(274 F.)

[2] The scope of these claims must be limited by the prior art, the specifications and drawings, and the record made in the Patent Office in securing their allowance. Certain claims as originally filed were canceled, and the present claims substituted. The construction of these cannot be as broad as the claims canceled. Claim 9, which was canceled, reads as follows:

"(9) A distributing plate for blast feed stokers having an unobstructed central portion lying below the central portion of the plate, substantially as specified."

[3] The words "unobstructed central portion" might mean unobstructed spaces, as between the ridges or obstructions on the Ayres and Ranger patent upon which claim 9 was rejected. I think that the limitation that the central portion is "wide and unobstructed" in claim 9 does not differentiate the claim from the defendant's distributor, in which the central portion is made wide as the plate, in order that coal which passes over the channels meets no obstruction on the plate upon its passage to the forward part of the furnace. Another change in claim 9 over the canceled claim is that the divergent channels are described as "comparatively narrow," and as "discharging at the side of the plate." In the specification the words "comparatively narrow" do not occur, and their meaning is not defined, but may be determined by reference to the drawings. In Fig. 7 the channels, c-4, are wider than the rear edge of the central portion, C, while the forward edge of the central portion, C, is practically twice as wide as the channels. The words of dimension in claim 9 must refer, therefore, to the comparative dimensions of the width of the channel and the forward edge of the central portion, C. In defendant's distributors this forward edge of the central portion is perhaps more than twice as wide as its channel. I think, therefore, that the language "comparatively narrow" applies to the channels in the distributors of the defendant. This is in harmony with the purpose of the channels, which is to divert only a small portion of the coal into the rear corners, the evidence showing that only from 10 to 20 per cent. of the fuel is so diverted. I find nothing in the patents cited by the examiner which discloses a distributor plate having a central unobstructed portion and divergent side channels, discharging at the sides of the plate. He may therefore properly claim such a construction in his present claim 9 as would cover defendant's distributor.

Claim 10 differs from the rejected claim 9, as the channels are described as "gradually deepening from the receiving to the discharge end." These words apply directly to defendant's structure.

Claim 11 differs from the rejected claim 9 in that the side channels are described as "turned at their outer ends to a direction approximately at right angles to the longitudinal axis of the plate." This is descriptive of the defendant's distributors.

Claim 12 differs from the rejected claim in that the channels are described as "gradually deepening toward the discharge end" and being "turned at right angles." Both these features are present in defendant's distributors.

The claims in suit I find valid and infringed.

274 F.-27

Counterclaim.

Defendant's counterclaim involves the question of validity and infringement of claims 1, 2, 3, and 9 of patent No. 1,130,443, issued March 2, 1915, to Clement F. Street for a mechanical stoker for feeding lump fuel to steam boiler fire boxes. The Mechanical Construction Company denies infringement and alleges the invalidity of the claims of Street, by reason of the prior art. It is conceded that some, but not all, of the mechanisms incorporated in the claims had been employed before in locomotive stokers, but it is claimed that these elements had not been combined or correlated as in the Street stoker; that elevators had been used, but they had not extended through the cab floor; that transfer conduits had been employed, but there had been no delivery to a receptacle below the cab floor; that there was nothing analogous to the Street receptacle, unless it be that of Richards', which was placed, not under the cab floor, but upon the floor of the tender, and into which the fuel was shoveled by hand.

Locomotive stokers were not new when Street entered the field. Three inventors, Richards, Lowe, and Crosby, had run an elevator from the floor of the tender over the cab floor to the firing door. Brewster had elevated the fuel in the tender and carried it forward overhead, and spouted it into a hopper attached to the back head of the boiler, while Prescott had an underfeed stoker transferring the fuel under the cab floor to the opening under the grate. In Hanna's earlier form of stoker (1907) there was a fuel receptacle positioned in a slot, cut into the deck of the fire floor, into which the fireman shoveled the coal, and from which led an elevator into the firing door, the elevator comprising a spiral conveyor and a casing. Street transfers the fuel to a receptacle under the floor, and elevates it through the floor to the feed opening in the back head.

