seems very plain. The defendant's expert seems to rely largely upon the assumption of the prior art, and that amendments made in the patent office so far restricted complainants' first claim that the key of any infringing device must be retractable entirely out of the movement, so as to permit the latter to be vertically taken out of the case, and that the latch spring must be fastened to the key or to the stem by exactly the form of attaching device, namely, rivets or clamps, or whatever is variously shown in the patent. He further acts upon the assumption that the defendant's latch spring is not attached either to the stem or to the key. I have examined the file wrapper and contents of the patent, and do not think that a fair construction of it limits the complainants' claim as counsel for the defendant contend. It seems clear to me that in the defendant's watch the latch-spring is attached to the stem. Mr. Knight claims that the rotatability of this spring is an advantage; but, as Mr. Dayton well says, this does not change the fact that the latch spring is attached to the stem. He insists that it is rotatably attached to the stem. He further insists that this attaching device in the defendant's case

"Does exactly what the attaching device does in the Colby patent, namely, bolds the spring from movement end wise of the stem, so that it, in turn, may hold the key from longitudinal movement. The fact that the defendant has introduced a new advantage or utility, so long as he retains the essential construction and the mode of operation, and retains all the results and advantages aimed at in the patent, and does this by the same means, it does not, in my understanding, lessen the subjection of his device to the claim."

Mr. Dayton, in his first deposition, in giving it as his opinion that "complainants' exhibit defendant's watch case clearly contains the invention set forth in the Colby patent," exhibited a drawing or sketch of the defendant's watch case, which, it seems to me, with his explanation, clearly shows an infringement, and makes it clear to me that the defendant's watch case falls exactly and clearly within the statement of the Colby patent, that:

"The essential features of all is the elastic or spring-latch attachment of the stem, B, with the key, C, whereby the latter is free to rotate, but is prevented from being moved longitudinally, except by a special effort."

In the case of Winans v. Denmead, 15 How. 343, the supreme court said:

“Where form and substance are inseparable, it is enough to look at form only. When they are separable; where the whole substance of the invention may be copied, in a different form,-it is the duty of courts and juries to look through the form for the substance of the invention,-for that which entitled the inventor to his patent, and which the patent was designed to secure. Where that is found, it is an infringement; and it is not a defense that it is embodied in forms not described, and in terms not claimed, by the patentee."

I think this rule applicable to this case, that the defendant's device embodies that which entitled the inventor to his patent, and which the patent was designed to secure,-and it is therefore an infringement. There may be a decree for the complainants, and the usual reference.

THOMSON-HOUSTON ELECTRIC CO. v. WINCHESTER AVE. RY. CO.

et al.

(Circuit Court, D. Connecticut. December 7, 1895.)

1. PATENTS-ANTICIPATION-IMPRACTICABLE PAPER PATENTS-INCOMPLETE De

SCRIPTIONS.

An invention is not anticipated by impracticable paper patents which it would require more than mechanical skill to adapt to the purpose of the invention, nor by patents in which the description is so vague, general, and incomplete as not to enable persons skilled in the art to perceive their adaptability to the practical apparatus of the invention in question, and to construct the same.

2. SAME-ANTICIPATION AND INVENTION-ELECTRIC RAILWAY TROLLEYS.

The fact that numerous skilled inventors, when first confronted by the problem of overhead contact for electric railway cars, did not adopt, adapt, and develop the devices of the electric railway signaling art, but started out on the new and independent lines of the overrunning trolley, is presumptive evidence that invention was required in the selection and adaptation from that art which resulted in the successful underrunning trolley.

3. SAME-CREDIBILITY AND WEIGHT OF EVIDENCE-TESTIMONY OF FORMER EM

PLOYE.

Testimony of a former employé of a patentee, after nine years of silence, that he himself made the invention, should not be believed as against the patentee's oath, especially when other evidence on behalf of the patentee is not accessible.

4. SAME-GENERIC AND SUBSIDIARY PATENTS - PRIOR ISSUANCE OF SUBSIDIARY PATENT.

Where an inventor, after applying for a patent for a broad and generic invention, afterwards applies for an improvement thereon, and a patent for the improvement is first issued, because the earlier application, without fault of the inventor, was delayed by interference proceedings, the fact of the prior issuance of the subsidiary patent does not affect the validity of the patent for the broad invention. Electrical Accumulator Co. v. Brush Electric Co., 2 C. C. A. 682, 52 Fed. 130, followed, and Miller v. Manufacturing Co., 14 Sup. Ct. 310, 151 U. S. 201, distinguished. 5. SAME-ELECTRIC RAILWAY TROLLEYS.

