426
.t
·
FEDERAL' REPORTER,
voL 38.
patents or not, ana yet they persist iriasserting their right denQuncing· them as worthless. If :tbey.;are sincere in thus characterizing tbisimprovement, why do they squander money in attaching .it! to their cttrs?' Praetwal railroad men do used not adopt Rnd use devic6S,tbat,ateof.no value. The' by thddefendants are cover.ed by both olaims of the: patent, and ali junction Will issne, as prayed for in tbebill, and the' case will go to 8 master, to take testilI\ony and Teport the damages. to' use ,the Sessions
'PNITim
STATES
AxUr.' LUBIl.ICATOR.
CO. 11.'WURSTO.
April 5. 1889.)
PATBNTS ll'oB,INVENTliONs--INFm:RGEMENT-AxLE LtmBJOATOBB. .
I'
'.. The c1l'im .1I>f letters pl'tent 31. 1881, to Laskey & Arnold. for an' a:de lubricator. is, in combination with tbeaxle and box, the ojl chamber colilmunicating with tne interior of tbebOll:, and provided with aliupply orifi:ce; an,in.wardly opening'self-acUng valve, and a malescrew·thread upon a injector,provided with a diseharge adapted to the sUPP'ly orlfice andjush back the. valve. and &''Conphngslee'te provIded with an lDternal tbrea to engage WIth the h1,theo.i1 oblj,mber. all,arratlged, etc. All the clll,im!l in tbe original . rlljected, and the' patent was granted o;Oly when the descrip.tlon iJ.!ldc!aiIn:were modified 'by 'sta;ting that tile coupling sleeve was provided with the :thread, etc.: ,Various,methods of lubricatinga:X:les had been previon,ly de. v.ised·.. and that descriped in letters. patent No, 120,515. Octo.ber 81. to Jlarvey. consisted ot :witll a and a commUDlcating nozzlll; 'adapted for IDsertion mto a conIcal orifice lD the hub or journal.. Held,that a device having a conical nozzle fitting into a con.icalorifice, of,the &crewed sleeve. was not an infringelllen.t.
SOlt by .the i.
In
the .T. O.qlt),yton, for . Johnson Root.l Fish. Pat. Ca.'!. 351; Oono'IJer v. Rapp, 4 Fish. Pat. Cas. 57; Singer'> Walmsley. 1 Cas; 558: Burden",. Ooming. 2 Pat Cas.· 477;B'I'ighton v. Wilson. 18 Fed. Rep. 37!:l; child .v. Iron Works, 19 Fed. Rep. 258. . . '.. . & Hovey,fqrgefendant, 'cited:. . . . Philipp', c MccoNritcln·'.TaZcott.2011ow. 405: BraggV. Fitch. 121U. S. 478-483, .7 Sup. Ct. Rep. Railway Co 'v. Bayles, 97 U. 8.554; Duffv. Pump Co" ·107 U. S. 636; 2'Sup. Ct; Rep. 487: Blake v. San ]h'ancis()o, 113 U. S. 679. 5 8up. {)t. Rep. 692j Wicke v.Ost'him, 103 U. S. 461j Fay v,'Cordesman, 109 U. S. 408, 3 Sup. Ct.. Rep 2:16; Zane v. Soffe. 110 U. S. 204.3 Sup. Ct. Rep. 562: Steph(msQ'f.I<'v. Rai,l1'oad 00..,114 U. S. 149. 5 Sup, Ct. Rep. 777: G1'ier ,v,. Wilt. 120 U, S. 412. 7. Sup..Ct. Rep. 718; Bussey v. ManUfacturing Co.· Up U. 4Sup. Ct. .Machine Co. v.lJ!urphy. 97 U. 8.125; Signal Co. v; Signal Co.· 114 U. S. 87. 5 I:lilp, Ct. Rep 1069; Rowell v. Lindsay. U3 8.97,5 Sup.Ct. Rep. 507; .Burrv. Duiyee.l Wall. 573jWemer v... K-;ng, 96'U.. S. 230jB1'O'lhn, v. Da'IJZ8, 116 U. 8.237,6 Sup. Ct. Rep. 379:
.......: " A,xle. Lubricator Co. agaInst. F. W. of a patent.. ;' , cited:
UNITED
LPBlUC4,TOR
WURSTER.