In each of the four claims under the Street patent an element in the stoker apparatus is "a fuel receptacle below the firing floor." In connection with this receptacle, in claim 1 is "an elevator for carrying the fuel from said receptacle to a point above the level of the fuel bed." Claim 2 differs from this only in that it includes "means below the floor for delivering fuel from the tender into the receptacle." Means below the floor for delivering fuel from the tender into a full receptacle below the floor were old, as shown in the patents of Brewster, Prescott, and Burger & Williams, all of which were prior to Street; while the Richards and the Hanna views of 1907 illustrate elevators located in front instead of at the sides of the firing door. Claims 1 and 2 in question do not contain any language which imports that distinction into them. The distinction between Street and Brewster is that the latter located his receptacle below the firing floor of the tender; the bucket conveyor being mounted upon the tender instead of the locomotive as in Street. In view of this disclosure, the validity of claims 1 and 2 is doubtful. It would appear that the elements of claim 1 differ from Richards only in placing a fuel receptacle below the engine frames; yet we are asked to construe the claim so as to cover plaintiff's construction, in which there is no receptacle below the frames,

(274 F.)

but a fuel conduit between the frames and the fire floor, through which there is a continuous feed of fuel. This we cannot do. Such receptacle is a prominent element in the claims of Street; a reservoir in which there is a quantity of coal maintained, and in which the buckets operate, taking only a portion of the surplus fuel there deposited. If the validity of claims 1 and 2 were conceded, the receptacle therein described. cannot fairly be considered to cover the fuel conduit of Hanna.

Claims 3 and 9 differ from claims 1 and 2 regarding the point at which the fuel is delivered. This point is designated in claims 1 and 2 as "a point above the level of the fuel bed"; in 3 and 9 as "a point above said door"; in claim 3 "a gravity discharge conduit for delivering fuel from said point into the furnace"; in claim 9 "means for delivering the fuel from the casing above the door into the furnace."

While it is true that some of the claims not in suit speak of the discharge of the fuel into the furnace "independently of the firing door," there is nothing in claims 3 and 9 that indicates the deposit of the fuel through the firing door. On the contrary, the teachings of the patent as disclosed by the specifications indicate strongly that the fuel was not in any case to be delivered through the door opening. In the specifications it is said:

"One of the objects of my invention is to provide improved means for feeding lump fuel of the kind described onto different portions of the grate of any steam boiler, whether that of a locomotive or of a marine boiler or of a stationary boiler; said means being independent of the usual firing door, so that hand firing may be carried on, and the fire be raked when necessary, without interference with the automatic feeding of fuel."

Again, the specifications state:

"At the same time there is no interference with the firing door, 6, so that the fireman can attend to the fire and, if necessary, feed fuel into it by hand, as usual."

[4] In the Hanna stoker the fuel is delivered through the door opening. That practice, as it appears, Hanna adopted in 1907, and has used continuously since then. It also appears to be a practice that had been followed in other locomotive stokers, antedating both Street and Hanna. If the words "a point above said door" be construed to read into the Hanna stoker, they read also in the Crosby, No. 787,100, where the coal is delivered by feeding through the upper end of casing 10, falling thence by gravity to the level of the firing-door opening, and is carried thence through said opening by projector 10. To differentiate the limitation of claims 3 and 9 of Street, namely, "a point above the level of the firing-door opening," from Crosby, it is necessary to read them with the limitation that the point of delivery is one free of the firingdoor opening.

If claims 3 and 9 are to be held as valid, I am of opinion that the Hanna stoker does not infringe them. To summarize, I find claims 9, 10, 11, and 12 of the Hanna patent, No. 979,849, valid and infringed.

I find that the bill of complaint should be dismissed as to letters patent No. 1,002,513, and that a decree should be entered that as to such letters patent the plaintiff, and its successors in title, be concluded from urging against the defendant herein any further claims of infringement

of such letters patent by reason of the manufacture, use, or sale of devices of substantially the character it is now manufacturing.

I find that for reasons set forth in this opinion defendant's counterclaim should be dismissed, and that the defendant should pay the costs. A decree may be drawn accordingly.

J. & A. FREIBERG CO. v. DAWSON et al.

(District Court, W. D. Kentucky. May 31, 1920.)

1. Courts 282 (3)-Suit to enjoin enforcement of tax as in violation of federal Constitution within the jurisdiction of federal court.

A bill to enjoin enforcement of a state statute imposing a tax is within the jurisdiction of a federal court where it states a case of rights arising under Const. U. S. Amend. 14.

2. Courts 299-Federal court has jurisdiction when rights under federal Constitution are stated in good faith, though erroneous.

Where the bill states a case of rights arising under Const. U. S. Amend. 14, the federal court has jurisdiction if the claim is made in good faith and is not frivolous, though in the end it may turn out to be erroneous. 8. Courts 102 (1)—Suit for injunction held within statute as to hearing ap plications by three judges.

A motion for a preliminary injunction in a suit by an owner of whisky in a bonded warehouse against the owner of the warehouse and the Auditor and Attorney General of the state to enjoin enforcement of a statute imposing a tax is within Judicial Code, § 266 (Comp. St. § 1243), requiring applications for an injunction suspending or restraining the enforcement of state laws to be heard and determined by three judges, etc., where the bill alleges that the Attorney General intends to enforce the penalties imposed for nonpayment of the tax, and the Attorney General does not dispute the allegation, and it seems to be understood by all parties that it is his official duty to do so.

