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ARGUED AND DETERMINED

IN THE

UNITED STATES SUPREME COURT.

OCTOBER TERM, 1894.

(155 U. S. 47)

WRIGHT. YUENGLING.

(October 22, 1894.)
No. 1.

PATENTS-FRAME FOR HORIZONTAL ENGINES — INFRINGEMENT-CONSTRUCTION OF CLAIM-COMBINATION-PATENTABILITY.

1. The claim in the specification of letters patent No. 144,818, for an improvement in frames for horizontal engines, of a semicircular connecting piece joining the guiding cylinder and the steam cylinder head, is not infringed by an engine in which the guiding cylinder connects directly with the steam cylinder; the purpose of the connecting piece being accomplished, in a measure, by an oral opening near the end of a guiding cylinder, but which does not admit of as ready access to the cylinder head.

2. A patentee having described in his specifications à particular device, and declared it to be an essential feature of his invention, cannot afterwards claim that it is immaterial, or that a machine which dispenses with it is an infringement, though it accomplishes the same purpose in perhaps an equally effective manner.

3. The claims of a patent, the novelty of which is open to doubt, and which is not for a pioneer invention, should be rigidly construed.

4. The combination of a cylindrical guide with a trough for the connecting rod is not patentable, where it appears that the combination is a mere aggregation of their respective functions, which were performed by the cylindrical guide and the trough in prior patents, though not in combination with each other.

Appeal from the Circuit Court of the Unitea States for the Southern District of New York. This was a suit by William Wright against

David G. Yuengling for infringement of patent. The bill was dismissed by the circuit court. 33 Fed. 655.

This was a bill in equity for an injunction, and the recovery of damages for infringement of letters patent No. 144,818, issued November 18, 1873, to the plaintiff, Wright, for an improvement in frames for horizontal engines.

In his specification the patentee stated the object of his invention to be the "attainment of both lightness and strength in the construction of frames for horizontal engines, and at the same time to dispense with much of the fitting and other costly work demanded by the ordinary frames of engines of this class."

The following drawing exhibits the material parts of the invention.

The patentee further stated that "the extreme rear end of the frame, and forming part of the same, is the head, a, of the steam cylinder, A, and the portion of the frame which in ordinary engines is devoted to the usual flat sides consists of a hollow cylinder, b, arranged concentrically with the steam cylinder, and serving as a guide for the cross head, the guiding cylinder being simply bored out to receive a cross head, adapted to it in a manner which need not here be explained, as it forms no part of my present invention. There are lateral openings, e, e, in this cylindrical guiding portion of the

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frame, in order that access may be had to | pleadings and proofs, the bill was dismissed the cross head. A semicircular upon these grounds, and defendant appealed. connecting piece, d, merges at one end in Andrew M. Todd, for appellant. B. F. the guiding cylinder, b, and at the other end in the cylinder head, a, thus uniting the two, Lee, for appellee. the open top of the said connecting piece permitting ready access to be had to the stuffing box of the cylinder head.

"This combination in a horizontal engine frame of the guiding cylinder, b, cylinder head, a, and connection, d, constitutes an especial feature of my invention. The cylinder, b, not only forms the main body of this portion of the frame, but serves at the same time as a cross-head guide, which can be readily prepared for service by the same bar which is used for boring out the cylinder.

"From the front of the guiding cylinder, b, to the point, x, where it meets the base, H, the frame is made in the form of an inclined concavo-convex trough, D, deep enough to permit the free movement of the connecting rod; and this trough, on the line,

1, 2, has one side, m, the upper edge of which is continued in a plane coinciding with the center of the cylinder, b, from the latter to the enlargement, n, for receiving the bearing of the crank shaft; the opposite side, p, of the trough, er ending from the guiding cylinder, b, with a gradually descending curve to the base, H, into the upper portion of which It merges.

"A strengthening rib, q, extends along the upper edge of the side, p, of the trough-like connection, D, and is continued along the upper edge of the base, H, and also along the upper edge of the side, m, of the trough, and terminates at an extension of the cylinder head, a; and in order to add vertical strength to the frame a central web, t, extends from the base, H, to the cylinder head, a, this web merging into the foot, w, which serves as one of the supports of the frame.

"In horizontal engines there is necessarily an excessive lateral strain on the frame between the cross-head guides and the crank shaft. This strain is effectually resisted by the comparatively light, trough-like portion of the frame between the crank shaft and guiding cylinder."

