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could have been claimed in the earlier patent. In Suffolk Co. v. Hayden, 3 Wall. 315, cited in Miller v. Manufacturing Co., supra, a case closely resembling the one at bar was presented. The supreme court there held that, where an inventor first applied for a patent for a more generic invention, and, in a subsequent application, described this invention, but only therein claimed it in combination with other improvements, there was no presumption of abandonment, and the patent for the invention covered by the earlier application would be valid, even though later in date of issue than the patent for the subordinate combination. In The Barbed-Wire Patent, 143 U. S. 280, 12 Sup. Ct. 413, 450, the patent first applied for did not issue until after an improvement thereon had been applied for and granted; but the court held that this earlier patent was not for the same invention, because it was for an improvement which described the invention of the later patent without claiming it, except in combination with the improvement. Finally, the decision of the circuit court of appeals for the second circuit, in Electrical Accumulator Co. v. Brush Electric Co., 2 C. C. A. 682, 52 Fed. 130, affirming the decision of Judge Coxe in Brush Electric Co. v. Electrical Accumulator Co., 47 Fed. 48, is directly in point, and seems to be controlling upon the questions presented herein. There, the patentee, Brush, first applied for a patent for the broad invention of a secondary battery. While this application was delayed by interferences in the patent office, he filed a subordinate application for a certain improved form of shelves to hold the product of the generic invention. He stated that this application was a division of the broad invention. He subsequently obtained patents for both inventions, the subordinate one being earlier in date of issue. In a suit brought for infringement of the later patent, the defendant contended that the main invention was included in the subordinate patent. But Judge Coxe, and the court of appeals, affirming his decision, held that, although the subordinate application necessarily described the broad invention, its language showed that it was restricted to the subordinate invention, so that the public were not misled into supposing that the broad invention was abandoned. The circuit court of appeals further said that letters patent were not to be construed for the purpose of their destruction, nor to be treated in such a hostile or critical spirit as to allow them to be defeated by such a technical claim, and that the construction contended for by defendant was not demanded by the decided cases or known principles of law. The decision in Miller v. Manufacturing Co., supra, merely affirmed the well-settled law that two patents for the same invention could not issue to the same patentee. There is nothing involved therein which affects the claims in suit herein. If any departure from the settled rules of construction is justifiable in any case, it should not be allowed for the purpose of destroying a meritorious invention, embodying a construction which first made practicable the operation of the trolley railway under all conditions, and which is now employed on more than 500 electric railways in this country, representing an invested capital of about $500,000,000.
Patent No. 495,383, herein known as the "second patent," is for an overhead contact device and switch. Complainant claims that defendant has infringed claims 11, 12, and 13 thereof, which are as follows:
"(11) In an electric railway, the combination of a car, an overhead con. ductor, a standard on the car, a rotating support thereon, an inclined con. tact carrying arm hinged upon said support, and a tension spring secured so as to rotate with the support, and acting upon the said arm for holding the contact device in position.
"(12) In an electric railway, the combination with a car of a standard on the car, a rotating support thereon, an arm hinged upon said support, and provided with a grooved or flanged contact device for engaging with a suspended conductor, and a tension spring secured so as to rotate with the support, and acting upon the said arm for holding the contact device in position.
"(13) A reversible contact device for an electric railway vehicle, consisting of a standard, a rotating support thereon, a contact carrying arm hinged upon said support, and a tension spring secured so as to rotate with the support, and acting upon the contact carrying arm for holding the contact device in position."
Each claim covers practically the same construction, namely, a . rotating support for the post upon which the contact arm swings. The defenses are practically the same as those considered with reference to the first patent. The patent comprises "an improved apparatus whereby the upward-pressing contact is maintained against the conductor,” and “means for reversing the position of the contact arm upon the car.” In the first patent in suit, No. 195,413, the spring which maintained the upward pressure of the underrunning wheel was so fastened to the car, or otherwise arranged, as to interfere with the lateral movements of the swinging arm. By the substitution of this rotatable support and the attachment of said spring thereto, such movements are unrestricted, because the spring rotates with the support. Furthermore, it is unnecessary. to turn the car about in order to run it in an opposite direction, because, the apparatus being reversible, the arm may be so adjusted as to trail rearwardly from the supporting post. Utility is conceded. Infringement is proved.
