Thomson-Houston Electric Co. v. Ohio Brass Co.

• Decision Date: 17 May 1897
• Docket Number: 479,480.
• Citation: 80 F. 712
• Parties: THOMSON-HOUSTON ELECTRIC CO. v. OHIO BRASS CO. et al.
• Court: U.S. Court of Appeals — Sixth Circuit

80 F. 712

THOMSON-HOUSTON ELECTRIC CO. v. OHIO BRASS CO. et al.

Nos. 479, 480.

United States Court of Appeals, Sixth Circuit.

May 17, 1897

These are appeals in two patent cases between the same parties that present questions of such a similar character that they were argued together, and may be properly disposed of in one opinion. The appeals are from orders of preliminary injunction made before a hearing upon the merits. The first case was a suit by the Thomson-Houston Electric Company to enjoin the alleged infringement by the Ohio Brass Company of United States letters patent No. 424,695, for certain new and useful improvements in suspended switches for electric railways, issued to Charles J. Van Depoele, April 1, 1890 and assigned by mesne assignment to the complainant below. A preliminary injunction was issued against the making and selling by the defendant below of overhead conductor switches for electric railways for use in the combinations covered by the third, fourth, and eleventh claims of the patent. The second case was a suit by the same complainant against the same defendant for an alleged infringement of United States letters patent No. 495,443, issued to Charles J. Van Depoele for new and useful improvements in suspended switches and traveling contacts for electric railways, and assigned by mesne assignments to the complainant below. A preliminary injunction before the hearing on the merits was granted enjoining the defendant from the manufacture or sale of trolleys or trolley bases intended to be used in the sixth, seventh, eighth, twelfth, or sixteenth claims of said patent. It appeared in the first case that in a suit before Judge Coxe, in the Northern district of New York, the validity of patent No. 424,695 was in issue, and the validity of the claims here involved was sustained. 69 F. 257. The cause was carried to the circuit court of appeals for the Second circuit, and the order of injunction, so far as the claims here involved were concerned, was affirmed, though the complainant was required to enter a disclaimer as to certain other claims in the patent, to wit, the second, ninth, and tenth, which disclaimer was duly made and filed in the patent office. 18 C.C.A. 145, 71 F. 396. In the second case it appeared that the validity of patent No. 495,443 had been at issue in a cause heard upon its merits, and passed to final decree before Judge Townsend, in the district of Connecticut, and that the claims of the patent here involved were sustained.

There were two principal objections made in this court to the injunctions below. The first was that there was not any proof of actual infringement or of an intention to infringe the combinations covered by the claims set forth in the orders of injunction appealed from. The second objection was that the patents Nos. 424,695 and 495,443 were both void, the latter because the former, a patent of earlier issue, was for the same invention, and the former because patent No. 397,451, a still earlier patent issued to the same patentee, covered and was also for the same invention. Upon the first objection in the two cases, the evidence was substantially the same. The claims in both patents covered combinations of parts used in an electric street railway in which the track, the car, the overhead conductor, and switches, and the trolley or contact device formed elements. The charge of infringement in the first case, involving patent No. 424,695, was based on an admitted sale by defendant of an overhead switch; and the charge as to infringement of No. 495,443 was based on an admitted sale of a trolley, pole, and contact wheel. The sales were made at the same time to an agent of the complainant. The agent of defendant who sold says that he suspected that the purchaser was an agent of complainant. The memorandum of sale of these articles, and receipt for the price, signed by defendant, were as follows:

"Mansfield, Ohio, Feb. 4, 1896.

"The Ohio Brass Co., sold to Edwin W. Hammer, Newark, N. J.

1 Str. Under-Running Adj. Switch, No. 1145 .............................. $2 25

1-12 inch Pole Ohio Trolley Buck Harp T. H. Wheel 15 50

"Paid............................................. The Ohio Brass Co.,

"Feb. 4, 1896................................ "Per L. P. Bennett, Cashier."

A book admitted to be a catalogue printed by defendant, and circulated by it in the trade, was offered in evidence. This purported on its face to be a catalogue of electric railway material and supplies made by defendant, and offered by it for sale generally to the trade. Below are excerpts from the catalogue containing illustrations of the articles exactly like those bought from the defendant by Hammer:

Ohio Trolley.