His claims were as follows:

"(1) A horizontal steam-engine frame, in which a cylinder, b, for guiding the cross head, is combined with the cylinder head, a, and semicircular connecting piece, d, substantially in the manner described.

"(2) The combination, in a horizontal engine frame, of the guiding cylinder, b, base, H, and trough-like connection, D.

"(3) A horizontal engine frame, composed of the cylinder head, a, guiding cylinder, b, connecting piece, d, trough, D, base, H, and web, t, all combined substantially in the manner described."

The answer set up the defenses of noninfringement and want of patentable novelty, by reason of certain prior patents.

Upon a hearing in the circuit court upon

Mr. Justice BROWN, after stating the facts in the foregoing language, delivered the opinion of the court.

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The object of the invention in question was to add both lightness and strength to the construction of frames for horizontal, singlecrank engines. To attain this the patentee, instead of employing the ordinary flat, parallel slides for the piston and cross head, makes use of a hollow cylinder, arranged concentrically with the steam cylinder, and serving as a guide for the cross head, together with a trough connecting this cylinder with the base, H, and deep enough to permit the free movement of the connecting rod. This construction is further strengthened by a rib extending along the upper edge of one side, p, of the trough, D, continued along the upper edge of the base, H, and also along the upper edge of the other side, m, of the trough, and terminating at an extension of the cylinder head, a; and also, to add vertical strength to the frame, a rib or web, t, was extended from the base, H, to the cylinder head, a, merging in a foot, w, which serves as one of the supports of the frame. The cylinder head, a, the guiding cylinder, b, with its connecting piece, the trough, D, the base, H, and the web, t, are cast in a single piece, and firmly bolted to the head of the steam cylinder, A.

1. The first claim is for a combination of the cylinder, b, the cylinder head, a, and the semicircular connecting piece, d, while the third claim includes the same elements, and, in addition thereto the trough, D, the base, H, and the web, t.

In view of the fact, to which we shall hereafter call attention, that a cylinder had been used long before for guiding the cross head of a piston, it is at least open to doubt whether there was any novelty in the first claim. Such novelty, if there be any at all, consists in leaving certain lateral openings, e, e, in the guiding cylinder, and in taking half the top off of such cylinder as it approaches the steam cylinder, in order to give convenient access to the cross head. But, in the view we take of the alleged infringing device, it is unnecessary to express a decided opinion upon this point.

The connecting piece, d, which is described in the specification as a semicircular connecting piece, merging at one end in the guiding cylinder, and at the other end in the cylinder head, thus uniting the two, is not only made an element of both these claims, but is said to constitute, in connection with the guiding cylinder and cylinder head, a special feature of the invention. This so-called "connecting piece" is distinguished from the guiding cylinder in that it is only semicircular, and thus

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admitting of access to the stuffing box with perfect freedom throughout a complete half circle. This access is had, not through a mere hole or opening, such as are e, e, but through such an opening as can be obtained by cutting away the upper half of the frame at this point.

The device used by the defendant contains a similar cylinder for guiding the cross head, and a trough connecting it with the base; but this cylinder, instead of having its entire interior surface bored out, so that it may guide the cross head in the same way that the piston is guided in the steam cylinder (as in the Wright patent) merely contains an upper and a lower guide, formed of two slides or fitting strips, the surfaces of which are bored out, but no other portion of the cylinder. We do not regard this, however, as a material departure from the Wright patent, as it constitutes a mere difference in detail of construction, not affecting in any way the operation of the cross head of the cylinder, or changing materially the efficiency of such cylinder. Nor do we think it material that in defendant's structure there is no cylinder head forming part of, cast with, and constituting a portion of, the engine frame, since the frame of the defendant's device terminates in a flange adapted to be bolted to a cylinder head, and thus, in fact, constituting a part of it.

