Vapor Car Heating Co., Inc. v. Gold Car Heating & Lighting Co.

• Decision Date: 03 May 1920
• Citation: 296 F. 188
• Parties: VAPOR CAR HEATING CO., Inc., et al. v. GOLD CAR HEATING & LIGHTING CO. VAPOR CAR HEATING CO. v. SAME.
• Court: U.S. District Court — Southern District of New York

296 F. 188

VAPOR CAR HEATING CO., Inc., et al. v. GOLD CAR HEATING & LIGHTING CO.

VAPOR CAR HEATING CO. v. SAME.

United States District Court, S.D. New York.

May 3, 1920

The first of these suits was filed on January 12, 1916, and was brought upon five patents, of which one was withdrawn pending the suit. The four remaining patents were granted to Egbert H. Gold, as follows: 768,019 was applied for January 11 1904, and granted on August 16, 1904. 925,896 was applied for January 30, 1905, and granted on June 22, 1909. 944,187 was applied for January 27, 1905, and granted on December 21 1909. Reissue patent 13,059 was applied for August 13, 1909 and was granted on December 21, 1909. The original of this patent No. 890,138, was applied for on May 21, 1906, and was granted June 9, 1908. The claims in suit are the following Claim 6 of patent 768,019. Claims 5 and 8 of patent No 925,896. Claims 12 and 20 of patent No. 944,187. Claims 1, 6, 7, 8, 11, 17, 18, 19, and 21 of No. 13,059.

The bill in the second suit was filed November 29, 1918, and was brought upon patent No. 758,436, which was applied for on August 25, 1903, and granted April 26, 1904. Claims 10, 11, and 12 of that patent are in suit.

All the patents concern steam-heating equipment for railway cars. Patents 758,436 and 768,019 are patents for the 'vapor system,' in which the steam in the radiators is always at atmospheric pressure; the admission of steam from the locomotive being regulated by a valve at the inlet end of the radiator system. The other patents concern the so-called 'convertible system,' by which at will by a hand-operated valve the system can be used as a 'vapor system,' or as a high-pressure system. In the high-pressure system the steam in the radiators is at train-pipe pressure. The outlet of the radiator under those circumstances must be closed to prevent the escape of steam, but must also be capable of being opened to let out the water of condensation. This is accomplished by a steam trap or drip pipe, controlled by a valve and thermostat, which alternately opens and closes as water of condensation forms at the outlet end of the radiator system.

The defendants attack all the patents for noninfringement and invalidity and object to any decree in the first suit upon the ground of laches. The other facts appear in the opinion.

The prior art patents referred to in the opinion are: Brinckerhoff, United States patent No. 304,695, September 9, 1884; Cleuet, French patent No. 180,961, January 18, 1887; Weber, United States patent No. 403,162, May 14, 1889; Tudor, United States patent No. 618,921, February 7, 1899; Kampf & Webers German patent No. 117,850, February 15, 1900; Heintz, French patent No. 327,061, December 6, 1902; Hill, United States Patent No. 502,563, August 1, 1893; E. H. Gold, United States patent No. 771,628, October 4, 1904.

Patent 758,436.

Otto Raymond Barnett, of Chicago, Ill., for plaintiff.

William A. Redding and Arthur C. Fraser, both of New York City, for defendants.

LEARNED HAND, District Judge (after stating the facts as above).

