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Suspended Switch Case.
(Circuit Court.)
Full Text of Judge Coxe's decision in the case of
Thomson-Houston Electric Company, Complainant,
vs. Elmira and Horseheads Railway Company,
Defendant, filed in the U. S. Circuit Court,
Northern District of New York,
June 19, 1895.
Van Depoele Patent No. 424,695 Sustained.
“Although the electric road of to-day is a composite organism to which many ingenious
and able men have contributed, yet it cannot be denied that to Van Depoele, more than to any
other man, belongs the credit of having made it a practical working success. His contribu-
tions to the art rapidly supplanted the crude and tentative prior structures and have continued
in use until the present time.
* * * * * - *
“Generally speaking, the patent covers devices and combinations by which electric cars
are run automatically upon branches and turnouts, the motor being supplied from an over-
head system of wires. This is done by a trailing under-running trolley mounted on a long
pivoted arm supported on the top of the car and pressed up against the wire by a spring or
equivalent device. This arm has sufficient horizontal and perpendicular movement to adjust
itself automatically to the wire, although the wire may not at all times be directly above the
centre of the rails or suspended at the same distance above the car. The conductor, without
leaving the platform of the car, has full control of the trolley.
“The other important device used by the inventor is an overhead switch so mounted on
the wire that when the forward wheels of the car take the track-switch a trend or direction is
given to the trolley, so that, when it reaches the overhead switch, it is guided to the proper
branch automatically without in any manner disturbing the electric current or the running of
the car.
“In this way a system is produced which is well-nigh perfect in its essential details. That
it was necessary in order to attain this result to surmount many difficulties and solve many
problems might almost be assumed by the Court, but it is abundantly proved by the record,
* * as 4t * * * -
“When it is considered that he was dealing with an under-running system, that it was
necessary to shift the trolley not only, but the mysterious current which the trolley carries, and
that he accomplished this result automatically when others failed, it is not difficult to place
him above the plane of the mechanic.”
* * * * * •º.
C. G. Burgoyne, Walker and Centre Streets, New York.-1896,
**wa.
DECISION OF HON. A. C. COXE
IN SUIT OF
THOMSON-HOUSTON ELECTRIC COMPANY
WS.
ELMIRA AND HORSEHEADS RAILWAY.
COMPANY.
(Filed June 19, 1895.)
FINAL HEARING IN EQUITY.
This action is brought by the Thomson-Houston
Electric Company against the Elmira and Horseheads
Railway Company, a corporation operating an electric
railway in the City of Elmira, N. Y., for the infringe-
ment of Letters Patent No. 424,695, granted April 1,
1890, to Charles J. Van Depoele for Improvements in
Suspended Switches and Traveling Contacts for Elec-
tric Railways.
The original application was filed March 12, 1887.
It was divided and the application for the patent in
suit was filed October 22, 1888. -
The invention relates to mechanisms and combina-
tions thereof by which an electric railway having
branches and turnouts may be operated automatically
without regard to the height of the conducting wire, or
its parallelism to the centre of the rails.
The specification says:
“My present invention relates to electric railways of
the class in which a suspended conductor is used to
convey the working-current, a traveling contact carried
by the car being employed for taking off the current for
use in operating the motor by which the car is pro-
pelled. The return circuit is preferably completed
through the rails of the track.
“My invention consists in certain devices and their
relative arrangement, by means of which a contact de-
vice carried by a rod or pole extending from the car
and pressed upwardly into contact with the conductor
is switched from one line to another correspondingly
with the vehicle. * * *
“More particularly my invention consists in a track-
switch for the vehicle, a conductor-switch for the con-
tact device or ‘trolley, as it is termed, and the trolley
itself attached to the vehicle, these elements being so
arranged, relatively to one another, that in Operation the
vehicle reaches the track-switch and is diverted later-
ally before the trolley reaches the conductor-switch,
whereby the trolley, which partakes of the lateral
movement of the vehicle, has imparted to it a laterally-
moving tendency before its switch is reached, and it
therefore passes through the switch in the proper
direction, corresponding to the movement of the
vehicle. e
“My invention also consists in various details of
construction and arrangement, which will be hereinafter
pointed out.”
The inventor after describing the drawings continues
as follows:
“In order that the contact-wheel E shall be com-
pelled to pass from one conductor to a branch or one
attached thereto leading in a different direction, I pro-
vide the inverted open-bottom metallic boxes I, which
are formed with branching compartments and con-
structed in the form of switches, conforming to the
3
curves and angles of the track-switches by which the
direction of the car is controlled. These boxes are in
the form of open smooth curved passages and are free
from obstructions within, so that the contact-wheel E,
which is slightly depressed on meeting the end of the
switch-box, may roll freely therethrough and move
laterally therein in the desired direction without hin-
drance. + X-
“The electric switches I are to be placed directly over
—that is to say, above—their counterparts. The track-
switches and the contact-wheel, as before stated, are to
be located so that as the front portion of the car swings
in the desired direction as the front wheels pass
the track-switch the contact-arm will be deflected and
the direction of the wheel E. correspondingly changed
while still on the straight wire, so that on reaching the
switch-box the wheel will be depressed and pass there-
into and naturally pass through and out of the proper
compartment thereof. The switch-boxes I, being con-
nected directly to the conductors D, are similarly
charged, and when the wheel E is passing therethrough
the current passes through the box I and thence into
the contact-wheel through its flanges e, passing thence
through the arm F or a separate conductor to the motor
C. Since there are no moving tongues or springs or
points to catch or impede the progress of the wheel
when three or four grooves, as the case may be, exist in
one switch-box, the wheel will intersect the grooves
and pass along in the desired direction and go through
without any difficulty whatever, its direction being pre-
viously indicated by the movement of the front portion
of the car. Thus it will be seen that by locating my
traveling contact-wheel in the position shown, or one
equivalent thereto, I obviate all the difficulties of
switching from conductor to conductor and with the
Smallest possible amount of special construction.
“I believe myself to be the first to devise this arrange-
ment of contract device and switches, whereby the lat-
eral movement of the vehicle is first imparted to the
4
trailing contact-arm and the contact-wheel is then flexi-
bly, yet without interruption of contact, drawn into the
switch and guided thereby into engagement with the
desired branch conductor, and I intend herein to claim,
broadly, any relative arrangement of track-switch, con-
ductor-switch, vehicle and contact device by means of
which the former switch will act in advance of the
latter and the vehicle impart a lateral tendency to the
trailing contact by the time it engages with the con-
ductor-switch.
“The contact-carrying arm described in the present
application possesses substantial practical advantages
over any other means yet proposed for establishing
moving contact between a vehicle and a stationary sup-
ply-conductor, in that by the use of a hinged flexibly-
mounted arm much greater freedom of movement is
compatible with the maintenance of a positive mechani-
cal connection and electrical contact between the vehicle
and supply conductors.” t
The patent may be divided as follows: First, the
contact device, commonly known as the “trolley;”
Second, the support therefor; and, third, the overhead
switching devices.
The contact device belongs to the class knwu as “un-
derrunning” contacts. It consists of a grooved wheel
mounted upon a pivoted support on the roof of the car
having a sufficient capacity of vertical and lateral auto-
matic adjustability and capable of being detached and
lowered by an attendant on the car platform. This
support is a pole or arm mounted on the roof of the
car and pivoted and swiveled so as to be capable of
swinging both vertically and horizontally. Attached to
the short arm of this pole is a weighted spring which
operates to maintain normal contact between the
grooved wheel and the suspended conductor. The over-
head switching devices are placed at points on the line
of the road where branches and turnouts occur, and
where the Overhead trolley wires are required to branch
correspondingly with the tracks. The object is to
5
transfer the trolley from the main wire to the branch
wire, and vice versa, without interrupting the contact.
The switching device, as shown in the patent, consists
of a Y-shaped plate of sheet metal, with depending side
flanges. This plate is secured to the under side of the
trolley wire at the point where it branches, the narrow
end being turned in the direction of the main wire, and
the other end being connected with both the main and
branch wire. The narrow end is wide enough to permit
of the easy movement of the trolley wheel through it,
while the other end is wide enough to permit the wheel
to move out in the direction of either the main or the
branch wire. The switch device is placed at the junc-
tion of the main and branch wire above the correspond-
ing switch on the track, and the wheel is to be so sup-
ported on the roof of the car that it will not reach the
switch-box until at least the forward wheels of the car
have passed the junction of the main and branch
track. Thus, the switch-box will guide the wheel
automatically upon that one of the trolley wires
which corresponds with the track upon which the car
has been directed.
The patent contains thirty-five claims, all of which
are said to be involved except those relating to the
fender for the trolley wheel. These so-called “fender
claims,” numbered 18, 28, 29 and 30, were withdrawn at
the argument. The other claims may be divided into
groups as follows:
Claims relating to the construction and attachment
of the conductor switch. -
“1. The combination, with crossing or branching
overhead wires, of a plate along the top of which said
wires pass, and deflecting ribs at the lower side of said
plate at its extremities.
“2. The combination, with an overhead conductor
arranged to receive a traveling underneath contact, of a
switching device secured to and depending from the
conductor.
“3. The combination, with an overhead wire for re-
6
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
“9. In an electric railway, a switching device for
suspended conductors, comprising two or more branch-
ing compartments or ways corresponding to the direc-
tion of the track, and of the main and branch con-
ductors, and secured to the said suspended conductors,
substantially as described.
“10. In an electric railway, a switching device for
suspended conductors, consisting of an open-bottom
box formed with two or more branching compartments
corresponding to the direction of the track and arranged
to be secured to the conductor, substantially as de-
scribed.
“11. The combination, with an overhead line-wire,
of a grooved contact device pressed against the wire and
receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the Said flanges bear in passing from One line to
another. , *
“12. In an electric railway having an electric con-
ductor suspended above the track, a switching device
supported by the conductor and formed with down-
wardly-open compartments or ways corresponding
with the direction of the track, said ways being sub-
stantially flat at their upper sides to form paths for
the flanges of the contact-trolleys, substantially as de-
scribed.
“13. In an electric railway, a switch for suspended
conductors, consisting of a box formed with branch-
ing compartments corresponding with the branches
of the conductor, and of the track-switches and secured
to the said suspended conductors, substantially as
described.
“14. In an electric railway, a Switch for suspended
conductors, consisting of a box formed with branching
compartments corresponding with the branches of the
conductor, and of the track-switches, and secured to
7
and depending from the said suspended conductor,
substantially as described.
“ 19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact-arm, carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel-flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with one of the
branch conductors.
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging
contact-arm pressed upward to engage the conductors,
and a switch-plate at the branching point having
depending sides, but Open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
“Claims relating to the centralizing spring :
“ 21. In an electric railway, the combination, with
main and branch Overhead conductors, of a vehicle, an
intermediate contact-arm thereon movable laterally with
respect thereto, a spring tending to return the arm to
its normal central position, a guiding switch at the
branching point of the conductor, and a track-switch
for the vehicle located so as to operate in advance of
the conductor-switch, whereby the lateral tendency of
the contact device at the branching point is imparted
to it by the vehicle, while its outer extremity is flexibly
guided by the overhead switch from main to branch
conductor.
“24. In an electric railway, the combination, with
branching line-conductors, of a track-switch, a vehicle,
an intermediate contact-arm swinging laterally with
respect to the vehicle, but provided with a spring
tending to restore it to its normal central position, and
a lateral deflecting switch at the branching point of the
S
conductors, whereby the extremity of the contact-arm
may be flexibly guided from main to branch conductor.
“31. In an electric railway, the combination, with
an overhead conductor and a vehicle, of an inter-
mediate contact device consisting of a trailing arm
having a grooved contact-wheel at its Outer end and
moving laterally relatively to the vehicle, but provided
with a spring tending to retain it in its normal central
position.
“32. In an electric railway, the combination, with
an overhead conductor and a vehicle, of a trailing
contact-arm guided at its outer end by the overhead
conductor, and moving laterally relatively to the
vehicle, but having a normal centralizing tendency by
means of a spring Or weight.
“33. In an electric railway, the combination, with
an overhead conductor and a vehicle, of an inter-
mediate contact device consisting of an upwardly-
pressed trailing arm having a grooved contact-wheel
at its outer end by which it is guided by the con-
ductor, the said arm being free to swing laterally
relatively to the vehicle, but tending to remain in
its normal central position by means of a spring or
weight.
“34. The combination, with a vehicle and an over-
head conductor, of a trailing contact-arm guided
normally by the conductor, but having a spring-
connection with the vehicle tending constantly to
maintain it in a definite position while at the same
time it is free to swing laterally with respect to the
vehicle against the pressure of the said spring.
“35. In an electric railway, the combination, with
an overhead conductor and a vehicle, of an inter-
mediate contact device consisting of a rearwardly-
extending arm guided at its Outer extremity by enage-
ment with the conductor and movable laterally rela-
tively to the vehicle, but having a spring or weight
tending to restore it to its normal central position.
9
“Claims relating to the weighted tension spring :
“15. In an electric railway, the combination of a
car, a conductor suspended above the line of travel
of the car, a contact-carrying arm pivotally supported
on top of the car and provided at its outer end with a
contact-roller engaging the under side of the suspended
conductor, and a weighted spring at or near the inner
end of the arm for maintaining said upward contact,
substantially as described.
“16. In an electric railway, the combination of a car
provided with a pivoted arm, as F, having a contact at
its outer extremity, a tension-spring, as G, attached at
its inner extremity, and a vertically-moving weight
connected to said spring for holding the same in Opera-
tive relation to the arm throughout its entire range of
movement, substantially as described.
“ 17. In an electric railway, the combination of the
car having suitably-pivoted arm F, carrying a contact-
wheel at its outer extremity, a spring G, secured to its
lower extremity, and a connection extending from said
spring and provided with a weight at its lower end,
substantially as described.
“Claims relating to the directive action of the track-
switch, or the combination of the conductor-switch and
trolley with the track-switch : -
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carying arm arranged to engage the conductor at a
point in rear of the front wheels of the car.
“ 5. In an electric railway, the combination of a
track having suitable switches, an electric conductor
suspended above said track and having switches
located above the track-switches, and a car on said
track provided with an upwardly-extending arm carry-
ing a contact-wheel arranged to engage the suspended
conductor at a point in rear of the front wheels of the
car, substantially as described.
10
“6. In an electric railway, the combination of an
electrically-propelled car, a supply conductor sus-
pended over the line of travel of the car, a Swinging
arm mounted upon the car and carrying a contact
device at its free end, said contact arranged to bear
against said conductor, suitable switching devices upon
the track traversed by the wheels of the car, and
corresponding switches on the suspended conductors
located above those on the track and arranged to
engage the contact devices, substantially as described.
“7. In an electric railway, the combination of a
track having suitable switches, an electric conductor
suspended above said track and having switches located
above the track-switches, a car on said track provided
with a swinging arm carrying a contact wheel arranged
to engage the suspended conductor, and switches at a
point in rear of the front wheels of the car, whereby the
contact-wheel is directed through the proper part of
the suspended switch, substantially as described. .
“8. In an electric railway, the combination of a
switch or turn-out on the track and a corresponding One
on the overhead line, the same being so arranged
relatively that the car will reach the switch or turn-out
before the trolley does, substantially as described.
“ 20. In an electric railway, the combination, with an
overhead switch-plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly-pressed contact-arm attached to the
vehicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor-switch.
“ 22. In an electric railway, the combination with
main and branch conductors, of a vehicle, a contact-
arm thereon having vertical and lateral spring-pressure,
a switch-plate for the conductors, and a track-switch
for the vehicle located so as to operate in advance of
the conductor-switch, whereby the lateral tendency of
the contact device at the branching point is imparted to
11
it by the vehicle, while its outer extremity is flexibly
guided by the overhead switch from main to branch
conductor.
“ 25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead con-
ductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact device on the
conductor-switch.
“27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
The parties do not agree as to the grouping of some
of these claims, but it is thought that the above ar-
rangement is as convenient as any.
The defenses are anticipation, lack of patentability,
non-infringement and, as to a part of the defendant's
cars, estoppel because of an alleged license.
Samuel A. Duncan and Frederic H. Betts, for the
complainant.
William A. Jenner, Edwin B. Smith and Thomas B.
JCerr, for the defendant.
12
COXE, J. :
The patent in controversy deals with a comparatively
new art. Electricity has so completely supplanted
horse-power as a means for propelling street cars
that it is difficult to realize that only about ten years
have passed since the first successful electric railroad
was installed. At the present time there are more than
five hundred roads in operation, employing an im-
mense army of workmen, and a vast amount of capital.
That this wonderful result was accomplished only after
innumerable difficulties and obstacles had been en-
countered and overcome is manifest. The potentiali-
ties of the art attracted a large number of brilliant and
ingenious men, who for more than a decade have been
laboring to make electric railroading successful. Even
after the necessities of the situation had evolved the
fundamental principle of taking the electricity from
an overhead conductor, the difficulties in finding
suitable contact and switching devices for a long
time prevented commercial success, and the solution of
the problem taxed the ingenuity of a large number of
inventors. Although the electric road of to-day is a com-
posite Organism to which many ingenious and able men
have contributed, yet it cannot be denied that to Van
Depoele, more than to any other man, belongs the
credit of having made it a practical working success.
His contributions to the art rapidly supplanted the
crude and tentative prior structures and have con-
tinued in use until the present time.
No one can read this record without being impressed
with the truth of this proposition, and this being so the
Court naturally approaches this controversy in liberal
spirit and with an inclination to give the inventor the
full fruits of his invention. -
If there be any deviation from this determination it
is due to the fact that he has obscured his real inven-
tion in a multitude of fuliginous and attenuated claims,
many of which can only be distinguished when their
language is subjected to the most searching analysis.
13
He has particularly pointed out his invention in the de-
scription, but, because of this seemingly needless ver-
bosity, he has claimed it indistinctly, to the annoyance
of the public, and particularly that part of the public
which is called upon to construe the patent.
A fair amount of tautology and reiteration is prudent
and permissible in the claims of a patent, but it is
hardly conceivable that it requires thirty-five claims to
secure a comparatively simple mechanical invention.
Where the patentee has taken pains to cover every
shadow of a shade in his claims, the range of construc-
tion is limited, and he must be held strictly to language
which he has adopted with such painstaking delibera-
tion and exactness.
Generally speaking, the patent covers devices and
combinations by which electric cars are run automatic-
ally upon branches and turnouts, the motor being sup-
plied from an overhead system of wires. This is done
by a trailing under-running trolley mounted on a long
pivoted arm supported on the top of the car and
pressed up against the wire by a spring, or equivalent
device. This arm has sufficient horizontal and per-
pendicular movement to adjust itself automatically to
the wire, although the wire may not at all times be di-
rectly above the centre of the rails or suspended at the
same distance above the car. The conductor, without
leaving the platform of the car, has full control of the
trolley.
The other important device used by the inventor is
an overhead switch so mounted on the wire that when
the forward wheels of the car take the track-switch a
trend or direction is given to the trolley, so that, when
it reaches the overhead switch, it is guided to the proper
branch automatically without in any manner disturbing
the electric current or the running of the car.
In this way a system is produced which is well-nigh
perfect in its essential details. That it is necessary in
order to attain this result to surmount many difficulties
14
and solve many problems, might almost be assumed by
the Court, but it is abundantly proved by the record.
It is argued by the defendant that the patent is void
because all of the inventions claimed therein—except
claims 15, 16 and 17, which are not infringed—are cov-
ered by earlier patents to Van Depoele.
There is no dispute as to the law. It is fundamental
that two patents cannot be granted for the same inven-
tion. Where two patents for the same invention issue
to the same person the second patent is void.
The Supreme Court in Miller vs. Eagle Co., 151 U.
S., 786, lays down no new rule of law. It simply ad-
heres to the old rule, which is well stated in the sylla-
bus as follows:
“No patent can issue for an invention actually cov-
ered by a former patent, especially to the same
patentee, although the terms of the claims may differ.
“The second patent in such case, although contain-
ing a claim broader and more generical in its character
than the specific claims contained in the prior patent,
is also void.
“But where the second patent covers matter de-
scribed in the prior patent, essentially distinct and
separable, and distinct from the invention covered
thereby, and claims made thereunder, its validity may
be sustained.”
. The question here is : Are the inventions of the
patent in suit all covered by prior patents to Van De-
poele 2
The patent chiefly relied upon by the defendant is
No. 397,451, dated February 5, 1889, for improvements
in “overhead contacts and switches.” The applica-
tion was filed November 12,1888, while the application
for the patent in suit was pending in the Patent Office,
the original application being filed March 12, 1887, and
the divisional application October 22, 1888.
At line 9 of No. 397,451 the patentee says:
“My invention relates to improvements in electric
15
railways and includes improvements upon the inven-
tion forming the subject matter of a prior applica-
tion,” viz., the original application for the patent in
suit.
It is manifest on reading this patent that it was in-
tended to secure a few minor improvements upon the
broad invention then pending in the Patent Office. The
public was given due and formal notice of this inten-
tion. No one was misled or injured.
The claims of No. 397,451 are wholly insufficient to
secure the invention of No. 424,695. An infringer,
unless he used the peculiar contractions and guide ribs
shown in the former would escape all accountability if
the latter is held invalid.
In other words, it is the patent in suit which protects
the basic invention. Destroy this and the inventor is
despoiled of his principal contribution to the art. The
substance is gone, the shadow remains.
A court of equity should be very sure of its premises
before reaching a result so unjust, so contrary to the
policy of our Government, so dispiriting to inventors.
A decision holding this patent invalid would simply be
a confiscation of Van Depoele's property. Why should
he be thus punished 2 What equities demand it 2
He made a valuable invention and promptly went
with it to the Patent Office. Subsequently he made
what he thought to be improvements and asked for a
patent for them also. He could not describe his im-
provements without referring to his original invention,
but he did all in his power to inform the public of the
exact situation. The patent for the improvements was
issued first, and because the invention was thus, in a
sense, disclosed, it is argued that it is lost. In other
words, that Van Depoele, in endeavoring to secure his
improvements in the only way known to the law, has
forfeited his right to the main invention.
The Supreme Court had no difficulty in reaching the
decision in the Miller case, because upon the peculiar
facts there disclosed they were convinced that the two
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17
ations were necessary to adapt the device to its new
use, and what the value of such adaptation has been to
the new industry. If the new use be analogous to the
former one, the Court will undoubtedly be disposed to
construe the patent more strictly, and to require clearer
proof of the exercise of the inventive faculty in adapt-
ing it to the new use—particularly if the device be one
of minor importance in its new field of usefulness. On
the other hand, if the transfer be to a branch of in-
dustry but remotely allied to the other, and the effect
of such transfer has been to supersede other methods
of doing the same work, the Court will look with a less
critical eye upons the means employed in making the
transfer. Doubtless a patentee is entitled to every use
of which his invention is susceptible, whether such use
be known or unknown to him ; but the person who has
taken his device and, by improvements thereon, has
adapted it to a different industry may also draw to him-
self the quality of inventor. * * *
“Indeed, it often requires as acute a perception of
the relations between cause and effect, and as much of
the peculiar intuitive genius which is a characteristic
of great inventors, to grasp the idea that a device used
in one art may be made available in another, as would be
necessary to create the device de novo. And this is not the
less true if, after the thing has been done, it appears to
the ordinary mind so simple as to excite wonder that it
was not thought of before. The apparent simplicity of
a new device often leads an inexperienced person to think
that it would have occurred to any one familiar with the
subject; but the decisive answer is that with dozens
and perhaps hundreds of others laboring in the same
field, it had never occurred to any one before. The
practiced eye of an ordinary mechanic may be safely
trusted to see what ought to be apparent to everyone.”
Again, in Du Bois vs. Airk, 7 / O. G., 889, the same
learned Judge says:
“The Kirk invention is undoubtedly a very simple
one, and it may seem strange that a similar method of
18
relieving the pressure had never occurred to the
builders of bear-trap dams before ; but the fact is that
it did not, and that it was not one of those obvious im-
provements upon what had gone before, which would
suggest itself to an ordinary workman, or fall within
the definition of mere mechanical skill. It was in fact
the application of an old device to meet a novel ex-
igency, and to subserve a new purpose. That it is a
useful improvement can scarcely be doubted.”
The defendant argues that the complainant is
estopped from asking a decree against six cars pur-
chased by it from the Sprague Electric Railway and
Motor Company in 1890, for the reason that in May,
1892, the General Electric Company acquired a con-
trolling interest in the stock of the Sprague Company
and of the complainant.
The theory is that the General Electric Company is
the real complainant and, as successor to the Sprague
Company, it is violating its obligation to the defendant,
as vendee of the Sprague Company, in bringing this
Suit.
Even if the complainant had given the defendant
a license in May, 1892, it would seem that it might
still have a decree for an accounting during the two
years that the defendant used the cars without any
claim of right. But the Court is unable to discern
how the complainant's right to maintain this action is
affected by the proceedings alluded to.
The proposition is this, that one who purchases a
patented machine from an infringer and Operates it un-
lawfully for a term of years acquires a right to its use
if the vendor and owner of the patent subsequently
enter into partnership.
The complainant is a legal entity entitled to sue. It
has never given the defendant a license to use the cars
in question, either express Or implied. The defendant
never acquired the right from the Sprague Company,
for that company had no right to give. How then did
the defendant get the right to infringe the complain-
ant's patent 2
19
So far as this plea is concerned, the defendant
stands a naked trespasser claiming to do an unlawful
act because of a subsequent arrangement between its
vendor, the patent owner, and a third corporation, to
which it was in no way a party.
The complainant has done no act to deceive or mis-
lead the defendant. The latter has parted with moth-
ing and lost no right, relying upon complainant's de-
clarations, for none were made. If the complainant
had in any manner induced the defendant to purchase
the cars in question, intimating that they did not in-
fringe the Van Depoele Patent the situation would be
different, but, as it is, the case seems devoid of every
element of estoppel.
The decree should not, of course, include the car
purchased of the complainant.
The defendant owns and operates an electric railway
at Elmira. The current is supplied to the motor of the
cars by a trailing under-running trolley mounted on the
roof of the car. The trolley is pressed up against the
wire and the lateral and vertical action of the pole is
controlled by springs.
Two forms of trolley are used, known as the “An-
derson’’ and the “Nuttall.” Both are adjustable from
the car platform by a cord in the hands of the con-
ductor.
There are about twelve sheet-metal pan switches, ten
so-called “ Murray ’’ switches and two so-called “Gen-
eral Electric "switches in use on the defendant's road.
The Murray switches are used at turnouts, the others
at branches. They are so located that “the car has
fully passed the track-switch before the trolley enters
the overhead switch.” The circuit remains unbroken
while the trolley is passing through.
It remains to consider the claims with reference to
the question of infringement.
Claims 15, 16 and 17 are not infringed. One of the
20
elements of the claims is “a weighted spring,” Or, as it
is expressed in claim 16, “a vertically moving weight
connected to said spring,” and in claim 17 “a connec-
tion extending from said spring and provided with a
weight at 15s lower end.”
The function of the “weight H " is pointed out with
care in the description. The defendant does not use
this weight in any manner whatever and consequently
does not infringe. º
McClain vs. Ortmayer, 14 ſ U. S., 419.
Jºeystone Bridge Co. vs. Phoenia. Iron Co.,
95 U. S., 974.
I fully agree with the defendant that several of the
remaining claims are for the same subject matter, and,
in a patentable sense, are not distinguishable. To at-
tempt to differentiate them would, in the language of
the Miller case, “involve the drawing of distinctions
too refined for the practical administration of the patent
law.”
The counsel for the complainant admit that claims 9
to 14, inclusive, “cover substantially the same ground.”
Claims 9 and 10 are so nearly alike that the
difference is only a verbal One. The language
of claims 13 and 14 is identical, except that the
latter adds to the former the words “and depending
from.” What the significance of these words is, in
view of the description and other claims, the Court is at
a loss to conjecture. To analyze all of the claims in-
volved, or, more correctly speaking, the involved claims,
and attempt to point out their differences and similar-
ities, would extend this opinion beyond all reasonable
length. As the brief for the defendant says, “No
special harm can come of it’ where several claims for
substantially the same invention appear in One patent,
but, on the other hand, the issues in these causes
should be simplified as much as possible. In view of
the admitted similarity of the claims, it is possible that
the complainant should be compelled to elect which of
them it will rely upon, but further discussion of fibe
21
matter may well be reserved until the settlement of the
(lecree.
Of the claims relating to the construction and attach-
ment of the conductor-switch, the complainant's counsel
regard claim 2 as the leading one of the group. This
claim is very broad, but it must be construed in the
light of the specification and drawings, and so con-
strued fairly secures the invention. Claim 9 is also
pointed out as the one which best secures the special
features of the switch.
From what has been already said of the defendant's
railway it is manifest that these claims have been in-
fringed. The particulars of the infringement may be
conveniently left to the Master.
Claims 4 and 20 are pointed out by complainant's
counsel as the leading claims in the group relating to
the directive action of the track-switch. Infringement
of these claims is satisfactorily established.
Whether or not claims 5, 6 and 7 are infringed it
seems unnecessary now to determine.
Of the claims relating to the centralizing spring, the
complainant seems to rely principally upon the 33d as
describing with the greatest accuracy the patented con-
struction.
It is thought that this claim is infringed by the “An-
derson’’ trolley, which is given a centralizing tendency
by springs located at its base, but not by the “Nuttall,”
which has no spring tending to restore it to its normal
central position.
It follows that the complainant is entitled to a decree
for an injunction and an accounting, but, as the defend-
ant has succeeded as to some of the claims, the decree
should be without costs.
[4376]

Underrunning Trolley Case.
Full Text of Judge Townsend's decision in the case of
Thomson-Houston Electric Company, Complainant, &
vs. The Winchester Avenue Railroad Company
et al., Defendant, filed in the U. S. Circuit
Court, District of Connecticut,
December 7, 1895. " .
Van Depoele Patent No. 495,443 Sustained.
“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 Sep-
tember, 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.” *
* * * * * * * *
“When Van Depoele discarded the elevated wheel and springs of his earlier patent, and
broke away from his own towed trolley and those of Siemens, Finney, Henry and others, and
reversed the underrunning trolley of Daft and Edison, and added lateral motion thereto, and
went back to the overlooked art of the animal tether or the limited and impracticable art of
railway signals, and, selecting and combining certain elements of these various contrivances,
modified and adapted them to a new purpose, and thereby disclosed to the public a practically
operative means such as the whole world of electrical railway inventors had theretofore sought
in vain, and which has gone into universal use throughout the country, he made an invention
within all the rules applicable to this question. I have been unable, therefore, to adopt the
view of counsel for defendant that the art of conducting eleetricity from a conductor to a
translating device on a moving vehicle was sufficient to erable the skilled mechanic to
construct the device of said first patent. This well-known art had been already applied in
the best forms which Van Depoele and others could devise before he made his invention. But
when the new problems were presented it was shown that these devices and the under-
running rails and overhead towed trolleys were all impracticable, and it then became
necessary to abandon the old forms and to so construct and combine the earlier devices as to
furnish new possibilities of operation and to produce new, non-analogous and unexpected
results.”
C. G. Burgoyne, Walker and Centre Streets, New York.—1896.
UNITED STATES (IRCUIT (OURT
DISTRICT OF CONNECTICUT.
THOMSON-HOUSTON ELECTRIC
COMPANY
WS.
THE WINCHESTER AVENUE RAILROAD
COMPANY ET AL.
Towns BND, District Judge :
Complainant, by this bill, asks for a perpetual in-
junction and an accounting, by reason of the infringe-
ment 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 trol-
ley railway systems in this country, and both have
been infringed by defendant. 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 and Manu-
facturing Company, one of the parties defendant. The
defenses to said first patent are, that the alleged in-
vention was made by an employee of the Van Depoele
Company; lack of patentable novelty, in view of the
prior state of the art, and that the same invention had
2
been previously disclosed by and patented to Van De-
poele.
The record is padded unnecessarily with irrelevant
matter. Complainant's record covers 3,142 pages;
that of defendant 2,237 page. The issues directly in-
wolved do not warrant the taking of such an
inordinate mass of testimony, nor the intro-
duction 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 consid-
eration 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 em-
braces the long swinging, pivoted, hinged and up-
wardly spring-pressed arm extending from a support
on the top of the car, and equipped with an under-
running 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 carry-
ing 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 under side of the supply con-
ductor, 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 con-
tact device carried by one extremity of the arm and
held thereby in contact with the under side of the elec-
tric conductor, and a tension device at or near the other
3
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
under side of the suspended conductor, and a tension
spring at or near the inner end of the arm for main-
taining 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 ten-
sion spring for pressing the Outer end of the lever car-
rying the contact wheel upward against a suitable sus-
pended 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 top of the car and
provided at its outer end with a grooved contact
wheel engaging the under side of the suspended con-
ductor, 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 railroad-
ing 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 Septem-
4
ber, 1885, when he put said apparatus into practical
operation, had proposed to equip the car of an electric-
ally 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
there with by means of “over-running ” trolleys, con-
nected 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 uncer-
tainty of connection, lack of adaptability to various
forms of switches, varying tension, liability to derail-
ment, 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 there with and
consisting of a trailing-arm, hinged and pivoted to the
car so as to bridge the space between it and the con-
ductor 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 under side of the con-
ductor.” -
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 under side ; (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.
5
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 con-
ductors 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 light-
ing a car, or for signaling to or from it. But defendant
claims that, as in each case the object to be accom-
plished 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 vs. Creager, 155 U.
S., 597, 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 con-
struction the particular problems which were presented
by the conditions of trolley systems and solved only by
the inventions of the patent in sult. 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 in-
strument on the car. Tor 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
6
the distribution of electricity, devices for taking
electricity from a stationary conductor and con-
ducting 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 distin-
guished from gravity; of an overhead conductor, as
distinguished from conductors otherwise located; of an
underneath contact, as distinguished from an overrun-
ning 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 ascer-
tained, 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 connec-
tion, however, that these devices referred to were with-
out exception mere paper machines, which do not
appear to have been capable of successful practical
operation. º
The proximate object or purpose to be accomplished
by these inventions was the conveyance of a current
from the conductor to a translating device on a moving
vehicle. The question to be determined by compari-
son of these inventions with that of the patent in suit
is whether, in their adaptation to the purposes of elec-
trical propulsion, some material change in the manner
of application, or some substantially distinct result, was
accomplished. This brings us to a consideration of
the changes which the patentee is alleged to have made
in order to adapt these old inventions to the art of
electrical propulsion. Each of the elements in the
combination of the hinged and pivoted trailing arm
and the upwardly pressed contact device had been vari-
ously described in the earlier patents, and various de-
vices had been used as equivalents for each other.
By way of further examination of the art, certain
patents will be considered in detail. This considera-
7
tion will include patents for systems of propulsion, as
well as signaling and lighting. The Bolton British
Patent will not be considered, because its publication
was subsequent to the construction of the device which
is the subject of the first patent in suit.
Patent No. 91,732, granted to Daniel Fitzgerald
June 22, 1869, shows an apparatus for signaling
to Or from a train of cars. It appears from the
description, and duplicate of the Patent Office model,
that the inventCr contemplated the use of adjustable
spring pressed contact arms, so arranged as either to
come in contact at fixed intervals with wires stretched
across and above the track, or to maintain continuous
connection by means of friction rollers with wires
stretched alongside the track. If the Fitzgerald draw-
ings, description and Patent Office model be examined
by means of the light shed upon the art by the Van
Depoele invention, a vivid imagination might discover
the undeveloped possibilities of a practicable electric
railway in this impracticable signaling apparatus
patented in 1869. The experts for defendant thus
found such a disclosure of a trailing upwardly spring
pressed contact arm provided with a grooved contact
device designed to make contact with the adjacent side
of the conductor as, according to counsel for defend-
ant, is “sufficient to enable any one skilled in the art
of electric railways to instantly grasp the whole subject
of underrunning upwardly spring pressed contact de-
vices such as are used in the modern electric railway.”
But they are forced to admit that the specification fails
to show whether the conducting arms are fastered, or
swing freely, or how they are to be turned ; fails to de-
scribe any of the contact devices in detail, and fails to
state that they are either reversible or spring pressed.
And although they claim that these functions and char-
acteristics are shown or may be inferred from the draw-
ings and model, coupled with knowledge of the general
conditions of practical operation of a railway, they ad-
8
mit that the drawing only shows a side bearing contact
device.
In these circumstances, while this apparatus suggests
certain crude forms of the elements of the Van Depoele
invention, I think it fails to invalidate the patent in
suit for two reasons: First, because it is a mere paper
patent, and the removal of the objections to its prac-
tical operation and its adaptation to the new purpose
required something more than mere mechanical skill.
Second, because such vague, general and incomplete de-
scription is insufficient to enable a person skilled in the
art to perceive its adaptability to the practical appa-
ratus of the patent in suit, and to construct the same
(Pickering vs. McCullough, 104 U. S., 310 ; Eames vs.
Andrews, 122 U. S., 40, 66).
Patent No. 141,604 granted August 5, 1873, to J. G.
Smith for a telegraphic apparatus on moving trains,
shows a Swinging arm attached to the side of a car,
having the branches fitted with brushes and rollers to
make contact with three telegraphic wires strung near
the side of the track and parallel thereto near the level
of the wheels of the cars. There is a suggestion in the
drawings of springs on each side of said fingers, giving
a capacity for horizontal variations. If this device
should be transferred to the top of a car, it could be so
adapted as to maintain contact with an overhead wire,
and might, by a modification of the springs suggested
but not described, be so arranged as to give an upward
pressure, and to follow vertical sinuosities of the over-
head wires. A provision in the patent for the contrac-
tion or expansion of the arms, further shows a capacity
for vertical movement which might be utilized on top
of the car for a horizontal movement. But I do not
find in said patent, even with such modifications and
adaptations, any such capacity for universal movement
as would be required for the exigencies of electric
railway switches and curves, nor, when said arm is
locked in an operative position, is there any provision
for continuous upward pressure. Nor do I find in
9
either the Fitzgerald or Smith Patent any suggestion
of means to overcome the problem of continuous con-
nection at such great and varying overhead distances
from the car as are encountered in the operation of the
trolley system. The importance of this element will
appear later.
In Brunius Patent No. 189,999, the arm swings only
in a vertical plane. Wesson Patent No. 16,665, does
not suggest the possibilities of the patented device, nor
meet the exigencies it met.
In the art of electrical railway propulsion, it will be
unnecessary to consider the contact devices con-
nected by third rails laid between the tracks. Their
capacity for vertical or horizontal movement was very
limited. Nor need we consider in detail the earlier forms
of overrunning towed trolleys. The peculiarity of their
construction was that the contact device was carried on
top of the overhead conductor and was towed by a
wire. They were impracticable and were discarded.
But, as is forcibly urged by counsel for complainant,
the fact that numerous skilled inventors, when first
confronted by the problem of overhead contact, did
not adopt, adapt and develop the electric railway
signal art, already considered, but started out on the
now and independent lines of the overrunning trolley,
is most significant upon the question of invention in
the patent in suit. That they, working with a single
object in view, rejected said existing allied or analogous
art as impracticable, and invented improvements upon
other lines, which have since been discarded for the
improvements afterwards made upon the existing art,
is presumptive evidence that invention was required in
the selection from and adaptation of the existing art.
Sherman Patent No. 302,396 shows a car suspended
from elevated rails, and contact wheels rigidly mounted
on short posts so as to maintain contact with a con-
ductor loosely suspended above the car. There is,
however, nothing having any of the essential elements
of the trolley arm, and the device is inferior to the
10
earlier wheel contact device of Van Depoele, to be
hereafter considered.
On October 8, 1889, Leo Daft obtained Patent No.
412,605 for a device substantially the same in con-
struction as that of the patent in suit, except that it
does not appear that it had any capacity for swinging
laterally. The application for this patent was filed
June 11, 1888. The apparatus described therein was
put in practical operation in June, 1886. Originally,
and prior to Van Depoele's invention, Daft had con-
structed a somewhat similar device, consisting of a
trailing arm pressing downward on an underneath third
rail conductor, and which it is claimed had capacity
for both vertical and lateral movement. Defendant
urges, therefore, that as it was only necessary to turn
this device over in order to obtain the patented in-
vention, the earlier Daft device is an anticipation.
There are several answers to this claim. When Daft
did turn it over and patent it he did not claim
or show capacity for lateral movement of the
arm, and, therefore, did not disclose a device capable
of use for switches and curves. Again, when he
undertook, afterwards, to construct other roads, he
abandoned this construction and went back to the
overrunning towed trolley. Turthermore, in his Balti-
more railway, which, it is claimed, anticipated Van
Depoele, he admits that he was obliged to discard the
contact-wheel because it “was constantly jumping from
the conductor ; and, as it seemed impossible to mount
it with sufficient resilience to obviate this difficulty,” he
substituted a wide laminated brush, “which could see-
saw at will across the conductor without breaking the
circuit.” Inasmuch as in providing for capacity for
universal movement, which is the vital feature of the
adaptability of the Van Depoele invention, he failed,
as all others had done, I do not think the device of
1885, even if it had anticipated Van Depoele, is
material, except upon the question of the primary
character of the invention. These suggestions gener-
11
ally apply also to Patent No. 263,132, granted August
22, 1882, to Thomas A. Edison. The defense that one.
Sprague anticipated Van Depoele does not require any
consideration.
Certain patents introduced by defendant, showing a
staging erected on top of the car in order to bring the
contact device close to the elevated conductor, strik-
ingly illustrate one of the problems solved by the Van
Depoele invention. They show that, when the prob-
lem was presented of furnishing a device capable of
maintaining contact at great and varying distances
above the car, other inventors solved it in the obvious
way of providing an elevated framework or stage on
which they mounted the contact device. That such
structures would be impracticable, by reason of their
weight and rigidity, is manifest from inspection.
It remains to inquire, assuming that the Van Depoele
device possesses patentable novelty, whether he was
the original inventor thereof. The evidence bearing
On this question shows that for some time prior
to 1885 he had had in mind an electric railway similar
in principle to that constructed at Toronto.
In his application for the patent he swore that he
was the original and true inventor, and it does not
appear that during his life any other person
claimed the credit of said invention. But after his
death and upon the taking of the evidence in this case,
One Verstraete, a witness introduced by complainant
and a former employee of the complainant, testified
that the trolley originally designed by Van Depoele for
the Toronto Exhibition was impracticable ; that he
went down to a shop in the city and himself made a
crude form of the patented device and attached it to
the car, and that Van Depoele said he was glad he had
fixed it in that way. While there is some evidence
tending to show that Van Depoele had charge of the
construction of said trolley arm and that Werstraete
worked under his directions, I am not inclined to rest
my decision thereon. It seems to me that in these cir-
12
cumstances, such evidence from a former employee,
after nine years of silence, should not be believed as
against the oath of the patentee, especially when other
evidence on behalf of the patentee is not accessible.