But the absence of the semicircular connecting piece, d, is a circumstance worthy of more serious consideration. In the defendant's engine there is no such semicircular connecting piece as is described in the Wright patent, but the guiding cylinder extends backward to a connection with the head of the steam cylinder, the side of such guiding cylinder, through which the cross head operates, containing an opening oval in shape and narrower at each end than in the center. The equivalent for the connecting piece, if found at all, must be in this continuation of the guiding cylinder backward to the steam cylinder. But this portion of the cylinder is neither scooped out in a semicircular form, nor does it admit of ready access to the cross head shown at this point in the wright patent. Instead of access to the cross head being easier at this point than any other, it is in reality more difficult, as the oval opening is narrower there than in the center.* Now, while this semicircular connecting piece may be an immaterial feature of the Wright invention, and the purpose for which it is employed accomplished, though less perfectly, by the extension of the guiding cylinder in the manner indicated in defendant's device, yet the patentee, having described it in the specification, and declared it to be an essential feature of his invention, and having made it an element of these two claims, is not now at liberty to say that it is immaterial, or that a device which dispenses with it is an infringement, though it accomplish the same purpose in, perhaps, an equally effective man

ner. Vance v. Campbell, 1 Black, 427; Meter Co. v. Desper, 101 U. S. 332; Gage v. Herring, 107 U. S. 640, 648, 2 Sup. Ct. 819; Gould v. Rees, 15 Wall. 187; Brown v. Davis, 116 U. S. 237, 249, 6 Sup. Ct. 379.

If the guiding cylinder of this patent had been a pioneer invention, it is possible the patentee might have been entitled to a construction of this claim broad enough to include the defendant's device, notwithstanding the absence of the semicircular connecting piece; but, as we have already said, the novelty of the invention is at least open to doubt, and we think the patentee should be held to a rigid construction of these claims. The opening in the guiding cylinder, which is supposed to be the equivalent of the connecting piece, d, instead of increasing so as to form a semicircular opening, as in the patent, decreases, so as to prevent, if anything, ready access to the stuffing box, and, under the circumstances, does not constitute a mechanical equivalent for it. Indeed, the guiding cylinder of the defendant's engine bears a stronger resemblance to those shown in the prior patents hereinafter cited than to that of the Wright patent; and hence, if the prior patents anticipate the Wright cylinder, the defendant's does not infringe it.

2. The second claim of the patent is for "the combination, in a horizontal engine frame, of the guiding cylinder, b, base, H, and trough-like connection, D." The guid. ing cylinder, which is used in lieu of the ordinary parallel slides, was, however, by no means a novelty in the construction of engine frames. It is found in different stages of perfection in several prior*.patents, viz.:* In a patent issued to Samuel Wright, as early as 1837, for locomotive engines, and was there used, as the patentee states, "to subserve the twofold purpose of a [steam] purp and guide;" in the patent to Gelston San ford, of February 15, 1859, in which the invention related to elongating the cylinder, "by which means it becomes a part of the frame, used for the support of the crank shaft, and so constructed that, when bored out, it forms a guide and rest for the cross head;" in the patent to William Wright, of August 8, 1865, in which the movement of the piston is transmitted to the main crank by means of a connecting rod, jointed to the cross head, to which the piston is attached. and which is guided in ways or guides, fast to the frame, and in which a semicircular connecting piece is also shown; in that to John B. Root, of August 14, 1866, in which the piston also works in two cylindrical guides attached to the cylinder heads; ir that to Maxwell & Cope, of February 13 1872; in that to Edward H. Cutler, of No vember 26, 1872; and in that to George H Babcock, of December 10, 1872.

It is true that none of these patents exhibit distinctly the trough-like connection, D, of the Wright patent, but that also is found in the patent to Chilion M. Farrar, of March 19,

*46

1872, in which it is fully shown in the drawings, though not described in the specifica. tion, and is used in connection with the ordinary flat guides or parallel slides.

Wright's only invention, then, was in the combination of the cylindrical guide with the trough shown in the Farrar patent. Did this accomplish a new and valuable result, it is quite possible that a patent therefor might have been sustained; but we do not find this to be the case. The cylindrical guide performs the same functions as in the prior pat ents; the trough, in which the connecting rod works in the Farrar patent, is practically the same as in the Wright patent; and the com. bination is a mere aggregation of their respective functions. If the combination of the trough and cylindrical guide of the Wright patent gives greater lightness and strength to the frame than the combination of the trough and the flat guides of the Farrar patent, it is a mere difference in degree;* a carrying for ward of an old idea; a result, perhaps, somewhat more perfect than had theretofore been attained, but not rising to the dignity of invention. We have repeatedly held patents of this description to be invalid. Stimpson v. Woodman, 10 Wall. 117; Smith v. Nichols, 21 Wall. 112; Guidet v. Brooklyn, 105 U. S. 550; Hall v. MacNeale, 107 U. S. 90, 2 Sup. Ct. 73. The decree of the court below dismissing the bill is therefore affirmed.