The application for this second patent was filed long after the application for the first patent in suit and other applications had disclosed everything covered by these claims, except the single feature of attaching the lower end of the spring to a rotating support, so as to move therewith. But because this improvement is useful in permitting unrestricted lateral movement of the swinging arm, and in enabling the apparatus to be reversed without turning the car about, the arguments as to patentable novelty deserve careful consideration. This construction is not directly anticipated in the art of electric railway propulsion. In the art of electric railway sig. naling, several devices show or forcibly suggest the same idea of reversibility.
Patent No. 297,438, granted April 22, 1884, to Parish and Munn, shows a rotating support for a post upon which the hinged contact arm swings, and a tension spring so secured as to rotate with said support, and acting upon said arm for holding the end thereof
in position. The arm is downwardly, not upwardly, pressed; but, even if this form of upward pressure had not been already disclosed, any skilled mechanic would see that, to effect this change, it was only necessary to shift the position of the spring. Provision is made in said patent for locking the arm in operative position. When so locked, there is no rotating movement of the support or spring.
Patents No. 197,195, granted November 13, 1877, to Wolf, for an improved tilting chair, and No. 221,651, granted November 11, 1879, to E. Wright, for an animal tether, show that rotary spring devices attached to reversible supports were old.
As Mr. Brevoort, one of defendant's experts, says: "Now, it was clearly old to use trailing trolley arms. Parish and Munn showed how to make any one of these reversible, and the chair patent and the animal tether patent show mechanisms which any mechanic could utilize had he wished to, and had he desired to obtain that class of reversibility to which Parish and Munn referred, or that class of reversibility which is found in complainant's structure, where in one case, to wit, in Fig. 5, the springs are always attached to the support, and moved therewith, this being the class of mechanisms of the Parish and Munn earlier patent, the chair patent, and the cow tether patent."
He adds that the office chair construction was so universally known and understood, and reversibility of a structure such as a trolley pole was so fully described and shown in the Parish and Munn patent, that "after this it became merely a matter of selection on the part of a mechanic as to what mechanism he would employ to obtain the old and well-known result."
I am constrained, with some hesitation, to adopt this view. In Potts & Co. v. Creager, supra, Mr. Justice Brown says: “As a result of the authorities upon this subject, it may be said that, if the new use be so nearly analogous to the former one that the applicability of the device to its new use would occur to a person of ordinary mechanical skill, it is only a case of double use."
Bearing in mind that the means herein claimed merely consisted in so attaching the lower end of the spring to the rotating support that they would revolve together there was no solution of a problem in electrical railway propulsion, and no electrical effect. The prior devices were designed, adapted, and actually used for the performance of the same function. Topliff v. Topliff, 145 U. S. 156, 12 Sup. Ct. 825. The transfer was not to a branch of industry, but remotely allied (Potts & Co. v. Creager, supra); for the art of transmission of electricity showed the practical application of the principle in reversible springs. It did not require any peculiar inventive genius to perceive the relations between cause and effect, and to grasp the idea that the device might be adapted to a new art (Potts & Co. v. Creager, supra); for the same mechanical construction and effect shown in the ordinary office chair was substantially common to the field of practical arts as a whole (Consolidated Electric Manuf'g Co. v. Holtzer, 15 C. C. A. 63, 67 Fed. 910).
But it is urged in support of the argument in favor of patentable novelty that "it is also difficult to believe that Siemens, Edison, Daft, Henry, and others were not familiar with office chairs and animal tethers; yet they all missed large fortunes by failing to learn therefrom how to make the Van Depoele trolley." This argument seems plausible. The fact that one alone of several inventors successfully solves a problem, the solution of which all were seeking after, strongly supports the presumption of invention. In the earlier Siemens device, contact was obtained by means of rollers, and there was no occasion for the use of a reversible spring. pressed arm. In the later device the contact slides were drawn along by a flexible conductor and a sliding sleeve, and an arrangement much more practicable for such a construction than a reversible spring is provided. The Henry patents have no bearing on this question.