Furthermore, Van Depoele, in an affidavit made in the
course of the proceedings in the Patent Office on the
application for the patent in suit and introduced in evi-
dence by the defendant herein, swore that “he com-
pleted the invention shown, described and claimed,
prior to the year 1885,” and “that during the year
1885 he reduced the invention to actual practice by
constructing and operating a full-size electric railway
which was successfully used for the conveyance of pas-
sengers, as represented by a photograph taken during
that year, a copy of which is hereto attached.” Said
photograph represented the Toronto road and a car
equipped with the device of the patent in suit.
The burden of proof is on the defendant to over-
come the oath of the inventor, and this it has failed to
do (Allen vs. Dewey, 1 Story, 336; Woodward vs. Sher-
man, 3 Story, 171; Spill vs. Celluloid Co., 2 Fed., 707,
711; Worswick vs. Buffalo, 20 Fed., 126, 128).
No one can read this record without being impressed
by the fact that Van Depoele was more than a skilled
mechanic in the art of electrical railway propulsion.
The Patent Office has raised a presumption in his favor
as an inventor by the grant of numerous patents to him.
Some thirty have been introduced by defendant, several
of which cover highly meritorious inventions which have
largely contributed to the successful practical operation
of the trolley roads throughout this country. In fact,
the construction covered by his earlier patent for an
overhead, under-running trolley shows that he appreci-
ated the problems involved in varying lines and curves,
and to a limited extent by said device ingeniously pro-
vided for their solution. This device consisted of a
grooved roller so mounted on a spring on the roof of
the car as to have a limited range of vertical and lateral
motion. In its departure from the constructions of
13
the prior art and its approach towards the idea of the
invention of the patent in suit, it affords striking evi-
dence of that capacity to comprehend practical difficul-
ties in operation, detect defects in existing structures,
and devise means for obviating such defects, which
constitutes the faculty of invention.
As new difficulties arose he invented new means
adapted to the exigencies of the new situations. He
disclosed the invention of the patent in suit at Toronto,
in September, 1885; he developed and improved it at
New Orleans, in December, of that year; he put it into
practical operation at Montgomery, in 1886–7; he ap-
plied for a patent in 1887. It is doubtful whether he,
at first, appreciated the importance or the undeveloped
possibilities of his invention, but this circumstance does
not necessarily detract from his merit as an inventor,
nor does it operate to deprive him of the fruits of the
invention first disclosed and claimed by him.
The new problem p esented was how to make prac-
ticable the electrical propulsion of an electric railway
by a continuous contact under all the conditions pre-
sented by crowded streets, sharp curves, complicated
switches, rough roads, reversed lines of travel and the
necessity of a continuous upward pressure of from
eight to fifteen pounds. The solution was accomplished
by a long rigid arm upwardly pressed and capable of
universal movement. “This arm,” says the inventor,
“ possesses substantial practical advantages over
any other means yet proposed for establishing moving
contact between a vehicle and a stationary supply con-
ductor, in that by the use of a hinged flexible arm, much
greater freedom of movementis compatible with the main-
tenance of a positive mechanical connection and electrical
contact between the vehicle and supply conductors.”
Prior inventors in the same art had shown a similar
contact with a rail under the car, but they failed
to indicate or claim the capacity for lateral
motion. Prior inventors in an allied art had shown
by paper patents the principle of continuous or
14
interrupted contact with such limited provisions
for lateral and vertical motion as to be impracticable.
Prior inventors in a remote art had shown, in
tethers for animals and in office chairs, spring press-
ure and universal movement. But the inventors in the
art of electrical propulsion, signals or telegraphs had
failed to provide for an operative contact device at the
distance from the car required for the operation of the
underrunning trolley road except by unwieldy and im-
practicable structures on the roof of the car. They
had failed to adequately provide for considerable varia-
tions from practically straight lines of travel. In their
later attempts to do so they had constructed or adopted
contrivances which departed from the earlier de-
vices now claimed to show lack of patentable novelty,
and thereby furnished strong proof that the changes
made by Van Depoele were not obvious ones. De-
fendant's expert is forced to admit that the advan-
tages of an underrunning trolley were not obvious, and
that the earlier constructors must have been in doubt
as to the efficiency of such a system, and that the
prior underrunning overhead devices would have led
a person away rather than towards an upwardly
pressed hinged conductor. In these circumstances the
new use of old principles does not fall within the rule
of a double use. The old use was not intended for,
nor adapted to, the conditions of the new use ; it pro-
duced in part only the results of the new use.
When Van Depoele discarded the elevated wheel
and springs of his earlier patent, and broke away
from his own towed trolley and those of Siemens,
Finney, Henry and others, and reversed the under-
running trolley of Daft and Edison, and added lateral
motion thereto, and went back to the overlooked art
of the animal tether, or the limited and imprac-
ticable art of railway signals, and selecting
and combining certain elements of these various
contrivances modified and adapted them to a
new purpose, and thereby disclosed to the public a
15
practically operative means, such as the whole world
of electrical railway inventors had theretofore sought in
vain, and which has gone into universal use throughout
the country, he made an invention within all the rules
applicable to this question. I have been unable, there-
fore, to adopt the view of counsel for defendant, that
the art of conducting electricity from a conductor to a
translating device on a moving vehicle, was sufficient
to enable the skilled mechanic to construct the device
of said first patent. This well-known art had been al-
ready applied in the best forms which Van Depoele
and others could devise, before he made his invention.
But when the new problems were presented, it was
shown that these devices and the underruning rails and
overhead towed trolleys were all impracticable, and it
then became necessary to abandon the old forms and
to so construct and combine the earlier devices as to
furnish new possibilities of operation, and to produce
new, non-analogous and unexpected results. The char-
acter and extent of these modifications may be further
illustrated by a review of the chief advantages result-
ing therefrom.
The Van Depoele invention provided for the collec-
tion of the current from a conductor Suspended so high
above the ground as to be out of the way of travel
across the road ; while bridging this distance it per-
mitted a firm and uniform electrical Gonnection with
said conductor; it could be elevated to a great height
without the use of a permanent high Support on top of
the car, and could be depressed to a level with the car;
by its universal movement it was capable not only of
following the ordinary lateral variations in the overhead
conductor, but it would automatically maintain contact
at sharp curves and at points where branch switches
were used. In this latter respect it is far superior to
every other form of device. The substitution of the
long arm for other contact devices mounted upon high
supports obviated the necessity of permanently and ac-
curately fixing the overhead conductor in position with
16
relation to the track. The upwardly pressed underrun-
ning wheel permits the automatic transfer of the
contact device from one branch to another, a
result which was impossible when contact
was at the side and impracticble with
an overrunning wheel. The upwardly pressed device
further dispenses with the strain upon the conductor
of the former overrunning devices, and the two being
independent of each other, the derailment of one does
not damage the other, as was frequently the case with
former devices. Finally, a further advantage of the
Van Depoele device, shown by diagrams in the brief of
counsel for complainant, consists in the capacity of
the projecting or trailing swinging arm, to follow the
necessarily curved line of the conducting wire at street
corners while the car body is necessarily turning at an
angle.
I have not thought it necessary to discuss the well-
settled principle of invention involved in the adoption
of contrivances from another art. This doctrine is
fully stated in Potts vs. Creager, 155 U. S., 597, and
seems alone decisive, in view of the facts presented
herein.
In respect of the underlying fundamental object and
result of the paper patents for signaling devices and
the Van Depoele device, the transfer was “to a branch
of industry but remotely allied to the other, and the
effect of such transfer has been to supersede other
methods of doing the same work” (Potts vs. Creager,
supra). Clearly this construction required “as acrite
a perception of the relation between cause and effect,”
and as forcibly illustrates the “peculiar intuitive genius
which is a characteristic of great inventors to grasp the
idea that a device used in One art may be made avail-
able in another as would be necessary to create the de-
vice de novo.”
It is further significant upon the question of inven-
tion that, prior to Van Depoele's application in 1887,
only eleven patents altogether had been granted for
17
underrunning trolleys, while immediately thereafter
the number of such applications was greatly increased,
the total number in 1890 reaching one hundred and
fifty-five. -
The attempt to break the force of the evidence that
Van Depoele planned or constructed the plant at the
New Orleans Exhibition has not succeeded. Wa-
rious witnesses testify to his active connec-
tion there with. That he was present during
a period of several days, working on said
plant, is proved ; two witnesses swear that
they put in Said plant or made changes and improve-
ments in said road under his instructions. The claims
of defendant, based upon cross-examination, are largely
argumentative and are not sufficient to overthrow the
positive testimony of the witnesses, or to overcome the
presumptions raised by the oath of Van Depoele him-
self.
In the specification of the patent in suit the patentee
says: “The arm F is hinged and should in most in-
stances be also pivoted to the top of its post f, although
a reasonable amount of looseness in the hinged joint
will answer the purpose of the pivot and prevent bind-
ing or straining at that point due to the swaying of the
vehicle.” *
The defendant strenuously claims that there is no
wonderful invention in a lateral motion thus obtained,
especially where a non-pivoted arm would quickly wear
into infringement in actual use. But other language in
the specification, and the drawings, not only show that
the patentee contemplates, describes, illustrates and
claims an arm both hinged and pivoted, but also show
that what is meant by said expression is that the great
length of the arm, permitting it to “Swing laterally
through a distance of several feet,” may permit such an
amount of lateral motion as will be sufficient “to follow
deflections or bends in the conductors.”
Counsel for defendant further claims that the inven-
tion embraced in the patent in suit was previously dis-
18
closed in prior patents to Van Depoele and patented by
him, and that even “if the broadest form of the inven-
tion was not patented therein, nevertheless that the
form claimed in the patent in suit was so inseparably
involved in the patenting of the invention in the forms
described and claimed in prior patents, that the right to
the patent was exhausted upon the issue of the prior
patents and the broad form was waived and became
abandoned to the public.” In support of this conten-
tion, counsel for defendant chiefly relies upon Van De-
poele Patent No. 424,695, dated April 1, 1890, for “Sus-
pended switches and traveling contact for electric rail-
ways.” The main invention therein claimed relates to
an improvement in the arrangement of contact switches.
In this connection the patentee also claims an improved
contact device for use in connection with such switches.
The patent states that it is a division of the application
which forms the basis of the application of the patent
in suit, and that the patentee herein only claims cer-
tain details of such invention, especially valuchle in
connection with switching devices but not otherwise
essential to the operation of the contact device. The
drawings and much of the description in the two pat-
ents are practically identical. The description in No.
424,695, however, states, as one of the subjects of this
invention, the following:
“And while the arm F is movable laterally with re-
spect to the vehicle, the spring and weight will con-
stantly tend to restore the arm to its normal central
position, and to assist in causing the contact arm to
partake of the lateral movement of the vehicle.”
The special characteristic of this construction, which
it is claimed is the same as that of the patent in suit,
is the weighted spring, which is said to exercise a cen-
tralizing tendency on the trolley arm. In the patent in
suit certain claims were retained inadvertently, it is
said, which cover the weighted spring. This, however,
is immaterial, as said claims are not in issue herein
(Electrical Accumulator Co. vs. Brush Electric Co., 52
19
Fed., 130, 139). In this device it is not the spring
which exerts the tension which maintains the continu-
ous contact of the swinging arm with the overhead
conductor. The arm would be held with equal firm-
ness by weight without the spring. The elasticity of
the spring serves to modify the jerks or strains to
which the arm would otherwise be subjected in case of
sudden changes of level or position. The spring of
Patent No. 424,695 is not a tension spring, except in
So far as such tension may incidentally assist in im-
parting a centralizing tendency to the arm.
The original application- filed March 12, 1887,
claimed a spring and tension device, so arranged as to
impart upward pressure. The improved device
showed a spring and weight so arranged as to permit
lateral motion to the arm and to “constantly tend
to restore the arm to its normal central position
and assist it to partake of the lateral movement
of the car,” to give it a greater range of action
and to make it more convenient in operation.
This patent for this specific combination,
adapted and claimed only for this specific
purpose, applied for October 22, 1888, after the original
application had been allowed, but before the patent
thereon had been granted, was earlier in the date of
issue. The original application was delayed by inter-
ference proceedings in the Patent Office. Whatever
may be the rule as to cases where the application for
the generic patent was filed subsequent to the applica-
tion for the specific patent, I do not think the patentee
should be deprived of his broad patent where the ap-
plication for such patent was made first and was de-
layed in the Patent Office through no fault of the
inventor. Such a ruling would be a reproach to the
law. *
This precise question came up before Commissioner
Mitchell, and was decided by him November 27th,
1889, in Ea, parſe Edison, 49 O. G., 1691, 1693. The
situation is there stated as follows:
20
“The Examiner rejected this application on the
ground that the applicant had applied for and taken
out specific patents for improvements upon the inven-
tion described in snch application, it being admitted
that the present application was filed before and was
pending contemporaneously with the applications
forming the basis of the patents which are treated as a
bar, and that there had been no abandonment.” -
Commissioner Mitchell said:
“The difficulty seems to be owing to the fact that,
at least in some cases, such delays attend the efforts of
inventors to patent their primary inventions, that when
conflicting interests are settled and the patents are
ready to issue, they seem to threaten an extension of
the term of the exclusive use to be enjoyed by the in-
ventor under patents of earlier date, and the charge is
easily made that the so-called monopoly is unlawfully
prolonged. For this result the inventor is not responsi-
ble.” # * * -
“Especially is this so in view of the fact that if the
inventor attempts to delay his improvement patents to
await the action of the Office upon his basic applica-
tion, he will encounter laws and regulations providing
for the forfeiture of applications which are not duly
prosecuted. I, therefore, reach the conclusion that the
view entertained by the Examiner is not warranted by
law.” # * *
“I conclude that when an applicant is detained
in the Office to contest priority, or for any
other reason not involving his own laches, and mean-
while applies for and takes out patents for improve-
ments upon the invention first applied for, the
improvement patents referring to the earlier applica-
tion, and reserving the right to obtain a patent thereon,
such intermediate patents do not debar the right to a
patent upon the subject matter of the earlier applica-
tion, whenever the Office is ready to grant the same.”
I concur in this decision so far as its application is
necessary in this case. There is no occasion to decide
21
what the result would be if the application for the
primary patent were filed after the application for the
specific patent.
The mere fact that the patentee in good faith thus
sought to protect an improved form of his invention.
while the application for the broad invention was de-
layed by interference in the Patent Office, does not
justify the claim that he thereby surrendered to the
public the original underlying invention. *
JHolmes Elect. Co. vs. Metropolitan Burglar
Co., 33 Fed., 254.
I have examined with great care the exhaustive argu-
ment of counsel for defendant, based upon the decision
in Miller vs. Eagle Mfg. Co., 151 U. S., 201. Whatever
question may arise as to the interpretation to be put
upon certain statements in said Opinion, the questions
at issue and the decision thereon do not cover the
issues in this case. In that case, the Original applica-
tion included one claim for the depressing and lifting
action of the spring, and another for the increase in the
lifting power of the spring as the beam was elevated.
As in the case at bar, the application was divided so as
to present these claims separately, the drawings and
descriptions of the two applications being alike, and
separate patents were granted thereon. The Court
decided that certain functions of the first and second
patents were identical, and that the invention which
the first patent covered, the lifting and depressing
spring, included the invention covered by the second
patent, which was simply the increased lifting effect.
In this sense the Court held that the matter in the sec-
ond patent was inseparably involved in the first patent.
The question whether the issuing of a subsidiary patent
before a primary patent without the fault of the
inventor, when the primary patent was first applied
for, was not before the Court and was not passed upon.
The contention of counsel for complainant is
chiefly directed to the point that the prior patents
22
to Van Depoele are not for the same invention
as that covered by the claims in suit. He shows that
the prior patents covered specific forms of improve-
ments upon the generic invention, but contends that
they do not cover the generic invention which under-
lies, not only the specific improvement patented, but
other forms.
The defendant, while denying patentable novelty
and urging that even if there be an invention, it is sub-
stantially the same as that covered by the former pat-
ents, chiefly relies upon the claim that, within the
meaning of Miller vs. Eagle Mfg. Co., supra, the inven-
tion of the later patent “is inseparably involved ’’ in
the invention of the earlier One.
In the case at bar, the special combinations de-
scribed and claimed in the earlier patents were distinct
and separate from that of the later generic invention.
They stated the new problem presented to the inven-
tor in the practical development of his invention, the
construction of an improved switching-plate device,
and the means for its application, which the patentee
had a right to protect. While they were dependent
for their operation upon the original broad invention of
the earlier application, but later patent, they were not
otherwise inseparably involved.
In Miller vs. Eagle Mfg. Co., supra, the function of
increasing lifting effect claimed in the second patent,
was inseparably involved in the structure of the first
patent in the sense of identity of structural combina-
tion and action. The patentee attempted by a later
patent to extend the monopoly of an effect essentially
brought into operation in the practical use of the com-
bination specified in the earlier patent. He did not
change the elements of said combination, but having
Originally described and claimed certain mechanical in-
strumentalities so combined as to constitute an opera-
tive means to accomplish a certain result, he afterwards
attempted to claim one of the operations of one of the
essential means, which operation was necessarily in-
23
cluded in the operation of the earlier combination and
could have been claimed in the earlier patent.
In Suffolk Co. vs. IIayden, 3 Wall., 315, cited in
Miller vs. Zagle Mfg. Co., Supra, a case closely re-
sembling 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 inven-
tion, 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 Sub-
ordinate combination.
In the Barbed Wire Patent, 143 U. S., 280, the
patent first applied for did not issue until after an im-
provement 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 with-
out claiming it, except in combination with the im-
provement.
Finally the decision of the Circuit Court of Appeals
for the Second Circuit, in A'lectrical Accumulator Co.
vs. Brush Electric Co., 52 Fed., 130, affirming the de-
cision of Judge COXE in Brush Electric Co. vs. AElec-
frical Acewmulator Co., 47 Fed., 48, is directly in point
and seems to be controlling upon the questions pre-
sented herein. There, the patentee, Brush, first ap-
plied for a patent for the broad invention of a secondary
battery. While this application was delayed by inter-
ferences 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 in-
vention. 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 inven-
24
tion was included in the subordinate patent. But
Judge COXE, and the Court of Appeals affirming his
decision, held that although the subordinate applica-
tion necessarily described the broad invention, its
language showed that it was restricted to the subor-
dinate 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 vs. Zagle Mfg. 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 con-
struction which first made practicable the operation of
the trolley railway under all conditions, and which is
now employed on more than five hundred electric rail-
ways in this country, representing an invested capital
of about five hundred million dollars.
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 conductor, a standard on the car, a rotat-
ing support thereon, an inclined contact 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
25
car of a stardard 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 rail-
way vehicle, consisting of a standard, a rotating Sup-
port 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,
Inamely, a rotating support for the post upon which the
contact arm swings.
The defenses are practically the same as those con-
sidered with reference to the first patent. The patent
comprises “an improved apparatus whereby the
upward pressing contact is maintained against the con-
ductor,” and “means for reversing the position of the
contact arm upon the car.”
In the first patent in suit, No. 495,443, the spring
which maintained the upward pressure of the under-
running 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 attaclement 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 re-
versible, the arm may be so adjusted as to trail rear-
wardly 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
26
move there with. But because this improvement is
useful in permittiug 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 elec-
tric railway signaling, 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 ani-
mal 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. Parrish 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 Parrish and Munn referred, or that class of re-
versibility 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 there with, this
being the class of mechanisms of the Parish and Munn
earlier patent, the chair patent and the cow tether
27
patent.” He adds that the office chair construction
was so universally known and understood, and reversi-
bility 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 vs. 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 mechan-
ical 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 electri-
cal railway propulsion and no electrical effect. The
prior devices were designed, adapted and actually used
for the performance of the same function (Zopliff vs.
Topliff, 145 U. S., 156); the transfer was not to a
branch of industry, but remotely allied (Potts vs.
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 in-
ventive genius to perceive the reiations between cause
and effect, and to grasp the idea that the device might
be adapted to a new art (I’otts vs. 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 Mfg. Co. vs. Z/oltzer, 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
28
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 Patents, and three of the Daft Pat-
ents cover constructions where the conductor and con-
tact 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 pro-
vided, which were better adapted to said constructions
than a reversible spring would have been.
These facts, together with the considerations already
discussed, showing that VanDepoele was the inventor
of the novel construction of the first patent,
effectually dispose of the foregoing argu-
ment of complainant. Until VanDepoele had dis-
closed the overhead, underrunning spring-pressed later-
ally swinging contact arm, there was no problem pre-
sented of reversibility of a rotating spring device, or of
unrestricted lateral motion.
The reason for the universal adoption of the device
of this second patent follows as a corrolary from the
foregoing conclusions. Its adoption results not from
its patentable novelty, but from its practical utility, in
connection with the main invention. The doctrine that
utility, in the absence of patentable novelty, is imma-
29
terial, is especially applicable where the sole foundation
for the claim of utility lies in the mere mechanical
adaptability of a well-known device to a novel invention
protected by a valid patent.
Let a decree be entered for an injunction and an ac-
counting as to the claims in Patent No. 495,443, 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
[4225]
%-4 4-cºsa

Suspended Switch Case.
(Circuit Court of Appeals.)
• * * --r- ~~~. --> -- - -º- - - -- - - - - - - - - - < *
Full Text of Judge Wallace's decision in the case of
Thomson-Houston Electric Company, Appellant and
Appellee, vs. Elmira and Horseheads Railway
Company, Appellant and Appellee, filed in
the U. S. Circuit Court of Appeals,
Second Circuit, January 8, 1896.
“The switch-plate of the patent is peculiarly adapted for use with a light flexible con-
ductor. It is simple, cheap, light and inconspicuous. As a brauch connection at the junction
between such conductors it is efficient, and its value has been generally recognized. The
ordinary track frog, as a structural device, has only a remote resemblance to it. The sugges-
tion that it could be utilized in an overhead line wire junction would seem ludicrous, and it
could only be done by denuding it of its most conspicuous characteristic. Various expedients
for switching with such conductors have been resorted to by experts in the art. The fact that
they overlooked devices like the patented device and resorted to clumsy or inconvenient
means cannot be ignored.” -
tº: $º - * * & * * { } *
“The arrangement of the track switch in such relation to the conductor switch and the
interposed trolley that the movement of the forward part of the car upon the branch track
will deflect the trolley wheel and guide it naturally into the proper compartment of the con-
ductor switch is an important feature of the invention. It effects such a co-operation of the
parts as to utilize the initial lateral movement of the car itself as the means for determining
the directive action of the conductor switch, and thus renders the switching operation an
automatic one. The description necessarily calls for the location of the track switch some-
'what in advance of the conductor switch or of the trolley, so as to engage the conductor in
rear of the forward part of the car sufficiently so as to impart the necessary directive action to
the trolley wheel as it enters the conductor switch. The value of this simple arrangement, by
which the manipulation of the trolley by an attendant upon the cars is no longer necessary,
is obvious. It has been universally adopted, and has required no improvement since its
introduction into electric railways.”
*
c. G. Burgoyne, Walker and Centre Streets, New York.-1896.
United StátēS (iOlliſ (Olſt Of Ayal
SECOND CIRCUIT.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Appellant,
WS.,
ELMIRA & HoRSEHEADS RAILROAD
COMPANY.,
Appellee.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Appellee,
WS.
ELMIRA & HORSEHEADS RAILWAY
COMPANY.,
Appellan
WALLACE, Circuit Judge.
In this cause there are cross-appeals. The suit was
for the infringement of letters patent to Charles J. Van
Depoele, No. 424,695, dated April 1st, 1890, for im-
provements in suspended switches and traveling con-
tacts for electric railways. The defendant appeals from
so much of the decree as sustains claims Nos. 2, 3, 4, 9,
10, 19, 20, 23, 25, 26, 27, 32 and 33 and awards an in-
2
junction and an accounting. The complainant appeals
from so much of the decree as dismisses the bill in re-
spect to Claims Nos. 15, 16 and 17 of the letters patent.
The patent contains 35 claims. Some of them were
withdrawn from the consideration of the court below at
the hearing ; as to some others the complainant elected
not to ask for a decree ; none of these claims, there-
fore, are involved upon this appeal. -
The principal question presented by the appeal on
the part of the defendant is whether the claims which
were sustained by the decree are void for want of
patentable novelty or because the several inventions
had been previously patented by the same inventor.
That these inventions have been appropriated upon the
railway of the defendant is not contested.
The sole question presented by the appeal of the
complainant is whether the defendant has infringed the
claims as to which the bill was dismissed. -
The patent was based upon an application, serial
No. 230,649, filed March 12th, 1887. The application
was divided and the application for the patent in suit
filed October 22nd, 1888. The patent relates to electric
railways in which there is a stationary source of electric
energy, an overhead conductor extending over the
line of track for conveying the power to the cars,
electric motors On the cars for impelling the same,
travelling contact mechanism, and tracks having
branches and turnouts.
In the preamble of the patent the patentee states:
“My invention consists in certain devices and their
relative arrangement by means of which a contact-
device carried by a rod or pole extending from the car
and pressed upwardly into contact with the conductor
is switched from one line to another correspondingly
with the vehicle.
“To illustrate my invention I have shown it ap-
plied to a contact-device of this description, which
forms the subject-matter of my application serial
number 230,649, of March 12, 1887, and while I do not
3
intend to claim, generally, in this application a contact
device of this construction, I have made claims herein
to certain details thereof which are of especial value in
connection with my improved switching devices, but
which are not essential features of the contact device
itself, considered without reference to the switch.
“I also make claims in this application to a switch-
plate particularly designated for the arrangement which
forms the principal subject matter of this application.
“More particularly my invention consists in a
track-switch for the vehicle, a conductor-switch
for the contact-device or “trolley ’’, as it is
termed, and the trolley itself attached to the vehicle,
these elements being so arranged relatively to one an-
other that in operation the vehicle reaches the track-
switch and is diverted laterally before the trolley
reaches the conductor-switch, whereby the trolley
which partakes of the lateral movement of the vehicle,
bas imparted to it a laterally moving tendency before
its switch is reached, and it therefore passes through
the switch in the proper direction, corresponding to the
movement of the vehicle.
“My invention also consists in various details of
construction and arrangement, which will be herein-
pointed out.”
The specification describes the conductor-switch as
located at the junction of the main and branch con-
ductor wires, practically above the corresponding
track-switch. It consists of an inverted open-bottomed
metallic box, depending from and directly secured to the
wires, formed with branch compartments to correspond
to the curves and angles of the track-switch. As shown
in the drawings, it is a plate of metal somewhat
resembling the letter, Y, with depending flanges at its
two sides, the narrow end of the plate being turned in
the direction of the main wire, and the other end being
connected with both the main and the branch wires.
The narrow end is wide enough to permit the easy
movement of the trolley wheel through it, while the
4.
other end is wide enough to permit the trolley wheel to
move out in either direction of the main or the
branch wire.
The contact-device or trolley, as described, belongs
to the order of “under-running” contacts; and in the
form shown in the patent consists of a grooved wheel
mounted upon an arm which is carried by the roof of
the car and pressed upward by the action of an elastic
tension device (under the control of the attendant) so
as to bring the wheel into engagement with the under
side of the suspended conductor. -
The arm is mounted on the top of the car, and is
pivotted and swivelled so as to be capable of swinging
both vertically and horizontally through considerable
arcs. Attached to its short arm is a tension device,
consisting of a weight and spring which operates to
maintain normal contact between the trolley wheel and
the suspended conductor, and enables the attendant to
lower or raise the trolley. The arm is attached to the
forward part of the car and trails backward, and is of a
length that will place the trolley wheel about over the
rear wheels of the car.
The specification states:
“The track switches and the contact wheel, as be-
fore stated, are to be located so that as the front por-
tion of the car swings in the desired direction as the
front wheels pass the track switch, the contact-arm will
be deflected and the direction of the wheel E corre-
spondingly changed while still on the straight wire, so
that on reaching the switch-box the wheel will be de-
pressed and pass thereinto and naturally pass through
and out of the proper compartment thereof. The
switch-boxes, I, being connected directly to the con-
ductor D, are similarly charged, and when the wheel E
is passing therethrough the current passes through
the box I and thence into the contact wheel through
its flanges e, passing thence through the arm F or a
separate conductor to the motor C. Since there are no
moving tongues or springs or points to catch or impede
5
the progress of the wheel when three or four grooves,
as the case may be, exist in One switch-box, the wheel
will intersect the grooves and pass along in the desired
direction and go through without any difficulty what-
ever, its direction being previously indicated by the
movement of the front portion of the car. Thus it will
be seen that by locating my travelling contact-wheel in
the position shown or one equivalent thereto I obviate
all the difficulties of switching from conductor to con-
ductor and with the smallest possible amount of special
construction.
“I believe myself to be the first to devise this ar-
rangement of contact device and switches, whereby the
lateral movement of the vehicle is first imparted to the
trailing contact-arm and the contact wheel is then
flexibly, yet without interruption of contact, drawn into
the switch and guided thereby into engagement with
the desired branch conductor, and I intend herein to
claim, broadly, any relative arrangement of track-switch,
conductor switch, vehicle, and contact device by means of
which the former switch will act in advance of the latter
and the vehicle impart a lateral tendency to the
trailing contact by the time it engages with the con-
ductor-switch.”
One group of the claims of the patent relate to the
combination in an electric railway, of an overhead con-
ductor, an under-running contact-device, and a switch-
ing device secured to the conductor. These claims are
as follows:
“2. The combination, with an overhead conductor
arranged to receive a traveling underneath contact, of
a switching device secured to and depending from the
conductor.”
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.”
“ 11. The combination, with an overhead line wire,
of a grooved contact device pressed against the wire
6
and receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the said flanges bear in passing from one line to
another.”
“ 19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly pressed
contact-arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel-flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with one of the
branch conductors.”
It is insisted for the defendant that these claims are
invalid because the switching device is merely the
Ordinary track-frog used in a new place, without change
in form or even in material, and performing the same
function in precisely the same way, and in as much as
the combination was otherwise old it was not an in-
vention to transfer the frog and secure it to the con-
(luctor.
The proofs show that in the prior state of the art
it was old to combine in an electric railway, an over-
head conductor, and under-running contact de-
vice, and means for switching the car upon
a branch track, which included the transference of
the contact device to a branch conductor. Such a com-
bination appears in two earlier patents, one of which
was granted to Sprague and the other to Van Depoele
himself. In the structure of the Sprague patent there
is an overhead suspended conductor, consisting of a
rail having a flange at each side, and a contact device
which is a wheel running in the channel formed, and
held therein by upward pressure. The specification
contains this statement :
“When the switches extend from one track to another,
the overhead conductor branches and a conductor fol-
lows the switch-track, so that when the motor leaves
the main track and passes upon the switch, its contact,
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efficiently. And if the opinion of the complainant's
expert is correct, the roof of Van Depoele's earlier sus-
pended conductor, with its depending sides, would do
the same work. That roof is practically an inverted
open-bottomed box, having compartments defined at
the junction of the conductors by the conductors them-
selves, Consequently, the structure of that patent con-
tains essentially all the elements specified in the second
claim of the present patent. We conclude, therefore,
that this claim is void for want of patentable novelty.
In view of the phraseology of the other three claims,
the second claim cannot be restricted to a combination
in which the contact device is grooved, or the overhead
conductor is a line wire, because those claims are mean-
ingless unless they are intended to specify the limita-
tions which differentiate their respective combinations
from that of the second claim.
The other three claims embrace among their con-
stituents, an overhead wire and a grooved contact de-
vice, or devices which are the equivalent of these. In
a system employing these devices a switch-plate is in-
dispensable. The switch-plate of the patent is
peculiarly adapted for use with a light, flexible con-
ductor. It is simple, cheap, light and inconspicuous.
As a branch connection at the junction between such
conductors it is efficient and its value has been gener-
ally recognized. The ordinary track-frog, as a con-
structural device, has only a remote resemblance to it.
The suggestion that it could be utilized in an overhead
line wire junction would seem ludicrous; and it could
only be done by denuding it of its most conspicuous
characteristic. Various expedients for switching with
such conductors have been resorted to by experts in
the art. The fact that they overlooked devices like
the patented device and resorted to clumsy or incon-
venient means cannot be ignored. It was not a
great invention, but that it was an invention requiring
a degree of ingenuity somewhat beyond the Ordinary
skill of the calling, we are unable to doubt. There
9
are two other claims in the patent which relate
specifically to the conductor switch. These are as
follows :
“9. In an electric railway, a switching device for
suspended conductors, comprising two or more branch-
ing compartments or ways corresponding to the direc-
tion of the track, and of the main and branch con-
ductors, and secured to the said suspended conductors,
substantially as described.
“10. In an electric railway, a switching device for
suspended conductors, consisting of an open bottom
box formed with two or more branching compartments
corresponding to the direction of the track, and ar-
ranged to be secured to the conductor, substantially as
described.”
The observations which have been made with re-
spect to Claim 2 apply equally to these claims. We
think they are destitute of patentable novelty.
Another group of claims are those relating to the
trailing trolley and relative arrangement of trolley
switch and branch switches. Those in controversy are
as follows:
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.”
“20. In an electric railway, the combination, with an
Overhead switch plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly-pressed contact-arm attached to the
vehicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor-switch.
“23. The combination with branching overhead con-
ductors, of a vehicle having a laterally-swinging con-
tact-arm pressed upward to engage the conductors, and
a switch-plate at the branching point having dependent
10
sides, but open at its extremities, the interior width of
the plate between the sides being greater than the
thickness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.
“26. In a branching electric railway, the combina-
tion with a vehicle of a track-switch, an overhead con-
ductor-switch and a contact-arm extending upward
from the vehicle to the conductor, and so located re-
latively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a cor-
responding movement of the contact-device on the con-
ductor-switch.
“27. In a branching electric railway, the combina-
tion, with a vehicle of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally there with, and an Over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductors.”
The arrangement of the track-switch in such relation
to the conductor-switch and the interposed trolley that
the movement of the forward part of the car upon the
branch track will deflect the trolley-wheel and guide it
naturally into the proper compartment of the con-
ductor-switch is an important feature of the invention.
It effects such a co-operation of the parts as to utilize
the initial lateral movement of the car itself as the
means for determining the directive action of the
conductor-switch, and thus renders the switching oper-
ation an automatic One. The description necessarily
calls for the location of the track-switch somewhat in
11
advance of the conductor-switch, or of the trolley, so
as to engage the conductor in rear of the forward part
of the car, sufficiently so as to impart the necessary
directive action to the trolley-wheel as it enters the
conductor-switch. The value of this simple arrange-
ment, by which the manipulation of the trolley by an
attendant upon the cars is no longer necessary, is
obvious. It has been universally adopted, and has
required no improvement since its introduction into
electic railways. These facts sufficiently attest the
patentable novelty of the invention of the claims.
Claims 32 and 33 of the patent relate to the central-
izing spring which controls the lateral movement of
the trailing trolley-arm. This division of the invention
is described in the specification as follows:
“E is the traveling contact-wheel, and F is a hinged
arm Supported upon a post f, secured to or extending
upward from the roof of the car.
“To the lower end of the arm F is attached a spring
G, to the lower extremity of which is secured a
cord which passes downward through suitable grooves
or over suitable rollers, and is provided with a weight
H, which serves to hold the spring down and keep the
contact-wheel E always pressed up against the under
side of the conductor D. At the same time the spring
will instantly yield to allow the wheel to pass under
the switch or any obstruction, and while the arm F is
movable laterally with respect to the vehicle the spring
and weight will constantly tend to restore the arm to its
normal central position and assist in causing the con-
tact-arm to partake of the lateral movement of the
vehicle.”
The Claims are as follows:
“32. In an electric railway, the combination, with an
overhead conductor and a vehicle, of a trailing contact-
arm guided at its outer end by the overhead conductor,
and movable laterally relatively to the vehicle, but hav-
ing a normal centralizing tendency by means of a spring
or weight.
12
“33. In an electric railway, the combination, with an
overhead conductor and a vehicle, of an intermediate
contact device consisting of an upwardly-pressed trail-
ing arm having a grooved contact-wheel at its Outer
end by which it is guided by the conductor, the said
arm being free to swing laterally relatively to the vehi-
cle, but tending to remain in its normal central position
by means of a spring Or weight.”
It is not contended for the defendant that these
claims do not cover patentable inventions.
Another group of claims are those relating to the
combination of the pivoted trolley-arm, and its weight
and spring mechanism. These claims are founded
upon the extract from the specification just quoted, and
are as follows:
“15. In an electric railway, the combination of a car,
a conductor suspended above the line of travel of the
car, a contact-carrying arm pivotally supported on top
of the car and provided at its Outer end with a contact-
roller engaging the under side of the suspended conduc-
tor, and a weighted spring at or near the inner end of
the arm for maintaining said upward contact, substan-
tially as described.
“16. In an electric railway, the combination of a car
provided with a pivoted arm, as F, having a contact at
its outer extremity, a tension-spring, as G, attached at
its inner extremity, and a vertically-moving weight con-
nected to said spling for holding the same in operative
relation to the arm throughout its entire range of move-
ment, substantially as described.
“17. In an electric railway, the combination of the
car having suitably pivoted arm F, carrying a contact
wheel at its outer extremity, a spring G, secured to its
lower extremity, and a connection extending from said
spring and provided with a weight at its lower end,
substantially as described.”
The Court below held that these claims were not in-
fringed, and that part of the decree is the subject of the
appeal by the complainant. We think the conclusion
13
of the Court below was plainly right. Judge COXE said
that :
“One of the elements of the claim is a ‘weighted
spring', or, as it is expressed in Claim 16, a vertically
moving weight connected to said spring,' and in claim
17, a connection extending from said spring and pro-
vided with a weight at its lower end.”
“The function of the ‘weight H ' is pointed out with
care in the description. The defendant does not use
the weight in any manner whatever, and consequently
does not infringe.”
It is the function of the weight to hold the spring
down and give to the contact-wheel a greater range of
action. The claims are too explicit to be altered or
enlarged by the omission of the weight. The spring
itself could as reasonably be eliminated as the weight.
It is insisted for the defendant that the claims which
we have thus far concluded to be valid, and to have
been infringed, are void because their inventions were
previously patented by the same inventor.
The only patents of Van Depoele which preceded
the patent in suit and which describes and illustrates
devices of the same general character, are six in
number, viz. No. 394,039, dated December 4, 1888; No.
397,451, dated February 5, 1889; No. 402,117, dated
April 23, 1889; No. 408,638, dated August 6, 1889;
No. 409,156, dated August 13, 1889; and No. 424,380,
dated March 25, 1890.
All of these patents were granted to him when the
application for the patent in suit was pending in the
Patent Office, and on applications which were filed
after the date of the Original application for the patent
in suit. -
In the argument at the bar No. 397,451 has been
treated the most important of these patents. The tes-
timony of the expert witness for the defendant was
exclusively confined to an analysis of that patent. It is
relied upon to defeat the switch-plate claims and the
claims relating to the centralizing spring. It does not
14
affect the claims relating to the directive action
of the switch-track, mor, so far as we are
able to discover in the absence of any expert testimony
in regard to them, do any of the others of the preceding
patents. The considerations which will control the
effect of No 397,451 are equally pertinent to the other
patents. For these reasons it will not be necessary or
profitable to consider them.
Upon cross-examination the expert for the defend-
ant testified as follows:
“Q. I notice that in referring to Van Depoele's
earlier patent No. 397,451, in connection with the
various claims of the patent in suit, you have been
quite careful to say that you find the combinations of
the several claims of the pa tent in suit ‘shown and
described in the earlier patent. You have nowhere
said, I believe, that you find any one of the combina-
tions convered by the claims of the patent in suit to
have been claimed in the earlier patent. Do you, in
fact, find any one of these combinations to have been
claimed in Patent 397,451 ; and, if so, please indicate
what one, or, if more than One, what ones 2
“A. I do not think that any of the combinations
that are claimed in 424,695 are also claimed as such in
397,451. Patent 397,451 contains apparently limited
claims, while Patent 424,695 contains broader claims,
or claims which are less restricted than the claims of
the earlier patent.
“Q. Do you find in the earlier patent 397,451 any
claims which would necessarily include the apparatus
or the construction which is shown and described in
the patent in suit, No. 424,695 °
“A. The situation is the reverse, as I understand it.
The claims of 424,695 include the apparatus shown in
patent 397,451, but the claims of 397,451 do not cover
the devices of 424,695.”
This evidence was not objected to, and is recited
merely because it is a plain and concise statement of
the opinion of the expert as to the true scope of the
claims of the two patents.
15
The argument for the defendant is that the patent in
suit merely claims the matter of the earlier patent
more generically or in broader terms ; that it selects
and withdraws fundamental parts of the combinations
claimed in the earlier patent without which those colm-
binations could not exist, and patents them again ; and
that the inventions, because inseparably involved in
the patentable matter of the earlier patent, are covered
by it.
The principles of law applicable to the case may be
briefly stated. An inventor by describing an inven-
tion in a patent granted to him does not necessarily
preclude himself from patenting it subsequently. His
omission to claim what he describes may operate as a
disclaimer or an abandonment of the matter not
claimed, but it has no such effect when it appears that
the matter thus described, but not claimed, was the
subject of a pending application in the patent office by
him for another patent. This was explicitly adjudged
in Suffolk v. Hayden (3 Wall. 315) and recognized as
sound doctrine in the Barbed Wire case (143 U. S. 275).
The invention secured by a patent is that which is
secured to the patentee by the claims. The claim is a
statutory requirement prescribed for the purpose of
making the patentee define what his intention is so
distinctly and exactly as to apprise other inventors,
and the public, what is withdrawn from general use.
The claim, however, is to be read in the light of the
description contained in the specification, and its
literal terms may be enlarged or narrowed accordingly,
but not to an extent inconsistent with their meaning.
Identity of language in the claims of two patents
does not necessarily import that the invention patented
by each is indentical; nor does a difference in phrase-
ology necessarily import that they are for different
inventions. The test of identity is whether both, when
properly construed in the light of the description, de-
fine essentially the same thing. When the claims of
both cover and control essentially the same subject-
16
matter both are for the same invention, and the later
patent is void.
