Westinghouse v. Hien

• Decision Date: 31 October 1907
• Docket Number: 1,370.
• Citation: 159 F. 936
• Parties: WESTINGHOUSE et al. v. HIEN et al.
• Court: U.S. Court of Appeals — Seventh Circuit

159 F. 936

WESTINGHOUSE et al. v. HIEN et al.

No. 1,370.

United States Court of Appeals, Seventh Circuit.

October 31, 1907

Rehearing Denied January 14, 1907.

This is an appeal from a decree of the Circuit Court dismissing on demurrer appellants' bill as amended, because, as the Circuit Court held, it was brought prematurely. The question relates entirely to the Patent Office practice as to appeals in interference cases. The action was brought to rescind a contract for the sale of rights claimed under applications for patents for inventions in friction draft and buffing apparatus.

The bill was filed February 1, 1906, and prays for a decree for the cancellation of three contracts by which the appellee Phillip Hien, granted to the appellants the exclusive right to manufacture, use, and sell apparatus under certain inventions supposed to have been made by him, for an injunction against a suit at law on the contracts, and an accounting for moneys paid thereunder.

The bill, as amended, after averring the citizenship and residence of the parties, alleges that on or about November 24, 1902, appellant George Westinghouse was the owner and patentee of certain specified United States letters patent (12 in number) relating to improvements in friction draft and buffing apparatus; that appellant, the Westinghouse Air Brake Company, as licensee, was then and for many years had been manufacturing and selling apparatus embodying said improvements, and that this was a large and valuable part of its business.

The following facts appear from the amended bill: On or about said day, November 24, 1902, appellees Hien and Chamberlin represented to appellants that Hien was the inventor and owner of certain inventions for which applications for United States letters patent were then pending, viz., No. 116,187 for a friction spring; No. 117,244, for draft gear and buffing apparatus; and No. 121,756, for friction spring; and of a Canadian patent for improvements in friction spring. Messrs. Hien and Chamberlin further represented that the invention set forth in application No. 116,187 was a broad and generic invention, and that the inventions set forth in applications Nos. 117,244 and 121,756 were specific and detailed features of improvements of the said generic invention under and subordinate to said application No 116,187; that the said generic invention set forth in said application No. 116,187 was a wide departure from anything theretofore known in the art to which it related, and by reason of its effectiveness and cheapness of construction would work a revolution in said art, and would be of great practical commercial value and importance. Messrs. Hien and Chamberlin stated also that an interference had been declared by the Patent Office between Hien's application No 116,187 and that of one Shepard, No. 90,831, involving claims 1, 3, 4, and 13 of Hien, and was then pending, but that they, the said Hien and Chamberlin, had carefully investigated the patentable subject-matters involved in said interference; that the said subject-matters were in fact separate and distinct, and that no interference in fact existed.

After making the aforesaid representations and statements, Hien and Chamberlin solicited the appellants to enter into a contract with Hien for the exclusive right to manufacture, sell, and use devices made in accordance with the inventions set forth in said applications and Canadian patent, upon a royalty; and the appellants believing that said representations and statements were true, and that said Hien was in fact the true, original, and first inventor and owner of the inventions, and relying upon said statements and representations, consented to and did, on or about said November 24, 1902, enter into a contract with the said Hien. It is not necessary to state the terms of the contract with particularity, but it gives and grants to Westinghouse the exclusive right to make, sell, and use the invention, and Westinghouse agrees to pay a certain royalty on all friction draft and buffing apparatus made and sold by him, whether under the invention assigned by the contract or otherwise. A large sum was paid under the contract, but on July 1, 1905, further payment was refused, on the ground that the contract conveyed nothing, and was made, by mistake of fact.

The bill further alleges that, according to the practice of the United States Patent Office, no interference is declared until the Office has determined that the subject-matter in interference is patentable; and that by virtue of said practice, when said appellees Hien and Chamberlin informed appellants that said interference with said Shepard was pending, appellants understood and believed, and were warranted in understanding and believing, that both applications disclosed patentable subject-matter.

It is also alleged that both appellants and appellees Phillip Hien and Walter H. Chamberlin were mistaken as to the fact of said patentable subject-matters being separate and distinct subject-matters; that upon the hearing of said interference in the Patent Office it was contended on the part of Shepard that the said patentable subject-matters; that upon the hearing of said interference an interference in fact existed, and that Shepard was the first and original inventor of the said patentable subject-matters; that, upon the part of Hien, it was contended that the said patentable subject-matters were in fact separate and distinct, and that no interference in fact existed; that said contentions were fully argued before and considered by the Primary Examiner in said Patent Office and also before the Commissioner of Patents in person on appeal; and the Commissioner of Patents decided that the said patentable subject-matters in interference were in fact one and the same; that an interference in fact existed, and that Shepard was in fact the first and original inventor of said patentable subject-matter, and was entitled to letters patent of the United States therefor; that said determination was and is the final determination of said Patent Office in said interference proceedings; that no appeal therefrom to the Court of Appeals in and for the District of Columbia was had or taken; or any other proceedings in said Court of Appeals to review, modify, or set aside said final determination; and that afterwards, and in consequence of the said final determination of said Patent Office, letters patent of the United States, No. 769,841, dated September 13, 1904, were granted to the said Louis A. Shepard, as assignor to Cornelius Vanderbilt, said letters patent containing claims for the subject-matter in issue in the said interference between the said application of the said Shepard, and the said application serial No. 116,187 of the appellee Hien, and that on or about the 2d day of October, 1905, the said United States Patent Office, acting by its Primary Examiner, formally and finally rejected the said claims, 1, 3, 4, and 13 (the claims involved in said interference) of the said application No. 116,187 of appellee Hien, pursuant to rule 132 of the Patent Office, and refused to grant and issue to the said defendant Phillip Hien letters patent of the United States upon said four claims.

The applications of Shepard and Hien each contained a number of claims, and four of the claims in each disclose a broad, generic invention of draft gear and buffing apparatus. The four Hien claims, when compared with the four Shepard claims, appear to be identical in substance, and show an almost complete identity of language; but the devices accompanying the applications are quite different, although apparently operating along the same lines. The representations made by Hien and Chamberlin to Westinghouse that the patentable subject-matters of the two applications were in fact separate and distinct, appear to have been based on the difference of construction shown by the drawings. The eight claims in question follow:

Alleged Hien claims 1, 3, 4, and 13 are:

'1. A device of the character described comprising a series of resilient elements having inclined frictional surfaces adapted when said series of elements are subjected to compression to be relatively moved thereby placing said resilient elements under tension.'

'3. A device of the character described comprising a series of resilient rings having inclined frictional surfaces adapted when said series of rings are compressed to be relatively moved thereby placing said rings under tension.

'4. A device of the character described comprising an expansible resilient ring and a compressible resilient ring, said rings having complemental inclined engaging frictional surfaces.'

'13. In an apparatus of the character described, an open spring ring having an inclined frictional surface adapted to be engaged by a similarly inclined surface to impart tension to the ring.'

The alleged corresponding claims in Shepard's patent are:

'14. A device of the character described comprising a series of resilient elements having inclined frictional surfaces, adapted when said series of elements are compressed to be relatively moved, thereby placing said elements under tension.'

'13. A device of the character described comprising a series of resilient elements having inclined frictional surfaces, the surfaces on adjacent elements adapted when said series of elements are subjected to compression to be relatively moved through engagement with each other, thereby placing said resilient elements under tension.'

'15. A device of the character described comprising an expansible resilient element and a compressible resilient element, said elements having complemental inclined engaging frictional surfaces.

'16. In an apparatus of the character described, an open spring...