But an examination of the patents of all the above-named inventors shows that the two Siemens patents, two of the Edison pat. ents, and three of the Daft patents cover constructions where the conductor and contact devices are underneath the cars, and where either contact was maintained by gravity, or, for other reasons, there was no occasion for the use of a reversible spring. In Edison's later patent and in Daft's fourth patent, for overhead connections, devices for reversal were provided, which were better adapted to said constructions than a reversible spring would have been.
These facts, together with the considerations already discussed, showing that Van Depoele was the inventor of the novel construetion of the first patent, effectually dispose of the foregoing argument of complainant. Until Van Depoele had disclosed the overhead underrunning spring-pressed laterally swinging contact arm, there was no problem presented of reversibility of a rotating spring device, or of unrestricted lateral motion.
The reason for the universal adoption of the device of this serond patent follows as a corollary from the foregoing conclusions. Its adoption results, not from its patentable novelty, but from its practical utility in connection with the main invention. The doc. trine that utility, in the absence of patentable novelty, is immate. rial, is especially applicable where the sole foundation for the claim of utility lies in the mere mechanical adaptability of a wellknown device to a novel invention protected by a valid patent.
Let a decree be entered for an injunction and an accounting as to the claims in patent No. 495,41:3, and dismissing the bill as to patent No. 495,383. Let costs be taxed in favor of each party, as each succeeds as to one patent, but let judgment be entered only for the excess of the costs of one party over the other.
FLINT & P. M. R. CO. v. MARINE INS. CO., Limited.
(Circuit Court, E. D. Michigan. October 7, 1895.)
1. RULES OF NAVIGATION-SPEED IN Fog.
The word "fog," as used in Rev. St. $ 4233, providing that "every steam vessel shall, when in a fog, go at a moderate speed" applies to all atmospheric conditions increasing the perils of navigation, such as mist or
falling snow. 2. MARINE INSURANCE-NEGLIGENT NAVIGATION.
A steamer, while running at her ordinary speed of 10 miles per hour, in heavy snow squalls, in the general direction of the land, which her officers had reason to believe was close aboard on the port side, it being dark, with a heavy sea, and the wind following her, ran aground, and remained fast. She had shortly before starboarded her helm so as to swing 13 points, the soundings having shown that she was too close in shore. Held, that the stranding of the steamer was the result of her excessive speed, so as to prevent recovery on a marine insurance policy ex
cepting losses caused by want of ordinary skill and care in navigation. 3. SAME-UNSEAWORTHINE88.
The improper starboarding of the wheel and excessive speed of the steamer were not excusable on the ground that her rudder stock had been so twisted on a previous trip that the rudder could not be thrown hard over under a hard a-port wheel, and that her speed aided her in swinging around, in view of the fact that the speed was necessitated by the defective condition of the rudder, and that this was within an exception in
the policy of risks arising from the unseaworthiness of the vessel. 4. RULES OF SUPERVISING INSPECTORS-LOOKOUT ON VESSEL.
The rule of the supervising inspectors that all passenger and freight steamers shall have one of the crew on watch in or near the pilot house is authorized by Rev. St. $ 4405, requiring the inspectors to establish rules necessary to carry out the statutory provisions as to steam vessels, among which is one that the vessel shall carry "a full crew, sufficient at all times
to manage the vessel." 6. SAME.
Apart from any statutory regulation, there is a want of ordinary care and skill in navigation, within the meaning of an exception in an insur
ance policy, if the vessel fails to have a lookout properly stationed. 6. SAME.
The failure to have a lookout cannot be excused on the ground that the darkness was so great and the storm so severe that he could not have
been of any use. 7. New TRIAL-NEWLY-DISCOVERED EVIDENCE.
A new trial will not be granted for newly-discovered testimony which is cumulative, was easily obtainable at the first trial, and is manifestly
insufficient to change the result. 8. Saxe-SURPRISE.
One cannot obtain a new trial on the ground that he was surprised by certain evidence, unless he applied for a postponement or continuance. 9. SAME.
The failure of plaintiff, if dissatisfied with the evidence, to take a nonsuit, with leave to move to set it aside, or to apply for permission to withdraw a juror, in cases in which this is permissible, is ground for refusing his application for a new trial on the ground of surprise.
This is an action of assumpsit, brought upon the policy of marine insurance issued by the defendant, August 1, 1892, upon the propeller "Flint and Pere Marquette, No. 2," styled in the pleadings