The Van Depoele patent, No. 495.443, for an improvement in traveling contacts for electric railroads, embracing a long, swinging, pivoted, hinged, and upwardly spring-pressed arm, extending from a support on top of the car, and equipped with an underrunning contact device, held not anticipated, valid, and infringed, as to claims 6, 7, 8, 12, and 16. 6. SAME.

The Van Depoele patent, No. 495,383, for an overhead electric railway contact device and switch, held void for want of patentable invention as to claims 11, 12, and 13.

7. EVIDENCE IN PATENT CASES-IRRELEVANT MATTER-PADDING OF RECORD. The growing abuse of introducing into the record in patent cases an inordinate mass of testimony, much of which is often irrelevant and immaterial, and also of inserting a confusing number of exhibits, commented upon and condemned by the court.

This was a bill in equity by the Thomson-Houston Electric Company against the Winchester Avenue Railway Company and others for alleged infringement of certain patents relating to electric railway contact devices.

Betts, Hyde & Betts, for complainant.

Kerr & Curtis, Wetmore & Jenner, and Chas. A. Terry, for defendants.

TOWNSEND, District Judge. Complainant, by this bill, asks for a perpetual injunction and an accounting, by reason of the infringement of patents No. 495,443 and No. 495,383, granted April 11, 1893, to the administrators of Charles J. Van Depoele, assignor to complainant. Both of said patents cover useful improvements in traveling contacts for electric railroads which are in general use in the trolley railway systems in this country, and both have been infringed by defendants. They will be designated hereafter as the "first" and "second" patents, respectively; No. 495,443, the main patent, and the earlier in date of application, being called the "first patent." The defense is conducted by the Westinghouse Electric & Manufacturing Company, one of the parties defendant.

The defenses to said first patent are that the alleged invention was made by an employé of the Van Depoele Company; lack of patentable novelty, in view of the prior state of the art; and that the same invention had been previously disclosed by and patented to Van Depoele. The record is padded unnecessarily with irrelevant matter. Complainant's record covers 3,142 pages; that of defendant, 2,237 pages. The issues directly involved do not warrant the taking of such an inordinate mass of testimony, nor the introduction of such a confusing number of exhibits. This rapidly growing abuse in patent suits, if persisted in, must seriously interfere with the present practice of presenting, in an opinion, the results of a full consideration of all the important issues in such cases. If admonition will not answer, the next step must be the punishment of the offending party by the imposition of costs.

The alleged invention relates to improvements in the devices whereby contact is maintained between the trolley car and the overhead wire conductor. It embraces the long, swinging, pivoted, hinged, and upwardly spring-pressed arm, extending from a support on the top of the car, and equipped with an underrunning contact device.

The claims of the main patent, No. 495,443, infringed by defendant, are as follows:

“(6) In an electric railway, the combination with a suitable track and a supply conductor suspended above the track, of a car provided with a swinging arm carrying a contact device in its outer extremity and means for imparting upward pressure to the outer portion of the arm and contact, to hold the latter in continuous working relation with the underside of the supply conductor, substantially as described.

“(7) In an electric railway, the combination of a car, a conductor suspended above the line of travel of the car, a swinging arm supported on top of the car, a contact device carried by one extremity of the arm, and held thereby in contact with the underside of the electric conductor, and a tension device at or near the other end of the swinging arm for maintaining said upward contact, substantially as described.

"(8) In an electric railway, the combination of a car, a conductor suspended above the line of travel of the car, an arm pivotally supported on top of the car, and provided at its outer end with a contact engaging the underside of

v.71.no.1-13

the suspended conductor, and a tension spring at or near the inner end of the arm for maintaining said upward pressure contact, substantially as described."

"(12) In an electric railway, the combination with a car, of a post extending upward therefrom, and carrying a suitable bearing, an arm or lever carrying at its outer end a suitable contact roller and pivotally supported in said bearing, and provided at its inner end with a tension spring for pressing the outer end of the lever carrying the contact wheel upward against a suitable suspended conductor, substantially as described."