A machine or structure may embody several different
inventions. There may be special combinations in a
machine which are new and useful and operate con-
jointly to perform some subordinate function. Such a
special combination, if not patented by a claim, might
be appropriated by another without infringing a patent
for the machine. Being for a different invention it is a
proper subject for a distinct patent. While two or more
inventions residing in the same combination or struc-
ture may be covered by a corresponding number of
claims in a single patent, the law does not require them
all to be claimed in the same patent, and the invention
may, at the option of the patentee, be secured by dif-
ferent patents. It is quite immaterial that both inven-
tions originate at the same time and from a single
conception. In Cochrane v. Deener, (94 U. S. 780), the
court said :
“One invention may include within it many others,
and each and all may be valid at the same time.”
In all such cases, if the inventions are truly separ-
able, the inventor is entitled to a monopoly for each,
although neither could have been discovered and made
available without the other. The invention of a new
art, machine or manufacture and the invention of an
improvement upon either, are substantially distinct
and separate, and because this is so the Order of
priority between patents to the same inventor for
different inventions, in the absence of abandonment
or disclaimer is immaterial. These various proposi-
tions may be summed up by adopting the language of
the Court in Miller v. Eagle Manufacturing Co., (151
U. S. 198):
“The result of the foregoing and other authorities is
that no patent can issue for an invention actually cov-
ered by a former patent, especially to the same pat-
entee, although the terms of the claims may differ ;
that the second patent, although containing a broader
17
claim, more generical in its character than the specific
claim contained in the prior patent, is also void ; but
that where the second patent covers matter described
in the prior patent, essentially distinct and separable
from the invention covered thereby and claims made
thereunder, its validity may be sustained. In the last
class of cases it must distinctly appear that the inven-
tion covered by the later patent was a separate inven-
tion, distinctly different and independent from that
covered by the first patent ; in other words, it must be
Something substantially different from that compre-
hended in the first patent. It must consist in some-
thing more than a mere distinction of the breadth or
scope of the claims of each patent.”
Some observations in Miller v. Eagle Manufactur-
ing Co., seem to have created some misapprehension of
the scope of that decision on the part of the profes-
sion; but the principles enunciated in the opinion are
So plainly stated that those observations, when consid-
ered in their application to the case before the court,
ought not to be misconceived. The court decided in
that case that the two patents to Wright were, in fact, for
the same invention, and, cohsequently, the latter patent
was void. The invention of Wright, and his only in-
vention, consisted of a spring of a peculiar construc-
tion, designed to be used with cultivators having ver-
tically swinging beams. Previous to his inven-
tion, as both the patents state, springs had been
applied to such cultivators to assist in lifting
the beams, and Wright's invention consisted in a
peculiar construction of such springs. He attempted
to patent the same spring in combination with the
same elements in both patents. The court said of the
patents:
“The patent of 1879 thus embraces both the lifting
and the depressing effects or operations of the spring
device, while that of 1881 seeks to cover only the in-
creased lifting effect of the same device. The first
patent clearly includes the second. No substantial dis-
18
tinction can be drawn between the two, which have the
same elements in combination and the same spring ar-
rangement and adjustment to accomplish precisely the
same lifting effect, increasing as the beams are raised
from their operative positions. The matter sought to
be covered by the second patent is inseparably in-
volved in the matter embraced in the former patent,
and this, under the authorities, renders the second
patent void.”
The opinion treats the case as one where the patentee
having described and claimed a spring which was
capable of performing two functions, attempted to
patent it again as one capable of performing only one
of the two functions. That the court regarded the
second patent as merely for one of the functions of the
device patented in the first patent, in other words, for
a different use of the same invention, is indicated by
the following language in the opinion :
“The prior invention covered the means, and the
only means, by which the results sought by the patent
of 1881 were to be accomplished, and it is settled that
the patentee of such prior device would be entitled to
all of its uses, whether described or not. Roberts v.
Ryer, 91 U. S. 150 ; Stowe v. Chicago, 104 U. S. 547.
Under these authorities a single element or function of
a patented invention cannot be made the subject of a
separate and subsequent patent, and it, therefore, fol-
lows that the increased lifting effect of the spring de-
vice, sought to be covered by the 1881 patent, being
clearly shown and described in the specification, draw-
ings and claims of the 1879 patent, was not the subject-
matter of a valid patent.”
The general question under consideration was be-
fore this court in A'lectrical Accumulator Co. vs.
Brush Electric Co., (52 Fed. Rep. 130). In that
case the patent in suit (No. 337,229) was ap-
plied for June 30th, 1881, but, owing to an interference
proceeding, was not issued until March 2nd, 1886.
Meanwhile, a division of this application was applied
I9
for June 15th, 1882, and patented July 4th, 1882, in
letters patent No. 260,653. Upon this division a num-
ber of the specific features of the general invention
were selected, claimed and patented. These features
consisted of the separate invention in which the plates
were constructed with shelves or “etageyes” for holding
active or absorptive material. It was urged that this
patent invalidated the later patent, because it described
the broad invention claimed in the later patent and
claimed certain parts of it. The court, referring to
this argument, said : -
“No. 260,653 stated on its face that it is a division of
Case I, in which other features of the invention were
claimed, so that the public was not misled into the idea
that unpatented portions of the invention had been
abandoned. The specification, although the broad in-
vention is described, and the claims show that the pat-
ent is for the etagen'e like form or series of shelves in
which the finely divided lead of Case I was held. If
letters patent were to be treated by the court in the
critical and hostile spirit which a plea in abatement
formerly encountered, the contention of the defendant
would have technical importance ; but courts do not
construe letters patent for the purpose of their destruc-
tion. The history of No. 260,653 entirely contradicts
the theory of its breadth. The broad invention was the
subject of Case I. Pending its consideration in the
Patent Office a subordinate claim became the subject
of interference, upon which a patent was issued, which
proclaimed its divisional character. Subsequently the
patents were issued upon the broad claims which had
lingered in interference in the Patent Office, and it is
now contended that the main invention has been, in
fact, included in the claims for a series of shelves which
held finely-divided lead. Such a construction is not
demanded by decided cases, or by known principles of
law, and a limited construction, in accordance with its
apparent scope, will, therefore, be placed upon No.
260,653.”
20
Applying the principles which have been stated to
the case in hand, its solution is not difficult. In
patent No. 397,451, although the elements of
the claims of the later patent relating to the
switch-box and centralizing spring were described and
illustrated, the inventions claimed were distinctly
and specifically for structural improvements in the de-
vices patented in No. 424,695. The switch claims all
relate to special supplementary improvements in the
form of switch-plates which enable the trolley to pass
into the switch and without binding in turning a sharp
curve to follow with certainty the proper branching
conductor. The “trolley ’’ claims relate to certain
special and supplementary features which make the
trolley arm adjustable as to length or adjustable as to
tension. As the expert for the defendant stated, its
claims, so far as they relate to the switch and to
the trolley, do not cover the device of No. 424,695.
They cover the improvements, and nothing more.
These conclusions lead to the reversal of the decree
with costs of the appeal to be paid by the complaimant.
Upon filing a proper disclaimer as to the claims, which,
according to our judgment, are void the complainant
will be entitled to a decree for an injunction and an ac-
counting in respect to those which we have held to be
valid and infringed, but without costs of the suit.
The decree is accordingly reversed and the cause re-
mitted to the Circuit Court with instructions to pro-
ceed comformably to this opinion.
[4503]
,7 % 424,695.
7 & ~ (;, ; G36 No. 5.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Injunctions granted by the Courts against
$,
the various companies sued for infringement
to September 30, 1896.
C. G. Burgoyne, Walker and Centre Streets, New York.—1896.
PRELIMINARY INJUNCTION.
Circuit
Court.
*
}: THE PRESIDENT OF THE UNITED STATES
TO
H. W. Johns, R. H. Martin and Charles H. Patrick,
and each of you, individually and as officers of H. W.
Johns Manufacturing Company, your and each of your
associates, attorneys, Solicitors, servants, agents, work-
men and employees, and the said H.W. Johns Manufact-
uring Company, its officers, associates, agents, attor-
neys, solicitors, servants, workmen and employees,
GREETING :
WHEREAS, it has been represented to us in our
Circuit Court of the United States for the Second
Circuit and Southern District of New York, that Let-
ters Patent of the United States were issued to Charles
J. Van Depoele, in due form of law, on the first day of
April, 1890, No. 424,695, for Suspended Switches and
Traveling Contacts for Electric Railways, and that said
Letters Patent were duly assigned to the Thomson-
Bouston Electric Company, and that you the said H.W.
Johns, R. H. Martin and Charles H. Patrick, individ-
ually and as officers of the said W. H. Johns Manufact-
uring Company, and the said W. H. Johns Manufact-
uring Company, have infringed the 3rd, 4th, 11th,
19th, 20th, 23rd, 25th, 26th and 27th Claims of said
Letters Patent,
2
Now, THEREFORE, we strictly command and enjoin
you, the said H. W. Johns, R. H. Martin and Charles
H. Patrick, and each of you, individually and as
officers of said H. W. Johns Manufacturing Company,
your and each of your associates, attorneys, solicitors,
servants, agents, workmen and employees, and the said
H. W. Johns Manufacturing Company, its officers, as-
sociates, attorneys, solicitors, servants, agents, work-
men and employees, under the penalties that may fall
on you in case of disobedience, that you forthwith and
until further order of this Court desist from, directly
Or indirectly, erecting, making, using or selling, or
causing to be erected, made, used or sold, any trolley
frog or switch for electric railways containing or em-
bodying the subject-matter of, or devised or intended
to be used in the combinations of the 3rd, 4th, 11th,
19th, 20th, 23rd, 25th, 26th and 27th Claims, or either
of them, of the said Letters Patent No. 424,695, dated
April 1st, 1890, or from infringing the said Claims, or
either of them, in any way whatsoever ; but you are
not, and neither of you are enjoined against the manu-
facture, use or sale of trolley frogs or switches by way
of replacement of broken frogs or switches, or such as
are worn out by use, or of substitution for trolley frogs
or switches previously sold by the owner of the patent
to purchasers from it. You must determine, however,
at your peril, whether the purchaser buys to use for
infringement or only for legitimate repair, and this
permission to repair does not give authority to recon-
struct or rebuild a combination which has been sold
by the owner of the patent. *
Witness the Hon. MELVILLE W. FULLER, Chief Jus-
tice of the Supreme Court of the United States, at the
City of New York, on the 23rd day of July, 1896.
JOHN A. SHIELDs,
Clerk.
BETTS, HYDE & BETTS,
Complainant's Solicitors.
E. W. M.
3
ALPHONSE J. PATTERSON, being duly sworn, deposes
and says that he is a clerk in the employ of Betts,
Hyde & Betts, solicitors for the complainant herein;
that on the 24th day of July, 1896, at about 2:10
o'clock in the afternoon, he served the within injunc-
tion, of which the within is a copy, upon Messrs. Wet-
more & Jenner, to him known to be the solicitors for the
defendants herein, by delivering a copy thereof to , and
leaving it with the person in charge of the office of
said Wetmore & Jenner, who refused to admit service
thereon.
ALPHONSE J. PATTERSON.
Subscribed and sworn to be- |
fore me this 24th day of
July, 1896.
JAMES J. COSGROVE,
[SEAL.] Notary Public,
N. Y. CO.
PRELIMINARY INJUNCTION,
THE PRESIDENT OF THE UNITED STATES
TO
The Ohio Brass Company, its officers, associates, at-
tormeys, Solicitors, servants, agents, workmen and
employees, and E. T. Cook, B. F. Blymyer, F. B. Black,
T. B. McNiece, A. Scattergood, H. M. Weaver, E. J.
Forney, J. W. Wagner, J. C. Larwill and Reid Carpen-
ter, individually and as Officers of The Ohio Brass Com-
pany, and their, and each of their, associates, attor-
neys, Solicitors, agents, servants, workmen and em-
ployees, -
GREETING :
Whereas, it has been represented to us in our Circuit
Court of the United States for the Sixth Circuit and
Northern District of Ohio, that Letters Patent of the
United States were issued to Charles J. Van Depoole,
in due form of law, on the 1st day of April, 1890, No.
424,695, for Improvements in Suspended Switches and
Travelling Contacts for Electric Railways, and that the
said Letters Patent were duly assigned to the Thom-
son-Houston Electric Company, any that you, the said
The Ohio Brass Company, E. T. Cook, B. F. Blymyer,
F. B. Black, A. Scattergood, H. M. Weaver, E. J.
Forney, J. W. Wagner, J. C. Larwill and Reid Car-
penter, individually and as officers of The Ohio Brass
Company, have infringed the 3rd, 4th, and 11th claims
thereof, which are as follows:
“3. The combination, with an overhead wire for
receiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
5
tact-carrying arm arranged to engage the conductor
at a point in rear of the front wheel of the car.
“11. The combination, with an overhead line-wire,
of a grooved contact device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.”
Now, therefore, we strictly command and enjoin you,
the said The Ohio Brass Company, your officers, asso-
ciates, attorneys, Solicitors, servants, agents, workmen
and employees, and E. T. Cook, B. F. Blymyer, F. B.
Black, T. B. McNiece, A. Scattergood, H. M. Weaver,
E. J. Forney, J. W. Wagner, J. C. Larwill and Reid
Carpenter, individually and as officers of The Ohio
Brass Compauly, and your, and each of your, associ-
ates, attorneys, solicitors, agents, servants, workmen
and employees, under the penalties that may fall on
you in case of disobedience, that you forthwith, and
til the further order of this Court, desist from, directly
or indirectly, making, using, selling, or disposing of in
any way, or advertising for sale, or causing to made,
used, sold, disposed of or advertised for sale, any trol-
ley frog or switch for electric railways containing or
embodying the subject-matter of, or devised or intended
to be used in, the combinations of the said 3rd, 4th and
11th claims, of either of them, of the said Letters Pat-
ent, or from otherwise infringing the said claims, or
either of them.
Witness the Hon. MELVILLE W. FULLER,
Chief Justice of the Supreme Court
[SEAL.] of the United States, at the City of
Cleveland on the 17th day of Sep-
tember, 1896.
IRWIN BELFORD,
Clerk,
by JNo. WAN NOSTRAN,
Deputy.
|BETTS, HYDE & BETTS,
Complaimant's Solicitors.
IPIRIELIMINARY INJUNCTION.
THE UNITED STATES OF AMERICA, SCT -
Western District of Pennsylvania, tº
THE PRESIDENT OF THE UNITED STATES :
TO
R. D. Nuttall Company, Frank A. Estep, J. R. Mc-
Ginley, Walter Uptegraff, F. S. Martin, and Charles A.
Wolfe, your agents, servants, employees and workmen,
and all others acting by and under your authority, and
each of them,
GREETING :
WHEREAs, Thomson-Houston Electric Company lately
exhibited its bill of complaint against the said R. D.
Nuttall Company, Frank A. Estep, J. R. McGinley,
Walter Updegraff, F. S. Martin and Charles A. Wolfe—
as defendants in the Circuit Court of the United States
in and for the Western District of Pennsylvania, before
the Judges of the said Court, in which said bill it is,
among other things, alleged, that certain Letters Pat-
ent, No. 424,695 were granted on the 1st day of April
1890, to Charles J. Van Depoele, assignor to the
Thomson-Houston Electric Company, for improvements
in suspended switches and traveling contacts for Elec-
tric railways That the said defendant R D Nuttall
Company, Frank A. Estep, J. R. McGinley Walter
Uptegraff F. S. Martin and Charles A. Wolfe have con-
structed and used, and vended to others to be used,
the said patented improvements, in some parts thereof
substantially the same in construction and operation as
in the said Tetters Patent mentioned, in violation of
the exclusive rights of the said complainant, as secured
by the Letters Patent aforesaid.
7
AND WHEREAs, on Final hearing of the matters
alleged in the said bill, and after due consideration, it
was ordered that the said defendant might be enjoined
from any further construction, use or sale in any man-
ner of the said patented improvements, or any or either
of them, containing or embodying the subject matter
or intended to be used in the combination of the 3rd,
4th, 11th, 19th, 20th, 23rd, 25th, 26th or 27th claims of
said Letters Patent.
NOW THEREFORE, in consideration of the premises,
you, the said R. D. Nuttall Company, Frank A. Estep,
J. R. McGinley, Walter Uptegraff F. S. Martin and
Charles A. Wolfe your agents, servants, employees and
workmen, and all others acting by and under your
authority and each and every of you, are strictly com-
manded and enjoined, under the penalty of ten thou-
Sand dollars, that you and each of you do absolutely
desist and abstain from any and all further construc-
tion, use or sale, in any manner, of said patented im–
provements, jointly or severally, or of any of them, and
from doing any act or thing to infringe the said Letters
Patent, or any of them, or to injure or impair the ex-
clusive right of the complainant to the inventions and
improvements, or any of them, in such Letters Patent
specified and described.
Witness the Honorable MELVILLE W.
FULLER, Chief-Justice of the
Supreme Court of the United
; : …; … ; States, at the Court House in
; : *** * * : the City of Pittsburgh, in the
; : :" sex." : 3 Western District of Pennsyl-
: CO . . . . . . . . . . . . . . . . . . . ; ; vania, this 28th day of Septem-
ber, Anno Domini one thousand
eight hundred and ninety-six
and of our independence the
121st year.
H. D. GAMBLE,
Clerk.
8
Served Oct. 9, 1896, upon within named defendant
R. D. Nuttall Co. by producing original and making
known its contents, to Frank A. Estep, President of
said Company, and leaving with him a true & attested
copy of same, at the place of business of said Company
in the City of Allegheny.
So Ans.
JOHN W. WALKER,
U. S. Marshal
By A. W. GREGORY,
Deputy U. S. Marshal
Service & Copy---- 2.50
Travel expenses---- 10
dººm-mm-
2.60
KNOX & REED.
PRELIMINARY INJUNCTION.
THE UNITED STATES OF AMERICA, SCT
Western District of Pennsylvania. wº
THE PRESIDENT OF THE UNITED STATES :
TO
Westinghouse Electric and Manufacturing Company,
George Westinghouse, Jr., and Phillip F. Kobbe, your
agents, servants, employees and workmen, and all
others acting by and under your authority, and each of
them,
GREETING :
WHEREAS, Thomson-Houston Electric Company
lately exhibited its bill of complaint against the said
Westinghouse Electric and Manufacturing Company,
George Westinghouse, Jr., and Phillip F. Kobbe, as de-
fendants in the Circuit Court of the United States in
and for the Western District of Pennsylvania, before
the Judges of the said Court, in which said bill it is,
among other things, alleged, that certain Letters
Patent, No. 424,695 were granted on the 1st day of
April, 1890 to Charles J. Van Depoele, assignor to the
Thomson-Houston Electric Company, for improvements
in suspended switches and traveling contacts for
electric railways. That the said defendants Westing-
house Electric and Manufacturing Company, George
Westinghouse, Jr., and Phillip F. Kobbe, have con-
structed and used, and vended to others to be used, the
said patented improvements, in some parts thereof
substantially the same in construction and operation as
in the said Letters Patent mentioned, in violation of
the exclusive rights of the said complaint, as secured
by the Letters Patent aforesaid.
10
AND WHEREAs, on Final hearing of the matters
alleged in the said bill, and after due consideration, it
was ordered that the said defendant might be enjoined
from any further construction, use or sale in any
manner of the said patented improvements, or any or
either of them, containing or embodying the subject
matter of or intended to be used in the combinations of
the 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th or 27th
claims of said Letters Patent.
NOW THEREFORE, in consideration of the premises,
you, the said Westinghouse Electric and Manufacturing
Company, George Westinghouse, Jr., and Phillip F.
Robbe your agents, servants, employees and workmen,
and all others acting by and under your authority and
each and every of you, are strictly commanded and en-
joined, under the penalty of ten thousand dollars, that
you and each of you do absolutely desist and abstain
from any and all further construction, use or sale, in
any manner, of said patented improvements, jointly or
severally, or of any of them, and from doing any act or
thing to infringe the said Letters Patent, or any of
them, or to injure or impair the exclusive right of the
complainant to the inventions and improvements, or
any of them, in such Letters Patent specified and de-
scribed.
Witness the Honorable MELVILLE W. FUL-
LER, Chief Justice of the Supreme
Court of the United States, at the
ſ SEAL OF THE | Court House in the City of Pitts-
U. S. CIRCUIT burgh, in the Western District of
: COURT, W. D. ſ. Pennsylvania, this 28th day of Sep-
l PENN. J tember, Anno Domini one thousand
eight hundred and ninety-six and of
our independence the 121st year.
H. D. GAMBLE,
Clerk.
11
October 12, 1896, served the within Writ of In-
junction on Westinghouse Electric & Manfg Co. deft
at East Pittsburg, Pa. at the office of said Company by
producing the original to B. H. Warren, its Asst Gen-
eral Manager, informing him of its contents by de-
livering a true copy thereof to him personally, and
leaving the same with him.
So Ans.
JOHN W. WALKER
‘U. S. Marshal
By A. W. GREGORY
Deputy U. S. Marshal
Marshal: - -
Fees Service & Copy---- 2.50
13 miles-------------- . .78
3.28
12
IFINAL INJUINCTIONS.
UNITFD STATES OF AMERICA, R
Circuit Court Clerk’s Office,
NoRTHERN DISTRICT OF NEW York. )
I, WILLIAM. S. DOOLITTLE, Clerk of said Court, do
hereby certify that I have compared the annexed copy
of Injunction, Thomson-Houston Elec. Co. v. Elmira
& H. Rºy Co., In Equity, No. 6130, and the endorse-
ments thereon, with the original now on file in this
office, that the same is a correct transcript therefrom
and of the whole of said original.
In Witness Whereof, I have caused the seal
of the said Court to be affixed at the
[SEAL.] City of Utica, in said District, this
8th day of October A. D. 1896.
W. S. DOOLITTLE,
Clerk.
THE PRESIDENT OF THE UNITED STATEs,
TO
Elmira and Horseheads Railway Company, its at-
torneys, agents, servants, workmen, employees, and
representatives, and each and every of them :
GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Second Circuit
and Northern District of New York, that Letters Patent
of the United States were issued to Charles J. Van
Depoele in due form of law, on the first day of April,
1890, No. 424,695, for “Improvements in Suspended
Switches and Travelling Contracts for Electric Rail-
ways,” and that said Letters Patent were duly assigned
13
to Thomson-Houston Electric Company, and that you,
the said Elmira and Horseheads Railway Company,
have infringed Claims 3, 4, 11, 19, 20, 23, 25, 26, 27, 32
and 33 of said Letters Patent,
NOW, THEREFORE, we strictly command and enjoin
you, the said Elmira and Horseheads Railway Com-
pany and your attorneys, agents, servants, workmen,
employees and representatives and each and every of
you, under the penalties that may fall on you in case of
disobedience, that you forthwith and forever desist
from, directly or indirectly, making, constructing, ac-
quiring, vending, using or putting into practice said
improvements or inventions recited or specified in the
several claims above named, or in any way infringing
upon the said claims, or any of them, or the rights of the
said Thomson-Houston Electric Company thereunder.
The said Claims are as follows:
“3. The combination, with an overhead wire for
receiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.”
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in roar of the front wheels of the car.”
“11. The combination, with an overhead line wire,
of a grooved contact-device pressed against the wire
and receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the said flanges bear in passing from one line to
another.”
“ 19. In an electric railway, the combination with
branching overhead conductors, of an upwardly-
pressed contact-arm carrying a grooved wheel embrac-
ing the conductor, and a switch-plate at the branching
point adapted to receive the tips of the wheel flanges,
and provided with depending ribs, between which the
14
wheel is free to move laterally to engage with one of
the branch conductors.”
“20. In an electric railway, the combination with an
overhead switch-plate have depending ribs, but open at
its extremities, of main and branch conductors extend-
ing from its two extremities, respectively, a vehicle,
an upwardly-pressed contact-arm attached to the
vehicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor-switch.”
“23. The combination, with branching overhead con-
ductors, of a vehicle having a laterally-swinging con-
tact arm pressed upward to engage the conductors, and
a switch-plate at the branching point having depending
sides, but open at its extremities, the interior width of
the plate between the sides being greater than the
thickness of the contact wheel, whereby the wheel is
free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.”
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.”
“26. In a branching electric railway, the combina-
tion with a vehicle of a track-switch, an Overhead con-
ductor-switch and a contact-arm extending upward
from the vehicle to the conductor, and so located
relatively to the length of the vehicle and the two
switches that the lateral movement of the vehicle will
give a corresponding movement of the contact device
on the conductor-switch.”
“27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact-device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being joined to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the contact-
15
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
“32. In an electric railway, the combination with
an overhead conductor and a vehicle, of a trailing con-
tact-arm guided at its outer end by the overhead con-
ductor, and movable laterally relatively to the vehicle,
but having a normal centralizing tendency by means of
a spring or weight.”
“33. In an electric railway, the combination with an
overhead conductor and a vehicle, of an intermediate
contact-device consisting of an upwardly pressed trail-
ing arm having a grooved contact-wheel at its outer
end by which it is guided by the conductor, the said
arm being free to swing laterally relatively to the vehicle,
but tending to remain in its normal central position by
means of a spring or weight.”
It appearing, however, that one of the cars in use by
the defendant, and which is provided with a rearwardly,
extending trolley pole, carrying on its Outer end a
grooved wheel, adapted to make underneath contact
with the overhead conductor, was bought of the said
Thomson-Houston Electric Company, such car, and the
apparatus attached thereto, is excepted from the opera-
tion of this injunction.
Witness the Hon. MELVILLE W. FULLER, Chief Jus-
tice of the Supreme Court of the United States, at the
City of Utica, on the 31st day of January, 1896.
[L. S.] W. S. DOOLITTLE,
Clerk.
BETTs, HYDE & BETTS,
Complainant's Solicitors.
I certify that I served the within injunction upon
Thomas Ryan, President of Elmira & Horseheads Rail-
way Company, by delivering to and leaving with him a
16
true copy hereof, and at the same time exhibited to him
the original with the seal of the Court & signature of the
Clerk attached, at his office in the City of Elmira, N.
Y., this 3d day of February, 1896.
F. C. PECK,
- U. S. Marshal,
By DEWITT STARING,
Deputy U. S. M.
Statement of fees :
1 service---------------- $2.00
$11,12
Original filed the 4th day of Feb., 1896.
W. S. DOOLITTLE,
Clerk.
17
FINAL INJUNCTION.
THE PRESIDENT OF THE UNITED STATES,
TO
The Fiberite Company, Horace J. Medbery, its
president, and Stephen C. Medbery, its treasurer, and
all persons connected, directly or indirectly, with them,
and their associates, clerks, attorneys, servants and
workmen,
GREETING :
WHEREAs, It has been represented to us in our Cir-
cuit Court of the United States for the Second Circuit
and Northern District of New York that Letters Patent
of the United States were issued to Charles J. Van
Depoele, in due form of law, on the first day of April,
1890, No. 424,695, for Improvements in Suspended
Switches and Travelling Contacts for Electric Railways,
and that the said Letters Patent were duly assigned to
the Thomson-Houston Electric Company, and that you,
the said The Fiberite Company, Horace J. Medbery,
its President, and Stephen C. Medbery, its Treasurer,
have infringed the 3rd, 4th, 11th, 19th, 20th, 23rd, 26th
and 27th claims of the said Letters Patent.
Now, therefore, we strictly command and enjoin you,
the said The Fiberite Company, Horace J. Medbery,
its President, and Stephen C. Medbury, its Treasurer,
and all persons connected, directly or indirectly, with
you, and your associates, attorneys, clerks, agents, ser-
vants and workmen, under the penalties that may fall
on you in case of disobedience, that you forthwith and
forever desist from, directly or indirectly, selling, ad-
vertising, making, employing, erecting, constructing or
equipping, or causing to be advertised, sold, made, em-
ployed, erected, constructed or equipped, in any man-
18
ner, any electric railways, switches for electric rail-
ways, devices or apparatus containing or embodying
the subject-matter of, or intended to be used in the
combinations of, the said claims of the said Letters
Patent, which are as follows, viz.:
“3. The combination, with an overhead wire for
receiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.”
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.”
“11. The combination, with an overhead line-wire,
of a grooved contact device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.” -
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact-arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching-point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with one of the
branch conductors.
“20. In an electric railway, the combination, with
an overhead switch-plate having depending ribs, but
open at its extremities, of main and branch conductors
extending from its two extremities, respectively, a
vehicle, an upwardly-pressed contact-arm attached to
the vehicle and tending to move laterally there with,
and a track-switch for the vehicle located so as to
operate in advance of the conductor-switch.
“23. The combination, with branching overhead con-
ductors, of a vehicle having a laterally-swinging con-
tact-arm pressed upward to engage the conductors, and
19
a switch-plate at the branching-point having depend-
ing sides, but open at its extremities, the interior width
of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main
conductor and engage one of the branching con-
ductors. -
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead
conductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact-device on the
conductor-switch.
“27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor ; ” or from
infringing the said claims in any way whatsoever.
Witness the Hon. MELVILLE W. FULLER, Chief
Justice of the Supreme Court of the United States,
at the City of Utica on the 8th day of May, 1896.
W. S. DooDITTLE,
|L. S.] Clerk.
IBETTS, HYDE & BETTS,
Complainant's Solicitors.
20
FINAL INJUNCTION.
THE PRESIDENT OF THE UNITED STATES
TO
Tbe Supply Manufacturing Company, its Associates,
Attorneys, Solicitors, Clerks, Servants, Agents and
Workmen :-
GREETING :
WHEREAS, it has been represented to us in our Cir-
cuit Court of the United States for the Third Circuit
and the Western District of Pennsylvania, that Letters
Patent of the United States were issued to Charles J.
Van Depoele, in due form of law, on the first day of
April, 1890, No. 424,695, for Improvements in Sus-
pended Switches and Travelling Contacts for Electric
Railways, and that the said Letters Patent were duly
assigned to the Thomson-Houston Electric Company,
a corporation organized and existing under the Laws
of the State of Connecticut, and that you, the said
The Supply Manufacturing Company, have infringed
the 3rd, 4th, 11th, 19th, 20th, 23rd, 25th, 26th and 27th
claims thereof.
Now, Therefore, we strictly command and enjoin
you, the said The Supply Manufacturing Company,
and your associates, attorneys, Solicitors, clerks, serv-
ants, agents and workmen, under the penalties that
may fall on you in case of disobedience, that you forth-
with and forever desist from, directly or indirectly,
making, or causing to be made, using or causing to be
used, or vending to others to be used, or advertising
for sale, in any manner, any structure or device con-
taining or embodying the subject-matter of or intended
to be used in the combinations of the said claims, or
any of them, of Said Letters Patent, to wit:
21
“3. The combination, with an overhead wire for
receiving an underneath contact, of a switch-plate
attached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.
“11. The combination, with an overhead line-wire,
of a grooved contact-device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from One line to another.
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with One of the
branch conductors.
“ 20. In an electric railway, the combination, with
an overhead switch-plate having depending ribs, but
open at its extremities, of main and branch conductors
extending from its two extremities, respectively, a
vehicle, an upwardly-pressed contact arm attached to
the vehicle and tending to move laterally there with,
and a track-switch for the vehicle located so as to oper-
ate in advance of the conductor switch.
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging
contact-arm pressed upward to engage the con-
ductors, and a switch-plate at the branching point
having depending sides, but open at its extremities,
the interior width of the plate between the sides being
greater than the thickness of the contact wheel, whereby
the wheel is free to move laterally with relation to the
22
main conductor and engage one of the branching con-
ductors.
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead con-
ductor switch, and a contact arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact-device on the
conductor-switch.
“27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the con-
ductor-switch adapted to engage the contact-piece and
whereby the extremity of the arm is flexibly guided
from main to branch conductor ; ”
or from infringing upon or violating the said claims, or
any of them, of the said Letters Patent, by the manu-
facture, use or sale of said structure or device in any
way whatsoever.
Witness the Hon. MELVILLE W. FullLER, Chief
Justice of the Supreme Court of the United States, at
the City of Pittsburg, on the 6th day of June, 1896.
H. D. GAMBLE,
. . . . . . . . . . . . . . . . . . . : Clerk.
: Seal of , ;
; U. S. Circuit;
: Court for W. :
: Disct of Pa. :
is º 'º e s e º º ſº e º 'º e m e º 'º e
KNOX & REED,
Complaimant's Solicitors.
23
FINAL INJUNCTION.
THE UNITED STATES OF AMERICA, ) SCT. .
Western District of Pennsylvania, Š " '
THE PRESIDENT OF THE UNITED STATES :
To Lester R. Frost, Edward Frost and G. Ernest Frost,
composing the firm of J. O. Frost's Sons, your agents,
servants, employees and workmen, and all others acting
by and under your authority, and each of them,
GREETING :
WHEREAs, Thomson-Houston Electric Company lately
exhibited its bill of complaint against the said Lester R.
Frost Edward Frost and G. Ernest Frost as defendants
in the Circuit Court of the United States in and for the
Western District of Pennsylvania, before the Judges of
the said Court, in which said bill it is, among other
things, alleged, that certain Letters Patent, No. 424,695
were granted on the first day of April 1890 to Charles J.
Van Depoele for Improvements in Suspended Switches
and Traveling Contacts for Electric Railways, that the
said Thomson-Houston Electric Company is the exclu-
sive owner of said Letters Patent, and that the 3rd, 4th,
11th, 19th, 20th, 23rd, 25th, 26th and 27th claims of
said Letters Patent have been infringed.
That the said defendant Lester R. Frost, Edward
Frost and G. Ernest Frost composing the firm of J. O.
Frost's Sons have constructed and used, and vended to
others to be used, the said patented improvements, in
some parts thereof substantially the same in construc-
tion and operation as in the said Letters Patent men-
tioned, in violation of the exclusive rights of the said
complainant, as secured by the Letters Patent afore-
said.
24
AND WHEREAs, on Final hearing of the matters alleged
in the said bill, and after due consideration, it was
ordered that the said defendant might be enjoined from
any further construction, use or sale in any manner of
the said patented improvements, or any or either of
them.
NOW THEREFORE, in consideration of the premises,
you, the said Lester R. Frost Edward Frost and G.
Ernest Frost your agents, servants, employees and
workmen, and all others acting by and under your
authority and each and every of you, are strictly com-
manded and enjoined, under the penalty of ten thou-
Sand dollars, that you and each of you do absolutely
desist and abstain from any and all further construc-
tion, use or sale, in any manner, of Said patented im-
provements, jointly or severally, or of any of them, and
from doing any act or thing to infringe the said Letters
Patent, or any of them, or to injure or impair the
exclusive right of the complainant to the inventions
and improvements, or any of them, in such Letters
Patent specified and described.
WITNESS the Honorable MELVILLE W. FULLER,
Chief Justice of the Supreme Court
of the United States, at the Court
House in the City of Pittsburgh, in
[SEAL.] the Western District of Pennsylvania,
this 27th day of June Anno Domini
one thousand eight hundred and
ninety-six and of our independence
the 120th year.
H. D. GAMBLE,
Clerk.
2.5
FINAL INJUINCTION.
THE PRESIDENT OF THE UNITED STATES
TO
Charles Andrew, Frank Andrew, William Andrew
and the firm of the Electric Railway Equipment Com-
pany, its and their associates, attorneys, solicitors,
clerks, agents, servants and workmen,
GREETING :
WHEREAS, it has been represented to us in our Cir-
cuit Court of the United States, for the Sixth Circuit
and Southern District of Ohio, Western Division, that
Letters Patent of the United States were issued to
Charles J. Van Depoele, in due form of law, on the
first day of April, 1890, numbered 424,695, for Improve-
ments in Suspended Switches and Travelling Contacts
for Electric Railways, and that the said Letters Pat-
ent were duly assigned to the Thomson-Houson Elec-
tric Company, a corporation organized and existing
under the laws of the State of Connecticut, and that
you, the said Charles Andrew, T'rank Andrew, William
Andrew and the firm of the Electric Railway Equip-
ment Company, have infringed the 3rd, 4th, 11th, 19th,
20th, 23rd, 25th, 26th and 27th claims thereof.
NOW, THEREFORE, we strictly command and enjoin you,
the said Charles Andrew, Frank Andrew, William An-
drew and the firm of the Electric Railway Equipment
Company, and your associates, attorneys, solicitors,
agents, clerks, servants and workmen, and each and
every person connected, directly or indirectly, with
you, under the penalties that may fall on you in case
of disobedience, that you forth with and forever desist
from, directly or indirectly, constructing, making,
erecting, using or Selling, or causing to be constructed,
made, erected, used or sold, or vending to others to be
used or sold, any structure, device or apparatus con-
taining or embodying the subject-matter of, or intended
to be used in, the combinations of the said claims, or
either or any of them, of Said Letters Patent, to wit:
26
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact carrying arm arranged to engage the conductor at
a point in the rear of the front wheels of the car.
“ 11. The combination, with an overhead line-wire,
of a grooved contact-device pressed against the wire
and receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the said flanges bear in passing from one line to
another.
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the
wheel is free to move laterally to engage with one of
the branch conductors.
“20. In an electric railway, the combination, with
an overhead switch-plate having depending ribs, but
open at its extremities, of main and branch conductors
extending from its two extremities, respectively, a
vehicle, an upwardly-pressed contact-arm attached to
the vehicle and tending to move laterally there with,
and a track-switch for the vehicle located so as to
operate in advance of the conductor-switch. -
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging
contact-arm pressed upward to engage the conductors,
and a switch-plate at the branching point having de-
pending sides, but open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
27
“ 25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.
“ 26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead
conductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact-device on the
conductor-switch.
“ 27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, and said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
(Excepting structures, devices or apparatus made by
the said Thomson-Houston Electric Company or its
licensees), or from infringing upon or violating the said
claims, or either or any of them, by the manufacture,
use or sale of said structure, device or apparatus in any
way whatsoever.
Witness the Honorable MELVILLE W. FULLER,
Chief Justice of the Supreme Court
[SEAL.] of the United States, at the City of
Cincinnati, on the 2nd day of July,
1896.
B. R. COWEN,
Clerk U. S. Circuit Court,
S. D., O.
By ROBT. C. GEORGE,
Dep.
JOSEPH WILBY,
Complainant's Solicitor.
2S
IFINAL INJUNCTION.
THE PRESIDENT OF THE UNITED STATES
TO
The Post-Glover Electric Company, its officers, asso-
ciates, attorneys, solicitors, agents, clerks, servants and
workmen,
GREETING;
WHEREAS, it has been represented to us in our Cir-
cuit Court of the United States, for the Sixth Circuit
and the Southern District of Ohio, Western Division,
that Letters Patent of the United States were issued to
Charles J. Van Depoele, in due form of law, on the
first day of April 1890, numbered 424,695, for Im-
provements in Suspended Switches and Travelling
Contacts for Electric Railways, and that the said
Letters Patent were duly assigned to the Thomson-
Houston Electric Company, a corporation organized
and existing under the laws of the State of Connec-
ticut, and that you, the said The Post-Glover Electric
Company, have infringed the 3rd, 4th, 11th, 19th, 20th,
23rd, 25th, 26th and 27th claims thereof. -
Now, therefore, we strictly command and enjoin you,
the said The Post-Glover Electric Company, and your
officers, associates, attorneys, solicitors, agents, clerks,
servants and workmen, and each and every person con-
nected, directly or indirectly, with you, under the pen-
alties that may fall on you in case of disobedience, that
you forthwith and forever desist from, directly or indi-
rectly, constructing, making, advertising for sale, erect-
ing, using or selling, or causing to be constructed, made,
advertised for sale, erected, used or sold, or vending to
others to be used or sold, any structure, device or ap-
paratus containing or embodying the subject-matter of,
or intended to be used in, the combination, of the said
claims, or either or any of them, of said Letters Patent,
to wit :
29
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.
“11. The combination, with an overhead line-wire,
of a grooved contact device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.
“ 19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the
wheel is free to move laterally to engage with one of
the branch conductors.
“20. In an electric railway, the combination, with an
overhead switch-plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly-pressed contact-arm attached to the ve-
hicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor-switch.
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging
contact-arm pressed upward to engage the conductors,
and a switch-plate at the branching point having de-
pending sides, but open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
30
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch. -
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead
conductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact-device on the
conductor-switch.
“27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, and said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
(Excepting structures, devices Or apparatus made by
the said Thomson-Houston Electric Company or its
licensees), or from infringing upon or violating the said
claims, or either or any of them, by the manufacture,
use or sale of said structure, device or apparatus in any
way whatsoever.
Witness the Honorable MELVILLE W.
FULLER, Chief Justice of the Su-
[SEAL.] preme Court of the United States, at
the City of Cincinnati, on the 2nd
day of July, 1896.
B. R. COWEN,
Clerk U. S. Circuit, S. D. O.
By ROBT. C. GEORGE,
Dep.
JOSEPH WILBy,
Complaimant's Solicitor.
31
FINAL INJUNCTION.
*-* *
[SEAL.] THE PRESIDENT OF THE UNITED STATES
TO
The New York Electrical Works, its officers, asso-
ciates, agents, solicitors, attorneys, servants and work-
nnel),
GREETING :—
WHEREAs, it has been represented to usin our Circuit
Court of the United States for the Second Circuit and
Southern District of New York, that Letters Patent of
the United States were issued to Charles J. Van De-
poele, in due form of law, on the first day of April,
1890, numbered 424,695, for Improvements in Sus-
pended Switches and Travelling Contacts for Electric
Railways, and that the said Letters Patents were duly
assigned to the Thomson-Houston Electric Company,
a corporation organized and existing under the laws of
thF State of Connecticut, and that you, the said The
New York Electrical Works, have infringed the 3rd,
4th, 11th, 19th, 20th, 23rd, 25th, 26th, and 27th claims
thereof; º
Now, therefore, we strictly command and enjoin you,
the said The New York Electrical Works, and your offi-
cers, associates, agents, solicitors, attorneys, servants
and workmen, and each and every person connected, di-
rectly or indirectly, with you, under the penalties that
may fall on you in case of disobedience, that you forth-
with and forever desist from, directly or indirectly,
constructing, making, advertising for sale, using, sell-
ing or disposing of, or causing to be constructed, made,
advertised for sale, used, sold or disposed of, in any
way, any switch, structure, device or apparatus con-
32
taining or embodying the subject-matter of or intended
to be used in the combinations of the said claims, or
either or any of them, of said Letters Patent, to wit:
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.
“11. The combination, with an overhead line wire, of
a grooved contact device pressed against the wire and
receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the said flanges bear in passing from one line to
another.
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact-arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with one of the
branch conductors.
“20. In an electric railway, the combination, with an
overhead switch-plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehi-
cle, an upwardly-pressed contact-arm attached to the
vehicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor-switch.
“23. The combination, with branching overhead con-
ductors, of a vehicle having a laterally-swinging con-
tact-arm pressed upward to engage the conductors, and
a switch-plate at the branching point having depend-
ing sides, but open at its extremities, the interior width
33
of the plate between the sides being greater than the
thickness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will operate in advance
of the conductor-switch.
