree was again rendered for the complainant in July, 1871, and reference again ordered. The master reported profits received by the defendant, for the period of five years, from June 2, 1859, to June 2, 1864, to the amount of $63,638.40, being $41,280 for saving in wages of brakemen, and $22,358.40 for saving in car-wheels. A decree was rendered for the whole amount in December, 1873; but on a further rehearing in September, 1875, the item for saving on car-wheels was apparently thrown out, and the decree was reduced to the sum of $47,725. From this decree the present appeal is taken. The counsel for the appellee now concedes that, in the light of our decision in Mowry v. Whitney, 14 Wall. 620, the principle adopted by the master was not correct, and consents that the decree be further reduced to the sum of $24,768, with interest from the date of the report.

The evidence in the case is very voluminous, especially in reference to the question of priority of invention, and would be well calculated to present questions of much embarrassment and difficulty for our determination, if we felt obliged to pass upon the validity of the patent. But as we are satisfied that the Stevens brake used by the defendant is not an infringement of the plaintiff's patent, we are relieved from that unpleasant and difficult duty, involving the weight of evidence given by witnesses speaking to facts and occurrences long past, and often in direct conflict with each other.

At the time when the complainant alleges that Thompson and Bachelder completed the invention for which the letterspatent on which the suit is brought were granted, namely, in 1846 and 1847, double trucks under railroad cars had come into general use in the country, and it was a desideratum to have a brake, or system of brakes, which could be operated from either end of the car, upon the wheels of both trucks; and a number of inventors were in the field, contriving and testing their various devices. Like almost all other inventions, that of double brakes came when, in the progress of mechanical improvement, it was needed; and being sought by many minds, it is not wonderful that it was developed in different and independent forms, all original, and yet all bearing a somewhat general resemblance to each other. In such cases, if one inventor precedes all the rest, and strikes out something which includes and underlies all that they produce, he acquires a monopoly, and subjects them to tribute. But if the advance towards the thing desired is gradual, and proceeds step by step so that no one can claim the complete whole, then each is entitled only to the specific form of device which he produces, and every other inventor is entitled to his own specific form, so long as it differs from those of his competitors, and does not include theirs. These general principles are so obvious, that they need no argument or illustration to support them. We think they are specially applicable to the case before us.

The patent sued on was granted on the sixth day of July, 1852. It was not the first patent granted for double car-brakes. A patent for such a brake had been granted to one Charles B. Turner, on the 14th of November, 1848; another to Nehemiah Hodge, Oct. 2, 1849; and a third to Francis A. Stevens, Nov. 25, 1851; and double-acting brakes had been constructed by other persons before any of these patents were issued. The patent granted to Tanner antedates the other patents referred to, by reason of its being issued upon an application for a patent made by Thompson and Bachelder, on the 29th of June, 1847. It is alleged by the complainant that Thompson and Bachelder completed their invention as early as the fall of 1846, and made a model of it in January, 1847, a copy of which is put in the case. The application filed by them in the Patent Office in June, 1847, is the first authentic evidence, of a public character, of what their invention was. A copy of this application and of the drawings and model by which it was accompanied have been exhibited in evidence, and necessarily constitute an important feature of the case. Being regarded as defective and insufficient by the Patent Office, no patent was granted at the time, and the application lay dormant and without alteration for the space of five years; when, being purchased by Tanner, and being considerably modified and changed, the letters-patent now in question were issued to him as assignee of Thompson and Bachelder. It is obvious that the original exhibit of the invention made by them, and remaining so long in the Patent Office unchanged, should possess great weight as to what their invention really was, and what they claimed it to be.

Of course their object was to connect the brakes of the two trucks together in such a manner as to make them operate together by the application of force at either end of the car. This force they proposed to apply either by hand at the windlass on the platform, or by the bumpers when the train was slowed and the cars came together. The latter seems to have been their favorite plan, and to effect it was one of the principal objects of their improvement.

The system of brakes attached to each truck was not materially changed by them. An upright lever in the centre of the truck was so connected with the brakes on both pair of wheels as to draw them tightly to the wheels when its upper extremity was forced inward towards the centre of the car. To this upper extremity of the lever the external force was applied when the brakes were to be put on. The inner end of the bumper being attached thereto, produced the desired effect when the bumper was pushed in by the adjoining car. The same effect was produced by winding up the windlass by hand, by means of a chain and pulley working from a point inside of the lever, that is, nearer to the centre of the car.

The next point was to communicate this movement of the brakes in one truck to those of the other, by some device that would cause the upper extremity of the lever, in the latter, to be drawn inward, towards the centre of the car, at the same time that the lever on the first truck was forced inward; a simple rod connecting them together would not do this, but it would have the contrary effect. The...