"(16) In an electric railway the combination of a car, a conductor suspended above the line of travel of the car, an arm pivotally supported on the top of the car, and provided at its outer end with a grooved contact wheel engaging the under side of the suspended conductor, and a tension spring for maintaining an upward-pressure contact with the conductor, substantially as described."

It will be unnecessary to consider them separately, as it is agreed that, while some are broader than others, they all cover substantially the same combination, so far as the issues herein are concerned. The vital questions at issue will be best understood by a statement of the facts which are admitted and proved, and of the claims made by each party as to the facts which are in dispute.

The combination of devices described in patent No. 495,443 is of great utility in the art of electric railroading, and has superseded every other known apparatus. The experts for defendant admit that they do not know that any one other than Van Depoele, prior to September, 1885, when he put said apparatus into practical operation, had proposed to equip the car of an electrically propelled road with a contact device mounted on the end of a long pole upwardly pressed by means of a spring, and to hinge the pole to the car, and make it turn on a pivot; nor that any one, prior to March 12, 1887, the date of the application for the first patent, had described, in an electric railway, the combinations specified in the infringed claims. The earlier electric railways, when equipped with wire conductors above the car, maintained contact therewith by means of "overrunning" trolleys connected by a cord or wire with the car, and towed along above the surface of the conductor. These devices were impracticable for general use, because of uncertainty of connection, lack of adaptability to various forms of switches, varying tension, liability to derailment, and for other reasons. The patented invention No. 495,443, as stated by complainant's expert, "consists generally in an electric railway having an overhead conductor, and a car for said railway provided with a contact device carried by the car so as to form a unitary structure therewith, and consisting of a trailing arm hinged and pivoted to the car so as to bridge the space between it and the conductor, and move freely both laterally and vertically, and said arm carrying at its outer end a contact device capable of being pressed upward by a suitable tension device into engagement with the underside of the conductor." The advantageous features of construction which give the system these capacities are (a) the location of the supply conductor above the track and line of travel of the car, and contact with its underside; (b) the arrangement of the contact device on a trailing arm; (c) the maintenance of a constant upward pressure by means of a

tension device operating upon a hinged arm. By the use of this system, numerous difficulties are overcome, and corresponding advantages obtained.

The defendant, in support of its denial of patentable novelty, in view of the prior state of the art, shows generally that electric railways, suspended conductors, and contact devices were old, and that the utility of such devices for conducting the current from such conductors to the instrument on the car was well known and variously applied. These systems, so far as the present consideration is concerned, were chiefly used either for electrically lighting a car, or for signaling to or from it. But defendant claims that, as in each case the object to be accomplished was to get a current from a conductor to a motor in the car, the difference in the ultimate result is immaterial. Counsel for complainant, on the other hand, claims, relying upon the long-settled rule of law as recently fully discussed and stated in Potts & Co. v. Creager, 155 U. S. 597, 15 Sup. Ct. 194, that said devices, as a matter of law, do not anticipate the patented device, because they relate to a remotely allied art, and did not suggest in their construction the particular problems which were presented by the conditions of trolley systems, and solved only by the inventions of the patent in suit. He further relies upon the fact that material alterations were required to adapt these devices to said new use, and that the effect of said transfer has been to supersede other methods of accomplishing said results.

For the determination of this question, it will be necessary to examine some of these earlier patents. Several of them refer generally to the use of a contact device for conducting a current from a main conductor located above, at the side, or below the line of travel of the car, to the motor or signaling or illuminating instru ment on the car. For securing contact some use brushes; others, trolleys dragged by the car; others show a grooved wheel or a wheel running between two conductors. It is not necessary to determine the effect of these patents upon the prior state of the art further than as showing that, under the comprehensive art of the distribution of electricity, devices for taking electricity from a stationary conductor, and conducting it to a translating device, were old, and that the utility of a grooved wheel, as distinguished from one not grooved, of a rigid arm, as distinguished from a flexible cable, of spring pressure, as distinguished from gravity, of an overhead conductor, as distinguished from conductors otherwise located, of an underneath contact, as distinguished from an overrunning contact, and of a wheel or roller, as distinguished from a brush, were all well known, the principles on which they operated, respectively, were well ascertained, and the relative advantages and disadvantages of each well understood. The earlier patents were also suggestive of the fact that various devices were used, according to the differing requirements of various situations. It is not to be overlooked in this connection, however, that these devices referred to were, without exception, mere paper machines, which do not appear to have been capable of successful practical operation.