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead-
conductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located re-
latively to the length of the vehicle and the two
switches that the lateral movement of the vehicle will
give a corresponding movement of the contact device
on the conductor-switch.
“27. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
contact-piece embracing the conductor and guided
thereby, the said arm being jointed to the car and
tending to move laterally there with, and an overhead
conductor-switch adapted to engage the contact-piece
and whereby the extremity of the arm is flexibly guided
from main to branch conductor ; ”
or from infringing upon or violating the said claims, or
any or either of them, in any way whatsoever.
Witness the Hon. MELVILLE W. FULLER, Chief Jus-
tice of the Supreme Court of the United States, at the
City of New York, on the 15th day of August, 1896.
- JOHN A. SHIELDs,
Clerk.
E. C. M.
BETTS, HyDE & BETTS,
Complaimant's Solicitors.
34
FINAL INJUNCTION.
THE PRESIDENT OF THE UNITED STATES
TO -
Frank Horsburgh and Thomas Scott, and the firm
of Horsburgh & Scott, and their officers, associates,
Solicitors, attorneys, agents, clerks, servants and work-
Imen,
GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Sixth Circuit
and the Northern District of Ohio, Eastern Division,
that Letters Patent of the United States were issued to
Charles J. Van Depoele, in due form of law, on the
first day of April, 1890, numbered 424,695, for Improve-
ments in Suspended Switches and Travelling Contacts
for Electric Railways, and that the said Letters Patent
were duly assigned to the Thomson-Houston Electric
Company, a corporation organized and existing under
the laws of the State of Connecticut, and that you, the
said Frank Horsburgh and Thomas Scott, and the firm
of Horsburgh & Scott, have infringed the 3rd, 4th,
11th, 19th, 20th, 23rd, 25th, 26th and 27th claims
thereof;
Now, therefore, we strictly command and enjoin you,
the said Frank Horsburgh and Thomas Scott, and the
firm of Horsburgh & Scott, and your officers, associates,
solicitors, attorneys, agents, clerks, servants and work-
men, and each and every person connected, directly or
indirectly, with you, under the penalties that may fall
on you in case of disobedience, that you forthwith and
forever desist from, directly or indirectly, making, con-
structing, erecting, advertising for sale, using or selling,
or causing to be made, constructed, erected, advertised
for sale, used or sold, or vending to others to be used
or sold, any switch, structure, device or apparatus con-
35
taining or embodying the subject matter of or intended
to be used in the combinations of the said claims, or
either or any of them, of said Letters Patent, to wit :
“3. The combination, with an overhead wire for
receiving an underneath contact, of a switch-plate
attached to the wire in about the same horizontal plane
as the wire. - -
“4. The combination of a track having switches, an
overhead conductor above the track and having switches,
and a car on the track provided with a contact-carrying
arm arranged to engage the conductor at a point in
rear of the front wheels of the car.
“11. The combination with an overhead line-wire, of
a grooved contact device pressed against the wire and
receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the said flanges bear in passing from one line to
another.
“19. In an electric railway, the combination with
branching overhead conductors, of an upwardly-pressed
contact-arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel-flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with one of the
branch conductors.
“20. In an electric railway, the combination, with an
overhead switch-plate having depending ribs, but Open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly-pressed contact-arm attached to the vehicle
and tending to move laterally there with, and a track-
switch for the vehicle located so as to operate in ad-
vance of the conductor-switch.
“23. The combination, with branching overhead con-
ductors of a vehicle having a laterally swinging contact-
arm pressed upward to engage the conductors, and a
switch-plate at the branching point having depending
sides, but open at its extremities, the interior width of
36
the plate between the sides being greater than the
thickness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
“ 25. In a branching electric railway, the combination
of a track-switch, an overhead conductor-switch, and a
vehicle having a rearwardly-extending contact-arm,
whereby the track-switch will operate in advance of the
conductor-switch.
“26. In a branching electric railway, the combination
with a vehicle, of a track-switch, an overhead conductor-
switch and a contact-arm extending upward from the
vehicle to the conductor, and so located relatively to
the length of the vehicle and the two switches that the
lateral movement of the vehicle will give a correspond-
ing movement of the contact device on the conductor-
switch.
“27. In a branching electric railway, the combination,
with a vehicle, of a track-switch, a contact-device con-
sisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally therewith, and an over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor;”
or from infringing upon or violating the said claims, or
either or any of them, by the manufacture, use or sale
of said switch, structure, device or apparatus in any
way whatsoever.
Witness the Hon. MELVILLE W. FULLER, Chief-
Justice of the Supreme Court of the United States, at
the City of Cleveland, on the 26 day of Sept., 1896.
IRWIN BELFORD
[SEAL) Clerk
By JNo. WAN NOSTRAN
Deputy
BETTS, HYDE & BETTS,
Complainant's Solicitors.
37
THE UNITED STATES OF *} U. S. Marshal's
Northern District of Ohio, Return.
Received this writ September 26th, 1896, and on the
28th day of September, 1896, I served the same, at
Cleveland, Ohio, by delivering a true and certified copy
thereof to the within named Frank Horsburgh and
Thomas Scott, each personally.
M. A. SMALLEY,
Marshal.
By W. C. HARE,
Deputy.
FEES.
Service - - - - - - - - - $4 00
Copies - - - - - - - - - 2 00
Travel, 3 miles -- 18
Return - - - - - - - - - 10
-
$6 28
THE UNITED STATES OF AMERICA, ) SS. .
Northern District of Ohio, § © -
I, IRWIN BELFORD, Clerk of the Circuit Court of the
United States, within and for said District, do hereby
certify the foregoing to be a true copy of the Writ of
Injunction issued and served, together with the return
of the Marshal thereon, in the above entitled cause, in
said Court, and that the same is correctly copied from
the original now on file in my office.
Witness, my official signature, and the Seal
of said Court, at Cleveland, in said
District, this 29th day of September,
[SEAL) A. D. 1896, and in the 121st year of
the Independence of the United
States of America.
IRWIN BELFORD,
Clerk.
By JNo. WAN NOSTRAN,
Deputy.
* -

ſ: ºn- & 4… . .
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Injunction Orders and Decrees granted by
the Courts against the various companies and
persons sued for infringement to
August 31, 1896.
• C. G. Burgoyne, Walker and Centre Streets, New York.-1896.
At a Session of the United States Circuit
Court of Appeals for the Second
Circuit, held at the Court House, in
the City of New York, on the 20th
day of January, 1896.
Present--- -
HoN, WILLIAM J. WALLACE.
HON. E. HENRY LACOMBE.
HON. NATHANIEL SHIPMAN.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant and Appellee,
WS. • No. 109.
ELMIRA AND HORSEHEADS RAILWAY
COMPANY.,
Defendant and Appellant.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant and Appellant,
WS. No. 121.
ELMIRA AND HORSEHEADs RAILWAY
COMPANY, ,
Defendant and Appellee.
This cause having come on to be heard on cross-
appeals from the decree of the Circuit Court of the
United States for the Northern District of New York,
2
entered herein on the 29th day of June, 1895, sustain-
ing the bill of complaint and granting an injunction as
to certain claims and dismissing the bill of complaint
as to the other claims, and counsel for the respective
parties being heard by the Court upon said appeals,
now, on motion of Frederic H. Betts, counsel for the
appellee in appeal No. 109, and as counsel for the ap-
pellant in appeal No. 121, it is
Ordered, that said decree be, and the same is, reversed,
with the costs of this Court to be faxed in favor of the
appellant in appeal No. 109, and in favor of the ap-
pellee in appeal No. 121, and that the cause be re-
manded to the Circuit Court for the Northern District
of New York, with instructions, upon the filing by the
complainant of a disclaimer as to the 2d, 9th and 10th
claims of the Van Depoele Patent No. 424,695, dated
April 1st, 1890, that said Circuit Court enter a final
decree against the defendant, adjudging that said Let-
ters Patent No. 424,695, dated April 1st, 1890, are
good and valid as to claims 3, 4, 11, 19, 20, 23, 25, 26,
27, 32 and 33 thereof, and that the defendants have
infringed the same, and ordering a perpetual injunction
against the defendant from infringing the said claims
in any way whatsoever, and also dismissing the bill of
complaint, as against the said defendants, as to the 2d,
9th, 10th, 15th, 16th and 17th claims of the said Pat-
ent No. 424,695, without costs to either party in said
Circuit Court ; and that a mandate issue to the said
Circuit Court, directing said Court to proceed herein
according to law and conformably to the opinion of
this Court, without prejudice to the exercise of the
discretion of the Circuit Court on any application for
further suspension of the injunction.
W. J. W.
. H. L.
. S.
t
3
UNITED STATES OF AMERICA, ss. :
THE PRESIDENT OF THE UNITED STATES
OF AMERICA,
TO THE HONORABLE THE JUDGES OF THE CIR-
[SEAL OF COURT CUIT COURT OF THE UNITED STATES
OF APDEALs. FOR THE NORTHERN DISTRICT OF NEW
YoRK, GREETING:
WHEREAS, lately in the Circuit Court of the United
States for the Northern District of New York, before
you, or some of you, in a cause between Thomson-
Houston Electric Company, complainant, and Elmira
and Horseheads Railway Company, defendant, wherein
the decree of the said Court is in the words and figures
following, viz.:
“This cause having come on for final hearing
On the pleadings and evidence, and the same
having been argued orally by counsel for the
respective parties on the 23d, 24th and 25th
days of April, 1895, Samuel A. Duncan and
Frederic H. Betts appearing and being heard
for the complainant, and Thomas B. Kerr and
William A. Jenner for the defendant, and printed
brief having been submitted, and the Court
having duly considered the premises and found
the complainant entitled to a decree and injunc-
tion ;
“Now, therefore, on motion for the settlement
of the decree, brought on by Duncan & Page,
solicitors for the complainant, it is hereby
“Ordered, adjudged and decreed as follows :
“1. That Letters Patent of the United States
No. 424,695, issued to Charles J. Van Depoele
on April 1, 1890, for ‘Improvements in Sus-
pended Switches and Traveling Contacts for
Electric Railways,’ are good and valid, and are
owned by the complainant, the Thomson-
4
Houston Electric Company, which is a corpora-
tion organized and doing business under the
laws of the State of Connecticut.
“ 2. That the defendant the Elmira & Horse-
heads Railway Company, a corporation Or-
ganized and doing business under the laws
of the State of New York, has infringed upon
the sole and exclusive rights of the said com-
plainant, as secured by the said letters patent, by
using, on the lines of its electric railway at El-
mira and vicinity, the inventions recited and
covered by claims 2, 3, 4, 9, 10, 11, 12, 20, 23,
25, 26, 27, 32 and 33, these being the claims
which the complainant, acting on the suggestion
contained in the decision of the Court filed June
19, 1895, has designated as the most important
for the purposes of this suit; that this use of
the said inventions has been without the license
or authority of the complainant, and in violation
of its exclusive rights under the said claims;
that the said unlawful use began before the
bringing of the bill of complaint herein, and has
been continued since the bill was filed, and that
the defendant is threatening to continue the said
use, in contravention of complainant's rights in
the premises.
“3. That an injunction be issued in due form
of law against the defendant the Elmira and
Horseheads Railway Company, perpetually re-
straining it and its servants, agents, attorneys,
workmen and employees, and each and every of
them, from making, constructing, vending, using
or putting into practice the said inventions or
improvements, or any of them, recited or spec-
ified in the several claims above named, viz.:
claims 2, 3, 4, 9, 10, 11, 19, 20, 23, 25, 26, 27, 32
and 33, or in any way infringing upon the said
claims or any of them, or the rights of the com-
plainant thereunder. -
5
“It appearing, however, that one of the cars
in use by defendant, and which is provided with
a rearwardly extending trolley pole, carrying on
its outer end a grooved wheel adapted to make
underneath contact with the overhead conductor,
was bought of the complainant, such car and the
apparatus attached thereto is excepted from the
operation of the injunction.
“4. It appearing to the court that claims 15,
16 and 17 have not been infringed, it is ordered
that the bill of complaint be dismissed as to said
claims.
“5. The complainant, waiving an accounting
against this defendant as to its profits and dam-
ages (but without prejudice to complaimant's
rights to proceed against the manufacturers of
the apparatus used by the said defendant), there
will be no reference to a Master, and this decree
will stand as a final decree.
“6. Claims 18, 28, 29 and 30 having been
withdrawn from the consideration of the Court
at the hearing, and complainant having elected
not to ask a decree in this cause under claims 1,
5, 6, 7, 8, 12, 13, 14, 21, 22, 24, 31, 34 and 35, no
finding is made as to any of the said claims.
“7., Costs are not allowed to either party as
against the other.
- “ ALFRED C. COXE,
“ U. S. J.”
as by the inspection of the transcripts of the records
of the said Court, which was brought into the United
States Circuit Court of Appeals for the Second Circuit,
by virtue of Appeals sued out by the Complainant and
Defendant respectively, agreeably to the act of Con-
gress in such case made and provided, fully and at large
appeal's.
AND WHEREAs, in the present term of October, in the
year of our Lord one thousand eight hundred and
6
ninety-five, the said cause came on to be heard before
the said United States Circuit Court of Appeals for the
Second Circuit, on the said transcript of record, and
was argued by counsel,
On consideration whereof, It is now here by the
Court
Ordered, that said decree be, and the same is, re-
versed, with the costs of this Court taxed in favor of
the defendant The Elmira and Horselleads Railway
Company at the sum of Three hundred dollars and
forty-nine cents ($300.49), and that this cause be, and
the same is hereby, remanded to the said Circuit Court
with instructions upon the filing by the complainant of
a disclaimer as to the 2d, 9th and 10th Claims of the
Van Depoele Patent No. 424,695, dated April 1st,
1890 ; that said Circuit Court enter a Final Decree
against the defendant, adjudging that said Letters
Patent No. 424,695, dated April 1st, 1890, are good and
valid as to Claims 3, 4, 11, 19, 20, 23, 25, 26, 27, 32
and 33 thereof, and that the defendants have infringed
the same, and Ordering a perpetual injunction against
the defendant from infringing the said Claims in any
way whatsoever, and, also, dismissing the Bill of Com-
plaint as against the said Defendants as to the 2nd,
9th, 10th, 15th, 16th and 17th Claims of the said Patent
No. 424,695, without costs to either party in said Circuit
Court.
January 20, 1896.
You, therefore, are hereby commanded that such
further proceedings be had in said cause, conformably
to the opinion of this Court, without prejudice to the
exercise of the discretion of the Circuit Court on any
application for further suspension of the injunction, as
according to right and justice, and the laws of the
United States, ought to be had, the said Appeals not-
withstanding.
7
Witness the Honorable MELVILLE W. FULLER, Chief-
Justice of the United States, the 24th day of January,
in the year of our Lord one thousand eight hundred
and ninety-six.
JAMES C. REED,
Clerk of the United States Circuit Court of
Appeals for the Second Circuit.
At a Stated Term of the United States Cir-
cuit Court for the Northern District
of New York, held in the U. S.
Court Rooms, in the City of Albany,
on the 29th day of January, 1896.
Present—HoN. ALFRED C. COXE, Judge.
-
THOMSON–HOUSTON ELECTRIC
COMPANY
WS. > In Equity,
No. 6130.
ELMIRA AND HORSE: EADS RAILWAY
COMPANY.
J
. A decree having been entered herein on the 29th day
June, 1895, in the following words:
“This cause having come on for final hearing on the
pleadings and evidence, and the same having been ar-
gued orally by counsel for the respective parties on the
23d, 24th and 25th days of April, 1895, Samuel A.
Duncan and Frederic H. Betts appearing and being
heard for the complainant, and Thomas B. Kerr and
William A. Jenner for the defendant, and printed
briefs having been submitted, and the Court having
duly considered the premises and found the complain-
ant entitled to a decree and injunction ;
“Now, therefore, on motion for the settlement of
the decree, brought on by Duncan & Page, solicitors
for the complainant, it is hereby
“Ordered, adjudged and decreed as follows:
“ 1. That Letters Patent of the United States No.
424,695, issued to Charles J. Van Depoele on April 1,
10
1890, for ‘Improvements in Suspended Switches and
‘Travelling Contacts for Electric Railways,’ are good
and valid, and are owned by the complainant the
Thomson-Houston Electric Company, which is a cor-
poration organized and doing business under the laws
of the State of Connecticut.
“2. That the defendant the Elmira and Horse-
heads Railway Company, a corporation organized and
doing business under the laws of the State of New
York, has infringed upon the sole and exclusive rights
of the said complainant, as secured by the said letters
patent, by using, on the lines of its electric railway at
Elmira and vicinity, the inventions recited and covered
by claims 2, 3, 4, 9, 10, 11, 19, 20, 23, 25, 26, 27, 32,
and 33, these being the claims which the complainant,
acting on the suggestion contained in the decision of
the Court filed June 19, 1895, has designated as the
most important for the purposes of this suit; that this
use of the said inventions has been without the license
or authority of the complainant and in violation of its
exclusive rights under the said claims ; that the said
unlawful use began before the bringing of the bill of
complaint herein and has been continued since the bill
was filed ; and that the defendant is threatening to con-
tinue the said use in contravention of complainant's
rights in the premises.
“3. That an injunction be issued, in due form of
law, against the defendant the Elmira and Horseheads
Railway Company, perpetually restraining it, and its
servants, agents, attorneys, workmen and employees,
and each and every of them, from making, construct-
ing, vending, using or putting into practice the Said
inventions or improvements, or any of them, recited or
specified in the several claims above named, viz.,
claims 2, 3, 4, 9, 10, 11, 19, 20, 23, 25, 26, 27, 32 and
33, or in any way infringing upon the said claims, or
any of them, or the rights of the complainant there-
under.
11
“It appearing, however, that one of the cars in use
by defendant, and which is provided with a rearwardly
extending trolley pole, carrying on its outer end a
grooved wheel adapted to make underneath contact
with the overhead conductor, was bought of the com-
plainant, such car, and the apparatus attached thereto,
is excepted from the operation of the injunction.
“4. It appearing to the Court that claims 15, 16 and
17 have not been infringed, it is ordered that the bill
of complaint be dismissed as to said claims.
“ 5. The complainant waiving an accounting against
this defendant as to its profits and damages (but with-
out prejudice to complainant's rights to proceed against
the manufacturers of the apparatus used by the said
defendant), there will be no reference to a Master, and
this decree will stand as a final decree.
“6. Claims 18, 28, 29 and 30 having been withdrawn
from the consideration of the Court at the hearing, and
complainant having elected not to ask a decree in this
cause under claims 1, 5, 6, 7, 8, 12, 13, 14, 21, 22, 24,
31, 34 and 35, no finding is made as to any of said
claims.
“7. Costs are not allowed to either party as against
the other.”
And a transcript of the record having been taken into
the United States Circuit Court of Appeals for the
Second Circuit by virtue of cross-appeals from the said
decree, and the said United States Circuit Court of Ap-
peals having, on consideration thereof, on the 20th day
of January, 1896, -
‘‘ Ordered that said decree be, and the same is, re-
versed, with the costs of this Court to be taxed in favor
of the appellant in appeal No. 109, and in favor of the
appellee in appeal No. 121, and that the cause be re-
manded to the Circuit Court for the Northern District
of New York, with instructions, upon the filing by the
complainant of a disclaimer as to the 2d, 9th and 10th
claims of the Van Depoele Patent No. 424,695, dated
April 1st, 1890, that said Circuit Court enter a final de-
12
cree against the defendant, adjudging that said Letters
Patent No. 424,695, dated April 1st, 1890, are good
and valid as to claims 3, 4, 11, 19, 20, 23, 25, 26, 27, 32
and 33 thereof, and that the defendants have infringed
the same, and ordering a perpetual injunction against
the defendant from infringing the said claims in any
way whatsoever, and also dismissing the bill of com-
plaint, as against the said defendants, as to the 2d, 9th,
10th, 15th, 16th and 17th claims of the said Patent No.
424,695, without costs to either party in said Circuit
Court ; and that a mandate issue to the said Circuit
Court directing said Court to proceed herein according
to law and conformably to the opinion of this Court,
without prejudice to the exercise of the discretion of
the Circuit Court on any application for further suspen-
sion of the injunction.”
And the mandate of the said United States Circuit
Court of Appeals made the 24th day of January, 1896,
being now here before this Court, and it appearing to
this Court that the complainant has filed a proper dis-
claimer as to the 2d, 9th and 10th claims of the United
States Letters Patent No. 424,695, granted to Charles
J. Van Depoele, dated April 1, 1890, now, on motion of
Frederic H. Betts, of counsel for complainant, it is
Ordered, adjudged and decreed that the said mandate
be filed herein and that the said order of the said United
States Circuit Court of Appeals be, and the same hereby
is, made the order and decree of this Court ; and it is
further
Ordered, adjudged and decreed as follows:
1. That Letters Patent of the United States No. 424,-
695, issued to Charles J. Van Depoele on April 1, 1890,
for “Improvements in Suspended Switches and Travel-
ing Contacts for Electric Railways,” are good and valid
letters patent as to claims 3, 4, 11, 19, 20, 23, 25, 26, 27,
32 and 33, and are owned by the complainant the
Thomson-Houston Electric Company, which is a corpo-
13
ration organized and doing business under the laws of
the State of Connecticut.
2. That the defendant the Elmira and Horseheads
Railway Company, a corporation organized and doing
business under the iaws of the State of New York, has
infringed upon the sole and exclusive rights of the said
complainant, as secured by said letters patent, by using,
on the lines of its electric railway at Elmira and vicin-
ity, the inventions recited and covered by claims 3, 4,
11, 19, 20, 23, 25, 26, 27, 32 and 33 ; that this use of
the said invention has been without the license or
authority of the complaimant and in violation of the ex-
clusive rights under the said claims; that the said un-
lawful use began before the bringing of the bill of com-
plaint herein and has been continued since the bill was
filed, and that the defendant is threatening to continue
the Said use in contravention of complaimant's rights in
the premises.
3. That a perpetual injunction be issued in due form
of law against the defendant perpetually restraining it
and its servants, agents, attorneys, workmen and em-
ployees, and each and every of them, from making, con-
structing, acquiring, vending, using or putting into
practice said inventions or improvements, or any of
them, recited or specified in the several claims above-
named, viz., claims 3, 4, 11, 19, 20, 23, 25, 26, 27, 32
and 33, or in any way infringing upon the said claims
or any of them, or the rights of the complainant there-
under. -
It appearing, however, that one of the cars in use by
the defendant and which is provided with a rearwardly
extending trolley pole carrying on its outer end a
grooved wheel adapted to make underneath contact
with the overhead conductor, was bought of the com-
plainant, such car, and the apparatus attached thereto,
is excepted from the operation of the injunction,
14
4. The complainant having filed a disclaimer as to
the 2d, 9th and 10th claims of the said patent to Van
Depoele, No. 424,695, dated April 1, 1890, and it ap-
pearing to the Court that claims 15, 16 and 17 of the
said Patent No. 424,695 have not been infringed, it is
Ordered, that the bill of complaint be dismissed as
to those claims.
5. The complainant having waived an accounting
against this defendant as to the profits and damages
(but without prejudice to complainant's rights to pro-
ceed against the manufacturers of the apparatus used
by the defendants), there will be no reference to a
Master, and this decree will stand as a final decree.
6. Claims 18, 28, 29 and 30 having been withdrawn
from the consideration of the Court at final hearing,
and complainant having elected not to ask a decree in
this cause under claims 1, 5, 6, 7, 8, 12, 13, 14, 21, 22,
24, 31, 34 and 35, no finding is made as to any of said
claims; and it is further tº
Ordered, that the defendant have judgment against
the complainant the Thomson-Houston Electric Com-
pany for the sum of three hundred and #5 dollars,
amount of the costs on appeal taxed herein by the
Clerk of the United States Circuit Court of Appeals,
and have execution therefor.
ALFRED C. COXE,
U. S. J.
15
At a Session of the Circuit Court of the
United States held in and for the
Second Circuit and Southern District
of New York, at the United States
Court House, in the City of New
York, on the 10th day of February,
1896.
Present–HON. E. HENRY LACOMBE, U. S. Circuit
Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY,
Complainant,
> In Equity.
WS.
THE NEW YORK ELECTRIC WORKs,
Defendant.
J
The motion for a preliminary injunction in the above-
entitled cause coming on to be heard upon the bill of
complaint and the affidavits of Frankland Jaunus, James
J. Cosgrove, Edwin W. Hammer and Edward M. Bent-
ley, and upon the exhibits therein referred to, and upon
the decision of and order of the Circuit Court of the
United States for the Northern District of New York,
in the suit of the Thomson-Houston Electric Company
vs. the Elmira and Horseheads Railway Company, and
upon the decision and order of the Circuit Court of
Appeals for the Second Circuit in the aforesaid suit,
and the complainant being represented on said motion
by Frederic H. Betts, Esq., and the defendant by Dan-
iel H. Driscoll, Esq. (not opposing), and after consider-
ation, it is
Ordered that a preliminary injunction be, and the
same is hereby, granted and ordered to issue out of and
16
under the seal of this Court, restraining the defendant
and its officers, associates, agents, solicitors, servants
and Workmen, until the further order of this Court,
from directly or indirectly making, selling or disposing
of in any way, or advertising for sale, any switches for
electric railways containing or embodying the subject
matter, or intended to be used in the combinations of
the 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th and 27th
claims of letters patent granted to Charles J. Van
Depoele, assignor to the Thomson-Houston Electric
Company, No. 424,695, dated April 1st, 1890, or from
otherwise infringing said claims.
E. H. LACOMBE,
U. S. Circuit Judge.
UNITED STATES CIRCUIT COURT,
SOUTHERN DISTRICT OF NEW YORK.
THOMSON-HOUSTON ELECTRIC
COMPANY
On J_etters Patent
WS. No. 424,695.
THE NEW YORK ELECTRICAL WORKS.
In consideration of the complaimant's waiving an ac-
counting against the above-named defendant as to the
gains and profits made by it by reason of the infringe-
ment of the 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th
and 27th claims of Patent No. 424,695, in suit, and the
damages suffered by the complainant on account of the
said infringement, and in consideration of the said
complainant's releasing the said defendant from all
claims for the infringement of the said claims of the
17
said patent in suit, prior to the entry of the final decree
hereinafter mentioned, -
It is hereby stipulated and agreed, by and between
the solicitors for the respective parties herein, that a
final decree may be entered for a permanent injunction
against the defendant, in the usual form, on the said
claims of said letters patent.
Dated July 6th, 1896.
BETTS, HYDE & BETTS,
Solicitors for Complainant.
DANIEL H. DRISCOLL,
Solicitor for Defendant.
At a Stated Term of the Circuit Court of
the United States for the Southern
District of New York, held at the U.
S. Court Rooms in the City of New
York, on the 11th day of August,
1896.
Present—HoN. E. HENRY LACOMBE, Circuit Judge.
n
THOMSON-HOUSTON ELECTRIC COMPANY
WS. º
THE NIEW YORK ELECTRICAL WORKs.
--- w J
This cause having come on to be heard at this Term
of Court upon the pleadings and proceedings had
herein, it is, upon consideration and upon motion of
Messrs. Betts, Hyde & Betts, solicitors for the com-
plainant, the defendant The New York Electrical Works
1S
appearing by its solicitor Daniel H. Driscoll, Esq., and
submitting and consenting thereto,
Ordered, adjudged and decreed that Tletters Patent
of the United States issued to Charles J. Van Depoele,
dated April 1, 1890, No. 424,695, for Improvements in
Suspended Switches and Traveling Contacts for Electric
Railways, are good and valid in law as to the 3d, 4th,
11th, J.9th, 20th, 23d, 25th, 26th and 27th claims thereof,
which are as follows :
“3. The combination with an overhead wire for re-
ceiving an underneath contact for a switch plate at-
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track having switches,
and a car on the track provided with a contact-carry-
ing arm arranged to engage the conductor at a point in
rear of the front wheels of the car.”
“11. The combination, with an overhead line wire,
of a grooved contact device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch plate connected to the
wire against which the said flanges bear in passing
from one line to another.”
“ 19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact arm carrying a grooved wheel embracing the
conductor, and a switch plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the
wheel is free to move laterally to engage with one of
the branch conductors.
“20. In an electric railway, the combination, with
an overhead switch plate having depending ribs, but
Open at its extremities, of main and branch conductors.
extending from its two extremities, respectively, a
vehicle, an upwardly-pressed contact arm attached to
the vehicle and tending to move laterally there with,
19
and a track switch for the vehicle located so as to
operate in advance of the conductor switch.”
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging
contact arm pressed upward to engage the conductors,
and a switch plate at the branching point having de-
pending sides, but open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact wheel, whereby the wheel
is free to move laterally with relation to the main con-
ductor and engage One of the branching conductors.”
“25. In a branching electric railway, the combina-
tion of a track switch, an overhead conductor switch,
and a vehicle having a rearwardly-extending contact
arm, whereby the track switch will operate in advance
of the conductor switch.
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track switch, an overhead con-
ductor switch, and a contact arm extending upward
from the vehicle to the conductor, and so located rel-
atively to the length of the vehicle and the two
switches that the lateral movement of the vehicle will
give a corresponding movement of the contact device
on the conductor switch.
“27. In a branching electric railway, the combination,
with a vehicle, of a track switch, a contact device con-
sisting of a trailing Spring-pressed arm having a grooved
contact piece embracing the conductor and guided
thereby, and said arm being jointed to the car and
tending to move laterally there with, and an overhead
conductor-switch adapted to engage the contact piece
and whereby the extremity of the arm is flexibly guided
from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and original inventor or discoverer of the inventions
described and claimed in the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Tetters
Patent No. 424,695, and that the Thomson–Houston
Electric Company, a corporation organized and exist-
20
ing under the Laws of the State of Connecticut, the
complainant herein, is the lawful and exclusive owner
of said Letters Patent No. 424,695.
And that the defendant, The New York Electrical
Works has infringed upon the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Letters
Patent No. 424,695, and upon the exclusive rights of
the complainant under the same.
And it is further ordered, adjudged and decreed that,
the complainant, waiving an accounting against this de-
fendant as to its profits and damages (but expressly re-
Serving all the complainant's rights to proceed against
any users of the apparatus manufactured by the said
defendant), a perpetual injunction issue out of and
under the seal of this Court, strictly enjoining and re-
straining the defendants The New York Electrical
Works, its officers, associates, agents, solicitors, at-
torneys, servants and workmen, from, directly or indi-
rectly, constructing, making, advertising for sale, using,
selling or disposing of, or causing to be constructed,
made, advertised for sale, used, sold or disposed of, in
any way, any switch, structure, device or apparatus
containing or embodying the subject matter of, or in-
tended to be used in, the combinations of the said 3d,
4th, 11th, 19th, 20th, 23d, 25th, 26th and 27th claims of
said Letters Patent No. 424,695, or from infringing
upon or violating the said claims, or any or either of
them, in any way whatsoever,
And it is further ordered, adjudged and decreed
that neither party recover costs as against the other.
E. H. LACOMBE,
U. S. Circuit Judge.
21
At a Session of the Circuit Court of the
United States, held in and for the
Second Circuit and Northern District
of New York, at the United States
Court Rooms, in the Post Office
Building in the City of Utica, on the
18th day of February, 1896.
Present—HON. ALFRED C. COXE, Judge.
n
THOMSON-Houston ELECTRIC
COMPANY.,
Complainant,
WS. In Equity.
º * No. 6391a.
FIBERITE COMPANY, HORACE C. MED-
BERy, President, and STEPHEN C.
MEDBERY, Treasurer,
Defendants.
J
The motion for a Preliminary Injunction in the
above-entitled cause, coming on to be heard upon the
Bill of Complaint, and the affidavits of Frankland
Jamnus, James J. Cosgrove, Edwin W. Hammer and
Edward M. Bentley, and upon the exhibits therein
referred to, and upon the decision and decree of this
Court, in the suit of Thomson-Houston Electric Com-
pany vs. Eimira & Horseheads Railroad Company, and
upon the decision and order of the Circuit Court of
Appeals for the Second Circuit in the aforesaid suit,
and after hearing Frederic H. Betts, Esq., in support
of said motion, and no One appearing for defendants,
and after due consideration had, it is
Ordered that a Preliminary Injunction is hereby
granted and ordered to issue out of and under the seal
of this Court, strictly enjoining and restraining the
defendants the Fiberite Company, Horace J. Medbery,
the President thereof, and Stephen C. Medbery, the
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23
UNITED STATES CIRCUIT COURT,
NORTHERN DISTRICT OF NEW YORK.
THOMSON-HOUSTON ELECTRIC |
COMPANY
WS. . In Equity, No. 6391.
- On Van Depoele
Patent No.424,695.
THE FIBERITE COMPANY, HoRACE
J. MEDBERY, its President, and
STEPHEN C. MEDEERY, its Treasurer.
J
Please take notice that on the 28th day of April,
1896, at 10:30 o'clock in the forenoon, at the Court
Rooms in the City of Utica, we shall present the an-
nexed proposed decree to the Court for settlement.
Yours, &c.,
BETTs, HYDE & BETTS,
Attorneys for Complainant,
120 Broadway,
New York City.
To J. S. L’AMOREAUX, ESQ.,
Solicitor for Defendants.
24.
At a Special Term of the Circuit Court of
the United States, held in and for
the said district, at the Court Rooms
in the City of Utica, on the 5th day
of May, 1896.
Present-HoN. Judge.
n
THOMSON-HOUSTON ELECTRIC
COMPANY
WS. In liquity, No. 6391.
> Van Depoele Pat-
cnt 424,695.
THE FIBERITE COMPANY, HORACE J.
MEDBERY, its President, and
STEPHEN C. MEDBERY, its Treasurer.
...”
This cause having been brought on for hearing at
this term of the Court, and it appearing to the Court
that the bill in equity in the above-entitled cause was
filed in this Court on the 31st day of January, 1896,
and that a subpoena was issued and duly served upon
the defendants herein ; that the defendants having
appeared by their solicitor, J. S. L'Amoreaux, on the
10th day of February, 1896, and the time within which
the said defendants were required by the rules and
practice of this Court to plead, answer or demur having
expired, and the defendants having failed to file any
plea, answer or demurrer, and that an order taking
said bill pro confesso against the defendants was duly
entered on the 5th day of March, 1896, and upon duo
consideration had, it is hereby
Ordered, adjudged and decreed that the Letters Pat-
ent of the United States issued to Charles J. Van De-
poele, dated April 1st, 1890, No. 424,695, for an im-
provement in a “Suspended Switch and Traveling
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26
switch for the vehicle located so as to operate in
advance of the conductor-switch.”
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
Swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but open at
its extremities, the interior width of the plate
between the sides being greater than the thick-
ness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main
conductor and engage one of the branching con-
ductors.
“25. In a branching electric railway the
combination of a track-switch, an overhead con-
ductor-switch and a vehicle having a rearwardly-
extending contact-arm whereby the track-switch
will operate in advance of the conductor-switch.
“ 26. In a branching electric railway the com-
bination with a vehicle of a track-switch, an
overhead conductor-switch and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length
of the vehicle and the two switches that the
lateral movement of the vehicle will give a corre-
sponding movement of the contact-device on the
conductor-switch.
“27. In a branching electric railway the com-
bination with a vehicle of a track-switch, a con-
tact-device consisting of a trailing spring-pressed
arm having a grooved contact-piece embracing
the conductor and guided thereby, the said arm
being jointed to the car and tending to move
laterally there with, and an overhead conductor-
switch adapted to engage the contact-piece and
whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
27
and original inventor and discoverer of the inventions
described and claimed in the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said letters
patent and in the specification annexed thereto, and
that the Thomson-Houston Electric Company, a cor-
poration organized under the laws of the State of Con-
necticut, the complainant herein, is the exclusive owner
of the said letters patent.
That the defendants The Fiberite Company, Horace
J. Medbery, its president, and Stephen C. Medbery, its
treasurer, have infringed upon the said 3d, 4th, 11th,
19th, 20th, 23d, 25th, 26th and 27th claims of said Letters
Patent, and upon the exclusive rights of the complain-
ant under the same ; that is to say, by constructing,
erecting, using and vending to others to be used,
without right or license, an electric railway or rail-
ways embodying and involving the use of the
inventions recited and covered by the said 3d, 4th,
11th, 19th, 20th, 23d, 25th, 26th and 27th claims of the
said Tuetters Patent, or substantial or material parts
thereof, and by publicly advertising and stating that
they, the said defendants, intended and proposed to
equip and erect such railways, using and employing
the inventions recited in and covered by the said claims
of the said Letters Patent, and by publicly stating that
they, the said defendants, proposed and intended to
avail themselves of the inventions covered by the said
claims and owned by the said complainant, as afore-
said, in the erection and operation of said electric rail-
ways, in Open defiance of the rights of the complainant
herein, as aforesaid. -
And it is further ordered, adjudged and decreed, that
the complainant do recover of the defendants the prof-
its, gains and advantages which the said defendants
have derived, received or made by reason of the said
infringement of the said 3d, 4th, 11th, 19th, 20th, 23d,
25th, 26th and 27th claims of said Letters Patent ; that
said complainant do also recover any and all damages
it has sustained or shall sustain by reason of said in-
28
fringement of said 3d, 4th, 11th, 19th, 20th, 23d, 25th,
26th and 27th claims of said letters patent by the de-
fendants.
And it is hereby referred to Walter N. Kerman,
Esq., of Utica, N. Y., as a Master of this Court, who is
hereby appointed pro hac vice to take and state the ac-
counts of said gains, profits and advantages, and to as-
sess such damages, and to report thereon with all con-
venient speed. And the defendants, and each of them,
are hereby directed and required to attend before said
Master from time to time as required, and to produce
before him such books, papers, vouchers and docu-
ments as relate to the matters in issue, and to submit
to such oral examination, or otherwise, as the Master
may require.
And it is further ordered, adjudged and decreed, that
a perpetual injunction issue out of and under the seal
of this Court, strictly enjoining and restraining the de-
fendants The Fiberite Company, Horace J. Medbery,
the president thereof, and Stephen C. Medbery, the
treasurer thereof, and all persons connected directly or
indirectly with them, and their associates, clerks,
agents, servants and workmen from directly or indi-
rectly advertising, selling, making, employing, erecting,
constructing or equipping, or causing to be advertised,
sold, made, employed, erected, constructed or equipped,
in any manner, any electric railways, switches for elec-
tric railways, devices or apparatus containing or em-
bodying the subject matter of, or intended to be used
in the combinations of, the said claims, or either of
them, or from infringing the said claims in any way
whatsoever.
And it is further ordered, adjudged and decreed, that
the complainant do recover of the defendants, and each
of them, the costs of this suit, and that the question of
increase of damages and all further questions be re-
served until the coming in of the Master's report.
ALFRED C. COXE,
U. S. J.
29
UNITED STATES CIRCUIT COURT,
WESTERN DISTRICT OF PENNSYLVANIA.
~
THOMSON-HOUSTON ELECTRIC COMPANY
Vs. In Equity, No. 8.
* Patent 424,695.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING COMPANY ET AL.
J
Upon reading and filing the annexed stipulation and
upon motion of Messrs. Knox & Reed, solicitors for
the complainant herein, it is hereby
Ordered that a preliminary injunction is hereby
granted and ordered to issue out of and under the seal
of this Court enjoining and restraining the defendants
Westinghouse Electric and Manufacturing Company,
George Westinghouse, Jr., and Philip F. Kobbe, and
each and every person connected, directly or indirectly,
with it or them, as Officers or managers of the said
company, or otherwise, and its and their associates,
attorneys, solicitors, clerks, servants, agents and work-
men, until the further Order of this Court, from directly
or indirectly making or causing to be made, using or
causing to be used, or vending to others to be used, or
disposing of in any way, or advertising for sale in any
manner, any apparatus or structure containing or em-
bodying the subject matter of, or intended to be used
in the combinations of the 3d, 4th, 11th, 19th, 20th,
23d, 25th, 26th or 27th claims of the letters patent
granted to Charles J. Van Depoele, assignor to the
Thomson-Houston Electric Company, No. 424,695,
dated April 1st, 1890, except such manufacture, use or
sale as may be permitted by any license that may have
been or shall be granted to the said defendants above
30
mentioned, under said Letters Patent No. 424,695,
dated April 1, 1890, by the complainant herein.
Dated 23d April, 1896.
* By the Court,
Jos. BUFFINGTON,
Judge.
UNITED STATES OF AMERICA, SS. .
Western District of Pennsylvania, º
I, H. D. GAMBLE, Clerk of the Circuit Court of the
United States of America for the Western District of
Pennsylvania in the Third Circuit, do hereby certify
the foregoing to be a true copy of the original order for
a preliminary injunction in the above-entitled case on
file, anul now remaining among the records of the said
Court in my office.
In testimony whereof, I have hereunto sub-
scribed my name and affixed the seal
of the said Court, at Pittsburgh, in
said district, this 23d day of April,
[SEAL.] in the year of Our Lord one thousand
eight hundred and ninety-six, and of
the Independence of the United
States the one hundred and twentieth.
H. D. GAMBLE,
Clerk U. S. Circuit Court.
31
UNITED STATES CIRCUIT COURT,
WESTERN DISTRICT OF PENNSYLVANIA.
THOMSON-HOUSTON ELECTRIC CO.
WS. In Equity, No. 8.
Patent 424,695.
WESTINGHOUSE ELECTRIC AND MANU-
FACTURING CO. ET AL.
J
It is hereby stipulated and agreed by and between
the counsel for respective parties hereto, that, since
the filing of the bill of complaint herein and since the
granting of an order to show cause why the preliminary
injunction should not issue herein, the defendants
having submitted to the rights of the complainant
under said Letters Patent No. 424,695, and, having
taken or about to take a license thereunder, that the
order may be entered herein granting an injunction
against the defendant company and its officers,
servants, agents and Workmen, and enjoining and re-
straining the manufacture, use or sale of the apparatus
described and claimed in said Letters Patent 424,695,
except such manufacture, use or sale as may be per-
mitted by the said license. -
Dated April 15, 1896. º
BETTS, HYDE & BETTS,
Counsel for Complainant.
GEORGE H. CHRISTY,
Counsel for Defendants.
KNOX & REED,
Solicitors for Complainant.
32
UNITED STATES CIRCUIT COURT,
WESTERN DISTRICT OF PENNSYLVANIA.
n
THOMSON-HOUSTON ELECTRIC COMPANY
In Equity, No. 10.
WS. >
Patent 424,695.