(155 U. S. 54)

WRIGHT v. BEGGS. (October 22, 1894.) No. 2.

Appeal from the Circuit Court of the United States for the Southern District of New York. Andrew M. Todd, for appellant. B. F. Lee, for appellee.

Mr. Justice BROWN delivered the opinion of the court.

This was a suit against the defendant, Beggs, as maker of the engine used by Yuengling, and is disposed of by the opinion in the last case. holding the Wright patent to be invalid. 15 Sup. Ct. 1. The decree of the court below dismissing the bill is therefore aflirmed.

(155 U. S. 45)

TALBERT v. UNITED STATES. UNITED STATES v. TALBERT. (October 15, 1894.)

Nos. 24 and 25.

REVIEW OF DECISION OF COURT OF CLAIMS-FINDINGS OF FACT.

Under Act June 30, 1886, referring a claim for the use by the government of a patented improvement to the court of claims, with authority to award judgment according to its value to the government, that court gave judg ment for the amount of such value as found by it. Held. that the supreme court could not review such finding. 25 Ct. Cl. 141, affirmed. Appeals from Court of Claims.

S. 8. Henkle, for appellant. Asst. Atty. Gen. Conrad, for the United States.

Mr. Chief Justice FULLER. This was a suit brought in the court of claims under an act of congress entitled "An act for the relief of William Talbert," approved June 30, 1886, and reading as follows: "That the ciaim of William Talbert, of Moutgomery county, Maryland, for the use by the government of his patented improvement for marine railways, be, and the same is hereby, referred to the court of claims, with authorIty to take jurisdiction thereof, and to award judgment thereon, as the merits of the case may demand, according to its value to the government during the existence of such patent." 24 Stat. 822, c. 591.

The court filed findings of fact and a conclusion of law; rendered an opinion, reported in 25 Ct. Cl. 141; and gave judgment in claimant's favor for $6,564.30, from which both parties appealed, but argument is waiv ed by the government on its cross appeal. Among the findings of fact was the followIng: "(8) The value to the government of plaintiff's patented improvement for marine railways during the existence of his patent was $6,564.30, being 2 per cent. upon the amount earned by the railway cradle as improved during said period." On this appeal, only questions of law can be reviewed, and none such are presented for our consideration. The contention is that the sum awarded was far less than it should have been; but the eighth finding was one of fact, and there is nothing in the other findings or else where in the record which authorizes us to go behind that finding and conclude that there was error in respect thereof. Judgment affirmed.

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1. In proceedings by an administrator of a deceased attorney to sell land, deceased's former partner filed an answer, setting up a mortgage on the land, given by deceased to secure money due, and also to secure him against loss by reason of their prior partnership, and alleging that certain persons, as trustees, claimed that such partnership was indebted to them on account of transactions with deceased, that such transactions were concealed from him by deceased, and that such trustees were necessary parties. The trustees filed an answer and cross petition, in which they alleged that certain land was conveyed to them as security for a loan of trust funds; that, in an action against the grantor to subject his interest to claims of creditors, deceased entered an unauthorized and fraudulent appearance as attorney for them, consented to a decree that the land be sold divested of their interest, and afterwards converted the proceeds of the sale; and they asked to be adjudged creditors of deceased's firm, and that their claim be paid out of the proceeds of sale of the land sought to be sold by the administrator. By

leave of court, they afterwards withdrew such answer and cross petition, and demurred on the ground that they were not necessary parties. The demurrer was sustained. and they were dismissed, with their costs. Held, in an action by such trustees to establish a lien on the land so conveyed to them and sold under such decree, that their voluntary appearance in the proceedings to sell real estate was a ratification of the appearance and acts of deceased in the prior action.

2. Where an attorney enters an unauthorized and fraudulent appearance for trustees in an action against them and their grantor to subject the interest of the grantor to claims of creditors, consents to a decree that the land be sold divested of their interest, and afterwards converts the proceeds of sale, a court of equity is the proper tribunal to afford the trustees effectual relief.