427
Proutyv. 16Pa,t.3:n: Olem,en.¥y· 00., 109V. S. 3 Sup. ot.. nep. 525; Shcp,q,rdv. 9a,rl'i,qan,1 116,'U. 8,.593,6 Sup.q. Rep;. 493; Sutter v.Robinson, 119 U. 8.530, Rep_ 376: Sargertt v.,Lock 114 U: S. 63, 5 Sup ct. Rep. 1021; Leggett v. AV6Ty.IU1 U. ::3.2513; Vulcanite 00. v. Davis, 102 U. S. 222; v" Railwall, C!{)., 121U. S. 617. 7 Sup. Ct. Rep. 1343; Weir v.Morden, 125 U. S. 98, 8 Sup. Ct. Hep.S69; J!f3nrJ,:g v.hort Works, 127 U. S. 370, 8 Sup. Ct. Rep. 1275;,JIartshom 00·· 119U; S. 664; 7 Srip. Ct. nep. 421; Water-Meter eo. v.Desper, 191 U. S.332. LACOMBE, J This is a suit to restrain the infringement of,1t patent for axle lubricators, iSRued May 31, 1881, to Laskey and' Arnold.,: (No. 242,141,) and assigned to the complainant. The single claim :Ofthe patent is: . . "In combination with the axle, A, and box,B, the oil-chamber;P. municating with the interior of said box, and provided with a an inwardly opening self-acting valve, d, and a male screw-thread upon 'the , exterior Qfjts outer portion, a force-pump or injt'ctor provided with a discharge nozzle adapted to enter said supply orifice and push back tbe valve, a, and a coupling sleeve, H, provided with an Internal thread to engage with the thread on the oil-chamber, all arranged and to tiallyas and for the purposes described." ' , " Prior to the granting oUhis patent, Charles A. Wakefield (No. .. , 914, June 13, 1871) had suggested the applicatlonof oil or grease to the friction surface between the hub and the axle by means of a. tion in the axle and nut, whereby the lubricant might be supplied, out taking off the wheel or nut. John T. Wils?n also (March 9, 1869, No. 87,609) had devised an oil chamber or reservoir constru9ted in the axle" an accessible. opening through it might besupplieq with a lubricating material, and connecting with an opening Or perfora, tion through the axle. Aaron Richardson (July. 29, 1851, NQ 1 8,251) had also de\1ised inwardly opening self.acting stopplp. (cQnsiSthlgoff\. plug-valve and spiral spring) for use in connection with oi!.oo()ups. W. H. Harvt>y (October 31, 1871, No. 120,515) had also devised, as aiu.. bricator for axles, a syringe with piston, reservoir, and a communicati ing nozzle adapted for insertiollinto a conical orifice in the hub orjou¥.. nal, through which the oil or grease might pass: to the friction Elias W. Moyer (January ,28, 1878, No. 201,193) had also QOInbined perforated axlee, plugged supply orifices and reservoirs with pa.ckingo,f wick. In this state of the art the complainant's assignors presented their particular combinationof'improvemellts in axle lubricators, and asked for a patent. They described theidnvention as one relating to imprqv.ement in oilin,g carriage axles without removing the wheel, or even holding the nut from the axle, such improvt>ment consjsting"In attaching to the nut. bo", axle, or hul;> atkoil-chamber communicating by suitable pi\Ssages or conduits with the space between the axle and. the box, ahd proVided with a supply orifiCe closed. by valve ward, and adapted to be rt'tfacted by exterior pressure. thereon; and the insertiooin said orifice of the nozzle of a force-pump or injectol',as will be further descl'lbed. It further consists in the ,use, in combination with a curr,iage, ,axle and its box·. of. ,lJJl oil,cllamber com.mUlIicati ng by 8. 5uitaule passage or cQnduit With the interior of said. pox. and provided ,Witb a s,apply
an
tEDERAL REPORTER,
vol. 38.