R. D. NUTTALL COMPANY ET AL.
J
Upon reading and filing the annexed stipulation, and
upon motion of Messrs. Knox & Reed, solicitors for
the complainant herein, it is
Ordered that a preliminary injunction is hereby
granted and Ordered to issue out of and under the seal
of this Court, enjoining and restraining the defendants
T. D. Nuttall Company, Frank A. Estep, J. R. McGinley,
Walter Uptgraff, F. S. Martin and Charles A. Wolfe,
and each and every person connected, directly or in-
directly, with it or them, as officers or managers of the
said company, or otherwise, and its and their associates,
attorneys, solicitors, clerks, servants, agents and work-
men, until the further order of this Court, from directly
or indirectly making or causing to be made, using or
causing to be used, or vending to others to be used,
or disposing of in any way, or advertising for sale in
any manner, any apparatus or structure containing or
embodying the subject matter, or intended to be used
in the combinations of the 3rd, 4th, 11th, 19th, 20th,
23d, 25th, 26th or 27th claims of the letters patent
granted to Charles J. Van Depoele, assignor of the
Thomson-Houston Electric Company, No. 424,695,
dated April 1st, 1890, except such manufacture, use or
Sale as may be permitted by any license that may have
been or shall be granted to the defendants herein under
33
said Letters Patent No. 424,695, by the complainant
herein.
Dated 23d April, 1896.
- By the Court,
JOS. BUFFINGTON,
Judge.
UNITED STATES OF AMERICA, S. .
Western District of Pennsylvania, ; *
I, H. D. GAMBLE, Clerk of the Circuit Court of the
United States of America for the Western District of
Pennsylvania in the Third Circuit, do hereby certify
the foregoing to be a true copy of the original
Order for a preliminary injunction in the above case
on file and now remaining among the records of the
said Court in my office.
In testimony whereof, I have hereunto
subscribed my name and affixed the
seal of the said Court, at Pittsburgh,
in said district, this 23d day of April,
[SEAL.] in the year of Our Lord one thousand
eight hundred and ninety-six, and of
the Independence of the United
States the one hundred and twentieth.
H. D. GAMBLE,
Clerk U. S. Circuit Court.
34
UNITED STATES CIRCUIT COURT,
WESTERN DISTRICT OF PENNSYLVANIA.
THOMSON-Houst’ON ELECTRIC
COMPANY
- ſº Equity, No. 10.
WS. Patent 424,695.
P. D. NUTTALL COMPANY.
~
It is hereby stipulated and agreed by and between
the counsel for the respective parties hereto that, since
the filing of the bill of complaint herein, and since the
granting of an order to show cause why a preliminary
injunction should not issue herein, the defendants have
submitted to the rights of the complainant in said Let-
ters Patent No. 424,695, and have taken, or are about
to take, a license thereunder that an order may be en-
tered herein granting an injunction against the defendant
company and its officers, servants, agents and workmen,
enjoining and restraining the manufacture, use or sale
of the apparatus described and claimed in said Letters
Patent No. 424,695, except such manufacture, use or
sale as may be permitted by the said license.
Dated April 15, 1896.
BETTS, HYDE & BETTS,
Counsel for Complainant.
GEORGE H. CHRISTY,
Counsel for Defendants.
KNOX & REED,
Solicitors for Complainant.
35
At a Session of the Circuit Court of the
United States held in and for the
Northern District of Ohio, in the U.
S. Court Rooms, in the Post-Office
Building, in the City of Cleveland,
on the 15th day of May, 1896.
Present—HoNORABLE AUGUSTUs J. RICKS, U. S. Dis-
trict Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY
NO. 5516.
WS. > Chancery.
Patent No. 424,695.
IFRANK HORSBURGH, THOMAS SCOTT and
the firm of HoRSBURGH & SCOTT.
2
A motion for a preliminary injunction in the above-
entitled cause coming on to be heard upon the bill of
complaint, and the affidavits of Frankland Jannus,
James J. Cosgrove, Lewis D. Tandy, iºdward M. Bent-
ley, Charles A. Coffin and Charles A. Terry, and the
papers and exhibits referred to therein, and upon the
decision and decree of the United States Circuit Court
for the Northern District of New York in the suit of
Thomson-Houston Electric Company vs. Elmira and
Horseheads Railway Company, and upon the decision
and order of the Circuit Court of Appeals for the Sec-
ond Circuit in the aforesaid suit; upon the motion of
Betts, Hyde & Betts, solicitors and counsel for the
complaimant in the above-entitled cause, and the de-
fendants consenting hereto, it is
Ordered, that a preliminary injunction be, and hereby
is, granted and Ordered to be issued out of and under
the seal of this Court, strictly enjoining and restraining
the defendants Frank Horsburgh, Thomas Scott and
the firm of Horsburgh & Scott, and all persons con-
nected, directly or indirectly, with them, and their
36
associates, clerks, agents, servants, workmen, solicitors.
and attorneys, until the further order of this Court,
from directly or indirectly selling, making, employing,
using, erecting, constructing, equipping or advertising
for sale, or causing to be sold, made, employed, used,
erected, constructed, equipped or advertised for sale,
in any manner, any electric railways, switches for elec-
tric railways, devices or apparatus containing or em-
bodying the subject matter of, or intended to be used
in the combinations of, the 3d, 4th, 11th, 19th, 20th,
23d, 25th, 26th and 27th claims of United States Let-
ters Patent granted to Charles J. Van Depoele, assignor
to the Thomson-Houston Electric Company, No.
424,695, dated April 1, 1890, or from infringing said
claims in any way whatsoever.
Consented to May 15, 1896.
FRANK HORSBURGH.
THOMAS SCOTT.
HORSBURGH & SCOTT.
37
At a Stated Term of the Circuit Court of the
United States, held at the Court
House in the City of Pittsburg, Pa.,
on the 6th day of June, 1896.
Present—HoN. M. W. ACHESON, Circuit Judge.
n
THOMSON-HOUSTON ELECTRIC COMPANY
In Equity. On
WS. . Van Depoele Pat-
ent No. 424,695.
THE SUPPLY MANUFACTURING COMPANY.
JUNE 6, 1896.
This cause having come on to be heard at this term
of this Court, upon the pleadings, proceedings and
proofs, now it is, upon consideration, the defendant
appearing by its solicitors, Messrs. J. S. & E. G. Fer-
guson, and submitting and consenting thereto,
Ordered, adjudged and decreed that Letters Patent
of the United States, issued to Charles J. Van De-
poele, dated April 1, 1890, No. 424,695, for Improve-
ments in Suspended Switches and Traveling Contacts
for Electric Railways, are good and valid in law as to
the 3d, 4th, 11th, 19th, 20th, 23d 25th, 26th and 27th
claims thereof, which are as follows:
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch
plate attached to the wire in about the same
horizontal plane as the wire.
“4. The combination of a track having switches,
an overhead conductor above the track and having
switches, and a car on the track provided with a
contact-carrying arm arranged to engage the con
ductor at a point in rear of the front wheels of
the car.”
38
“11. The combination, with an overhead line
wire, of a grooved contact device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-plate
connected to the wire against which the said
flanges bear in passing from One line to another.
“19. In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel flanges, and provided with
depending ribs, between which the wheel is free
to move laterally to engage with One of the
branch conductors.
“20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally there with, and a track-
switch for the vehicle, located so as to operate
in advance of the conductor switch.
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
Swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but open at
its extremities, the interior width of the plate
between the sides being greater than the thick-
ness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main
conductor and engage One of the branching con-
ductors.
“25. In a branching electric railway, the com-
bination of a track-switch, an overhead con-
ductor-switch, and a vehicle having a rearwardly-
extending contact-arm, whereby the track-switch
will Operate in advance of the conductor-switch.
39
“ 26. In a branching electric railway the com-
bination with a vehicle of a track-switch, an
Overhead conductor-switch, and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length of
the vehicle and the two switches that the lateral
movement of the vehicle will give a correspond-
ing movement of the contact device on the
conductor-switch.
“ 27. In a branching electric railway the com-
bination with a vehicle, of a track-switch, a
contact-device; consisting of a trailing spring-
pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, the
said arm being jointed to the car and tending to
move laterally there with, and an overhead con-
ductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and original inventor or discoverer of the inventions
described and claimed in the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Letters
Patent No. 424,695, and that the Thomson-Houston
Blectric Company, a corporation organized and exist-
ing under the laws of the State of Connecticut, the
complainant herein, is the lawful and exclusive owner
of said Letters Patent No. 424,695. -
That the defendant The Supply Manufacturing Com-
pany has infringed upon the 3d, 4th, 11th, 19th, 20th,
23d, 25th, 26th and 27th claims of said Letters Patent
No. 424,695 and upon the exclusive rights of the com-
plainant under the same.
And it is further ordered, adjudged and decreed that
the complainant, waiving an accounting against this
defendant as to its profits and damages (but without
prejudice to complaimant's rights to proceed against any
users of the apparatus manufactured by the said de-
40
fendant), a perpetual injunction issue out of and under
the seal of this Court, strictly enjoining and restrain-
ing the defendant The Supply Manufacturing Com-
pany and its associates, attorneys, solicitors, clerks,
servants, agents and workmen from—directly or indi-
rectly—making or causing to be made, using or caus-
ing to be used, or vending to others to be used, or ad-
vertising for sale in any manner any structure or de-
vice containing or embodying the subject matter of, or
intended to be used in the combinations of the said
claims, or either of them, of said Letters Patent, or from
infringing upon or violating the said claims, or either
of them, of the said Letters Patent, by the manufacture,
use or sale of Said structure or devicein any way what-
SOGWGI’.
And it is further ordered, adjudged and decreed that
costs are not allowed to either party as against the
other.
By THE COURT.
UNITED STATES OF AMERICA, S. .
Western District of Pennsylvania,
I, H. D. GAMBLE, Clerk of the Circuit Court of the
United States of America for the Western District of
Pennsylvania in the Third Circuit, do hereby certify
the foregoing to be a true copy of the original final de-
cree entered in the foregoing-entitled case on file, and
now remaining among the records of the said Court in
my office. -
In testimony whereof I have hereunto sub-
scribed my name and affixed the seal
of the said Court at Pittsburgh in
said district this 6th day of June
|SEAL.] in the year of Our Lord one thousand
eight hundred and ninety-six and of
the Ind'ependence of the United
States the one hundred and twentieth.
H. D. GAMBLE,
Clerk U. S. Circuit Court.
41
UNITED STATES CIRCUIT COURT,
WESTERN DISTRICT OF PENNSYLVANIA.
-
THOMSON-HoustoN ELECTRIC
COMPANY
WS. .
LESTER R. FROST, EDWARD FROST and
G. ERNEST FROST, composing the
firm of J. O. Frost's Sons.
~
It is hereby stipulated and agreed by the above-named
defendants Lester R. Frost, Edward Frost and G.
Ernest Frost, composing the firm of J. O. Frost's Sons,
that, in consideration of the complainant's waiving an
accounting against these defendants as to the profits
made by them from the manufacture and sale of ap-
paratus in infringement of the 3d, 4th, 11th, 19th, 20th,
23d, 25th, 26th and 27th claims of Letters Patent No.
424,695 in suit, and the damages suffered by the com-
plainant on account of said infringement, they will, and
hereby do, consent to the entry of a final decree for a
permanent injunction against them on the said claims
of said letters patent, with costs, to the complainant,
and will immediately deliver to the complainant, or its
solicitors, all the infringing apparatus which they now
have on hand which has not been sold, and also all
price lists, circulars and catalogues containing adver-
tising matter relating to said infringing apparatus.
Dated June 25th, 1896.
EDWARD FROST.
G. ERNEST FROST.
LESTER R. FROST.
J. O. FROST's SONS.
42
At a Stated Term of the Circuit Court of
the United States for the Western
District of Pennsylvania, held at the
Court House in the City of Pitts-
burg on the 27th day of June, 1896.
Present—M. W. ACHESON, Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant,
WS. In Equity.
On Van Depoele
Patent No. 424,695.
LESTER R. FROST, EDWARD FROST and |
G. ERNEST FROST, composing the
firm of J. O. Frost's Sons,
Defendants. |
And now, June 27, 1896, this cause having come on
to be heard at this term of the Court, upon the plead-
ings and proceedings herein, it is, upon consideration
and upon motion of Messrs. Knox & Reed, solicitors
for complainant, the defendants submitting and con-
senting thereto,
Ordered, adjudged and decreed that Letters Patent
of the United States issued to Charles J. Van Depoele
dated April 1, 1890, No. 424,695, for Improvements in
Suspended Switches and Traveling Contacts for Elec-
tric Railways are good and valid in law, as to the 3d,
4th, 11th, 19th, 20th, 23d, 25th, 26th and 27th claims
thereof, which are as follows:
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch-
plate attached to the wire in about the same
horizontal plane as the wire.
43
“4. The combination of a track having
switches, an overhead conductor above the track
and having switches and a car on the track pro-
vided with a contact carrying arm arranged to
engage the conductor at a point in rear of the
front wheels of the car.
“11. The combination, with an overhead line-
wire of a grooved contact-device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-plate
connected to the wire against which the said
flanges bear in passing from one line to another.
“19. In an electric railway the combination
with branching overhead conductors of an up-
wardly pressed contact arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel flanges, and provided with
depending ribs between which the wheel is free
to move laterally to engage with one of the
branch conductors.
“20. In an electric railway the combination
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally there with, and a track-
switch for the vehicle located so as to operate
in advance of the conductor-switch.
“23. The combination with branching over-
head conductors of a vehicle having a later-
ally-swinging contact-arm pressed upward to
engage the conductors, and a switch-plate at
the branching point having depending sides, but
open at its extremities, the interior width of the
plate between the sides being greater than the
thickness of the contact-wheel, whereby the
wheel is free to move laterally with relation to
44
the main conductor and engage one of the
branching conductors.
“25. In a branching electric railway the com-
bination of a track-switch, an overhead-con-
ductor-switch and a vehicle having a rearwardly-
extending-contact arm, whereby the track-
switch will operate in advance of the conductor-
switch.
“26. In a branching electric railway the com-
bination with a vehicle, of a track-switch, an
overhead-conductor-switch and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length of
the vehicle and the two switches that the lateral
movement of the vehicle will give a correspond-
ing movement of the contact device on the
conductor switch.
“27. In a branching electric railway the com-
bination with a vehicle, of a track-switch, a con-
tact device, consisting of a trailing spring-pressed
armhaving a grooved contact-piece embracing
the conductor and guided thereby, and said arm
being jointed to the car and tending to move
laterally there with, and an overhead conductor-
switch adapted to engage the contact-piece, and
whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and original inventor or discoverer of the inventions
described and claimed in the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Letters
Patent No. 424,695, and that the Thomson-Houston
Electric Company, a corporation organized and exist-
ing under the laws of the State of Connecticut, the
complainant herein, is the lawful and exclusive owner
of said Letters Patent No. 424,695. -
And that the defendants Lester T. Frost, Edward
Frost and G. Ernest Frost and the firm of J. O. Frost's
45
Sons have infringed upon the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Tuetters
Patent No. 424,695, and upon the exclusive rights of
the complainant under the same.
And it is further ordered, adjudged and decreed that
the complainant waiving an accounting" against these
defendants as to their profits and damages (but ex-
pressly reserving all of the complainant's rights to
proceed against any users of the apparatus manu-
factured by the said defendants) a perpetual injunction
issue out of and under the seal of this Court strictly
enjoining and restraining the defendants Lester R.
Frost, Edward Frost, G. Ernest Frost and the firm of
J. O. Frost's Sons, and each and all of them, their
and each of their associates, attorneys, solicitors,
agents, servants, clerks, employees and workmen,
and each and every person connected, directly or
indirectly, with them, or either or any of them, from,
directly or indirectly, constructing, making, advertising
for sale, erecting, using or selling, or causing to be
constructed, erected, used or sold, or advertised for
sale, or vending to others to be used, any structure,
device or apparatus containing or embodying the Sub-
ject matter of, or intended to be used in, the combina-
tions of the said claims, or either or any of them, of
said Letters Patent No. 424,695, or from infringing
upon or violating the said claims, or either or any of
them, by the manufacture, use or sale of said structure,
device or apparatus in any way whatsoever.
And it is further ordered, adjudged and decreed that
the complainant recover of the defendants the costs of
this action to be taxed. --
BY THE COURT.
46
We approve the foregoing decree as to form, and
consent to the entry thereof. -
RNOx & REED.
BETTS, HYDE & BETTs.
Counsel for Complainant.
Defendants.
Dated June , 1896.
EDWVRD FROST,
G. ERNEST FROST,
LESTER FROST,
J. O. Frost's Sons.
—UNITED STATES OF AMERICA, , .
Western District of Pennsylvania, §
I, H. D. GAMBLE, Clerk of the Circuit Court of the
United States for said district, do hereby certify that
the writing hereto annexed is a transcript of the
original thereof on file and remaining of record in my
office, in the cause therein mentioned.
Witness my hand and the seal of said
Court, at Pittsburgh, in said district,
[SEAL.] this twenty-seventh day of June,
A. D. 1896.
H. D. GAMBLE,
Clerk.
47
At a Stated Term of the Circuit Court of
the United States for the Southern
District of Ohio, Western Division,
held at the Court House in Cincin-
nati, Ohio, on the 29th day of June,
A. D. 1896.
Present—HoN. W.M. H. TAFT, Circuit Judge.
THOMSON-HOUSTON ELECTRIC |
COMPANY., -
Complainant,
WS. No. 4918.
In Equity.
CHARLES ANDREW, FRANK ANDREW roº Nº.
and WILLIAM ANDREW, partners, 999.
doing business in Ohio as The
Electric Railway Equipment Com-
pany,
Defendants.
Decree.
This cause having come on to be heard at this term
of this Court, upon the pleadings and proceedings
herein, it is now, upon consideration, and upon motion
of Joseph Wilby, Esq., solicitor for complainant, the
defendants appearing personally and submitting and
consenting thereto,
Ordered, adjudged and decreed that Letters Patent
of the United States, issued to Charles J. Van Depoele,
dated April 1st, 1890, and numbered 424,695, for Im-
48
provements in Suspended Switches and Traveling Con-
tacts for Electric Railways, are good and valid in law,
as to the 3d, 4th, 11th 19th, 20th, 23d, 25th, 26th and
27th claims thereof, which are as follows:
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch
plate attached to the wire in and about the same
horizontal plane as the wire. .
“4. The combination of a track having
switches, an overhead conductor above the track
and having switches, and a car on the track
provided with a contact-carrying arm arranged
to engage the conductor at a point in rear of the
front wheels of the car.
“11. The combination, with an overhead line-
wire, of a grooved contact-device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-plate
connected to the wire against which the said
flanges bear in passing from one line to another.
“ 19. In an electric railway, the counbination,
with branching overhead conductors, of an up-
wardly-pressing contact arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel flanges, and provided with
depending ribs, between which the wheel is free
to move laterally to engage with one of the
branch conductors.
“20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally therewith, and a track-
switch for the vehicle located so as to operate
in advance of the conductor-switch.
49
“ 23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but open at its
extremities, the interior width of the plate be-
tween the sides being greater than the thickness
of the contact-wheel, whereby the wheel is free
to move laterally with relation to the main con-
ductor and engage one of the branching con-
ductors.
“25. In a branching electric railway, the com-
bination of a track-switch, an overhead con-
ductor-switch, and a vehicle having a rear-
wardly-extending contact-arm, whereby the
track-switch will operate in advance of the
conductor-switch. g"
“26. In a branching electric railway, the
combination with a vehicle of a track-switch, an
overhead conductor-switch and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length
of the vehicle and the two switches that the
lateral movement of the vehicle will give a corre-
sponding movement of the contact-device on
the conductor-switch.
“27. In a branching electric railway, the
combination with a vehicle of a track-switch, a
contact device consisting of a trailing spring-
pressed arm having a grooved contact-piece
embracing the conductor and guided thereby,
and said arm being jointed to the car and tend-
ing to move laterally there with, and an over-
head conductor-switch adapted to engage the
contact-piece and thereby the extremity of the
arm is flexibly guided from main to branch
conductor.”
50
That the said Charles J. Van Depoele was the first
and original inventor or discoverer of the inventions de-
scribed and claimed in the said 3d, 4th, 11th, 19th, 20th,
23d, 25th, 26th and 27th claims of said Letters Patent
No. 424,695, and that the Thomson-Houston Electric
Company, a corporation organized and existing under
the laws of the State of Connecticut, the complainant
herein, is the lawful and exclusive owner of said
Letters Patent No. 424,695.
And that the defendants Charles Andrew, Frank
Andrew and William Andrew have unwittingly in-
fringed upon the said 3d, 4th, 11th, 19th, 20th, 23d,
25th, 26th and 27th claims of said Letters Patent No.
424,695, and upon the exclusive rights of the com-
plainant under the same. o
And it is further ordered, adjudged and decreed that,
the complainant waiving an accounting against these
defendants as to their profits and as to damages, and
also waiving costs (but expressly reserving all of the
complainant's rights to proceed against any users of
the apparatus manufactured by the said defendants), a
perpetual injunction issue out of and under the seal of
this Court, strictly enjoining and restraining the de-
fendants Charles Andrew, Frank Andrew and William
Andrew, their associates, attorneys, solicitors, agents,
clerks, servants and workmen, and each and every per-
son connected directly or indirectly with them, from
directly or indirectly constructing, making, erecting,
using or selling, or causing to be constructed, made,
erected, used or sold, or vending to others to be used
or sold, any structure, device or apparatus containing
or embodying the subject-matter of, or intended to be
used in the combinations of, the said claims, or either
or any of them, of said I letters Patent No. 424,695
(excepting structures, devices or apparatus made by
the complainant the Thomson-Houston Electric Com-
pany, or its licensees), or from infringing upon or
violating the said claims, or either or any of them, by
51
the manufacture, use, or sale of said structure, device
or apparatus, in any way whatsoever.
We consent to the entry of the above decree. All
costs to be paid by complainant.
Dated June 29th, 1896.
L. M. Hosſ.A,
For Defendants.
June 29th, 1896.
Enter.
WM. H. TAFT,
Judge.
Copied from the journal of said Court.
Attest : -
D. R. COWEN,
[SEAL.] Clerk,
By ROBT. C. GEORGI,
Deputy.
At a Stated Term of the Circuit Court of
the United States for the Southern
District of Ohio, Western Division,
held at the Court House in Cincin-
nati, Ohio, on the 29th day of June,
A. D. 1896.
Present—HoN. W.M. H. TAFT, Circuit Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant, In Equity.
No. 4917.
WS On Van Depoele
e Patent No. 424,-
695.
THE POST GLOWER ELECTRIC CoMPANY.,
Defendant. |
Decree.
This cause having come on to be heard at this term
of this Court upon the pleadings and proceedings
herein, it is now, upon consideration and upon motion
of Joseph Wilby, Esq., solicitor for complainant, the
defendant appearing personally and submitting and
consenting thereto,
Ordered, adjudged and decreed that Letters Patent
of the United States, issued to Charles J. Van Depoele,
dated April 1st, 1890, and numbered 424,695, for Im-
provements in Suspended Switches and Traveling Con-
tacts for Electric Railways, are good and valid in law
53
as to the 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th and
27th claims thereof, which are as follows :
“3. The combination with an overhead wire
for receiving an underneath contact of a switch-
plate attached to the wire in and about the same
horizontal plane as the wire.
“4. The combination of a track having switches,
an overhead conductor above the track and hav-
ing switches, and a car on the track provided
with a contact-carrying arm arranged to engage
the conductor at a point in rear of the front
wheels of the car.
“11. The combination, with an oveahead line-
wire, of a grooved contact-device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-plate
connected to the wire against which the said
flanges bear in passing from one line to another:
“19. In an electric railway, the combination,
with branching overhead conductors of an up-
wardly-pressed contact arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel flanges, and provided with
depending ribs between which the wheel is free
to move laterally to engage with one of the
branch conductors. -
“20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally therewith, and a track-
switch for the vehicle located so as to operate in
advance of the conductor-switch.
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
54
swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but open at
its extremities, the interior width of the plate
between the sides being greater than the thick-
ness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the
main conductor and engage one of the branching
conductors.
“25. In a branching electric railway, the com-
bination of a track-switch, an overhead conductor-
switch and a vehicle having a rearwardly-
extending contact-arm, whereby the track-switch
will operate in advance of the conductor-switch.
“26. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, an
overhead conductor-switch and a contact-arm
extending upward from the vehicle to the con-
ductor and so located relatively to the length of
the vehicle and the two switches that the lateral
movement of the vehicle will give a correspond-
ing movement of the contact-device on the con-
ductor-switch.
“27. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, a
contact device consisting of a trailing spring
-pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, and
said arm being jointed to the car and tending to
move laterally there with, and an overhead con-
ductor-switch adapted to engage the contact-
piece, and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and Original inventor or discoverer of the inventions
described and claimed in the said 3d, 4th, 11th,
19th, 20th, 23d, 25th, 26th and 27th claims of said Let-
55
ters Patent No. 424,695, and that the Thomson-
Houston Electric Company, a corporation organized
and existing under the laws of the State of Connecti-
cut, the complainant herein, is the lawful and exclusive
owner of said Letters Patent No. 424,695.
And that the defendant. The Post Glover Electric
Company has infringed upon the said 3d, 4th, 11th,
19th, 20th, 23d, 25th, 26th and 27th claims of said
Letters Patent No. 424,695, and upon the exclusive
rights of the complainant under the same.
And it is further ordered, adjudged and decreed,
that, the complainant waiving an accounting against
this defendant as to its profits and as to damages, and
also waiving costs (but expressly reserving all of the
complainant's rights to proceed against any users of
the apparatus manufactured by the said defendant), a
perpetual injunction issue out of and under the seal of
this Court, strictly enjoining and restraining the de-
fendant The Post Glover Electric Company, and its
officers, associates, attorneys, solicitors, agents, clerks,
servants and workmen, and each and every person con-
nected directly or indirectly with it, from directly or
indirectly constructing, making, advertising for sale,
erecting, using or selling, or causing to be constructed,
made, advertised for sale, erected, used or sold, or
vending to others to be used or sold, any structure,
device or apparatus containing or embodying the Sub-
ject matter of, or intended to be used in, the combina-
tions of the said claims, or either or any of them, of
said Letters Patent No. 424,695 (excepting structures,
devices or apparatus made by the complainant the
Thomson-Houston Electric Company, or its licensees)
or from infringing upon or violating the said claims,
or either or any of them, by the manufacture, use or
sale of said structure, device or apparatus in any way
whatsoever.
56
We consent to the entry of the above decree.
THE POST-GLOVER ELECTRIC CO.
BY OLIVER KINSEY,
President.
Dated June 29th, 1896.
7 Enter the above.
June 29, 1896.
WM. H. TAFT,
C. J.
Copied from the journal of said Court.
Attest : -
B. R. COWEN, Clerk.
By ROBT. C. GEORGI, Dep.
57
UNITED STATES CIRCUIT COURT,
SOUTHERN DISTRICT OF NEW YORK.
h
THOMSON-Houston ELECTRIC COMPANY.,
Complainant,
WS.
THE H. W. JoHNS MANUFACTURING
CoMPANY and H. W. Johns, R. H.
MARTIN and CHARLEs H. PATRICK,
individually and as officers of said
H. W. Johns Company.
LACOMBE, CIRCUIT JUDGE :
The complainant may take injunction restraining the
making or sale of any trolley-frog or switch devised or
intended to be used in infringement of such claims of
the patent sued upon as were sustained by the Court
of Appeals. It is not intended, however, to enjoin
against the sale of trolley-frogs or switches by way of
replacement of broken frogs or switches, or such as are
worn out by use, or of substitution for trolley-frogs or
switches previously sold by the owner of the patent to
purchasers from it. Defendants, however, must deter-
mine at their peril whether the purchaser buys to use
for infringement, or only for legitimate repair ; but
this permission to repair does not give authority to re-
construct or rebuild a combination which has been sold
by the owner of the patent. Injunction may run against
the officers as well as the corporation defendant. Tos-
sibly, under the stimulus of an apprehended prosecu-
tion for contempt, they may familiarize themselves with
the kind of goods their company is publicly advertising
for Sale, and thus infringement may be more satis-
factorily checked that it would otherwise be.
June 8, 1896.
At a Session of the Circuit Court of the
United States, held in and for the
Second Circuit and Southern District
of New York, in the United States
Court Rooms, in the Post-office Build-
ing, in the City of New York, on the
16th day of July, 1896.
Present–HON. E. HENRY TACOMBE, U. S. Circuit
Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY
WS
H. W. JoHNS MANUFACTURING -
PANY, H. W. JoHNs, R. H. MARTIN
and CHARLEs H. PATRICK, indi-
vidually and as officers of the H.
W. Johns Manufacturing Company.
-
A motion for a preliminary injunction in the above-
entitled cause having come on to be heard upon the
bill of complaint herein and upon the affidavits of
Frankland Jamnus, verified the 17th day of February,
1896; James J. Cosgrove, verified the 15th day of
February, 1896; Edwin W. Hammer, verified the 15th
day of February, 1896; Edward M. Bentley, verified
the 8th day of April, 1896; and upon the exhibits and
papers therein referred to, and upon the decision and
decree of the United States Circuit Court of Appeals
for the Second Circuit in the suit of Thomson-Houston
69
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60
use for infringement or only for legitimate repair, and
this permission to repair does not give authority to re-
construct or rebuild a combination which has been
sold by the owner of the patent.
July 16, 1896.
(Signed) E. HENRY LACOMBE,
U. S. Circuit Judge.
(E. C. M. A. Copy.)
[SEAL.] JoHN A. SHIELDS, -
Clerk.
61
IN THE CIRCUIT COURT OF THE UNITED
STATES
FOR THE NORTHERN DISTRICT OF OHIO—EASTERN
- DIVISION.
THOMSON-HOUSTON ELECTRIC Co.
On Patent No. 424,-
WS. 695 and on Pat-
ent No. 495,443.
OHIO BRASS COMPANY ET AL.
Opinion of the Court.
RICKS, J. :
These two cases are before the Court upon a motion
for a preliminary injunction. *
Case No. 5511 involves a motion for preliminary in-
junction to restrain the infringement of the Van De-
poele Patent No. 495,443, dated April 11th, 1893, ap-
plication for which was filed in the Patent Office on
March 12th, 1887.
Case No. 5510 involves a similar motion for prelimi-
nary injunction on Patent No. 424,695, dated April 1st,
1890, application for which was originally filed on
March 12th, 1887, being a part of application for Pat-
ent No. 495,443, but was divided in the application
upon which the patent finally issued, which was filed
October 27th, 1888.
Both of these patents have been previously adjudi-
cated to be valid. Patent No. 495,443 has
been adjudicated valid in the case of Thom-
62
son-Houston Electric Company vs. Winchester Ave.
Railroad Company et al. (71 Fed. Rep., 192), and Patent
No. 424,695 has been adjudicated valid in the case of
Thomson-Houston Electric Company vs. Elmira and
Borseheads Railroad Company, 69 Fed. Rep., 257, and,
on appeal in same case, 71 Fed. Rep., 396.
The claims of Patent No. 495,443 which are alleged
to be infringed by the defendants herein are claims
numbered 6, 7, 8, 12 and 16, all of which were sus-
tained by Judge TOWNSEND in the case above referred
to, in 71 Fed. Rep., 192. The defendants were duly
served with notice of these decisions, and with requests
to desist from further advertising the infringing de-
vices and further offering them for sale. Complainant
has filed an affidavit of Mr. Coffin showing that they
are fully equipped and ready to supply all demands
from the electric railways for all necessary parts.
The defenses to these motions are based upon two
propositions : First, that the defendants have not in.
fringed, because they have only sold certain parts of
the patented combinations claimed ; second, that the
patents are void, because the inventions claimed in the
claims in suit have been previously described in prior
patents to the same inventor. The complainants con-
tend that it is no defense for a party sued for infringe-
ment of patented combination that the infringer has
only made and sold a part of said combination, if the
proof shows that he made and sold those parts for the
purpose and with the intention that the purchaser
should utilize it by supplying the other parts. This
proposition is well sustained by Judge TOWNSEND in
the case of the Thomson-Houston Electric Company
vs. Kelsey Electric Railway Specialty Company, a copy
of which opinion is filed and annexed to the affidavit of
one of the witnesses in this case.
The Patent No. 424,695, in its third, eleventh and
nineteenth claims, covers a combination of overhead
suspended wire conductor, the switch plate having de-
63
pending flanges in an upwardly pressing contact de-
vice, which is claimed as an invention. This contact
device is named in the 11th and 19th claims as a
grooved wheel, carried on the end of an upwardly
pressed arm. The trolley arm and groove passes under
the frog, where the electrical contact is with the tips of
the roller instead of by wire to the bottom of the
groove. The defendants make this switch device, ad-
vertise it for sale in their catalogue and offer it as an
independent device ; but, as constructed and sold, it is,
in and of itself, of no use, and can only become valu-
able and useful when attached to the other combina-
tions of the trolley system. e
This is a clear case of contributory infringement. If
the device could be used for any other purpose, inde-
pendent of the combination referred to, the defendants
would not be interfered with in the manufacture and
sale of the same. But, inasmuch as it is valuable only
in connection with the other combinations of the pat-
ent, it would defeat the spirit and purpose of the pat-
ent laws if the defendants were allowed to manufacture
and sell it unrestrained and unconditionally.
But it is claimed that there is no proof of infringe-
ment ; that a single Sale of this device was made to
one of complainant's agents, and that the defendant
did not know for what purpose it was to be
used. But this is a mere evasion. The defend-
ants advertise this device in their catalogue by a
cut, and offer it for sale, and it is idle for them now to
say that they only made this single sale and are there-
fore not infringers. They would not advertise it
at a great expense ; they would not manufacture it at
an expense, and offer it for sale through agents at an
expense, without intending to reap some profit from it
or promote their business interests in some way by it.
Both these patents have been fully considered by
the Circuit Courts of the United States in the Eastel in
Districts, and, after full and fair hearing, have been
64
adjudged to be valid. So far as I can discover from
the defendants’ briefs, every point now urged against
these patents was considered in the other cases. It is
urged, however, that, under the decisions of the Cir-
cuit Courts referred to, it became necessary for the
complainant to make disclaimer as to certain claims,
and that these disclaimers have been so broad as to
give the public the right to use the inventions therein
referred to. But even this contention has been before
heard and disposed of. It will not, therefore, be profit-
able or useful for this Court to review these decisions
and consider these objections at length. I think the
universal practice and custom is, when cases have thus
been once fully heard and considered, to accept the
decisions of the lower Courts until passed upon by the
highest Courts. In one of these cases, at least, the
Circuit Court of Appeals for the New York Circuit has
affirmed the decision of the Court below, and this de-
cision may therefore be accepted as final.
I think the proof of infringement is sufficient. Judge
LACOMBE, upon similar proof, allowed an injunction on
the same patents in New York, and I think the com-
plainant is entitled to the relief prayed for in these
cases. An injunction will be allowed restraining the
defendants from manufacturing the switch plate cow-
ered by the Patent No. 424,695 as described in claims
3, 11 and 19; and defendants will be further restrained
from mauufacturing the device covered by Patent No.
495,443 in claims 6, 7, 8, 12 and 16.
Tf, as contended by defendants' counsel, the defend-
ants are not manufacturing or selling these devices, no
harm cau result from the allowance of an injunction
and restraining Order. If, on the contrary, they are
making any characteristic parts of the combination
covered by the several claims hereinbefore stated, and
selling them or disposing of them in such manner as
to make it difficult for the complainant to prove in-
fringement, they ought not to be encouraged in any
65
such trick or device. If, as contended, the infringe-
ments are so few and so trifling that they cannot be
proven, no harm can result to the defendants. If, on
the other hand, the infringements are cunningly hidden
from observation, and difficult to prove, the complain-
ant ought not to suffer by it. This patent having been
established at great expense and after long litigation,
the complainant is entitled to the full benefit conferred
upon it as the owner of a valid patent under the patent
laws, and should have the full protection of the Court.
A decree may be prepared accordingly.
[6102)
424,695. 495,443.
No. 6. No. 7.
Underrunning Trolley Case.
(Van Depoele Patent No. 495,443.)
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Judge Colt's opinion in the cases of Thomson-
Houston Electric Company, Complainant, vs. Albert
Anderson et al., Defendants, Nos. 7 Io and 7 II,
filed in the U. S. Circuit Court, District -
of Massachusetts, October 14, 1896.
C. G. Burgoyne, Walker and Centre Streets, New York.—1896.
s$R
(ſtreatit (ſourt of the Kūmited $fates,
DISTRICT OF MASSACHUSETTS.
IN EQUITY.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant,
W. NO. 710.
ALBERT ANDERSON ET AL.,
Defendants.
\
THOMSON-HOUSTON
ELECTRIC
COMPANY.,
Complainant,
W. No. 711.
ALBERT ANDERSON ET AL.,
Defendants.
RESCRIPT.
- October 14, 1896.
COLT, J. :
I have carefully examined the affidavits and briefs
of counsel in the above cases, and I am
satisfied
that, under the general rule (subject only to the excep-
tion which may arise under the circumstances of a par-
2
ticular case) which prevails in this circuit respecting
the granting of a preliminary injunction where the
validity of a patent has been sustained after vigorous
contest, the complainant is entitled to a preliminary
injunction in each case, and it is so Ordered.
This order is made without prejudice to the right of
the defehdants to move for a modification thereof in
accordance with the opinion and order of the majority
of the Court in the case of Thomson-Houston Electric
Co. vs. The Kelsey Electric Railway Specialty Com-
pany et al., recently decided by the Circuit Court of
Appeals for the Second Circuit.
[6501]
223
GENERM IIBRARY, 424,695.
, T-7
Tg.
sº V of: CH.
22 O(,T 1906 No. 7.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Injunction in the case of Thomson-
Houston Electric Company, Complainant, VS.
Albert Anderson et al., Defendants,
issued October 15, 1896.
C. G. Burgoyne, Walker and Centre Streets, New York.—1896.
UNITED STATES OF AMERICA.
MASSACHUSETTS DISTRICT, SS :
|L. S.] THE PRESIDENT OF THE UNITED STATES OF
AMERICA, To Albert Anderson and John M.
Anderson, citizens of the State of Massachusetts,
and residents of, doing business in the City of
Boston, State of Massachusetts, under the firm
name and style of Albert & J. M. Anderson, your
Agents and Servants, GREETING :
WHEREAS, Thomson-Houston Electric Company, a
corporation duly organized and existing under and by
virtue of the laws of the State of Connecticut, and
having its principal place of business in the City of
Boston, County of Suffolk, and State of Massachusetts,
has exhibited its bill of Complaint before the Justices
of Our Circuit Court of the United States for the First
Circuit, begun and holden at Boston, within and for the
District of Massachusetts, on the fifteenth day of May,
A. D. 1896, against you the said Albert and John M.
Anderson, praying to be relieved touching the matters
therein complained of, and whereas, by an Order of
said Court made on the 14th day of October, A. D.
1896, it was ordered that a Writ of Injunction issue under
the Seal of the said Court, to restrain you and each
and every of you, from doing all the matters and things
from the doing of which you are prayed to be restrained
in said Bill, according in full with the prayer of said
Pill. -
We, therefore, in consideration thereof, Enjoin and
Command you each, and every of you that from and
immediately after the receipt and notice of this our
2
Writ by you, or any of you, you shall not make, use or
sell, or cause to be erected, made, used or sold, any
electric railways containing or embodying the invention
covered by Letters Patent of the United States No.
424,695, dated April 1, 1890, to Charles J. Van Depoele
for new and useful improvements in suspended switches
and travelling contacts for electric railways, until the
further order of the court.
[SEAL.]
Whereof you are not to fail on pain of ten thousand
dollars, to be levied on your and each of your goods,
chattels, lands and tenements, to our use.
Witness, the Honorable MELVILLE W. FULLER, Chief-
Justice of the United States, at Boston, this fifteenth
day of October, in the year of our Lord one thousand
eight hundred and ninety-six.
BENJ. H. BRADLEE,
Deputy Clerk.
A True Copy.
Attest :
[SEAL.] (Sgd. BENJ. H. BRADLEE,
Deputy Clerk.
[6546]
7~
2.25 424,695. 495,443.
.7 ? No. 1 O. No. 19.
7-5.
Underrunning Trolley Case.
(Van Depoele Patent No. 495,443.)
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Opinion of Judge Ricks, denying motion to
suspend injunctions in cases of Thomson-Houston
Electric Company, Complainant, vs. Ohio Brass
Company et al., Nos. 55 IO and 55 I I, filed in
U. S. Circuit Court, Northern District
of Ohio, Eastern Division,
October 26, 1896.
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
In the Ciròlliſ COllrt Of the Ullitºl StâtéS
FOR THE NORTHERN DISTRICT OF OHIO,
EASTERN DIVISION.
THOMSON-HOUSTON ELECTRIC Co.
No. 5510). Roni,
WS. Z No. 55115 Equity -
OHIO BRASS Co. ET AL.
OPINION OF THE COURT.
RICKS, J. :
In these two cases the complainant's solicitors were
served with notice by solicitors for the defendants that
on the first day of October, 1896, at ten o'clock A. M.,
they would apply to the Court for an order supersed-
ing the injunction allowed in the opinion rendered in
these cases, and for the allowance of an appeal. Solic-
itors for the defendants appeared at the time stated.
Counsel for the complainants, through a clerk of their
office, had before that time appeared and asked for in-
formation with reference to a hearing, which the Court
supposed referred to the case of the Continental Trust
Co. vs. Toledo, St. Louis and Kansas City Railroad
Company. Acting upon this supposition, the Court ad-
vised the representative of complainant's solicitors that
the case would be heard at eleven o’clock that morning.
In the meantime, solicitors for the defendant appeared,
and, no one appearing for the complainants, the Orders
as prepared by counsel for the defendants were signed
ea, parte. An hour afterwards, when complainant's so-
licitors appeared for the hearing of the motion, the
Court for the first time discovered that a misunder-
standing had existed, and that the inquiry to which
2
reference is made in this opinion really referred to the
hearing in these cases. In the meantime, defendants'
solicitors had left the city. Thereupon the Court di-
rected that the orders be not entered upon the journal,
and counsel for the defendants were thereupon notified
of the mistake. Correspondence has followed, the pur-
port of which has been to ask the Court to supersede
the injunction pending the appeal, with an intimation
that the opinion in the cases relied upon in the opinion
cited by the Court were afterwards modified in the case
of Thomson-Houston Electric Company vs. Kelsey
Electric Railway Specialty Company, in the United
States Circuit Court of Appeals for the Second Circuit.