3. Where the action in which the fraudulent appearance and unauthorized decree are enterel is in a state court, the granting of such relief by the circuit court of the United States is not an interference with the jurisdiction of the state court.

4. Where land is conveyed to trustees as security for a loan of trust funds, and they lease it to the grantor, they can consent to a judicial sale of it, divested of their interest, in proceedings to subject the grantor's interest to claims of creditors.

Appeal from the Circuit Court of the United States for the Southern District of Ohio. In the year 1883, James Robb, a resident of Hamilton county, Ohio, died, leaving an estate, and James Hampden Robb, May R. Miltenberger, and Charlotte M. Pancoast, as his surviving children. Charles A. Kebler, an attorney at Cincinnati, was appointed administrator. Mrs. Miltenberger and Ellen W. Robb had claims against the estate. A written agreement was executed by all concerned, in the following terms:

"For an amicable settlement of all claims and controversy as to the estate of James Robb, deceased, late of Hamilton county, Ohio, it is mutually agreed by the undersigned as follows:

"(1) That Mrs. Miltenberger's claim for an annuity of one thousand dollars, in accordance with her agreement with her father for her son's education from the time he became ten years of age until he became twenty-one years of age, which is now in suit (No. 37,317) in the superior court of Cincinnati, and James Hampden Robb's claim in suit No. 37,820 in the same court, and Mrs. Ellen W. Robb's claim in suit No. 67,400 in the court of common pleas of the said county of Hamilton, are all hereby allowed by Charles A. Kebler, administrator, by and with the consent of the undersigned and at their request, as valid claims against said James Robb's estate, and shall be satisfied and discharged in the manner hereinafter provided and agreed to as to each of them, respectively; the claim of Mary Robb in suit No. 67,459, common pleas, to be also provided for and discharged as hereinafter agreed.

*“(2) The deed which is alleged to have been made by the said James Robb on or about November 14, 1879, to his daughter Mrs. Isabella San Raman, conveying to her the tract of land near Cheviot, then owned and occu

pied by him, being without consideration, and, in consequence of his insolvency at that time, wholly void as to his creditors, it is agreed by Charles A. Kebler, as administrator of said estate, that in pursuance of the statute in such case provided, and by request of the other subscribers hereto, he shall and will immediately bring an action for the recovery of the said land, or for the sale of said land and avoidance of the said pretended conveyance, for the benefit of said estate and its creditors.

"(3) Besides the outstanding debts for personal and household expenses of James Robb, the cost of the monument heretofore agreed by the undersigned to be erected at Spring Grove cemetery in memory of the said James Robb, and all the proper costs and expenses of the administration of his estate and of the suit for the recovery of the land above mentioned, including the administrator's counsel's fees, shall first be paid out of the moneys now in his hands.

"(4) After paying the same, the remaining moneys in his hands and the proceeds of the sale of the land aforesaid, or so much as nec essary, shall be set apart and invested for two trust funds, as follows: One of the said funds shall be made sufficient to pay Mrs. Miltenberger the amount already due of said annuity, in compliance with the agreement made with her father for account of her son's education, and also to yield and pay the said annuity year by year until her son becomes twenty-one years of age, if he lives; and the surplus of said fund, if any remaining after he becomes of age, or in case he dies before becoming of age, shall fall into the residuary estate, to be divided as hereinafter agreed; the other of the said trust funds to be sufficient to secure and pay to Mrs. Ellen N. Robb an annuity of six hundred dollars ($600) for and during the term of her life, payable semiannually, and to commence from the day of, A. D. —, and from and after her decease to pay the said Mary Robb, her daughter, if she survives her mother, an annuity of three hundred dollars ($300),*payable semiannually, for and during the term of the life of said Mary, and that the annuities so to be paid to the said Mary R. Miltenberger, Ellen W. Robb, and Mary Robb, respectively, shall be in full satisfaction and discharge of all their claims aforesaid as creditors of the said estate.

"The appointment of trustees and appropriation of funds necessary and sufficient for the two trusts aforesaid shall be effected as soon as practicable by the said Charles A. Kebler, the administrator, and the parties concerned.

"(5) All the pictures, library, letters and papers, plate, and other chattels, useful or or namental, belonging to the said estate, shall be turned over to James Hampden Robb, reserving for Mrs. Charlotte M. Pancoast some one article to be agreed upon by them, which portions of the estate shall be received and

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