4. Courts 506-To prevent injunction by federal court suit in state court must be brought to enforce statute attacked in federal court.

Under Judicial Code, § 266, as amended by Act March 4, 1913 (Comp. St. § 1243), providing that proceedings to enjoin the enforcement of a state statute shall be stayed if a suit shall have been brought in a state court having jurisdiction thereof to enforce such statute accompanied by a stay of proceedings pending the determination of the suit, the suit in the state court must not only be brought in a court having jurisdiction to enforce the statute, but be brought for the purpose of enforcing it, and a suit in a state court to enjoin enforcement does not satisfy the statute.

5. Courts 506-Injunction by state court against enforcement of law against plaintiff therein does not prevent injunction by federal court. Judicial Code, § 266, as amended by Act March 4, 1913 (Comp. St. § 1243), providing for a stay of proceedings to enjoin the enforcement of state statutes if a suit shall have been brought in a state court to enforce the statute accompanied by a stay of proceedings, contemplates a stay protecting the plaintiff seeking the injunction in the federal court, and is not satisfied by an injunction of the state court against the enforcement of the law against the plaintiff in the suit in that court.

*This opinion was adopted, so far as applicable, in the later case of Kentucky Distilleries Co. v. Dawson, in the Eastern District of Kentucky. Appeals in both were decided by the Supreme Court February 28, 1921. 255 U. S. —, 41 Sup. Ct. 272, 65 L. Ed.

6. Injunction

(274 F.)

16-Not granted when there is adequate remedy at law. An injunction will not be awarded if there is an adequate remedy at law.

7. Payment 88-Payment under protest is voluntary and not recoverable. As a general rule payment merely under protest, unless some statute otherwise provides, is voluntary, and a suit for recovery will not lie. 8. Intoxicating liquors 94-Party suing to enjoin enforcement of taxing statute held not to have adequate remedy by payment and application for mandamus.

Under Act Ky. March 12, 1920 (Laws 1920, c. 13), imposing a tax on the business of owning and storing spirits in bonded warehouses and removing them therefrom and providing heavy penalties for nonpayment, and Ky. St. § 162, requiring the State Auditor to issue his warrant for moneys paid into the treasury for taxes when no such taxes were in fact due, an owner of whisky in a bonded warehouse desiring to remove it therefrom has no such adequate remedy by payment of the tax and application for writ of mandamus to compel the issuance of a refunding warrant as defeats the right to an injunction in view of the doubt as to the existence of such remedy and the fact that mandamus is a discretionary writ.

9. Intoxicating liquors 94-Party liable to tax held to have no adequate remedy justifying denial of injunction.

Under Act Ky. March 12, 1920 (Laws 1920, c. 13),,imposing a tax on the business of owning and storing spirits in bonded warehouse and removing them therefrom payable on removal and imposing heavy penalties for nonpayment, an owner desiring to remove whisky from a bonded warehouse has no such adequate remedy by payment of the tax to the owner of the warehouse and immediate suit for its recovery or by replevin against the warehouseman as defeats his right to an injunction asked for on the ground that the statute is unconstitutional, as the payment would be voluntary if the statute was unconstitutional.

10. Intoxicating liquors 94-Provision of statute imposing penalties held not so clearly separable as to show that there was no irreparable injury. Act Ky. March 12, 1920 (Laws 1920, c. 13) § 5, imposing a fine of from $500 to $1,000 per day for nonpayment of the tax imposed by section 1 on the business of owning, storing, and removing spirits in bonded warehouses, is not so clearly separable from the rest of the act as to justify the denial of an injunction on the theory that no irreparable injury is threatened.

11. Intoxicating liquors 94-Statute imposing tax payable upon removal of spirits from warehouse held to threaten an irreparable injury.

Under Act Ky. March 12, 1920 (Laws 1920, c. 13), there is such imminent irreparable injury to an owner of whisky desiring to remove it from a bonded warehouse as justifies an injunction in view of the penalties which would accrue pending a test suit, though no irreparable injury will arise unless the owner brings it on himself by withdrawing the liquor.

12. Constitutional law 230 (3)-Tax on business of owning and storing spirits in bond does not deny equal protection of the laws.

Act Ky. March 12, 1920 (Laws 1920, c. 13), imposing a tax on the business of owning and storing spirits in bonded warehouse and removing them therefrom, does not deprive owners of such spirits of equal protection of the laws because those owning and storing spirits in other states do not have to pay the same or an equivalent tax, nor does it make a classification so arbitrary as to be violative of the equal protection clause.

13. Constitutional law 284 (1)-Enforcement of invalid tax takes property without due process of law.

To enforce collection of a tax imposed under an invalid law is to take the property of the taxpayer without due process of law.

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