The Court is perfectly willing to allow this order to be
modified in the same way in which the Court of Appeals
modified the order in the Kelsey case ; but, inasmuch
as in all the cases in the First, Second and Third Cir-
cuits the supersedeas has been refused, and inasmuch
as this Court has followed the decisions of these Courts
upon the merits, I see no reason now why the Super-
sedeas should be allowed. -
It is claimed by the solicitor for the defendants that
as soon as the ea parte Orders were approved by me on
the first of October the defendants were notified that
the supersedeas had been allowed, and that thereupon
they made some contracts in perfect good faith before
any notice was received that the orders were held for
further consideration. If the defendants can show by
affidavit that, acting in perfect good faith, they made
bona fide contracts, and that these were made before
they had notice that the orders were held, the Court
will grant them proper relief in some form upon proper
presentation of the facts.
The order allowing the appeal may be entered, but
the injunction will not be superseded pending that
appeal.
October 26, 1896.
[7369]
, 7-? 424.69s.
223
7- 5 5 tº
No. 11.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Final Decree in case of Thomson-Houston
Electric Company, Complainant, vs. Horsburgh &
Scott, Defendants, filed in U. S. Circuit Court,
Northern District of Ohio, Eastern
Division, January 21, 1897.
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
THE UNITED STATES OF AMERICA, )
tº 8 tº tº e tº gº SS. .
Northern District of Ohio–Eastern Division, Ş
At a stated term of the Circuit Court of the United
States, within and for the Eastern Division of the
Northern District of Ohio, begun and held at the City
of Cleveland, in said district, on the first Tuesday in
October, being the 6th day of said month, in the year
of our Lord one thousand eight hundred and ninety-
six, and of the Independence of the United States of
America the one hundred and twenty-first, to wit, on
Thursday, the 21st day of January, A. D. 1897.
Present—The HONORABLE HENRY F. SEVERENS,
United States District Judge.
Among the proceedings then and there had were the
following, to wit:
THOMSON-HOUSTON ELECTRIC
COMPANY
WS. No. 5516.
/ Chancery.
FRANK HORSBURGH and THOMAS -
SCOTT, composing the firm of
Horsburgh & Scott.
This cause having come on to be heard at this term
of the Court now, upon reading and filing the annexed
waiver, whereby it appears that an accounting of the
profits and damages is waived by the complainant,
after due proceedings had, and upon due consideration,
it is
2
ORDERED, ADJUDGED AND DECREED that Letters Patent
of the United States, issued to Charles J. Van
Depoele, dated April 1, 1890, numbered 424,695, for
improvements in suspended switches and traveling
contacts for electric railways, are good and valid in
law, as to the 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th
and 27th claims thereof, which are as follows:
“3. The combination with an overhead wire for
receiving an underneath contact, of a switch plate
attached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm, arranged to engage the conductor at
a point in rear of the front wheels of the car.
“11. The combination with an overhead line wire
of a grooved contact device pressed against the wire
and receiving the wire between the flange of the groove,
and a guiding switch plate connected to the wire,
against which the said flanges bear in passing from One
line to another.
“19. In an electric railway the combination with
branching overhead conductors of an upwardly-pressed
contact arm carrying a grooved wheel embracing the
conductor, and a switch plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the
wheel is free to move laterally to engage with one of
the branch conductors.
“20. In an electric railway the combination with an
overhead switch plate having depending ribs, but open
at its extremities of main and branch conductors ex-
tending from its two extremities—respectively a vehicle
—an upwardly-pressed contact arm attached to the
vehicle and tending to move laterally therewith, and a
track switch for the vehicle, located so as to operate in
advance of the conductor switch.
3
“23. The combination with branching overhead
conductors of a vehicle having a laterally-swinging
contact arm pressed upward to engage the conductors,
and a switch plate at , the branching point having
depending sides, but Open at its extremities; the
interior width of the plate between the sides being
greater than the thickness of the contact wheel, where-
by the wheel is free to move laterally with relation to
the main conductor and engage one of the branching
conductors.
“25. In a branching electric railway the combina-
tion of a track switch, an overhead conductor switch
and a vehicle having a rearwardly-extending contact
arm, whereby the track switch will operate in advance
of the conductor switch.
“26. In a branching electric railway the combina-
tion with a vehicle of a track switch, an overhead
conductor switch and a contact arm extending upward
from the vehicle to the conductor, and so located
relatively to the length of the vehicle and the two
switches that the lateral movement of the vehicle will
give a corresponding movement of the contact device
on the conductor switch.
“27. In a branching electric railway the combina-
tion with a vehicle of a track switch, a contact device
consisting of a trailing spring-pressed alm having a
grooved coutact piece embracing the conductor and
guided thereby ; the said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor switch adapted to engage the contact
piece, and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and Original inventor or discoverer of the inventions
described in the said 3d, 4th, 11th, 19th, 20th, 23d,
25th, 26th and 27th claims of said Letters Patent No.
424,695; and that the Thomson-Houston Electric Com-
pany, a corporation organized and existing under the
4
laws of the State of Connecticut, the complainant
herein, is the lawful and exclusive owner of said
Letters Patent No. 424,695.
And that the defendants Frank Horsburgh and
Thomas Scott and the firm of Horsburgh & Scott have
infringed upon the said 3d, 4th, 11th, 19th, 20th, 23d,
25th, 26th and 27th claims of said Letters Patent No.
424,695, and upon the exclusive rights of the com-
plainant under the same.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the complaimant do recover of the defendants the
sum of seventy-seven and fºr dollars, the costs of this
suit, and have execution therefor.
[7442]
424,695.
No. 9.
Suspended Switch Case.
(Van Depoèle Patent No. 424,695.)
Full text of Order for Preliminary Injunction in
the case of Thomson-Houston Electric Company,
Complainant, vs. Rahway Electric Light
and Power Company, Defendant,
filed in U. S. Circuit Court,
District of New Jersey,
February 1, 1897.
gº- ** * -------- - - ----- - - - - - - - --- - - - - * ~ ---> *-*. -- --- - - --- - - - - - - - - - - - - - - - - - - - - ~ * - - - - - - -- ~~ * * * * ~ *-* -a ----- - - - - ---
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
At a Circuit Court of the United States
held in and for the District of New
Jersey at the Court House in the
City of Trenton on the 1st day of
February 1897.
Present : HoN. ANDREW KIRKPATRICK, Judge.
THOMSON-HousTON ELECTRIC CO.
WS. \
RAHWAY ELECTRIC LIGHT & POWER
COMPANY.
An order to show cause why an injunction should not
issue having been granted returnable this day, and the
same coming on to be heard on the Bill of Complaint
and on the affidavits of Frankland Jannus and exhibits
referred to therein ; James J. Cosgrove & exhibits re-
ferred therein ; Edwin W. Hammer & Exhibits, F. H.
Shepard and exhibits, Edward M. Bentley, Ralph H.
Beach, Frank A. Estep (& exhibits). Charles A. Coffin
and Charles A. Terry, and no papers being filed on be-
half of the defendants after hearing L. F. H. Betts,
Esq., on behalf of Complainant and Charles E. Mitchell,
Esq., opposed, and due consideration had it is ordered
that a preliminary injunction be and hereby is directed
to issue out of this Court enjoining & restraining this
defendant and its officers, attorneys, servants and
agents from directly or indirectly using, making, selling
or disposing of or acquiring in any way any apparatus
containing or embodying the subject matter of or in-
tended to be used in the combination of the 3d, 4th,
2
11th, 19th, 20th, 23d, 25th, 26th, or 27th claims of the
Van Depoele Patent No. 424,695 dated April 1st, 1890.
And it is further ordered that the operation of this
injunction be and hereby is suspended solely as to the
apparatus now in use by the defendant and furnished
to it by the H. W. Johns M'f'g. Co. and the Walker
Co. (or Walker M'fg. Co.) for the space of thirty days
from the entry of this order to permit the defendant in
the meantime to change from infringing to non-infring-
ing equipment. .
A copy of the claims aforesaid is hereto annexed.
ANDREW KIRRPATRICK,
Judge.
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car. . t
“11. The combination, with an overhead line-wire,
of a grooved contact-device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-press-
ure contact-arm carrying a grooved wheel embracing
the conductor, and a switch-plate at the branching
point adapted to receive the tips of the wheel flanges,
and provided with depending ribs, between which the
wheel is free to move laterally to engage with one of
the branch conductors.
“20. In an electric railway, the combination, with an
overhead switch-plate having depending ribs, but open
3
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly-pressed contact arm attached to the
vehicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor switch.
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging con-
tact-arm pressed upward to engage the conductors, and
a switch-plate at the branching point having depending
sides, but open at its extremities, the interior width
of the plate between the sides being greater than the
thickness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
“25. In an electric railway, the combination of a
track-switch, an overhead conductor-switch, and a
vehicle having a rearwardly-extending contact-arm,
whereby the track-switch will operate in advance of the
conductor switch.
“26. In a branching electric railway, the combina-
tion with a vehicle, of a track-switch, an overhead con-
ductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact-device on the
conductor-switch. *
“27. In a branching electric railway, the combina-
tion, with a vehicle of a track-switch, a contact device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being joined to the car
and tending to move laterally there with, and an over-
head conductor, switch adapted to engage the contact
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.
[7352]
ºr
*
A 23 *
7-? 495,443.
r No. 24.
Underrunning Trolley Case.
(Van Depoele Patent No. 49 543)
Full text of Preliminary Injunction in the case of
Thomson-Houston Electric Company, Complainant,
vs. Hoosick Railway Company, Defendant, in
U. S. Circuit Court, Northern District of
New York, issued February 20, 1897.
C. G. Burgoyre, Walker and Centre Streets, N. Y.- 1897.
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2
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
under side of the suspended conductor, and a tension
spring at or near the inner end of the arm for main-
taining said upward pressure contact, substantially as
described.
“12. In an electric railway, the combination with a
car, of a post extending upward therefrom and carry-
ing a suitable bearing, an arm or lever carrying at its
outer end a suitable contact roller and pivotally sup-
ported in said bearing, and provided at its inlier end
with tension spring for pressing the outer end of the
lever carrying the contact wheel upward against a suit-
able 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 top of the car
and provided at its Outer end with a grooved contact
wheel engaging the under side of the suspended con-
ductor, and a tension spring for maintaining an upward
pressure contact with the conductor, substantially as
described.”
Now therefore, we strictly command and enjoin you,
the said Hoosick Railway Company, and your officers,
associates, attorneys, solicitors, clerks, servants, agents
and workmen, and each of you, and each and every
person connected directly or indirectly with you, under
the penalties that may fall on you in case of disobedi-
ence, that you forthwith and until the further order of
this Court, desist from directly or indirectly making or
causing to be made, using or causing to be used or
erected, or vending to others to be used or erected in
any manner, any structure, device or apparatus con-
taining or embodying the subject-matter of the said
claims, Nos. 6, 7, 8, 12 and 16, or with the purpose that
3
the same shall be used in the combinations of the said
claims, or either or any of them of the said Letters
Patent, or from infringing upon or violating the said
claims of the said Letters Patent, by the manufacture,
use or sale of the said structure, device or apparatus,
in any way whatsoever.
Witness the HON. MELVILLE W. FULLER, Chief-Justice
of the Supreme Court of the United States, at the City
of Utica, on the 20th day of February, 1897.
BETTS, HYDE & BETTS,
Complaimant's Solicitors.
W. S. DOOLITTLE,
[L. S.] Clerk.
[7565]
424,695.
No. 12.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Preliminary Injunction in the case of
Thomson-Houston Electric Company, Complainant,
vs. Rahway Electric Light and Power Company,
Defendant, in United States Circuit Court,
District of New Jersey, issued
March 2, 1897.
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
THE PRESIDENT OF THE UNITED STATES
[L. S.] To RAHWAY ELECTRIC LIGHT AND POWER COMPANY.,
and all persons connected, directly or indirectly
with it, and its associates, attorneys, clerks,
agents, servants and workmen, GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Third Circuit
and District of New Jersey, that Letters Patent of the
United States were issued to Charles J. Van Depoele
on the first day of April, 1890, No. 424,695, for Im-
provements in Suspended Switches and Travelling
Contacts for Electric Railways, and that the said
Letters Patent are now owned by the Thomson-
Houston Electric Company, and that you, the said
Bahway Electric Light and Power Company have
infringed the 3d, 4th, 11th, 19th, 20th, 23d, 25th,
26th and 27th claims of said letters patent;
Now, THEREFORE, we strictly command and enjoin
you, the said Rahway Electric Light and Power Com-
pany, and all persons connected, directly or indirectly,
with you, and your associates, attorneys, solicitors,
clerks, agents, servants and workmen, under the penal-
ties that may fall on you in case of disobedience, that
you forthwith and until the further order of this Court,
desist from, directly or indirectly, making, or causing
to be made, using or causing to be used, vending to
others to be used, or disposing of or acquiring, in any
way, any apparatus containing or embodying the sub-
ject matter of, or intended to be used in the combina-
tions of the 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th
and 27th claims of said letters patent, or either of
them, which are as follows: -
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
2
tached to the wire in about the same horizontal plane
as the wire.
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.
“11. The combination, with an overhead line-wire,
of a grooved contact-device pressed against the wire
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-press-
ing contact arm carrying a grooved wheel embracing
the conductor, and a switch-plate at the branching
point adapted to receive the tips of the wheel flanges,
and provided with depending ribs, between which the
wheel is free to move laterally to engage with one of
the branch conductors.
“20. In an electric railway, the combination, with an
overhead switch-plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly pressed contact arm attached to the
vehicle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor switch.
“23. The combination, with branching overhead con-
conductors, of a vehicle having a laterally-swinging
contact arm pressed upward to engage the conductors,
and a switch-plate at the branching point having de-
pending sides, but open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main con-
ductor and engage one of the branching conductors.
3
“25. In an electric railway, the combination of a
track-switch, an overhead conductor-switch, and a
vehicle having a rearwardly-extending contact-arm,
whereby the track-switch will operate in advance of the
conductor-switch.
“26. In a branching electric railway, the combina-
tion with a vehicle, of a track-switch, an overhead con-
ductor-switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact-device on the
conductor-switch.
“27. In a branching electric railway, the combina-
tion with a vehicle of a track-switch, a contact-device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
or from infringing said claims in any way whatsoever.
Witness the Honorable MELVILLE W. FULLER, Chief
Justice of the United States, at the City of Trenton,
this 2d. day of March, 1897.
S. D. OLIPHANT,
Clerk.
[7787]
424,695.
No. 13.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Final Decree and Injunction in the case of
Thomson-Houston Electric Company, Complainant,
vs. Albert Anderson et al. , Defendants, in the
Circuit Court of the United States,
District of Massachusetts.
Final Decree dated April 8, 1897.
( (
Injunction “ “ 26, 1897. -
c. G. Burgoyne, Walker and centre Streets, N. Y.-1897.
Circuit COIt Of the United States
DISTRICT OF MASSACHUSETTS,
IN EQUITY.
THOMSON-HOUSTON ELECTRIC COMPANY
W. No. 7 10.
ALBERT ANDERSON ET AL.
Final Decree.
(Apr. 8, 1897.)
COLT, J.
This cause came on to be heard at the October Term,
1896, of said Court, upon the pleadings and on stipu-
lation of counsel for the respective parties filed herein ;
and now upon consideration thereof, to wit, April 8,
1897, it is
ORDERED, ADJUDGED AND DEGREED as follows:
That the Letters Patent referred to in the Com-
plainant's Bill, being Letters Patent of the United
States, No. 424,695, dated April 1, 1890, is a good and
valid patent; that the Complainant is the owner of the
entire right, title and interest in, to and under the
same ; that the said Charles J. Van Depoele was the
Original and first inventor of the improvements therein
described and claimed in claims numbered three, four,
eleven, nineteen, twenty, twenty-three, twenty-five,
twenty-six, twenty-seven, thirty-two and thirty-three ;
and that the said Defendants have infringed upon said
2
claims of said patents and on the exclusive rights of
the complainant under the same.
And it appearing that reference to a Master is
waived and that it is agreed that the recovery herein
shall be in the sum of one dollar, it is further ordered,
adjudged and decreed that the Complainant recover of
the Defendants the sum of One dollar as damages,
profits and, costs of suit.
And it is further ordered, adjudged and decreed that
a Perpetual Injunction be issued against the Defend-
ants according to the prayer of the Bill.
By the Court :
BENJ. H. BRADLEE,
Deputy Clerk.
A true copy :
Attest :
BENJ. H. BRADLEE,
Deputy Clerk.
Injunction.
UNITED STATES OF AMERICA. S
Massachusetts District, !
(L. s.) THE PRESIDENT OF THE UNITED
STATES OF AMERICA,
To ALBERT ANDERSON and JOHN M. ANDERSON, citizens
of the State of Massachusetts, and residents of
and doing business in the city of Boston, State
of Massachusetts, under the firm name and style
of Albert and J. M. Anderson, Your Agents and
Servants, GREETING :
WHEREAS Thomson-Houston Electric Company, a
corporation duly organized and existing under and by
3
virtue of the laws of the State of Connecticut, and hav-
ing its principal place of business in the city of Boston,
county of Suffolk, and State of Massachusetts, has ex-
hibited its Bill of Complaint before the Justices of our
Circuit Court of the United States for the First Circuit,
begun and holden at Boston, within and for the District
of Massachusetts, on the fifteenth day of May, A. D.
1896, against you the said Albert Anderson and John
M. Anderson praying to be relieved touching the mat-
ters therein complained of, and whereas, by an order
of said Court made on the eighth day of April A. D.
1897, it was ordered that a Writ of Injunction issue
under the Seal of the said Court, to restrain you and
each and every of you, from doing all the matters and
things from the doing of which you are prayed to be
restrained in said Bill, according in full with the prayer
of said Bill.
WE therefore, in consideration thereof, ENJOIN
AND COMMAND you each, and every of you that
from and immediately after the receipt and notice of
this our Writ by you, or any of you, you shall not
make, use or sell, or caused to be erected, made, used
or sold, any electric railways containing or embodying
the invention covered by the 3rd, 4th, 11th, 19th, 20th,
23rd, 25th, 26th, 27th, 32nd, and 33rd Claims of Let-
ters Patents of the United States No. 424,695, dated
April 1, 1890, to Charles J. Van Depoele for new and
useful improvements in suspended switches and travel-
ling contacts for electric railways. It is not intended
to enjoin the defendants against the sale of trolley
stands or trolley poles or trolley wheels or trolley
harps by way of replacing such individual parts in car
equipments embodying the patented combinations
which have been previsusly sold by the complainant to
purchasers, in cases where such parts have been broken,
worn out by use or are otherwise inefficient, but this
permission does not give authority to reconstruct or
rebuild a combination which has been sold by the com-
plainant.
4
WHEREOF you are not to fail on pain of ten thousand
dollars, to be levied on your and each of your goods,
chattels, lands and tenements, to our use.
ºf lithicsø the HoNORABLE MELVILLE
W. FULLER, Chief Justice of the
United States, at Boston, this twenty
|SEAL.] sixth day of April, in the year of our
Lord one thousand eight hundred and
ninety seven.
BENJ. H. BRADLEE,
Deputy Clerk.
A true copy :
Attest :
BENJ. H. BRADLEE
Deputy Clerk.
[8213]
Tss 424,695. 495,443.
*** N - No. 29.
r? - O. 14. O.
Tº
e’
Underrunning Trolley Case.
(Van Depoele Patent No. 495,443.)
Suspended Switch Case.
(Van Depoele Patent No. 424,695.) '
Full text of the Opinion of the United States Circuit
Court of Appeals, Sixth Circuit, in the cases of
the Thomson-Houston Electric Company,
Complainant, vs. The Ohio Brass
Company, Defendant, Nos. 479
and 480, filed May 17, 1897.
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
Nos. 479, 480.
UnitalSalesGirlit(MItofA)tāls
SIXTH CIRCUIT.
THE THOMSON-HOUSTON ELECTRIC CO. A
ppeals from the
\ Circuit Court of
WS. A the United States
for the Northern
- District Of Ohio.
THE OHIO BRASS COMPANY ET AL.
/
SUBMITTED FEB. 27, 1897.
DECIDED MAY 17, 1897.
Before TAFT and LURTON, Circuit Judges, and CLARK,
District Judge.
These are appeals in two patent cases between
the same parties that present questions of such a
similar character that they were argued together and
may be properly disposed of in one opinion. The ap-
peals are from Orders of preliminary injunction made
before a hearing upon the merits. The first case was
a suit by the Thomson-Houston Electric Company to
enjoin the alleged infringement by the Ohio Brass
Company of United States letters patent No. 424,695
for certain new and useful improvements in suspended
switches for electric railways, issued to Charles J. Van
Depoele April 1, 1890, and assigned by mesme assign-
ment to the complainant below. A preliminary injunc-
tion was issued against the making and selling by the
2
defendant below of overhead conductor switches for
electric railways for use in the combinations covered
by the 3d, 4th and 11th claims of the patent.
The second case was a suit by the same complainant
against the same defendant for an alleged infringe-
ment of United States letters patent No. 495,443,
issued to Charles J. Van Depoele for new and useful
improvements in suspended switches and traveling
contacts for electric railways and assigned by mesne
assignments to the complainant below. A preliminary
injunction before the hearing on the merits was
granted, enjoining the defendant from the manufacture
or sale of trolleys or trolley bases intended to be used
in the 6th, 7th, 8th, 12th or 16th claims of said patent.
It appeared in the first case that in a suit be-
fore Judge CoxE in the Northern District of New
York the validity of patent No. 424,695 was in issue
and the validity of the claims here involved were sus-
tained. 69 Fed. Rep., 257.
The cause was carried to the Circuit Court of Ap-
peals for the second circuit and the order of injunction
so far as the claims here involved were concerned was
affirmed, though the complainant was required to enter
a disclaimer as to certain other claims in the patent to
wit: The 2d, 9th and 10th, which disclaimer was duly
made and filed in the Patent Office. 71 Fed. Rep.,
396.
In the second case it appeared that the validity of
patent No. 495,443 had been at issue in a cause heard
upon its merits and passed to final decree before Judge
TOWNSEND in the District of Connecticut and that the
claims of the patent here involved were sustained.
There were two principal objections made in this
court to the injunctions below. The first was that
there was not any proof of actual infringement or of an
intention to infringe the combinations covered by the
claims set forth in the orders of injunction appealed
from.
3
The second objection was that the patents, Numbers
424,695 and 495,443, were both void, the latter because
the former a patent of earlier issue, was for the same
invention and the former, because patent No. 397,451
a still earlier patent issued to the same patentee cov-
ered and was also for the same invention.
Upon the first objection in the two cases, the evi-
dence was substantially the same. The claims in both
patents covered combinations of parts used in an elec-
tric street railway in which the track, the car, the over-
head conductor and switches and the trolley or contact
device formed elements. The charge of infringement
in the first case involving patent No. 424,695 was based
on an admitted sale by defendant of an overhead
switch, and the charge as to infringement of No. 495,-
443 was based on an admitted sale of a trolley pole
and contact wheel. The sales were made at the same
time to an agent of the complainant. The agent of de-
fendant who sold says that he suspected that the pur-
chaser was an agent of complainant. The memoran-
dum of sale of these articles and receipt for the price
signed by defendant were as follows:
MANSFIELD, OHIO, Feb. 4, 1896.
The Ohio Brass Co.
Sold to Edwin W. Hammer, Newark, N. J.
1 Str. Underrunning adj. switch, No. 1145- - - - - $2 25
1-12 inch Pole Ohio Trolley Buck. Harp T. H.
Wheel ---------------------------------- 15 50
Paid. -
Feb. 4, 1896. THE OHIO BRASS Co.,
Per L. P. BENNETT,
Cashier.
A book admitted to be a catalogue printed by defend-
ant and circulated by it in the trade was offered in evi-
dence. This purported on its face to be a catalogue of
electric railway material and supplies made by defend-
4.
ant and offered by it for sale generally to the trade.
Below are excerpts from the catalogue containing illus-
trations of the articles exactly like those bought from
the defendant by Hammer.
“OHIO TROLLEY.”
This trolley is one of the simplest and most effective
on the market. It is made up of eight pieces, the
working parts of which are made of steel and malleable
and wrought iron. The base and stand is 3 feet long,
8 inches wide, and, when the trolley pole is in a
horizontal position, but 13 inches high. The trolley
pole can be swung either forward or backward, or in a
complete circle. It can be assembled or dismantled in
a few minutes' time without the aid of tools. The
tension on the pole is least when drawn down, and can
be adjusted to suit, making it especially desirable for
running under low structures.

5
BUCKEYE TROLLEY HARP.
! ºf , ||
“This style of harp is made for use with steel
“ trolley poles. It is light and strong in construction,
“ and designed to avoid any danger from being caught
by the overhead wires.
&
Ç
“ No. 1347. Harp Complete, Bronze- - - - - - - Each $1 80
“ No. 1348. “ ( ſ. Malleable Iron “ 1 30
“ No. 1349. Contact Springs - - - - - - - - - - - - - * { 09
“STRAIGHT UNDER-RUNNING ADJUSTABLE SWITCH.
“These are similar in design to the Wood's Adjust-
able Switch, as shown on the preceding page, except
that the tongues are so modified as to make a perfectly
straight under-running approach to the switch-pan
for the trolley wheel.
C
&
Ç
&
{
º
C
C
#
i
::::::::rgbº
|i'i
- .."
Lºſ
| º º
ſ : |; f i- ſº sº
% is
:= -F-T *::::
“No. 1145. Two way - - - - - - - - - - - - - - - - - - Each $5.50”
There were also affidavits on information and belief
introduced on behalf of complainant that two street
railway companies were using trolleys and switches
bought from the defendant. Defendant filed counter
affidavits, in which the defendant's agent selling the
switch and trolley to the agent of complainant stated
that he did not know that they were to be put to an


6
unlawful use, and denied that the defendant had sold
switches or trolleys to the street railway companies
named in the complainant's affidavit, but there was no
denial that the defendant had sold to others, and no
statement that such sales had been made only for use
by licensees of complainant.
Patent 424,695 was applied for March 12, 1887, and
was issued April 1, 1890. The inventor in the specifi-
cations refers to his invention as follows :
“My invention consists in certain devices and their
relative arrangement by means of which a contact
device carried by a rod or pole extending from the car
and pressed upwardly into contact with the conductor
is switched from one line to another correspondingly
with the vehicle.
“I also make claims in this application to
a switch-plate particularly designed for the
arrangement which forms the principal subject-matter
of this application. -
“More particularly my invention consists in a track-
switch for the vehicle, a conductor-switch for the con-
tact device or ‘trolley', as it is termed, and the trolley
itself attached to the vehicle, these elements being so
arranged relatively to One another that in operation
the vehicle reaches the track-switch and is diverted
laterally before the trolley reaches the conductor-
switch, whereby the trolley, which partakes of the
lateral movement of the vehicle, has imparted to it a
laterally-moving tendency before its switch is reached,
and it therefore passes through the switch in the
proper direction, corresponding to the movement of the
vehicle.”
Fig. 1 is a side elevation of a car provided with my
improved contact devices and otherwise embodying my
invention. -
t İI. J 4- O : E
Fig. 2 is an enlarged detail showing the contact-
wheel in position in the switch-box.
Fºx-ºff. 2.,
Fig. 4 is a top plan view of a portion of track, show-
ing the conductor, the switch-box and the rails.


Fig. 5 is also a plan view and is similar to the pre-
ceding with the addition of a car shown in dotted lines.
The patentee continues in the specification :
“In order that the contact-wheel E shall be com-
pelled to pass from one conductor to a branch Or one
attached thereto leading in a different direction, I
provide the inverted open-bottom metallic boxes I,
which are formed with branching compartments and
constructed in the form of switches, conforming to the
curves and angles of the track-switches by which the
direction of the car is controlled. These boxes are
in the form of open smooth curved passages and are
free from obstructions within, so that the contact


9
wheel E, which is slightly depressed on meeting the
end of the switch-box, may roll freely therethrough
and move laterally therein in the desired direction
without hindrance.
“Fig. 2 shows how the tips of the wheel-flange are
received on the under surface of the switch-plate, and
how that the depending edges or ribs on the side of the
plate are separated a distance greater than the thick-
ness of the contact-wheel, so that the latter is movable
freely therein.
“The switch-box I, may take almost any shape and
may be made of thin sheet metal or of cast metal, as is
most convenient ; but I prefer the castings.
“The electric switches I, are to be placed directly
over—that is to say, above—their counterpart. The
track switches and the contact-wheel, as before stated,
are to be located so that as the front portion of the car
swings in the desired direction as the front wheels
pass the track-switch the contact arm will be de-
flected and the direction of the wheel E correspond-
ingly changed while still on the straight wire, so that
on reaching the switch-box the wheel will be depressed
and pass thereinto and naturally pass through and Out
of the proper compartment thereof. The switch-boxes
I, being connected directly to the conductors D, are
similarly charged, and when the wheel E is passing
therethrough the current passes through the box I, and
thence into the contact-wheel through its flanges c,
passing thence through the arm F or a separate con-
ductor to the motor C. Since there are no moving
tongues or springs or points to catch or impede the
progress of the wheel when three or four grooves, as
the case may be, exist in one switch-box, the wheel will
intersect the grooves and pass along in the desired
direction and go through without any difficulty what-
ever, its direction being previously indicated by the
movement of the front portion of the car.”
The third claim of the patent is : “The combination
10
with an overhead wire for receiving an underneath
contact, of a switch-plate attached to the wire in about
the same horizontal plane as the wire.”
“4th. The combination of a track having switches,
an overhead conductor above the track and having
switches and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.”
“11th. The combination, with an overhead line
wire, of a grooved contact device pressed against the
wire and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.”
The earlier patent claimed to avoid this one is No.
397,451 and was issued February 5, 1889. The appli-
cation was filed November 12, 1888, more than a year
after the filing of the application for patent No. 424,-
695. The inventor states in his specifications that the
invention for which he seeks a patent is an improve-
ment on the invention described in his application filed
March 12, 1887 (on which patent No. 424,695 after-
ward was issued). The chief improvement consisted
in providing the switch-boxes with ribs secured to the
under side of the conductor a short distance in ad-
vance of where it enters the switch, and continuing
into the switch-box a short distance to guide the con-
tact wheel smoothly thereinto. The ribs are narrow
tapering strips of metal rounded off toward their lower
edges to fit the groove of the contact-wheel and the
lower edges are tapered from their longitudinal center
toward each extremity. Another improvement is a
Inarrowing of the passage way at the extremities of the
switch boxes so as to secure more firmly the move-
ment of the contact-wheel in the center of the passage
way. Another improvement consisted in a device for
lengthening and shortening the trolley pole. The
11
claims covered the new switch and combinations of the
elements of the car, the track, the post, the pivotally
working trolley, the adjustable pole and the tension
spring for maintaining contact, but each claim includes
within its terms one or the other of the improve-
ments above described. The drawings showing the im-
provements in switch-plates covered by Patent No.
397,451 are as follows,
b
Hſ
ſy
-
}
|
º
E-3
fº- º
º
sº
Patent 495,443, upon which the second order of in-
junction appealed from was founded, is said to be void,
because it covers the same inventions as Patent 424,695












12
already described. The two patents were issued upon
the same application, filed March 12, 1887. An
Interference was declared and the application
was divided, the uncontested portion proceed-
ing to patent, and the remainder being de-
layed in the Patent Office until 1893, when a
patent was also issued upon it. Patent 495,443 was
intended to cover the main invention. In its specifi-
cations, the inventor says:
“My present invention relates to electric railways of
the class in which a suspended conductor is used to
convey the working current, a traveling contact carried
by the car for taking off the current for use in operat-
ing the motor by which the car is propelled, and the
return circuit completed through the rails.
“The invention consists more particularly in an im-
proved traveling contact and in improved arrangement
and construction of the switches by which the said
traveling contact is directed onto the proper conductor;
these devices for switching the traveling contact from
one conductor to another have been already claimed in
my patent No. 424,695, which was issued as a division
of this application on April 1, 1890. I therefore do
not lay claim to them herein, but the description and
illustration of them is retained to show how my trav-
eling contact is adapted to meet one of the essential
requirements of railway service without special arrange-
ments or other complications.”
He then describes in the same language the same
devices and combinations of parts with the same draw-
ings which appear in the specifications of patent No.
424,695, except that he adds three drawings not sub-
stantially different from those in the prior patent but
which show the construction in a little more detail.
He omits from the specifications in the later patent the
following words which were in the prior patent and
which refer to the use of the spring and weight used
to hold the contact device against the conductor : “And
while the arm F is movable laterally with respect to
13
the vehicle the spring and weight will constantly tend
to restore the arm to its normal contact position and
assist in causing the contact arm to partake of the
lateral movement of the vehicle.” And also the state-
ment that by reason of the weight “the (contact) wheel
has a much greater range of action.”
The claims relied on by the complainant below and
upon which the injunction was granted were 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 carry-
ing 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 under side of the supply con-
ductor, 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 con-
tact device carried by one extremity of the arm and
held thereby in contact with the under side of the
electric conductor, and a tension device at or near the
other end of the swinging arm for maintaining said up-
ward 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
under side of the suspended conductor, and a tension
spring at or near the inner end of the arm for main-
taining said upward pressure contact, substantially as
described.
“12. In an electric railway, the combination with a
car, of a post extending upward therefrom and car-
rying 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
14
suitably suspended conductor substantially as de-
scribed.
“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 top of the car
and provided at its outer end with a grooved contact
wheel engaging the under side of the suspended con-
ductor, and a tension spring for maintaining an upward
pressure contact with the conductor, substantially as
described.”
The claims of patent No. 424,695, which are relied on
by the defendant to show that it covers the same inven-
tion as patent No. 495,443, are as follows:
“15. In an electric railway, the combination of a
car, a conductor suspended above the line of travel of
the car, a contact-carrying arm pivotally supported on
top of the car and provided at its outer end with a
contact-roller engaging the under side of the sus-
pended conductor, and a weighted spring at or near
the inner end of the arm for maintaining said upward
contact, substantially as described.
“16. In an electric railway, the combination of a car
provided with a pivoted arm, as F, having a contact at
its outer extremity, a tension-spring, as G, attached at
its inner extremity, and a vertically-moving weight con-
nected to said spring for holding the same in Operative
relation to the arm throughout its entire range of move-
ment, substantially as described.
“ 17. In an electric railway, the combination of the
car having suitably-pivoted arm F, carrying a contact-
wheel at its outer extremity, a spring G, secured to its
lower extremity, and a connection extending from said
spring and provided with a weight at its lower end,
substantially as described.
“31. In an electric railway, the combination, with
an overhead conductor and a vehicle, of an intermediate
contact device consisting of a trailing arm having a
grooved contact-wheel at its outer end and moving
laterally relatively to the vehicle, but provided with a
15
spring tending to retain it in its normal central posi-
tion. -
“32. In an electric railway, the combination, with
an overhead conductor and a vehicle, of a trailing con-
tact-arm guided at its outer end by the overhead con-
ductor, and movable laterally relatively to the vehicle,
but having a normal centralizing tendency by means of
a spring or weight.
“33. In an electric railway, the combination, with
an overhead conductor and a vehicle, of an intermediate
contact device consisting of an upwardly-pressed trailing
arm having a grooved contact-wheel at its Outer end
by which it is guided by the conductor, the said arm
being free to swing laterally relatively to the vehicle,
but tending to remain in its normal central position by
means of a spring or Weight.
“34. The combination, with a vehicle and an over-
head conductor, of a trailing contact-alm guided nor-
mally by the conductor, but having a spring-connection
with the vehicle tending constantly to maintain it in a
definite position, while at the same time it is free to
swing laterally with respect to the vehicle against the
pressure of the said spring.
“35. In an electric railway, the combination, with
an overhead conductor and a vehicle, of an intermediate
contact device consisting of a rearwardly-extending arm
guided by its outer extremity by engagement with the
conductor and movable laterally relatively to the
vehicle, but having a spring Or weight tending to
restore it to its normal central position.”
TAFT, Circuit Judge, delivered the opinion of the
court.
The catalogue of the defendant shows that it is offer-
ing for sale to the public without restriction the switch
and trolley to be used as part of the equipment of an
electric street railway. Defendant has not shown and
we infer from the evidences that it can not be shown
that either the switch or trolley and harp can be used
16
in an electric railway except in the combinations de-
scribed and claimed in the two patents here in suit.
The third claim of patent No. 424,695 is for a combin-
ation of an overhead wire for receiving an underneath
contact and a switch-plate attached to the wire in about
the same horizontal plane as the wire. The descrip-
tion of the article sold by the defendant in its catalogue
is that of an “underrunning adjustable switch" and it
is said to make a perfectly straight underrunning ap-
proach for the trolley wheel. It is apparent that the
switch plate has no practical utility except in such an
arrangement of parts as that stated in the third claim.
The same thing is true of the 4th and 11th claims of
that patent. The 6th claim of patent No. 495,443 is a
combination in an electric railway of (1st) a suitable
track, (2d) a supply conductor suspended above the
track, (3rd) a car provided with (4th) a swinging arm
carrying (5th) a contact device in its Outer extremity
and (6th) means for imparting upward pressure to the
outer portion of the arm and contact, to hold the latter
in continuous working relation with the under side of
the supply conductor. The evidence sufficiently shows
that neither the trolley nor the harp is adapted to be
used on electric street railways except in the above
combination. Purchasers buy articles for practical use
and would only buy the switch and trolley, therefore,
for use in complaimant’s patented combinations. One
is legally presumed to intend the natural consequences
of his act. Hence the defendant in offering the switch
and trolley for sale to the general public may be
reasonably held to intend that they should be used in
combinations in an electric railway covered by the
claims of complainant's patents.
It is well settled that where one makes and sells one
element of a combination covered by a patent with the
intention and for the purpose of bringing about its use
in such a combination, he is guilty of contributory in-
fringement and is equally liable to the patentee with
him who in fact Organizes the complete combination.
17
The leading case on the subject is Wallace v. Holmes,
9 Blatchford, 61 ; S. C., 29 Fed. Cases, 79. It was
cited with approval in American Cotton The Co. v.
Simºons, 106 U. S. 89, and the same doctrine was ap-
plied and extended by this court in Heaton Peninsular
Button Fastener Co. v. Eureka Specialty Company, 77
Fed. Rep., 288, to a case where the article sold was not
even an element of the patented combination but was
an article the use of which in connection with patented
combination was a violation of the conditions of a
license and destroyed the protection the license would
otherwise have afforded. The cases in the cir-
cuit courts where the same general principle has been
applied are legion. We cite a few of them : Bowker
v. /)ows, 3 Fed. Cases, 1070; Richardson v. Noyes,
20 Fed. Case. 723; Travers v. Beyers, 26 Fed. Rep.
450; Hºllis v. McCullen, 29 Fed. Rep., 641; Ala-
bastine Co. v. Payne, 27 Fed. Rep., 559; Celluloid Mfg.
Co. v. American Zylonite Co., 30 Fed Rep., 437. The
contention of the counsel for the defendant, if we un-
derstand it, is that the effect of the decision of the
Supreme Court in the case of Zhe Morgan . Envelope
Company v. The Albany Paper Company, 152 U. S.,
425, is to do away altogether with the doctrine of con-
tributory infringement. If this is a proper reading of
the judgment of the Supreme Court in that case, it
was a somewhat startling departure from previously
understood principles in the law of torts. An in-
fringement of a patent is a tort analogous to trespass or
trespass on the case. From the earliest times, all who
take part in a trespass either by actual participation
therein or by aiding and abetting it have been held to
be jointly and severally liable for the injury inflicted.
There must be some concert of action between him
who did the injury and him who is charged with aid-
ing attd. abetting, before the latter can be held liable.
When that is present, however, the joint liability of
both the principal and the accomplice has been invari-
ably enforced. If this healthful rule is not to apply
1S
to trespass upon patent property, then indeed the
protection which is promised by the constitution and
laws of the United States to inventors is a poor sham.
Many of the most valuable patents are combinations
of non-patentable elements and the only effective mode
of preventing infringement is by suits against those
who by furnishing the parts which distinguish the
combination make it possible for others to assemble
and use the combination, and who, by advertisement of
the sale of such parts and otherwise, intentionally so-
licit and promote such invasions of the patentee's
rights. The Morgan Envelope Company case so far
from departing from the doctrine of contributory in-
fringement, expressly recognizes it and the authorities
in which it is announced and enforced. The court
held, however, that the doctrine of contributory in-
fringement could not apply in a case in which the
claim of the patent embraces a machine and some-
thing to be treated thereby which is perishable in its
mature, and the alleged infringer furnishes the latter
element to be used with the machine and consumed.
Whether this holding is really a limitation upon the
doctrine of contributory infringement, or is to be re-
garded only as in effect deciding that such combina-
tions are impossible in a patent may admit of question.
In Iſeaton Peninsula,' Button Fastener Co. v. AEureka
Specialty Co., 77 Fed. Rep. 288, this court was obliged
to consider with much care the Morgan Envelope case.
After quoting at length from Mr. Justice Brown's opin-
ion, Judge Lurton, speaking for this court, Said;
“It is true that Mr. Justice Brown, in discussing the
question involved in that case, assumes that a combi-
nation of the machine for delivering the paper with
the paper to be delivered was valid. But before he fin-
ishes the argument, he shows that the assumption
leads to an absurdity; and the decision, in effect, is
that form of argument known as the ‘reductio ad ab-
surdum establishing that his original assumption was
not founded in reason. The illustration of the result of
19
such a combination shows that what the court
was deciding was that a combination of the
machine was an unpatentable paper or ma-
terial to be operated upon by the machine
was an impossibility and the sale of the machine
involved and implied the right of use of the material
with which it was to be combined ; and this is shown
by the case of Wilson v. Simpson, 9 How. 109, which
is cited by Mr. Justice Brown as a case sustaining his
conclusion. . . . Thus, with respect to the paper
holder, the Supreme Court, in effect, held that the
sale of the paper fastener with the paper in it con-
tained the implication of a right to renew the paper
when that paper sold should be exhausted, and did not
require the purchase of the paper from the original
patentee, the paper itself not being patented.”
We are very clearly of opinion that the Morgan
Envelope Company case does not affect the question
of contributory infringement before us.
It is said that no concert of action by defendant
with any one for the purpose of accomplishing an
infringement of complainant's patent rights, is shown.