(Image Omitted)

'This trolley is one of the simplest and most effective on the market. It is made up of eight pieces, the working parts of which are made of steel, and malleable and wrought iron. The base and stand is 3 feet long, 8 inches wide, and, when the trolley pole is in a horizontal position, but 13 inches high. The trolley pole can be swung either forward or backward, or in a complete circle. It can be assembled or dismantled in a few minutes' time without the aid of tools. The tension on the pole is least when drawn down, and can be adjusted to suit, making it especially desirable for running under low structures.

Buckeye Trolley Harp.

(Image Omitted)

'This style of harp is made for use with steel trolley poles. It is light and strong in construction, and designed to avoid any danger from being caught by the overhead wires.

No. 1347-- Harp Complete, Bronze .......... Each $1 80

No. 1348-- " " Malleable Iron ... " 1 30

No. 1349--Contact Springs ..................... " 09

'Straight Under-Running Adjustable Switch.

(Image Omitted)

'These are similar in design to the Wood's adjustable switch, as shown on the preceding page, except that the tongues are so modified as to make a perfectly straight under-running approach to the switch pan for the trolley wheel.

No. 1145-- Two-Way. . . . . . . . . . . Each $5 50'

There were also affidavits on information and belief introduced on behalf of complainant that two street-railway companies were using trolleys and switches bought from the defendant. Defendant filed counter affidavits, in which the defendant's agent selling the switch and trolley to the agent of complainant stated that he did not know that they were to be put to an unlawful use, and denied that the defendant had sold switches or trolleys to the street-railway companies named in the complainant's affidavit, but there was no denial that the defendant had sold to others, and no statement that such sales had been made only for use by licensees of complainant.

Patent 424,695 was applied for March 12, 1887, and was issued April 1, 1890. The inventor, in the specifications, refers to his invention as follows:

'My invention consists in certain devices and their relative arrangement, by means of which a contact device carried by a rod or pole extending from the car, and pressed upwardly, into contact with the conductor, is switched from one line to another, correspondingly with the vehicle. * * * I also make claims in this application to a switch plate particularly designed for the arrangement which forms the principal subject-matter of this application. More particularly my invention consists in a track switch for the vehicle, a conductor switch for the contact device or 'trolley,' as it is termed, and the trolley itself attached to the vehicle; these elements being so arranged relatively to one another that in operation the vehicle reaches the track switch, and is diverted laterally before the trolley reaches the conductor switch, whereby the trolley, which partakes of the lateral movement of the vehicle, has imparted to it a laterally moving tendency before its switch is reached, and it therefore passes through the switch in the proper direction, corresponding to the movement of the vehicle.

'Fig. 1 is a side elevation of a car provided with my improved contact devices, and otherwise embodying my invention.

Fig. 1.

(Image Omitted)

'Fig. 2 is an enlarged detail showing the contact wheel in position in the switch box.

Fig. 2.

(Image Omitted)

'Fig. 4 is a top plan view of a portion of track, showing the conductor, the switch box, and the rails.

Fig. 4.

(Image Omitted) 'Fig. 5 is also a plan view, and is similar to the preceding, with the addition of a car shown in dotted lines.

Fig. 5.

(Image Omitted)

The patentee continues in the specification: 'In order that the contact wheel, E, shall be compelled to pass from one conductor to a branch, or one attached thereto leading in a different direction, I provide the inverted open-bottom metallic boxes, I, which are formed with branching compartments, and constructed in the form of switches conforming to the curves and angles of the track switches by which the direction of the car is controlled. These boxes are in the form of open, smooth, curved passages, and are free from obstructions within, so that the contact wheel, E, which is slightly depressed on meeting the end of the switch box, may roll freely therethrough, and move laterally therein, in the desired direction, without hindrance. Fig. 2 shows how the tips of the wheel flange are received on the undersurface of the switch plate, and how that the depending edges or ribs on the side of the plate are separated a distance greater than the thickness of the contact wheel, so that the latter is movable freely therein. The switch box, I, may take almost any shape, and may be made of thin sheet metal or of cast metal, as is most convenient; but I prefer the castings. The electric switches, I, are to be placed directly...