The claims in suit are 10, 11 and 12. All are infringed by the defendant's vapor valve, 1112; the median diaphragm does not prevent the valve from being open to the atmosphere. Therefore the case turns upon validity. Let me ignore for the moment claims 11 and 12 and consider claim 10. Cleuet and Tudor had both shown devices for regulating the inlet of steam into a radiator system by a thermostat controlled by the exhaust steam. The basic idea, so far as there was one, had therefore been discovered, and Gold has no claim to it. His success must depend upon something else. Weber showed the same idea; the thermostat being situated in the discharge chamber. He had, however, a combination of steam trap and inlet valve which he thought to regulate simultaneously by a single thermostat, apparently to establish an intermediate pressure. Had he indicated that the thumb nut, G', might be moved to lift the valve on the shaft, o', permanently out of operation, claim 10 of the patent in suit would be clearly invalid. Weber did not do so, and the Examiner allowed this claim, as well as claims 11 and 12, because for this reason Weber did not show a thermostatic chamber open to the atmosphere. In so ruling he was in direct opposition to all those rulings which eventually deprived E. E. Gold of his patent for the interchangeable system, since these all proceeded upon the theory that Weber could be made to operate either as a pressure or a vapor system by mere manipulation; i.e., that Gold's patent was for a new use of Weber. At the time of his ruling this idea, which afterwards controlled in all courts, had not apparently occurred to the authorities. It arose only after the interference of Gold v. Gold v. Cosper had been decided, seven or eight years after patent 758,436 issued. If the final attitude of the Patent Office was right, claim 10 in the case at bar is also invalid, because the greater includes the less. E. E. Gold would not have lost his patent, unless Weber included both a vapor and a pressure system. I should not have any question whatever that I should follow these rulings, except that in affirming the decree below in Gold v. Newton, 254 F. 824, 166 C.C.A. 270, the opinion of the Circuit Court of Appeals said obiter that a majority of that court thought that E. E. Gold's patent was good, and yielded only because of the difference of opinion in that court and of the great body of prior decision the other way. Gold v. Newton, 254 F. 824, 166 C.C.A. 270. That body of opinion is said not to be authoritative, as this case arises, especially since the Examiner has here found with the patentee. However that may be, it appears clear that this patent is invalid independently of Weber, and I shall therefore ignore my own ideas on that subject, in deference to the intimation in the opinion in Gold v. Newton.

The Examiner, though he allowed the claim over Weber, did so only because the exhaust was open to the atmosphere, in the sense that there was no effort to establish an intermediate pressure in the radiator, as Weber tried to do, effectively or ineffectively. In both Cleuet and Tudor such a valve was absent, and they failed to anticipate only because the thermostat was not inclosed within the chamber. Both of these limitations were therefore necessary to claim 10. I should have a great deal of doubt whether the mere omission of the drip valve of Weber was invention, but that point I pass. Assuming that it was a good distinction, the question is whether two other patents, Kampf & Weber and Heintz, do not anticipate; neither of these having been before the Examiner. Heintz clearly has both features, because he says that the thermostat 'is in communication through k to the open air. ' Moreover, the thermostat is mechanically within the 'fluid conduit,' or 'the outlet chamber,' in the sense that the specification means (page 2, lines 110-126). The only possible question is whether it is functionally so situated. This in turn depends upon whether in operation the exhaust steam comes into contact with it, and this finally turns upon the somewhat baffling operation of Heintz's 'injector.' If his disclosure is to be taken as it reads, the patent is a complete anticipation of claim 10. The fact that the thermostat is affected by a mixture of exhaust steam and air, instead of steam, is of no consequence, provided it can be set to cut off the supply when the radiator can condense no more of the steam admitted. Precisely that is the point of the plaintiff's attack.

It must be admitted that the question is not simple, yet I think that the operation can be understood. Let me suppose that the system is already in operation, and that the inlet valve is open. In that case Mr. Reeve, whose opinion is always entitled to much weight, agrees that there will always be some suction-- though it may be only a very gentle one-- at the mouth, x, of the nozzle, m, from which, of course, it follows that gas of some sort, air, or steam, or air and steam will be drawn into the thermostat chamber. Even though the balance be so perfect between supply to, and condensation by, the radiator system, that no steam will emerge, there will be a change of gas in the thermostat chamber. If the radiator condenses all the steam, the suction must be of air, and the valve will remain open, as it should. If steam emerges at g, then it will either be sucked up with air into the thermostat chamber, mixed or unmixed with air, or, if it be in large enough volume, it will divide at the by-pass and part go into that chamber as pure steam at atmospheric pressure, and part blow-off through k. In either event the temperature of the chamber will be raised above that of the air. It will, of course, vary with the temperature of the air and the proportions of steam to air of which the mixture is composed, but it will always be higher than air.

If the thermostat be set so as to close the inlet valve at a relatively low temperature, it will, of course, close at all higher temperatures. As soon as uncondensed steam emerges at g and is mixed with air, it will close the valve, unless the air be so cold and in such quantity as to reduce the mixture below the critical point selected. It is true that the mixture will vary in heat, and that to close the valve more steam must emerge at one time than another; but the thermostat may still be set only for a temperature safely higher than any possible atmospheric temperature, e.g., 130 degrees F. In very cold weather it might take considerable steam to raise the air sucked in to that heat; that would indeed result in delaying the automatic closing of the valve depending upon how great a proportion of air was mixed with...