As already stated, it does appear that the defendant is
offering for sale articles that can only be used in
combinations covered by complainant's claims. This is
an effort to secure a concert of action by which the
combinations of complainant's patents may be
assembled. If successful, infringement will follow ;
hence the preliminary steps which are intentionally
taken to bring about the injury may be enjoined. In
considering the same point in Wallace v. Holmes,
29 Fed. Cases, 79, Judge Woodruff said :
“Here the actual concert with the other is a certain
inference from the nature of the case and the distinct
efforts of the defendants to bring the burner in
question into use which can Only be by adding the
chimney. The defendants have not, perhaps, made
an actual pre-arrangement with any particular person
to supply the chimney to be added to the burner ; but
20
every sale they make is a proposal to the purchaser to
do this, and his purchase is a consent with the
defendants that he will do it or cause it to be done.”
Now it is suggested that the defendants had the
right to sell parts to be used in complainant's
combinations to the licensees of complainant and to
those who having once bought the articles of the
combination from the complainant, it is said, have the
implied right to repair and renew parts worn out with
use. It being established that defendants are offering
for sale articles intending them to be used in com-
binations which if unlicensed by complainant would
be infringements of complainant's patents, we think
that it is the duty of the defendant to see to it that
such combinations which he is intentionally inducing
and promoting shall be confined to those which may be
lawfully organized. We are unable to see why any
different rule should be applied in such a case from
that applicable to a case in which a defendant makes
a patented machine to order. He may make such
a machine upon the Order of the patentee or a
licensee but not otherwise. Upon him is the peril of
a mistake as to the lawful authority of him who gives
the order. So he may knowingly assist in assembling,
repairing and renewing a patented combination
by furnishing some of the needed parts, but when
he does so he must ascertain if he would escape
liability for infringement that the one buying and
using them for this purpose has a license express or
implied to do so. What we have said has application
only to cases in which it affirmatively appears that the
alleged infringer is offering the parts with the purpose
that they shall be used in the patented combination.
We have found that it does so appear here, and is a
matter of certain inference from the circumstance that
the parts sold can only be used in the combinations
patented. Of course such an inference could not be
drawn, had the articles, the Sale or offering of which
was the subject of complaint, been adapted to other
21
uses than the patented combination. In the latter
case the intention to assist in infringement must be
otherwise shown affirmatively and cannot be inferred
from the mere fact that the articles are in fact used in
the patented combinations or may be so used.
If defendant avers that he is selling to express or
implied licensees of the patentee, the injunction should
be granted in such form as shall permit the continuance
of these lawful sales. In the case at bar, the circuit
court offered thus to modify the order but the de-
fendant declined to apply for the modification. It is
hardly in a position now to assign for error the failure
of the court to insert such a modification.
The conclusion we have reached as to contributory
infringement is supported by the decision of the
Circuit Court of Appeals of the Second Circuit on
similar facts in 7 homson-Houston Electric Co. v. Jºelsey
Electric Jºy. Spec. Co., 75 Fed. Rep. 1005, affiming an
order of injunction by Judge Townsend in the Circuit
Court. Judge Wallace dissented but we think the
reasoning of the majority more satisfactory. The
learned dissenting judge likened the case to one in
which the seller of wire or rails should be enjoined
from selling them because the articles might be used
in any unlawful combination on an electric railway.
Such articles could, of course, be used in so many
lawful ways other than in the combinations of the
patent that it would be quite unlikely that the sellers
could have an intention to promote infringement of
particular patents in their sale and it would be most
difficult to prove such intention. But where the
article can only be used in a patented combination, the
inference of the intention of the maker and seller is
certain and the right of the patentee to injunction
ought, we think, to be equally certain.
We come now to the second assignment of error
in these cases, namely, that the patents relied on
are void because the inventions covered by them were
patented in prior patents to the same patentee. The
22
circumstances make this question different as it arises
on the two patents and we shall first consider whether
patent No. 424,695 is void by reason of the prior issue
of patent No. 397,451. We are clearly of opinion
that it is not. The application for No. 424,695 was
filed more than a year before that for the patent No.
397,451. The inventor expressly states in his specifica-
tions in No. 397,451 that his invention is an improve-
ment on the switch and trolley devices and combinations
shown in the application which subsequently resulted
in patent No. 424,695. An examination of the draw-
ings and specifications leaves no doubt that this state-
ment is true. With respect to the switch or switch-
plate, in the patent of later application and earlier issue
the inventor added to the simple switch-box center
ribs and side contractions of the extremities of the
passage ways for the purpose of inore certainly direct-
ing the trolley wheel in entering and leaving the switch
in the way in which it should go. With respect to
the trolley arm, the improvement consisted in making
it of adjustable length. The claims, all of them, in-
clude and refer to one or the other of these improve-
ments. Now it is not material to this discussion
whether these improvements are patentable or not.
They are expressly claimed as improvements and no
attempt is made by the patentee to cover anything but
them. If inventions at all, then they are separable
from the old switch and trolley combinations, and if
they are not inventions, the patents are void and cover
nothing. Since the case of O’ſſeilly v. Morse, 15 How.
6], 121, 133, it has been well settled that a patent may
issue for an improvement on an earlier invention either
to the Original inventor or to a stranger. Of course,
no one can use the improvement without right or
license to use the fundamental invention, but on the
other hand the right to use the original invention does
not confer the right to use the improvement without
license from the tributary inventor. We do not under-
stand this general doctrine to be denied, but it is said
23
that if, by some chance, the application for the funda–
mental pntent is delayed in its course through the pat-
ent office until a patent on the avowed improvement
has issued, then the patent on the fundamental inven-
tion is void. In cases where the delay in the issuing
of the patent for the main invention can not be charged
to the laches or fraud of the patentee, such a rule
would be a hard one and unless it is required by the
express words of the statute, or by the express holding
of the Supreme Court, we should be inclined to avoid,
if possible, declaring it to exist. The contention of .
counsel for the defendant in this behalf instead of hav-
ing the support of the authority of the Supreme Court
is in the teeth of two decisions of that tribunal. In
Suffolk Company v. Hayden, 3 Wallace, 315, an in-
ventor applied for a patent on improvements in the in-
terior arrangements of an elongated trunk previously
in use for cleaning cotton. While this application was
pending, he applied for an improvement on the form of
the trunk, i. e., its external form and in his second ap-
plication, he described the improvement in the interior
arrangements of the trunk witnout making any claim
as to it. A patent issued on the second application be-
fore one was issued on the first, and the point at issue
before the court was whether the prior patent on the
later application, describing but not claiming the im-
provement for which a patent had first been applied
for, avoided the later patent on the earlier application
for this improvement, and it was held that it did not.
In disposing of the contention that the second patent
was void, the Supreme Court said :
“The first point of the plaintiff in error is that the
description in the patent of March, of the
improvement patented the December following, and
on which the present suit is brought, and omis-
sion to claim it in such earlier patent, operated as
an abandonment or dedication of it to the
Dublic, and that for this reason the subsequent pat-
ent of 1st December was void. But the answer
24
to this ground of defense is that it appeared that Hay-
den, the patentee, had pending before the Commis-
sioner of Patents an application for this same improve-
ment at the time he described it in the specification of
the 17th of March, which was doubtless tºle reason for
not claiming it in this patent. The description in no
sense affected this application thus pending before the
Commissioner, and while it remained before him, re-
pelled any inference of abandonment or dedication
from the omission to again claim it.”
The same question arose again in the Barbed Wire
Patent case, 143 U. S., 280, and is stated and disposed
of in Mr. Justice BROWN’s opinion in that case as
follows:
“The application for the patent in suit was filed
October 27, 1873, though the patent was not issued
until November 24, 1874. Subsequent to the applica-
tion for this patent, and on March 14, 1874, Glidden
filed an application for an improvement in wire
stretchers for fences, upon which a patent was issued
May 12, 1874. It was not perceived how this patent
could affect in any way the pending application for the
later patent. The patentee abandoned nothing he had
claimed before, but sought as an improvement upon
the former, to claim a slotted tube midway between the
posts, in which was put a coil spring to spread the
wires and automatically tighten them and keep them
at the proper tension as against expansion by heat and
contraction by cold. If the later application had cow-
ered the same invention as the prior application for
the November patent, the later patent might have been
void under our ruling in Suffolk Company v. Hayden, 3
Wall, 315; but this claim was for a combination of
wires with the slotted tube, containing a coiled spring
and perched upon a post. In this application he
makes no mention whatever of barbs as a feature of
his claim, although in describing his invention the use
of two wires provided at suitable intervals with spurs
coiled around them, and which are spread apart be-
25
tween the coils to keep the latter from moving longi-
studinally upon the wires. But he says of these spurs :
‘I do not claim to have originated the devices known
as “spurs" or “prongs" on the wires, they having
been used before, but confine myself to the means for
holding the spurs at proper intervals on the wires and
to the means for attaining a uniform tension of the
wires, as claimed.’ This disclaimer, it will be ob-
served, is of spurs or prongs generally—not of the
coiled barb either alone or in combination with the
twisted wires—and is made with reference to that ap-
plication only. It is true that this patent was subse-
quently re-issued with a broadly expanded claim for a
combination with a fence-wire of a barb formed of a
short piece of pointed wire, secured in place upon the
fence wire by coiling between its ends, forming two
projecting points; but this re-issue was held to be un-
warranted and void in Washburn có Moen Mfg. Co.
v. Fuchs, 16 Fed. Rep. 661, 667. This attempted re-
issue, however, did not in any way affect his original
application, which stood upon its own merits, and, after
being rejected and amended three times, was finally
passed with a claim substantially identical with the
first claim of the original application, and the patent
granted. In legal effect this was a prior patent, since
the date of the application and not the date of the
patent controls in determining the legal effect to be
given to two patents issued at different dates to the
same inventor and the order in which they are to be
considered. In any event, the re-issue in 1876 of one
patent would not affect another patent granted in
1874.”
It will be observed that the case at bar is stronger
than either of the cases cited because in the application
for the patent on the improvement, not only is no claim
made for the main invention but the applicant ex-
pressly states that he has an application pending for
the main invention necessarily described in describing
the improvement but not claimed, and thus shows
26
beyond peradventure that he has no intention of
abandoning or dedicating to the public his main inven-
tion.
The authority and effect of these two cases, counsel
for defendant seeks to meet by the claim that the
ground upon which he contends that the second pat-
ents in the cases before the court must be void was not
presented to the court and was not considered by it.
He says that the second patent for the main invention
is void not because it was dedicated to the public
in the first patent, but because the effect of the
second patent is to extend the monopoly of the
first patent beyond the statutory period. The argu-
ment runs thus : The monopoly of the first patent, the
one for the improvement, can legally be of no longer
duration than seventeen years. But the improvement
can not be used except as applied to the main invention
and as the later patent—the one for the main invention
—does not expire until some time after the expiration
of the patent for the improvement, the monopoly of
the improvement patent is in fact extended until the
expiration of the later patent—the one for the main in-
vention— and so exceeds the statutory seventeen years.
It may be conceded that it is doubtful whether the
case of Suffolk Company v. Hayden on its facts pre-
sented the question thus raised by counsel because the
two patents there under consideration were improve-
ments on different parts of the same machine and it did
not appear that the earlier patent might not have been
used without also using the later patent. And possibly
the same thing is true of the Barbed Wire Fence case.
However this may be, we cannot yield to the argument
based on such a distinction, because we can not accept
its minor premises ; to wit : That the later granting
of the patent for the main invention extends the mon-
opoly of the earlier improvement patent. The patent
for the improvement expires in seventeen years. After
that, any one may use the improvement without in-
fringing the patent issued upon it. If he uses the im-
27
provement without a license to use the main invention,
he is liable for the infringement not of the patent for
the improvement but of the patent for the main inven-
tion, and in estimating the damages for the same the
value of the main invention, and not that of the im-
provement would be the basis for estimating the
damages.
It can make no differeuce in considering this ques-
tion whether the patent for the improvement issues to
the patentee of the main invention or to another. The
right of the public to use the improvement when the
patent on it expires is exactly the same, whether the
patentee of the two inventions is the same or not, be-
cause in each case, the improvement can only be used
with the license of the patentee of the main invention.
If the patentee of the improvement is a stranger
to the main invention, it is manifest that he can
derive no benefit from the limitation upon the use of his
invention after his patent expires because of the patent on
the main invention. Why then does he derive an ad-
vantage if he happens to own the main patent 2 The
only advantage conferred by the issue of the patent for
the main invention is the legitimate monopoly for the
statutory period of that invention and of no other.
Did the personalty of the owner of two different
patents affect the validity of either, then the anomalous
result would follow that the owner of one patent would
avoid it by acquiring ownership of another. Accord-
ing to the argument of counsel the patentees of the
earlier improvement patent and of the later main patent
being the same person, the main patent is void. Let
us suppose that they were different persons, but that
by mesne assignments, the two patents become the
property of one person, the effect upon the public use
of the improvement patent is exactly the same as if the
now owner had been the inventor and patentee of both.
Does the unity of title avoid the main patent which
was valid before ? It must do so, if the argument of
counsel for defendant in this behalf is to be followed,
28
for the effect of the unity of title is “to extend the
monopoly ’’ of the earlier improvement patent in the
sense in which counsel uses that phrase. To Our
minds, this conclusion is 7 eductio ad absurdum. The
fact that a patent for an improvement may expire be-
fore the patent for the main invention is the result of
several circumstances, one that a patent may be taken
Out for an improvement on a patentable invention, an-
Other that there is no limitation by statute upon the
time within which a patent may issue upon an applica-
tion after it is filed, provided the applicant is not
guilty of violating the two years' restriction imposed by
the statute, and a third that the course of an applica-
tion for a generic or broad invention may legitimately
take longer in its course through the Patent Office than
a comparatively unimportant improvement on that
invention.
The case upon which counsel for defendant chiefly
relies to support his argument is Miller v. Zhe AEagle
Manufacturing Company, 152 U. S. 186, where it was
held that when two patents issued to the sºme patentee
for the same invention, the second patent was void for
the reason that the new or later patent would prolong
the monopoly beyond the period allowed by law. As
pointed out by Mr. Justice JACKSON, this was not a new
doctrine and found support in a number of earlier
cases, cited by him. The patents under consideration
in that case were for a peculiar form of spring which
when connecting the plow beams of a plow with the
upright portion of the axle assisted the operator in
lifting the plow beams when above the level, and in de-
pressing them when below it and the patent first issued
Covered the spring thus used. The spring thus used
had the additional function of increasing its lifting
force and action, the higher the beams were raised.
The second patent was taken out to cover this feature
of the spring. In effect, the only difference between
the patents was that the earlier patent covered a spring
with both a depressing and a lifting function while the
29
second patent covered exactly the same spring
with a lifting function increasing in force as the
spring rose above the level. Now the function of
the spring described in the second patent was neces-
sarily present in the spring as it was shown in the
earlier patent for no change in form of the spring
was suggested in either patent by which it might serve
the purpose and claim of the first patent and discharge
the functions therein described without also at the
same time discharging the function which was sup-
posed to distinguish the second patent and its claim
from the first. In other words the division of the
Original application into two patents was nothing more
than an attempt to patent as two separate inventions,
the same device when discharging different functions.
The opinion of Mr. Justice Jackson distinctly recog-
nizes that “where the second patent covers matters
described in the prior patent, essentially distinct and
separable from the invention covered thereby and
claims made thereunder, its validity may be sustained ’’
and “ that an inventor may make a new improvement
on his own invention of a patentable character, for
which he may obtain a separate patent " and “that a
later patent may be granted where the invention is
clearly distinct from and independent of, one pre-
viously patented.” It is, of course, true that if an im-
provement is an invention separable from the generic
invention, the latter is an invention distinct and sep-
arable from the improvement. Hence it follows from
the propositions above quoted from the Opinion in the
case of Miller v. The Eagle Manufacturing Company,
that a patent for a generic invention is not avoided by
the fact that a prior invention has been issued for a
distinct improvement on that invention, provided
always that the language of the application for the
first patent and the circumstances of filing it are not
such as to dedicate the generic invention to the public.
The case of Miller v. The AEagle Company, therefore,
instead of sustaining the claim made for it is distinctly
30
an authority to the contrary. We are of the opinion
that patent No. 424,695 is not rendered void by patent
No. 397,451. -
We are strongly fortified in this conclusion by the
most satisfactory opinion of Judge Wallace, speaking
for the Circuit Court of Appeals of the Second Circuit,
upon exactly the same question. Elmira /?y. Co. v.
Thomson-Houston Company, 71 Fed. Rep., 396, affirm-
ing the decree of Judge Coxe in the circuit court in the
same case, 69 Fed. Rep., 257.
We come now to the question whether patent No.
495,443 is rendered void by the prior issue of patent
No. 424,695. This presents much more difficulty than
the question just disposed of. In this case, the draw-
ings and specifications of the two patents are substan-
tially alike and show a car, a track, a post on top of
the car, a swinging and hinged arm pivoted in the post
with a contact-wheel at its Outer end. A spring is
secured to the lower end of the swinging arm and to
the spring is attached a weight which works in suit-
able vertical grooves down through the roof to the
front platform within reach of the driver. The spring
and weight maintain the contact of the Outer end of the
swinging arm with the overhead conductor. Switches
in the overhead conductor are maintained immediately
over the point in the track where track switches occur.
The trolley post and arm are in such positions and of
such size that the point of contact of the outer
end of the arm and the overhead conductor
is back of the front wheels of the car. This
is for the purpose of imparting to the trolley
wheel as it enters the Switch in the overhead conductor
the direction already taken by the front wheels of the
car in entering the switches upon the track. The spring
and weight working in vertical grooves are intended to
keep the trolley arm in the vertical plane of the longi-
tudinal center of the car and thus to make its contact-
wheel more certain to follow in the overhead switch the
direction of the car as it turns into a track switch. It
31
is shown by the evidence that the inventor first used in
his combination a spring attached to the top of the car
to secure contact and then a spring attached to the foot
of the trolley post and finally the spring and weight ar-
rangement shown in the drawings of the patents. The
claims of the second patent in question are for the
broad claims of a combination in an electric railway of
a car, a track, and overhead conductor, a post and
swinging hinged arm on the car and a tension spring
for maintaining contact between the arm and the con-
ductor, and the language of the specifications shows that
it was the intention of the inventor to make this cover
the generic invention. The claims of the first patent
that embrace the whole combination include the weight
as part of the means for maintaining upward pressure
of the arm against the conductor. There are five claims
of the first patent that cover the whole combination and
include a spring on weight to perform the function of
keeping the trolley arm in the center line of the car. Now
this same spring and weight in the drawings discharge
the function of maintaining the upward pressure of the
swinging arm. The contention of the counsel for the
complainant is that the first patent was a patent for the
special and improved form of the invention including
the spring and weight with their upward pressure and
centralizing tendency, and that the second patent
though using the same drawings and specifications
shows by the language of the latter and its claims that
it was intended to cover, and did cover, a combination
with a spring without a weight in such a position that
it need only discharge the function of maintaining the
upward pressure of the arm without the centralizing
tendency and that the modification of the drawings and
specifications to show such a tension spring is only the
work of a skilled mechanic. To the objection that the
last five claims of the earlier patent are exactly the same
as the broad claims of the later patent with the mere
statement of a necessary centralizing function of the
same spring always present in it, it is answered that
32
the second patent was intended to cover springs that
had no centralizing tendency and that the use of the
function in describing the spring, therefore, is a limita-
tion of the claim showing it to be a special form of
spring. It is argued therefore that as the claims of the
first patent do not cover any of the broad claims of the
Seeond patent based on a simpler combination of parts
than that shown in the drawings, the second patent
may be held to be a separate generic invention while
the earlier patent is merely for improved forms of the
same invention entitled to a separate patent. We think
the case on these two patents much nearer Miller v.
The Eagle Manufacturing Co. than the case on the two
patents already considered, but we are unwilling
upon an appeal from a preliminary injunction
heard upon affidavits and without a full review of
the art and without a fuller argument and closer con-
sideration of the claims and specifications to decide
the question mooted. The questions are whether in
determining the separability of the inventions we may
consult evidence dehors the record and whether in con -
sidering the gist of the second patent, we may supply
such variations in the form of the combination shown
in the drawings and specifications suggested by mere
mechanical skill as would make it one not covered by
the first patent but a simpler and more generic form
and whether the claims of the second patent are
limited to the devices actually shown by the words
“substantially as described.” The main invention is
confessedly a meritorious one and we shall be loath to
declare it void because of a mistake in the patent office
proceedings if we can by any reasonable construction
of the patents do otherwise. The second patent was
sustained as valid after a full hearing on the merits
before as good and experienced a patent judge as Judge
TOWNSEND, of Connecticut. Thomson-Houston Electric
Co. v. Winehester Ave. Co., 71 Fed. Rep. 192. This
certainly justified the court below in assuming the
validity of the patent on a motion for preliminary in-
33
junction. It is well settled that on appeals like this,
this court will ordinarily look into the case merely to
see whether the discretion of the court below in issuing
or withholding the Order of preliminary injunction has
been abused and that only in exceptional cases in
which a controlling question of law may be as fully
and fairly considered as upon final hearing and the
court has no doubt upon it, will it finally dispose of the
injunction and the case on a hearing like this. Duplea,
Printing Press Company v. Campbell Printing Co., 69
Fed. Rep. 250; Mayor of Knoxville v. Africa, 77 Fed.
Rep. 501. Questions on appeals of this character are
ordinarily to be treated in this court from the stand-
point from which they were viewed by the circuit court
and the decision on the merits by a circuit court
of another circuit sustaining the patent is therefore
usually of controlling weight here as it should be in the
court below.
In an appeal from a preliminary injunction on this
same patent, the Circuit Court of Appeals of the Second
Circuit affirmed the order without examining or decid-
ing the validity of the patent, justifying its course in
this regard by the statement that in another cause
heard upon a voluminous record by Judge TOWNSEND,
the patent had been sustained. Thomson-Houstom
Electric Co. v. Kelsey Electric Jºy. Spec. Co., 75 Fed.
Rep. 1005.
The orders of preliminary injunctions appealed from
in both cases are accordingly affirmed at the costs of
the appellant, the defendant below.
[8365)
424,695.
No. 15.

Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Order for Preliminary Injunction in the case
of Thomson-Houston Electric Company, Complainant,
vs. Detroit Citizens Street Railway Company
et al., Defendants, filed in U. S. Circuit
Court, Eastern District of Michigan,
s July 15, 1897.
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
At a special term of the Circuit Court of the
United States, held in and for the
Sixth Circuit and the Eastern Dis-
trict of Michigan, Southern Division,
in the United States Court Rooms, in
the Post Office Building, in the City
of Detroit, on the 15th day of July,
1897.
Present: HON. HENRY H. SWAN, U. S. Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY
WS.
In Equity, No.
DETROIT CITIZENS STREET RAILWAY 3515.
COMPANY and TOM. L. JOHNSON,
individually and as an officer of
Detroit Citizens Street Railway
Company.
An order to show cause why a preliminary injunction
should not issue herein having been heretofore granted,
and the same coming on to be heard upon the bill of
complaint and upon the affidavits of Franklin Jannus,
James J. Cosgrove, William J. Clark, Francis Henry
Shepard, Edward M. Bentley, Charles A. Coffin and
Charles A. Terry, and the exhibits referred to therein,
filed on behalf of the complainant in support of said mo-
tion ; and upon the affidavits of Richard Eyre, Jesse B.
Heller, and the exhibits referred to therein, filed by
Q
4-1
the defendants in opposition to said motion ; and upon
the affidavits of Francis Henry Shepard and Edward
M. Bentley, and the exhibits leferred to therein, filed
by the complainant in rebuttal thereto ; and after hear-
ing Frederic H. Betts, Esq., in support of said motion,
and George J. Harding, Esq., opposed, and after due
consideration had, and it appearing that the defend-
ants now have in use certain apparatus which is an in-
fringement of the 3rd, 4th, 11th, 19th, 20th, 23rd, 25th,
26th and 27th Claims of Patent No. 424,695, owned by
the Thomson-Houston Electric Company, the com-
plainant herein ; Now, upon motion of Messrs. Russell
& Campbell, counsel for complainant, it is
Ordered that a preliminary injunction be, and here-
by is, granted and ordered to issue out of and under
the seal of this Court, strictly enjoining and restraining
the defendants, Detroit Citizens Street Railway Com-
pany, and its officers, associates, agents, attorney, Solici-.
tors, clerks, servants, agents and workmen, and Tom
L. Johnson, individually and as an officer of said
Detroit Citizens Street Railway Company, until the
further order of this Court, from directly or indirectly,
using, making or selling, or disposing of, or acquiring,
in any way, any apparatus containing or embodying
the subject-matter of the combinations of the 3rd, 4th,
11th, 19th, 20th, 23rd, 25th, 26th and 27th Claims of
Van Depoele Patent No. 424,695, dated April 1st,
1890, or any or either of them, which are as follows:
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.”
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.”
“11. The combination with an overhead line wire, of
a grooved contact device pressed against the wire and
3
receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire
against which the said flanges bear in passing from one
line to another.”
“19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-
pressed contact arm carrying a grooved wheel embrac-
ing the conductor, and a switch-plate at the branching
point adapted to receive the tips of the wheel-flanges,
and provided with depending ribs, between which the
wheel is free to move laterally to engage with one of the
branch conductors.”
“20. In an electric railway the combination, with an
overhead switch-plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities, respectively, a vehicle,
an upwardly-pressed contact-arm attached to the vehi-
cle and tending to move laterally there with, and a
track-switch for the vehicle located so as to operate in
advance of the conductor-switch.”
“23. The combination, with branching overhead
conductors, of a vehicle having a laterally-swinging
contact-arm pressed upward to engage the conductors,
and a switch-plate at the branching point having de-
pending sides, but open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main
conductor and engage one of the branching con-
ductors.”
“25. In a branching electric railway, the combina-
tion of a track-switch, an overhead conductor-switch,
and a vehicle having a rearwardly extending contact-
arm, whereby the track-sitch will operate in advance of
the conductor-switch.”
“26. In a branching electric railway, the combina-
tion, with a vehicle, of a track-switch, an overhead con-
ductor switch, and a contact-arm extending upward
from the vehicle to the conductor, and so located rela-
4
tively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a
corresponding movement of the contact device on the
conductor-switch.”
“27. In a branching electric railway, the combina-
tion with a vehicle, of a track-switch, a contact-device
consisting of a trailing, spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally therewith, and an over-
head conductor-switch adapted to engaged the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
And it is further ordered that the operation of this
injunction be, and the same hereby is, suspended
solely as to the apparatus now in use by these defend-
ants for the space of sixty days from the entry of this
Order, in Order to permit the defendants to substitute
non-infringing apparatus.
Dated, July 15, 1897.
- HENRY H. SWAN,
District Judge.
[8728]
!?!: aſ , , , 424,695.
" No. 16.
• * * * * ,
o j9th,
2
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Preliminary Injunction in the case of
Thomson-Houston Electric Company vs. the
T Detroit Citizens Street Railway Company
et al., filed in the U. S. Circuit Court,
Eastern District of Michigan,
“September 17, 1897.
C. G. Burgoyne, Walker and Centre Streets, N. Y.-1897.
THE PRESIDENT OF THE UNITED STATES
TO DETROIT CITIZENS STREET RAILWAY COMPANY, and its
OFFICERS, ASSOCIATES, AGENTS, ATTORNEYS, SOLICIT-
ORs, CLERKs, SERVANTS and WORKMEN, and TOM
L. JoHNSON, individually and as an officer of
said Detroit Citizens Street Railway Company.
GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Sixth Circuit
and Eastern District of Michigan, Southern Division,
that Letters Patent of the United States were issued
to Charles J. Van Depoele, in due form of law, on the
1st day of April, 1890, No. 424,695, for Improvements
in Suspended Switches and Traveling Contacts for
Electric Railways, and that said Letters Patent were
duly assigned to Thomson-Houston Electric Company,
and that you the said Detroit Citizens Street Railway
Company and Tom T. Johnson, individualy and as an
officer of Detroit Citizens Street Railway Company,
have infringed the 3rd, 4th, 11th, 19th, 20th, 23rd,
25th, 26th and 27th Claims thereof, which are as
follows :
“ 3. The combination with an overhead wire for re-
ceiving an underneath contact, of a switch plate at-
tached to the wire in about the same horizontal plane
as the wire.”
“4. The combination of a track having switches, an
overhead conductor above the track and having
switches, and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.”
“11. The combination, with an overhead line-wire,
of a grooved contact-device pressed against the wire
2
and receiving the wire between the flanges of the
groove, and a guiding switch-plate connected to the
wire against which the said flanges bear in passing
from one line to another.” -
“ 19. In an electric railway, the combination, with
branching overhead conductors, of an upwardly-pressed
contact arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel flanges, and
provided with depending ribs, between which the wheel
is free to move laterally to engage with One of the
branch conductors.”
“ 20. In an electric railway, the combination, with
an overhead switch-plate having depending ribs, but
open at its extremities, of main and branch conductors
extending from its two extremities, respectively, a
vehicle, an upwardly pressed contact arm attached to
the vehicle and tending to move laterally there with,
and a track-switch for the vehicle located so as to
operate in advance of the conductor switch.”
“ 23. The combination, with branching overhead
conductors, of a vehicle having a laterally swinging
contact arm pressed upward to engage the conductors,
and a switch-plate at the branching point having de-
pending sides, but open at its extremities, the interior
width of the plate between the sides being greater than
the thickness of the contact-wheel, whereby the wheel
is free to move laterally with relation to the main con-
ductor and engage One of the branching conductors.
“25. In an electric railway, the combination of a
track-switch, an overhead conductor switch, and a
vehicle having a rearwardly-extending contact-arm,
whereby the track-switch will operate in advance of the
conductor-switch.
“26. In a branching electric railway, the combina-
tion with a vehicle, of a track-switch, an overhead con-
ductor-switch, and a contact arm extending upward
from the vehicle to the conductor, and so located rela-
tively to the length of the vehicle and the two switches
3
that the lateral movement of the vehicle will give a cor-
responding movement of the contact-device on the
conductor-switch.”
“27. In a branching electric railway, the combina-
tion with a vehicle of a track switch, a contact-device
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor and
guided thereby, the said arm being jointed to the car
and tending to move laterally therewith, and an over-
head conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
Now, THEREFORE, we strictly command and enjoin
you, the said Detroit Citizens Street Railway Com-
pany and your officers, associates, agents, attorneys,
solicitors, clerks, servants, agents and workmen, and
you, the said Tom L. Johnson individually and as an
officer of said Detroit Citizens Street Railway Com-
pany, under the penalties that may fall on you, in case
of disobedience, that you forthwith and until the fur-
ther order of this Court, desist from, directly or in-
directly, using, or Selling, or disposing of, or acquiring,
in any way, any apparatus containing or embodying
the subject-matter of the combinations of the said 3rd,
4th, 11th, 19th, 20th, 23rd, 25th, 26th and 27th Claims
of the said Patent No. 424,695, or any or either of
them, or from infringing said Claims, or any or either
of them, in any way whatsoever.
Witness the Hon. MELVILLE W. FULLER, Chief
Justice of the Supreme Court of the United States, at
the City of Detroit, on the 17th day of September,
I897.
WALTER S. HARSHA [SEAL.]
Clerk
BETTS, BETTS, SHEVFIELD & BETTS,
Complainant's Solicitors.
[9177]
424,695.
No. 8.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Modified Injunction in the case
of Thomson-Houston Electric Company,
Complainant, vs. Albert Anderson
et al., Defendants, issued
October 30, 1896.
C. G. Burgoyne, walker and Centre Streets, New York.-1896.
IPRELIMINARY INJUNCTION.
Alnited States of 3merica.
MASSACHUSETTS DISTRICT, SS. :
|L. s.] THE PRESIDENT OF THE UNITED
STATES OF AMERICA,
To ALBERT ANDERSON and JOHN M. ANDERSON, citi-
zens of the State of Massachusetts, and residents
of and doing business in the City of Boston,
State of Massachusetts, under the firm name and
style of Albert & J. M. Anderson, your agents
and servants, GREETING :
WHEREAs, Thomson-Houston Electric Company, a
corporation duly organized and existing under and
by virtue of the laws of the State of Connecti-
cut, and having its principal place of business
in the City of Boston, County of Suffolk, and
State of Massachusetts, has exhibited its bill of
complaint before the Justices of our Circuit Court of
the United States for the First Circuit, begun and
holden at Boston, within and for the District of Massa-
chusetts, on the fifteenth day of May, A. D. 1896,
against you the said Albert Anderson and John M.
Anderson, praying to be relieved touching the matters
therein complained of, and whereas, by an order of
said Court made on the fourteenth day of October,
A. D. 1896, it was ordered that a writ of injunction
issue under the seal of the said Court, to restrain you
and each and every of you, from doing all the matters
and things from the doing of which you are prayed to be
restrained in said bill, according in full with the prayer
of said bill.
We therefore, in consideration thereof, ENJOIN AND
COMMAND you each, and every of you that from and im-
2
mediately after the receipt and notice of this our writ
by you, or any of you, you shall not make, use or sell,
or cause to be erected, made, used or sold, any electric
railways containing or embodying the invention cov-
ered by 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th, 27th,
32d and 33d claims of Letters Patent of the United
States, No. 424,695, dated April 1, 1890, to Charles J.
Van Depoele for new and useful improvements in sus-
pended switches and traveling contacts for electric rail-
ways, until the further order of the Court. It is not
intended to enjoin the defendants against the sale of
trolley stands, or trolley-poles, or trolley-wheels, or
trolley-harps, by way of replacing such individual parts
in car equipments embodying the patented combina-
tions which have been previously sold by the complain-
ant to purchasers, in cases where such parts have been
broken, worn out by use or are otherwise inefficient, but
this permission does not give authority to reconstruct
or rebuild a combination which has been sold by the
complainant.
Whereof you are not to fail on pain of ten thousand
dollars, to be levied on your and each of your goods,
chattels, land and tenements, to our use.
Witness the Honorable MELVILLE W. Full-
LER, Chief-Justice of the United
States, at Boston, this thirtieth day
|SEAL. of October, in the year of our Lord
One thousand eight hundred and
ninety-six. -
BENJ. H. BRADLEE,
Deputy Clerk.
(A true copy.)
Attest :
BENJ. H. BRADLEE,
Deputy Clerk.
[6642.]
- 424,695.
!g No. 17.
§

Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Decree and Injunction in the case of
Thomson-Houston Eleetric Company vs. John
--> George Buehler, Frank H. Platt and The -
Columbia Machine Works, in the
U. S. Circuit Court, Eastern
District of New York.
Decree entered June 23, 1898.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
At a Stated Term of the Circuit Court of the
United States for the Eastern Dis-
trict of New York, held in the
United States Court Rooms in the
Borough of Brooklyn, City of New
York, on the day of June, 1898.
Present—HoN. EDWARD B. THOMAS, District Judge,
holding the Court.
THOMSON-HOUSTON ELECTRIC
COMPANY
W. In Equity, on Let-
ters Patent No.
424,695.
JOHN GEORGE BUEHLER, FRANK H.
PLATT and THE COLUMBIA MA-
CHINE WORKS.
This cause having come on to be heard at this term
of the Court, upon the bill of complaint, and the pa-
pers heretofore filed in this Court, and proceedings had
herein, it is, upon consideration had, and upon motion
of Messrs. Betts, Betts, Sheffield & Betts, solicitors
for the complainant, and the defendants, John George
Buehler, Frank H. Platt and the firm of The Columbia
Machine Works, appearing by their solicitors Halcyon
M. Close, Esq., and submitting thereto,
ORDERED, ADJUDGED AND DECREED that Letters Patent
of the United States issued to Charles J. Van Depoele,
dated April 1st, 1890, No. 424,695, for Improvements
in Suspended Switches and Traveling Contacts for
Electric Railways, are good and valid in law as to the
2
3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th and 27th claims
thereof, which are as follows:
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch-
plate attached to the wire in about the same
horizontal plane as the wire.”
“4. The combination of a track having
switches, an overhead conductor above the
track and having switches, and a car on the
track provided with a contact-carrying arm
arranged to engage the conductor at a point in
rear of the front wheels of the car.”
“ 11. The combination, with an overhead line-
wire, of a grooved contact device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-
plate connected to the wire, against which the
said flanges bear in passing from One line to
another.”
“19. In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact-arm, carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel-flanges, and provided with
depending ribs, between which the wheel is free
to move laterally to engage with one of the
branch conductors.
“ 20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally there with, and a track-
switch for the vehicle located so as to operate
in advance of the conductor-switch.”
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
Swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but Open at
its extremities, the interior width of the plate
between the sides being greater than the thick-
ness of the contact-wheel, whereby the wheel is
3
free to move laterally with relation to the main
conductor and engage one of the branching con-
ductors.”
“25. In a branching electric railway, the com-
bination of a track switch, an overhead con-
ductor-switch, and a vehicle having a rearwardly-
extending contact-arm, whereby the track-
switch will operate in advance of the conductor-
switch.
“26. In a branching electric railway, the
combination, with a vehicle, of a track-switch, an
overhead conductor-switch, and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length
of the vehicle and the two switches that the
lateral movement of the vehicle will give a cor-
responding movement of the contact device on
the conductor-switch.
“ 27. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, a con-
tact device consisting of a trailing spring-
pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, the
said arm being jointed to the car and tending
to move laterally there with, and an overhead
conductor-switch adapted to engage the contact-
piece, and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and original inventor or discoverer of the inventions
described and claimed in the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Letters
|Patent No. 424,695, and that the Thomson-Houston
Electric Company, a corporation Organized and exist-
ing under the laws of the State of Connecticut, the
complainant herein, is the lawful and exclusive owner
of said Letters Patent No. 424,695; that the said de-
fendants John George Buehler, Frank H. Platt and
The Columbia Machine Works have infringed upon
the said 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th and
27th claims of said Letters Patent No. 424,695 and
upon the exclusive rights of the complainant under the
Sa Ill 62.
4
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the complainant do recover of the defendants, and
each of them, the sum of one hundred and seventy-five
dollars ($175) as profits, gains and advantages which
the defendants, or either of them, have derived or re-
ceived, or to which they may be entitled by reason of
the manufacture and sale of apparatus in infringement
of the said 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th
and 27th claims of the said letters patent, and as dam-
ages which it, the said complainant, has sustained by
reason of the said manufacture and Sale of apparatus
in infringement of the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of the said
letters patent, but it is expressly understood
that the complainant hereby reserves, unto itself
any and all rights to proceed against any and all users
of the infringing apparatus manufactured by the
said defendants or either of them.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that a perpetual injunction issue out of and under the
seal of this Court strictly enjoining and restraining
the defendants John George Bueller, Frank H.
Platt and The Columbia Machine Works, and
its and their associates, attorneys, clerks, servants,
agents and workmen, from directly or indirectly
constructing, making, advertising for sale, using, Sell-
ing or disposing of in any manner, or causing to be
constructed, made, advertised for sale, used, sold or
disposed of in any manner, any structures, devices or
apparatus containing or embodying the subject matter
of or intended to be used in the combinations of the
said 3d, 4th, 11th, 19th, 20th, 23d, 25th, 26th and 27th
claims of said Tetters Patent No. 424,695, or from in-
fringing upon or violating the said claims or any or
either of them in any way whatsoever.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the said defendants pay to the said complainant
$49.09 costs in this suit; and that the said Thomson-
Houston Electric Company, the complainant herein,
5
have execution for such costs and for the sum above
decreed to be paid unto the Thomson-Houston Elec-
tric Company, as aforesaid.
(Sgnd.) EDWARD B. THOMAs,
- - U. S. J.
I hereby appear as solicitor for John George Buehler,
Frank H. Platt and the firm of The Columbia, Machino
Works in the above-entitled suit and submit to the
entry of the foregoing decree. .
Dated June 23, 1898.
(Sgnd.) |HALCYON M. CLOSE,
Solicitor for Defendants.
[ENDORSED :]
Please take notice that the decree of which the
within is a copy was this 23d day of June, 1898,
entered in the office of the Clerk of the United States .
Circuit Court for the Eastern District for New York.
BETTs, BETTS, SHEFFIELD & BETTs,
Complainant's Solicitors.
6
THE PRESIDENT OF THE UNITED STATES
TO
JOHN GEORGE BUEHLER, FRANK H. PLATT and the
COLUMBIA MACHINE WORKs, your, and each of
your, associates, attorneys, clerks, servants,
agents and workmen,
GREETING :
WHEREAS, it has been represented to us, in our
Circuit Court of the United States for the Second
Circuit and Eastern District of New York, that Letters
Patent of the United States were issued to Charles J.
Van Depoele, in due form of law, on the first day of
April, 1890, numbered 424,695, for Improvements in
Suspended Switches and Travelling Contacts for Elec-
tric Railways, and that the said letters patent were
duly assigned to the Thomson-Houston Electric Com-
pany, and that you, the said John George Buehler,
Frank H. Platt and the Columbia Machine Works,
have infringed the 3d, 4th, 11th, 19th, 20th, 23d, 25th,
26th and 27th claims thereof, which are as follows:
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch-
plate attached to the wire in about the same
horizontal plane as the wire.”
“4. The combination of a track having
switches, an overhead conductor above the
track and having switches, and a car on the
track provided with a contact-carrying arm
arranged to engage the conductor at a point in
rear of the front wheels of the car.”
“ 11. The combination, with an overhead line-
wire, of a grooved contact device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-
plate connected to the wire against which the
said flanges bear in passing from one line to
another.”
7
“ 19. In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact-arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel-flanges, and provided with
depending ribs, between which the wheel is free
to move laterally to engage with One of the
branch conductors.
“ 20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally there with, and a track-
switch for the vehicle located so as to operate
in advance of the conductor-switch.”
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but Open at
its extremities, the interior width of the plate
between the sides being greater than the thick-
ness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main
conductor ard engage one of the branching con-
ductors.” - - -
“25. In a branching electric railway, the com-
bination of a track-switch, an overhead con-
ductor-switch, and a vehicle having a rearwardly-
extending contact-arm, whereby the track-
switch will operate in advance of the conductor-
switch. -
“26. In a branching electric railway, the
combination, with a vehicle, of a track-switch, an
overhead conductor-switch, and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length
of the vehicle and the two switches that the
lateral movement of the vehicle will give a cor-
responding movement of the contact device on
the conductor-switch.