bilving a self-closing valve opening inward, and a force-pump or injeetor, provided with a nozzle adapted to fit said supply orifice and push baclc said valve, and a packing to prevent' leakage of the oil around said pump or injector nozzle. It further consists, in the combination with the axle of a carriage and its box, of an oil-chamber secured to, or forming a part of, the nut for secul'ingthe wheel upon the axle, said chamber communicating through a Buitablepassage or conduit with,the interior of the wheel·box, and prOVided with a supply orifice having an inwardly opening and valve, as will be further described. It further consists, in the combination with the axle of the carriage and its box, of an Oil-chamber attached to said axle or wheel, and communicating with the interior of said box by a suitable passage or conduit, and provided with a 8upplyol'lfice. having an in wardly opening and self-closing valve, a force-pump or injector provided with a nozzteadapted to fit said supply orifice and retract its valve, and a co,upling adapted to firmly oper;ttion of oilsecure said pump or injector to said oil-chamber during ing the W'ljeeI." " , . ,This, application contained four claims, the second of which was for the combination with a carriage axle and its of " an oil-chamber attached thereto'and commll1nicating with the interior of 8aid box, and provided with lJ. supply orifice, for closing saiq. orifice, and a force-pump or injector, provided with a discharge nozzle adapted to enter said supply orifice and push back the valve, , tiallyas and for the purposes, described." This clairn covered, besides the other elements of the combination, 'any method of bringing the oilpump into connection with the axle 61' box by means of a discharge nozzle entering Ii supply orifice.' It covered such a conical-shaped nozzle forced into a conical orificeas'that devised by Harvey. This claim the rejected. Theoiiginal application also contained a fourth claim, as ' ',j,( 4) In combination with the axle, A. and box, B, the oil-chamber, D. commllnicating'Witb the Interior of said box. and provided with a supply orifice and an opening self-acting valve. d, a force-pump or injector, provided with a discharge nozzle adapted to entei' said supply-orifice, and push back t1)e valve. d,al1,d a coupling sleeve, H,all arranged and adapted to opersUQstantially as and for the purposes described." This claim more restricted than the second. It covered a device (the coupling sleeve) which had not yet appeared in connection with axle lubricators. By meallS of it the pump and the axle could be brought into'such' cldse connection that when, by reason of clogging or obstruction from dirt or cbhgealed oil, the pump was worked 'with greater force than usual, there would be no riflk of the parts which fdrmed the joint flying apart or leaking. The efficiency of this coupling slt;\eve was plainly to a large extent dependent on its method o{col1structioll. Unless adapted to resist the horizontal motion produced by the action of the pump under such circlinistances, it subserved no useful function. . In the, description oftheir invention, however, Laskey andArnolcl' seUorth that the coupsleeve was adapted to be screwed upon the thimble surrounding the supply orifice ".so as· to secure the pump fimlly to the chamber, if desired." The patent-office rejected all the claims in the original application. After much, correspondence it allowed the fourth one, modified, hbwever, by
nng
UNITED STATES A:l:LE LUBRICATOR CO. V. WURSTER.
429
the insertion of clauses qualifying the dellcription of the coupling sleeve by stating that it was provided with an internal thread to engage with the thread on the oil-chamber. The description of the improvement was also amended to conform to the modification of the claim; aud, the applicants acquiescing in this modification, the patent issued. The defendant, under a patent issued to him January 25,1887, ;No. 356,519, manufactures axle lubricators containing a combination of pervalve, oil-pump, injector forated axle, oil-chamber, nozzle, and orifice. The only question necessary to discuss here is whether the method of connecting the nozzle with the orifice used by defendant i8 different from that covered by complainant's claim as allowed, to what l;xtent it differs, and the effect of that difference upon the complainant's right to an injunction. The defendant (who does not in that particular follow his own patent) uses simply a conical nozzle fitted into a conicaJ orisame device which Harvey used for oilirig through the hub. The insertion of this nozzle forces back the valve, and pressure by the :hand,. assisted by the weight of the body, secures the joint th.u8 Theforce, however, which thus secures the jomtisuudoubtedly., iIi prac·tice; notl1s effiCient as is the screwed sleeve, and this force is supplied not by the machine itself, but from outside.. The iiixokes the doctrine of equivalents, and insists that,where a construction.embodcannot be re· iesanu,mber of elerhents in by showing that, instead of llsing .lieved from the charge of "One of the elements enumerated in the claim, he uses in substitution therefor" a .known mechanical equivalent 8,s a of the combination, which equivalent acts in substantially the same way, and produces sub· stantially the same result. This proposition, however, is not broadly applicable to what are called" secondary" inventions, especially where, as in this case, not only a particular element of the combination been made material, putthe applicant has been expressly required to limit 'bis to a combinationwhich specifically iJi4ludes, the detailij of that element, before he can get his patent. When the applicants in· this.i:l1se acquiesced in the decision of the patent-office, and. iQserted in tqeir: the statement that the coupling and thimble, of which theycraiiiled a · monopoly in combination with the other parts, were threaded, they took ·an extremely narrow patent, to be strictly construed. against ther;n and in favor of the. public. The patentability of complainant's cOn;lqinatiop was, in view of the state of the art, extremely doubtful. It was a mere aggregation of known parts distributed between hyoseparate articles".......an axle and a force-pump,:-and it WllS only the sleeve, so adapted as to.become by the exercise of its own force the connecting link which united both temporarily into a single structure, that induced the patent-office toacceptit as a combination at all. Whether, even when so restricted, it was patentable, need not now be decided. It is sufficient to hold that it is not .infringed by an aggregation of parts, which omits the very ele· ment that tbeapplicants by their acquiescenoe,in the decision of the patent-officeadmitted to be material,and in which the alleged substitute for that element lacks one which ·made .such element itself
·430
FEDE&AL' REPORTER j
'efficient;' .The conclusion. arrivoo'llit is inaecordance with the views ex'pressed in Shepardv.Chrriganp116 U. S.593, 6 Sup. Ct. Rep. 493, Fay v. Cm-de8'l'nan, 109 U. S. 408,il3 Sup. Ct.. Rep. 236, Snow v. Railroad 00.,121 U. S,617, 7 Sup. 1343; IIendyv.lron Works, 127 U. S. 370, 8 Sup. Ct Rep. 1275; Wickey. Ostrum I 103 U. S. 461; Brownv. Davia, 116 Ur S. 237,6 Sup. Ct. Rep. 379. Decree for·defendant.
(Ck"rcu(t Oourt. N p.lllinoi8. February. 1889.) PATENTS
Thie "plocess of m.aking wax paper by ma.chinery·".d.escribed in reissued. letl.etspatent;NoL.8.460. to Siegfried Hilmmerschlag.consists in passing the paperfrom a supply reel wlJlch. revolves partly submerged in a vat contaiQing melted paraffinej thence over 8 heated roller. which dif· " fuses the wax equally; thence over a scraper. which removes the surplus wax; and lastly over a polishing roller. A scraper attached to the first cylinder rempves tpe. surplus wax, and <iistributes the remainder uniformly over the cylinder. Defel1dant lays 100 sheets of paper in a tin pan and dips a piece of feltclotb in atank containing paraffine melted from the bottom by steam· pipes. The, saturated cloth is then placed on top pf the paper and the operation is repeated until the stack is of the desired height. The pan and paper are thenplR'ced in a box heated by steam-pipes. and after half an hour are taken 'out, ithe felt is removed, arid the paper placed in another pan. and in a . press simjlarto ",.letter-press. Which forces out the surplus wax. The paper IS. then placed on a table heated by coils of steam-pipes under it, and the sheets ate separated by hand, and, when necessary, smoothed with a piece of felt or a .fiat-Iron.; Held, that defendant's process is not bY machinery or the means descr,ibed II/..tbe patent, ,is not an infringement.
FOR .INVENTIONS-INFRINGEMENT-PROCESS OF MAKING WAX PAPER.
WlChe1manandotbers.l: . , Prost & (loe an(1' J'eBseA. Baldwin; for complainant. Mason ,&,Eimi$ lmd' A.. B. Jenk8, for defendants.
.:pm by the' Hammetschlag Manufacturing Company against Fred A.
In Equ.ity.
.
GRESHA:M:, J., (orally.) The plaintiff seeks to restrain the defenilants from infringirigthe' fifth claim of reissued patent No. 8,460, granted to Siegfried Hammerschlag, for a "process of making wax paper by ma'chiner)"." The claim reads: ' ""The method'herein spt forth of waxing paper, consisting in the
The paper:'is passed from a supply reel over a heated revolving oyl:illder, partly submerged in a vat containing melted paraffine; thence 'over a heated:rol1er,which diffuses·the wax equally; thence over a soral'erjw'hieh removestheiSurp]us wax; and finally over a polishing roller. 'to the first cylinder removes the surplus wax,and .distributes'what remains uniformly-over the cylinder.
wax upon the su'rface, heating the paper from the opposite side to spread and fusethe'wax in tbefabric of the removing the surplus wax, and remelting and poIisllingthe wax upon the paper, as set forth."