“ 27. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, a con-
tact device consisting of a trailing spring-
8
pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, the
said arm being jointed to the car and tending
to move laterally there with, and an overhead
conductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
NOW, THEREFORE, we strictly command and enjoin
you, the said John George Buehler, Frank H. Platt
and the Columbia Machine Works, and your, and each
of your, associates, attorneys, clerks, servants, agents
and workmen, under the penalties that may fall on you
in case of disobedience, that you forthwith and forever
desist from, directly or indirectly, constructing, making,
advertising for sale, using, selling or disposing of in
any manner, or causing to be constructed, made, ad-
vertised for sale, used or sold or disposed of in any
manner, any structures, devices or apparatus contain-
ing or embodying the subject-matter of, or intended to
be used in, the combinations of the said 3d, 4th, 11th,
19th, 20th, 23d, 25th, 26th and 27th claims of said
Letters Patent No. 424,695, or from infringing upon or
violating the said claims, or any or either of them, in
any way whatsoever.
Witness the Hon. MELVILLE W. FULLER, Chief-Justice
of the United States, at the City of New York, Borough
of Brooklyn, on the 23d day of June, 1898.
B. LINCOLN BENEDICT,
|L. S.] Clerk.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainant's Solicitors.
[11384]
T
3.23
7-?
T-5
424,695.
o. 18.
"… 27.

Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Order for Injunction, and Preliminary
Injunction in the case of Thomson-Houston Electric
Company vs. Union Railway Company, filed
in the U. S. Circuit Court, Southern
District of New York.
Order filed August 16, 1898.
Injunction filed August 19, 1898.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
At a Session of the Circuit Court of the
United States, held in and for the
Second Circuit and Southern District
of New York, at the United States
Court Rooms in the Post Office
Building in the City of New York,
on the 10th day of August, 1898.
Present—HoN. E. HENRY LACOMBE, United States
Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complaimant,
In Equity.
UNION RAILWAY COMPANY.,
Defendant.
/
A motion for a preliminary injunction coming on to
be heard in the above-entitled cause, upon the bill of
complaint and upon the affidavits of Frankland Jannus,
James J. Cosgrove, Edwin W. Hammer and Edward
M. Bentley, and the exhibits therein referred to, and
upon the decision and order of the Circuit Court of
the United States for the Northe. In District of New
York in the suit of Thomson-Houstom Electric Com-
pany vs. Elmira and Horseheads Railway Company,
and upon the decision and order of the United States
Circuit Court of Appeals for the Second Circuit in the
aforesaid suit, and the complainant being represented
on said motion by Mr. L. F. H. Betts, and the
g
2
7
defendant by Mr. Emerson R. Newell, after con-
sideration had, and it appearing that the defendant
is now operating an electric railway comprising
branch and main line overhead wire conductors, track
and track-switches, and fifty car equipments consist-
ing, in part, of motors, controllers and trolleys sold and
Supplied to it by the Walker Company, and at least
eight overhead switches not manufactured or sold to
the defendant by either the complainant or its licensee,
the General Electric Company, and that said electric
railway of the defendant is an infringement of the 3d,
4th, 11th, 19th, 20th, 23d, 25th, 26th and 27th claims of
the United States Letters Patent No. 424,695, owned by
the complainant Thomson-Houston Electric Company :
Now, upon motion of Betts, Sheffield & Betts, solicit-
ors for the complainant, it is
ORDERED that a preliminary injunction be, and the
same hereby is, granted and Ordered to issue out of and
under the seal of this Court, strictly enjoining and re-
straining the defendant Union Railway Company and
its officers, associates, solicitors, attorneys, clerks, serv-
ants, agents and workmen, until the further order of
this Court, from directly or indirectly using, making,
selling or disposing of or acquiring, in any way, any
apparatus containing or embodying the subject matter
of the combinations of the said 3d, 4th, 11th, 19th,
20th, 23d, 25th, 26th and 27th claims of said Letters
Patent No. 424,695, which claims are as follows :
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch-
plate attached to the wire in about the same
horizontal plane as the wire.
“4. The combination of a track having
switches, an overhead conductor above the
track and having switches, and a car on the
track provided with a contact-carrying arm
arranged to engage the conductor at a point in
rear of the front wheels of the car.”
“11. The combination, with an overhead line-
wire, of a grooved contact device pressed against
3
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-plate
connected to the wire against which the said
flanges bear in passing from One line to another.”
“ 19. In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact-arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel-flanges, and provided with
depending ribs, between which the wheel is
free to move laterally to engage with one of the
branch conductors.
“ 20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally there with, and a track-
switch for the vehicle located so as to operate
in advance of the conductor-switch.”
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
swinging contact-arm pressed upward to en-
gage the conductors, and a switch-plate at the
branching point having depending sides, but
open at its extremities, the interior width of the
plate between the sides being greater than the
thickness of the contact-wheel, whereby the
wheel is free to move laterally with relation to
the main conductor and engage one of the
branching conductors.”
“ 25. In a branching electric railway, the com-
bination of a track-switch, an overhead con-
ductor-switch, and a vehicle having a rearwardly-
extending contact-arm, whereby the track-switch
will operate in advance of the conductor-switch.
“ 26. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, an
Overhead conductor-switch, and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length
of the vehicle and the two switches that the
lateral movement of the vehicle will give a cor-
responding movement of the contact device On
the conductor-switch.
10
11
12
4
13
14
15
16
“27. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, a
contact device consisting of a trailing spring-
pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, the
said arm being jointed to the car and tending to
move laterally there with, and an overhead con-
ductor-switch adapted to engage the contact-
piece, and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
AND IT IS FURTHER ORDERED, that the
defendant, thirty days from date of entry of this
order, shall file with the Clerk of this Court a sworn
statement showing whether all of its infringing ap-
paratus have been removed from its electric railway
system, giving the numbers or other designating marks
of the cars from which they have been removed, and
the location of all unlicensed overhead switches.
August 15, 1898.
(Sd.) E. HENRY LACOMBE,
U. S. Circuit Judge.
[ENDORSED.]
Assuming that defendant intends to obey the injunc-
tion order, and the Court must so assume, there seems
to be no objection to the last clause of this order.
(Sd.) E. H. LACOMBE,
U. S. C. J.
Service of the order of which the within is a certi-
fied copy and notice is hereby admitted this 16th day
of August, 1898.
(Sd.) MITCHELL, BARTLETT & BROWNELL,
Solicitors for Defendant.
|11563)
5
Injunction.
THE PRESIDENT OF THE UNITED STATES
TO
UNION RAILWAY COMPANY and all persons con-
nected, directly or indirectly, with it, and its
associates, attorneys, clerks, agents, servants
and workmen, -
G|REETING :
WHEREAS, it has been represented to us in our Circuit
Court of the United States for the Second Circuit and
Southern District of New York, that Letters Patent of
the United States were issued to Charles J. Van Depoele
on the 1st day of April, 1890, numbered 424,695, for
Improvements in Suspended Switches and Traveling
Contacts for Electric Railways, and that the said Let-
ters Patent are now owned by the Thomson-Houston
Electric Company, and that you, the said Union Iłail-
way Company, have infringed the 3rd, 4th, 11th, 19th,
20th, 23rd, 25th, 26th and 27th claims of said Letters
Patent. f
NOW, THEREFORE, we strictly command and en-
join you, the said Union Railway Company, and all
persons connected, directly or indirectly, with you, and
your associates, attorneys, clerks, agents, servants and
workmen, under the penalties that may fall on you in
case of disobedience, that you forthwith, and until the
further order of this court, desist from, directly or in-
directly, making or causing to be made, using or caus-
ing to be used, selling or causing to be sold, or dis-
posing of Or acquiring, in any way, any apparatus
containing or embodying the subject matter of the
combinations of the 3rd, 4th, 11th, 19th, 20th, 23rd,
25th, 26th and 27th claims of said Letters Patent No.
424,695, which claims are as follows:
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch-
17
18
19
6
21
22
23
24
plate attached to the Wire in about the same
horizontal plane as the wire.
“4. The combination of a track having
switches, an overhead conductor above the
track and having switches, and a car on the
track provided with a contact-carrying arm
arranged to engage the conductor at a point in
rear of the front wheels of the car.” -
“11. The combination, with an overhead line-
wire, of a grooved contact device pressed against
the wire and receiving the wire between the
flanges of the groove, and a guiding switch-plate
connected to the wire against which the said
flanges bear in passing from One line to another.”
“ 19. In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact-arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel-flanges, and provided with
depending ribs, between which the wheel is
free to move laterally to engage with one of the
branch conductors.”
“20. In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly-
pressed contact-arm attached to the vehicle and
tending to move laterally therewith, and a track-
switch for the vehicle located so as to operate
in advance of the conductor-switch.”
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally-
swinging contact-arm pressed upward to en-
gage the conductors, and a switch-plate at the
branching point having depending sides, but
open at its extremities, the interior width of the
plate between the sides being greater than the
thickness of the contact-wheel, whereby the
wheel is free to move laterally with relation to
the main conductor and engage one of the
branching conductors.”
“25. In a branching electric railway, the com-
bination of a track-switch, an overhead con-
ductor-switch, and a vehicle having a rearwardly-
extending contact-arm, whereby the track-switch
will operate in advance of the conductor-switch.”
7
“ 26. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, an
Overhead conductor-switch, and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length
of the vehicle and the two switches that the
lateral movement of the vehicle will give a cor-
responding movement of the contact device on
the conductor-switch.”
“27. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, a
contact device consisting of a trailing spring-
pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, the
said arm being jointed to the car and tending to
move laterally there with, and an overhead con-
ductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
Witness, the Honorable MELVILLE W. FULLER, Chief
Justice of the United States, at the City of New York,
on the 19th day of August, 1898.
(S'g'd) JOHN A. SHIELDs,
[SEAL.] Clerk.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainant's Solicitors.
Form No. 302.
I hereby certify that on the 19th day of August, 1898,
at the City of New York, in my District, I personally
served the within preliminary injunction upon the
within-named Union Railway Company, by exhibiting
to Edward A. Maher, president of said Company, the
within Original, and, at the same time, leaving with
him a copy thereof.
(signed) WILLIAM HENKEL,
United States Marshal Southern District of
New York.
Dated August 19th, 1898.
J. A. S.
26
424,695.
GENºt??Raby,
UNIV. of Mich.
M0W 20 1902
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Decree in the case of Thomson-Houston
Electric Company vs. Rahway Electric Light and
Power Company, filed in the U. S. Circuit
Court, District of New Jersey,
November 7, 1898.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
At a stated term of the Circuit Court of the
United States, for the District of
New Jersey, held at the Court House
in the City of Trenton on the Seventh
day of November, 1898.
Present—ANDREW KIRKPATRICK, Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY
|
On Letters Patent
WS. y No. 424,695.
|BAHWAY ELECTRIC LIGHT & POWER
COMPANY.
This cause having come on to be heard at this term
of the Court upon the pleadings and proceedings here-
in it is, upon consideration, and upon motion of Betts,
Betts, Sheffield & Betts, solicitors for the complainant,
the defendant submitting thereto,
ORDERED, ADJUDGED AND DECREED, that Letters Pat-
ent of the United States issued to Charles J. Van De-
poele, dated. April 1, 1890, No. 424,695, for Improve-
ments in Suspended Switches and Traveling Contacts
for Electric Railways are good and valid in law as to
the 3rd, 4th, 11th, 19th, 20th, 23rd, 25th, 26th and 27th
claims thereof, which are as follows :
“3. The combination, with an overhead wire for re-
ceiving an underneath contact, of a switch-plate at-
tached to the wire in about the same horizontal plane
as the wire.
2
“4. The combination of a track having switches, an
overhead conductor above the track, and having
switches and a car on the track provided with a con-
tact-carrying arm arranged to engage the conductor at
a point in rear of the front wheels of the car.
“11. The combination, with an overhead line wire
of a grooved contact device pressed against the wire
and receiving the wire between the flanges of the groove,
and a guiding switch-plate connected to the wire against
which the said flanges bear in passing from One line to
another.
“ 19. In an electric railway the combination with
branching overhead conductors of an upwardly-pressed
contact-arm carrying a grooved wheel embracing the
conductor, and a switch-plate at the branching point
adapted to receive the tips of the wheel-flanges, and
provided with depending ribs between which the wheel
is free to move laterally to engage with one of the
branch conductors.
“20. In an electric railway the combination with an
overhead switch-plate having depending ribs, but open
at its extremities, of main and branch conductors ex-
tending from its two extremities respectively, a vehicle,
an upwardly-pressed contact-arm attached to the vehi-
cle and tending to move laterally there with, and a
track-switch for the vehicle located so as to Operate in
advance of the conductor-switch.
“23. The combination with branching overhead con-
ductors of a vehicle having a laterally-swinging contact-
arm pressed upward to engage the conductors, and a
switch-plate at the branching point having depending
sides, but open at its extremities, the interior width of
the plate between the sides being greater than the
thickness of the contact-wheel, whereby the wheel is
free to move laterally with relation to the main con-
ductor and engage one of the branching conductors,
“25. In a branching electric railway the combina-
tion of a track-switch, and overhead conductor-switch
and a vehicle having a rearwardly-extending contact-
arm, whereby the track-switch will Operate in advance
of the conductor-switch.
“26. In a branching electric railway the combina-
tion with a vehicle of a track-switch, an overhead con-
ductor-switch and a contact-arm extending upward
from the vehicle to the conductor, and so located rel-
atively to the length of the vehicle and the two switches
that the lateral movement of the vehicle will give a cor-
3
responding movement of the contact device on the con-
ductor-switch.
“ 27. In a branching electric railway the combina-
tion with a vehicle of a track-switch, a contact device,
consisting of a trailing spring-pressed arm having a
grooved contact-piece embracing the conductor, and
guided thereby, and said arm being jointed to the car
and tending to move laterally there with, and an over-
head conductor-switch adapted to engage the contact-
piece, and whereby the extremity of the arm is flexibly
guided from main to branch conductor.”
That the said Charles J. Van Depoele was the first
and original inventor or discoverer of the inventions
described and claimed in the said 3rd, 4th, 11th, 19th,
20th, 23rd, 25th, 26th and 27th claims of said Letters
Patent No. 424,695, and that the Thomson-Houston
Electric Company, a corporation organized and exist-
ing under the laws of the State of Connecticut, the
Complainant herein, is the lawful and exclusive owner
of said Letters Patent No. 424,695.
And the defendant Rahway Electric Light & Power
Company has infringed upon the said 3rd, 4th, 11th,
19th, 20th, 23rd, 25th, 26th and 27th claims of said
Letters Patent No. 424,695, and upon the exclusive
rights of the complainant under the same.
AND IT IS FURTHER ORDERED, ADJUDGED AND DE-
CREED, that the complainant waive an accounting
against this defendant as to its profits and damages
(but without prejudice to the rights of complainant in
any other suit on this patent); that a perpetual in-
junction issue out of and under the seal of this Court
strictly enjoining and restraining the defendant Rah-
way Electric Light & Power Company, its associates,
attorneys, officers, solicitors, agents, servants, clerks,
employees and workmen, and each and every person
connected directly or indirectly with them, or either or
any of them, from directly or indirectly constructing,
making, erecting, using or selling, or causing to be con-
structed, erected, used or sold any structure, device or
apparatus containing or embodying the subject matter
4
of, or intended to be used in the combination of the
said claims, or either or any of them, of said Letters
Patent No. 424,695, or from infringing upon or violat-
ing the said claims, or either or any of them, by the
construction, erection, manufacture, use or sale of the
said structure, device or apparatus in any way what so-
€V €1.
ANDREW KIRKPATRICK,
Judge.
Form approved.
BETTS, BETTS, SHEFFIELD & BETTS,
for Complts.
C. E. MITCHELL,
for Defendants.
[12529]
424,695.
* ... No. 21.
3
$ < *;
Injunction—Circuit Court.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Injunction in the case of Thomson-Houston
Electric Company vs. Michigan Electric Company
et al., filed in the U. S. Circuit Court, Eastern
District of Michigan, February 2, 1899. -
C. G. Burgoyne, Walker and Centre Street, N. Y.
INJUNCTION.
THE PRESIDENT OF THE UNITED STATES
TO
MICHIGAN ELECTRIC COMPANY., JOSEPH E. LOCKWOOD,
PRESIDENT, and GEORGE A. MANSFIELD, TREASURER AND
MANAGER, individually and as officers of said MICHIGAN
ELECTRIC COMPANY, its officers, associates, attorneys,
solicitors, clerks, agents, servants and workmen :
GREETING :—
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Sixth Circuit
and Eastern District of Michigan that Letters Patent
of the United States were issued to Charles J. Van
Depoele, in due form of law, on the first day of April,
1890, numbered 424,695, for Improvements in Sus-
pended Switches and Travelling Contacts for Electric
Railways, and that the said Letters Patent were duly
assigned to the Thomson-Houston Electric Company,
a corporation organized and existing under the laws of
the State of Connecticut, and that you, the said Michi-
gan Electric Company, Joseph E. Lockwood, Presi-
dent, and George A. Mansfield, Treasurer and Man-
ager, individually and as officers of Said Michigan
Electric Company, have infringed the 3rd, 4th, 11th,
19th, 20th, 23rd, 25th, 26th, and 27th claims thereof.
Now, THEREFORE, we strictly command and enjoin you
that said Michigan Electric Company, Joseph E. Lock-
2
wood, President and George A. Mansfield, Treasurer
and Manager, individually and as officers of said
Michigan Electric Company, and your officers, associ-
ates, attorneys, solicitors, agents, clerks, servants and
workmen, and each and every person connected, di-
rectly or indirectly, with you, under the penalties that
may fall on you in case of disobedience, that you forth-
with and forever desist from, directly or indirectly,
constructing, erecting, making, advertising for sale,
using, Selling, or disposing of, or causing to be con-
structed, erected, made, advertised for sale, used, sold
or disposed of, in any way, any switch, structure, de-
vice or apparatus containing or embodying the subject-
matter of or intended to be used in the combinations
of the said claims, or either or any of them, of said
Letters Patent, to wit :
“3. The combination, with an overhead wire
for receiving an underneath contact, of a switch-
plate attached to the wire in about the same hor-
izontal plane as the wire.
“4. The combination of a track having switches,
an overhead conductor above the track and having
switches, and a car on the track provided with a
contact-carrying arm arranged to engage the con-
ductor at a point in rear of the front wheels of the
Call'.
“11. The combination, with an overhead line-
wire, of a grooved contact device pressed against
the wire and receiving the wire between the flanges
of the groove, and a guiding Switch-plate connected
to the Wire against which the said flanges bear in
passing from one line to another.
“19. In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact-arm carrying a grooved
wheel embracing the conductor, and a switch-
plate at the branching point adapted to receive
the tips of the wheel flanges, and provided with
depending ribs, between which the wheel is free
to move laterally to engage with one of the branch
conductors.
“20. In an electric railway, the combination,
with an overhead switch-plate having depending
3
ribs, but open at its extremities, of main and
branch conductors extending from its two extrem-
ities, respectively, a vehicle, an upwardly-pressed
contact-arm attached to the vehicle and tending to
move laterally there with, and a track-switch for
the vehicle located so as to operate in advance of
the conductor-switch.
“23. The combination, with branching over-
head conductors, of a vehicle having a laterally
swinging contact-arm pressed upward to engage
the conductors, and a switch-plate at the branch-
ing point having depending sides, but Open at its
extremities, the interior width of the plate between
the sides being greater than the thickness of the
contact-wheel, whereby the wheel is free to move
laterally with relation to the main conductor and
engage one of the branching conductors.
“25. In a branching electric railway, the com-
bination of a track-switch, an overhead conductor-
switch, and a vehicle having a rearwardly-extend-
ing contact-arm, whereby the track-switch will
operate in advance of the conductor-switch.
“26. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, an
overhead conductor-switch, and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length of
the vehicle and the two switches that the lateral
movement of the vehicle will give a correspond-
ing movement of the contact device on the con-
ductor-switch.
“27. In a branching electric railway, the com-
bination, with a vehicle, of a track-switch, a con-
tact device consisting of a trailing spring-pressed
arm having a grooved contact-piece embracing the
conductor and guided thereby, the said arm being
jointed to the car and tending to move laterally
there with, and an overlead conductor-switch
adapted to engage the contact-piece and whereby
the extremity of the arm is flexibly guided from
main to branch conductor.”
or from infringing upon or violating the said claims, or
either or any of them, by the manufacture, use or sale
of said structure, device or apparatus in any way what-
SOGVel’.
4.
Witness the Hon. MELVILLE W. FULLER, Chief J us-
tice of the Supreme Court of the United States, at the
City of Detroit, on the 7th day of January, 1899.
(Sgd) WALTER S. HARSHA,
[SEAL.] Clerk.
BETTs, HYDE & BETTS, -
Complainant's Solicitors.
t
EASTERN DISTRICT OF MICHIGAN, ss.
I hereby certify and return that I did on the First
day of February A. D. 1899 serve the within injunc-
tion upon the Michigan Electric Company et al. within
named by serving a copy upon Joseph E. Lockwood,'
President at Detroit in said District at 4:37 P. M. of
said day and date.
Copy
WILLIAM R. BATES,
Marshal.
by
C. P. TAYLOR,
Deputy.
[12781]
393,323.
No. 17.
Injunction Order—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order for Preliminary Injunction in the
case of Thomson-Houston Electric Company and
The General Electric Automobile Company,
Complainants, vs. The Steel Motor Company
and The Johnson Company, Defendants,
filed in the U. S. Circuit Court,
Southern District of Ohio,
February 6, 1899.
º
C. G. Burgoyne, Walker and Centre Street, N. Y.
At a Stated Term of the Circuit Court of .
the United States, held in and for the
Sixth Circuit and Western Division
of the Southern District of Ohio, in
the United States Court Rooms in
the Post Office Building in the City
of Cincinnati, on the 6th day of
February, 1899.
Present: HON. A. C. THOMPSON, U. S. Judge.
\
THOMSON-HousTON ELECTRIC COM-
BANY and GENERAL ELECTRIC
AUTOMOBILE COMPANY No. 5.255.
In Equity;
WS Letters Patent
- e ..] No. 393,323.
THE STEEL MOTOR COMPANY and
THE JOHNSON COMPANY.
/
An order to show cause why a preliminary injunc-
tion should not issue herein having been granted on
the 31st day of December, 1898, returnable February
6, 1899, and the same coming on to be heard upon the
bill of Complaint and upon the affidavits of L. F. H.
Betts, Edward M. Bentley, Charles A. Coffin, Edwin
W. Hammer and F. H. Strieby, and the exhibits re-
ferred to therein, including a copy of the Letters
Patent in suit, No. 393,323, and a copy of the opinion
of the United States Circuit Court of Appeals for the
Second Circuit, in the suit of these complainants
against The Nassau Electric Railroad Company upon
said Letters Patent ; filed by the complainants in Sup-
port of Said motion, and after hearing Joseph
Wilby, Esq., for the complainant, in support of
said motion, and after due consideration had,
and it appearing that the complainants have complied
2
with the Order of this Court, dated December 31, 1898,
by serving upon the defendants, on the 3rd day of
January, 1899, copies of their affidavits and papers, in
support of Said motion ; and it further appearing that
the defendants, and each of them, have infringed upon
the said Letters Patent, and upon the rights of the
complainants under the same, by manufacturing and
selling, to companies engaged in the Operation of
electric railways, wherein the cars are propelled by
electricity delivered thereto from an outside source
through a line conductor; the combination of two
motors and motor-circuits for Operating the same, in
series and in parallel relation with resistances, and six
types or forms of controllers described in the affidavit
of Edwin W. Hammer in this cause, verified December
27, 1898, and illustrated in Hammer Exhibits “T)ia-
gram Mill Creek Controller, Type No. 34”, and
*: Diagram Nassau Controllers, Nos. 1, 2, 3, 4 and 5’’;
which said combinations of motors, resistances, motor-
circuits and controllers contain the combinations re-
cited in the 20th, 21st, 22nd, 27th, 28th, 29th and 31st
claims of said Letters Patent, and after due considera-
tion had, it is
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendants, The Steel Motor Company
and The Johnson Company, and their, and each of
their, associates, attorneys, solicitors, clerks, servants,
agents and workmen, until the further order of this
Court, from, directly or indirectly, making, or causing
to be made, constructing, or causing to be constructed,
using or causing to be used, or disposing of in any
way, any combination of electric railway motors and
motor-circuits and resistances combined with con-
trollers like controllers described in the affidavit of
Edwin W. Hammer, verified December 27, 1898, and
illustrated in Hammer Exhibits “Diagram Mill Creek
Controller” and “Diagram Nassau Controllers, Nos.
1, 2, 3, 4 and 5’, or any other controllers containing
3
or embodying the inventions and improvements recited
in said 20th, 21st, 22nd, 27th, 28th, 29th and 31st
claims of said Letters Patent, which are as follows:
“ 20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resistances,
and a switch to put said resistances into or out of
the motor-circuit without changing the motor-con-
nections to vary the power of the current flowing
through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and one or more
resistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
m OtorS.
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
one at a time, contact-brushes from said resist-
ances, and connected to the source of electric Sup-
ply and resting on the contact-block, and adapted
to be brought into or out of contact with it in
succession, whereby the resistances may be cut
into or out of the motor-circuit without varying
the connection of the motor-coils.
“ 27. The combination of an electric-motor, a
Source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or more
resistances, a resistance-switch to cut said resist-
ances gradually into or out of the motor-circuit,
and a connection between the said switches,
whereby a movement of the motor-switch will first
cut in one or more of the resistances, and after
changing the power of the motor automatically cut
the resistances out of circuit again.
“ 28. The combination of a motor having
separate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
4
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coupling
of the motor-coils. -
“29. The combination of a motor having
separate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
or from infringing the said claims, or either or any of
them, in any way whatsoever. -
THE UNITED STATES OF AMERICA,
Southern District of Ohio, SS. .
WESTERN DIVISION,
I, BENJAMIN R. CoWEN, Clerk of the Circuit Court of
the United States of America, within and for the Dis-
trict and Division aforesaid, do hereby certify that the
foregoing Entry is truly taken and correctly copied
from the Journal of said Court.
In Testimony Whereof, I have hereunto
- set my hand, and affixed the Seal of
|SEAL.] said Court at the City of Cincinnati,
Ohio, this 6th day of Feb’y, A.
D. 1899.
B. R. COWEN,
- Clerk.
By ROB'T GEORGE,
Deputy Clerk.
5
Received Feb'y Ist, 1899, copy of within paper,
this receipt is not to be taken as agreeing to the Entry
of this order, or that the form is proper and alleges the
contrary. Further, complainant is requested to file
the record in the last against Hartford and West
Hartford R. R. Co. and Nassau Electric Railroad Co.
HARDING & HARDING,
Solrs. for Respondents.
[ENDORSED.]
Please take notice that the Order of which the within
is a copy, was duly filed and entered in the office of
the Clerk of the U. S. Circuit Court for the Southern
District of Ohio, on the 6th day of Feb., 1899.
Yours, etc.,
DETTS, BETTS, SHEFFIELD & BETTS,
Solrs. for Complt.
|12805]
393,323.
No. 18.
Order and Injunction—Circuit Court. .
Series-Parallel Controller Case.
w
(Condict Patent No. 393,323.)
Full text of Order and Injunction in the case of Thomson-
Houston Electric Company and General Electric
Automobile Company, Complaznants, vs. The
Yonkers Railroad Company, Defendant, -
filed in the U. S. Circuit Court, ”
Southern District of New York.
Order filed February 3, 1899.
Injunction served February 9, 1899.
C. G. BURGoyNE, Walker and Centre Street, N. Y.
Order.
At a Stated Term of the United States
Circuit Court, held in and for the
Southern District of New York, at
the United States Court Rooms, in
the Post Office Building, in the City
of New York, Borough of Manhattan,
on the 3rd day of February, 1899.
Present: HON. E. HENRY LACOMBE, U. S. Judge.
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL ELECTRIC AUTO-
MOBILE UOMPANY *
O COMPAN y In Equity, on Pat-
ent No. 393,323.
WS.
THE YONKERS RAILROAD. COMPANY.
A motion for a preliminary injunction herein having
come on to be heard upon the bill of complaint and
upon the affidavits of Charles A. Coffin, L. F. H. Betts
and Edwin W. Hammer, and the exhibits referred to
therein, including a copy of the Condict Patent, No.
393,323, and a copy of the opinion of the Circuit Court
of Appeals for the Second Circuit, in the case of these
complainants against The Nassau Electric Railroad
Company, on the Letters Patent in suit, filed by the
complainants in support of said motion, and after hear-
ing Mr. L. F. H. Betts in support of said motion, and
Mr. R. G. Monroe in opposition, and it appearing that
2
the defendant has infringed upon the said Letters Pat-
ent, and upon the rights of the complainants under the
same, by using, upon the cars of their electric railway,
in the City of Yonkers, within the Southern District of
New York, (which cars are propelled by electricity,
delivered thereto from an outside source through a line
conductor), twenty-five car-equipments, each including
the combination of two motors and motor-circuits for
Operating the same, in series and parallel relation, with
resistances, and at least two types or forms of controllers,
sold and supplied to it by The Steel Motor Company,
to wit . On some of the cars, the said defendant has
used, in such combination, controllers like those de-
scribed in the affidavit of Edwin W. Hammer in this
cause, verified January 21, 1899, and illustrated in
“Hammer Exhibit, Diagram No. 1, Type No. 34
Controller "; and on other cars of said electric railway,
controllers like those illustrated in “Hammer Exhibit,
Diagram No. 2, Type No. 34 Controller’”; which said
combinations of motors, resistances, motor-circuits and
controllers contain the combinations recited in the
20th, 21st, 22d, 27th, 28th, 29th, and 31st claims of
said Letters Patent, and after due consideration had,
it is
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining
and restraining the defendant, The Yonkers Rail-
road Company, and its associates, attorneys, solici-
tors, clerks, servants, agents and workmen, and each
of them, until the further order of this Court, from,
directly or indirectly, making, or causing to be made,
constructing or causing to be constructed, using, or
causing to be used, Or disposing of in any way, any
combination of electric motors, motor-circuits and re-
sistances, combined with controllers like those illus-
trated in “Hammer Exhibit, Diagram No. 1, Type No.
34 Controller,” and “Hammer Exhibit, Diagram No. 2,
Type No.34 Controller,” or any other controllers contain-
3
ing or embodying the inventions and improvements
recited in the said 20th, 21st, 22d, 28th, 29th and 31st
claims of said Letters Patent, which are as follows:
“20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into
or out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in dfferent ways
to vary the motor resistance, and one or more re-
sistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
motors.
“22. The connbination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined Order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
one at a time, contact-brushes from said resist-
ances, and connected to the source of electric
supply and resting on the contact-block, and
adapted to be brought into or out of contact with it
in succession, whereby the resistances may be cut
into or out of the motor circuit without varying
the connection of the motor-coils.
“27. The combination of an electric motor, a
source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or more
resistances, a resistance-switch to cut said resist-
ances gradually into and out of the motor-circuit,
and a connection between the said switches, where-
by a movement of the motor-switch will first cut
in One or more of the resistances, and after chang-
ing the power of the motor automatically cut the
resistances out of circuit again.
“28. The combination of a motor having sepa.
rate coils, a motor-circuit, a motor-switch for
4
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coup-
ling of the motor-coils.
“29. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling up the coils of the motors in series or
multiple to vary their internal resistance, a resist-
ance, a switch to insert the resistance when the
motor switch is being shifted, and a connection
between said switches to operate both simultane-
ously.” •
or from infringing upon the said claims, or either or
any of them, in any way whatsoever.
AND IT IS FURTHER ORDERED that the operation of said
injunction, as to the infringing equipments already
in actual use by the defendant, is suspended so far and
so long as to enable the defendant to comply there-
with, as follows: The defendant shall remove all of
its infringing apparatus, referred to in the moving
papers, within thirty days from date.
AND IT IS FURTHER ORDERED that this suspension of
the operation of said injunction is based upon the fur-
ther express condition, viz.: That the defendant, thirty
days from date, file with the Clerk of this Court, and,
serve upon counsel for the complainants, a sworn
statement, showing that all of such infringing appa-
ratus has been removed, and giving the numbers or
other designating marks of such apparatus, and of the
cars from which they have been removed.
5
In case of any failure on the part of the defendant to
comply strictly with the conditions of this order, or any
of them, said injunction shall, ipso facto, become im-
mediately operative and in full force and effect.
E. H. LACOMBE.
Form approved,
L. F. H. BETTS,
Counsel for Complaimant.
A Copy.
[SEAL.] JOHN A. SHIELDS,
Clerk.
|ENDORSED :]
Please take notice that the order of which the within
is a copy was duly filed and entered in the office of the
Clerk of the U. S. Court for the Southern District of
New York on the 3rd of Feb., 1899.
Yours, etc.,
BETTs, BETTS, SHEFFIELD & BETTs,
Solrs, for Complt.
Injunction.
THE PRESIDFNT OF THE UNITED STATES
TO
THE YONKERS RAILROAD COMPANY, ITS ASSOCIATEs, AT-
TORNEYS, SOLICITORS, CLERKs, SERVANTS, AGENTS
AND WORKMEN,
GREETING :
WHEREAs, it has been represented to us in our Circuit
Court of the United States for the Second Circuit and
Southern District of New York, that Letters Patent of
the United States were issued to George Herbert Con-
dict, in due form of law, on the 20th day of November,
1888, numbered 393,323, for Improvements in Electric
Motors, and that the Thomson-Houston Electric
Company is the exclusive licensee under that patent
for certain purposes, and that you, the said The Yonk-
ers Railroad Company, have infringed the 20th, 21st,
22nd, 27th, 28th, 29th and 31st claims thereof.
NOW, THEREFORE, WE STRICTLY COMMAND AND ENJOIN you,
the said The Yonkers Railroad Company, your associa-
tes, attorneys, Solicitors, clerks, servants, agents and
workmen, under the penalties that may fall on you in
case of disobedience, that you forthwith and until the
further order of this Court desist from, directly or in-
directly, making or causing to be made, constructing or
causing to be constructed, using or causing to be used,
or disposing of in any way, any combination of elec-
tric motors, motor-circuits and resistances, combined
with controllers like those illustrated in “Hammer Ex-
hibit Diagram No. 1, Type No. 34 Controller " and
“Hammer Exhibit, Diagram No. 2, Type No. 34 Con-
troller”, filed in the suit brought against you in the
Circuit Court of the United States for the Southern
District of New York, by the Thomson-Houston
Electric Company, et al., or any other controllers con-
7
taining or embodying the inventions and improvements
recited in the said 20th, 21st, 22nd, 27th, 28th, 29th and
31st claims of said Letters Patent, which are as fol-
lows :
“ 20. The combination of a source of electric
energy, the coils of One or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and one or more re-
sistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
motors.
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a pre-determined Order, a
series of resistances, a contact-block on Said switch
in circuit with the motor and resistances and hav-
ing contact-edges for cutting in or out the resis-
tances one at a time, contact-brushes from said
resistances, and connected to the source of electric
supply and resting on the contact-block, and
adapted to be brought into or out of contact with it
in succession, whereby the resistances may be cut
into or out of the motor-circuit without varying
the connection of the motor-coils.
“ 27. The combination of an electric motor, a
source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or
more resistances, a resistance-switch to cut said
resistances gradually into or out of the motor-
circuit, and a connection between the said switches,
whereby a movement of the motor-switch will first
cut in one or more of the resistances, and after
changing the power of the motor automatically eut
the resistances out of circuit again.
8
“28. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resis-
tance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coup-
ling of the motor-coils.
“29. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling
up said coils so as to vary the internal resistance
of the motor, a resistance, a resistance-switch to
cut in and out the said resistance upon shifting the
motor-switch to vary the coupling of the motor-
coils, and means controlled by the motor-switch
for operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling up the coils of the motors in series or
multiple to vary their internal resistance, a resis-
tance, a switch to insert the resistance when the
motor-switch is being shifted, and a connection
between said switches to operate both simultane-
ously.”
or from infringing upon the said claims, or either or
any of them, in any way whatsoever. But this injunc-
tion is suspended so far as is provided in the order en-
tered in said suit on the 3rd day of February, 1899.
Witness the Hon. MELVILLE W. FULLER, Chief Justice
of the United States, at the City of New York, on the
8th day of February, 1899.
(signed) JOHN A. SHIELDs,
Clerk.
BETTS, BETTS, SHEFIELD & BETTS,
[SEAL.] Complainant's Solicitors.
[12819]
GEłiſ Kät #RARY, 393,323.
UN. V., &Y H Aſii C#. No. 19
FER-28, 1899 ---.
Injunction—Circuit Court.
Series Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Injunction in the case of Thomson-Houston
Electric Company and The General Electric Automobile
Company, Complainants, vs. The Steel Motor
Company and The Johnson Company,
Defendants, filed in the U.S. Circuit
Court, Southern District of Ohio,
February Io, 1899.
C. G. Burgoyne, Walker and Centre Street, N. Y.
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2
or causing to be used, or disposing of in any way, any
combination of electric railway motors and motor cir-
cuits and resistances combined with controllers de-
scribed in the affidavit of Edwin W. Hammer, verified
December 27, 1898, and illustrated in Hammer EX-
hibits “Diagram Mill Creek Controller" and “Dia-
gram Nassau Controllers Nos. 1, 2, 3, 4 and 5,” filed in
the suit in this cause brought against you, and each of
you, by the Thomson-Houston Electric Company,
et al., or any other controllers containing or embodying
the inventions and improvements recited in the said
20th, 21st, 22nd, 27th, 28th, 29th and 31st claims of
said Letters Patent, which are as follows :
“20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into
or out of the motor-circuit without changing the
motor-connections to vary the power of the current
flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways to
vary the motor resistance, and One or more resist-
ances, said switch being adapted to put said re-
sistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
motors.
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
One at a time, contact-brushes from said resist-
ances, and connected to the source of electric sup-
ply and resting on the contact-block, and adapted
to be brought into or out of contact with it in suc-
cession, whereby the resistances may be cut into
or out of the motor-circuit without varying the
connection of the motor-coils.
tº
tº)
“27. The combination of an electric motor, a
source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or
more resistances, a resistance-switch to cut said
resistances gradually into or out of the motor-cir-
cuit, and a connection between the said switches,
whereby a movement of the motor-switch will first
cut in one or more of the resistances, and after
changing the power of the motor automatically
cut the resistances out of circuit again.
“28. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for coup-
ling up said coils so as to vary the internal resist-
ances of the motor, a resistance, and a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the Imotor-coils.
“29. The combination of a motor having separ-
ate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for Operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
or from infringing the said claims, or either or any of
them, in any way whatsoever.
Witness the Hon. Melville W. FULLER, Chief Justice
of the United States, at the City of Cincinnati, on the
10th day of February, 1899.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainant's Solicitors.
4
SOUTHERN DISTRICT OF OHIO, SS :
The foregoing is a true and correct copy of the origi-
nal on file.
Attest :
P. R. CoWEN,
- Clerk.
[SEAL.] By JANIE W. F. CowPN,
* y Deputy Clerk.
Received this writ at Cincinnati, Ohio, on the 10th
day of February, 1899, and on the same day I served
the said The Steel Motor Company and The Johnson
Company by handing copies thereof with the endorse-
ments thereon to O. C. Evans, Agent of said Companies
at Cincinnati, Ohio.
MICHAEL DEVANNEY,
U. S. Marshal, S. D. O.
Per M. H. SPILLARD,
Deputy.
Fees.
Mileage_ _ _ $ .06
2 Services- - 4.00
$4.06
[12868]
393,323.
No. 21.
Order for Injunction—Circuit Court.
Series-Parallel Controller Case.
(Gondict Patent No. 393,323.)
Full text of Order for Preliminary Injunction in the
case of Thomson-Houston Electric Company and
the General Electric Automobile Company,
Complainants, vs. Detroit Citizens Street
Railway Company, Defendant, filed in &
the U. S. Circuit Court, Eastern
District of Michigan,
March I 3, 1899.
A
C. G. Burgoyne, Walker and Centre Streets. N. Y.
Order for Injunction.
At a stated term of the Circuit Court of
United States, held in and for the
Sixth Circuit, and the Eastern Dis-
trict of Michigan, in the United
States Court Rooms in the Post Office
Building in the City of Detroit, on
the 13th day of March, 1899.
Present : HON. HENRY H. SWAN, U. S. Judge.
THOMSON-HOUSTON ELECTRIC Com-
PANY, and the GENERAL ELECTRIC
AUTO-MOBILE COMPANY.,
In Equit
WS n 19quity
T) ETROIT CITIZENS STREET RAILWAY
COMPANY.
An order to show cause why a preliminary injunction
should not issue herein having been heretofore granted
by this Court, returnable March 13th, 1899, and the
same coming on to be heard upon the bill of complaint
and upon the affidavits of L. F. H. Betts, Charles A.
Coffin, W. Channing Broadhurst, Edwin W. Hammer
and Edward M. Bentley, and the exhibits referred to
therein, (including a copy of the Letters Patent in suit
No. 393,323; and a copy of the opinion of the United
States Circuit Court for the District of Connecticut, in
the case of this complainant against the Hartford &
West Hartford Railroad Company; a copy of the
opinion of the United States Circuit Court for the
Eastern District of New York; and a copy of the
opinion of the U. S. Circuit Court of Appeals for the
2
Second Circuit in the case of these complainants against
the Nassau Electric Railroad Company, upon the said
Letters Patent in suit); filed by the complainants in
support of said motion, and after hearing Messrs.
Russel & Campbell, representing Messrs. Betts, Betts,
Sheffield & Betts, solicitors for the complainant, in
support of said motion, and Messrs. Brennan, Donnelly
and VanDemark, appearing for the defendant, and after
due consideration had, and it appearing that the com-
plainants have complied with said order to show cause
heretofore granted by this Court, by serving upon the
defendant on the 13th day of February, 1899, copies of
their affidavits and papers in support of said motion ;
and it further appearing that the defendant has in-
fringed upon the said Letters Patent and upon the
rights of the complainants under the same, by using
upon the cars of its electric railway in the City of De-
troit, within the Eastern District of Michigan (which
cars are propelled by electricity delivered thereto
through an outside source through a line conductor),
about 500 car equipments, each including the combina-
tion of two motors and motor circuits for operating the
same in series and parallel relation, with resistances,
and at least two types or forms of controllers sold and
supplied to it by The Steel Motor Company, to wit :
on some of the cars the said defendants has used in
such combination, controllers like those described in
the affidavits of W. Channing Broadhurst, verified
February 4th, 1899, and Edwin W. Hammer verified
February 4th, 1899, and known as “type D '' and
“ type D No. 2 ” forms of Steel Motor Company's con-
trollers, as illustrated in “Hammer Exhibit, diagram
type D2 controller " and “Hammer Exhibit, diagram
type D controller ; ” which said combinations of
lmotors, resistances, motor circuits and controllers, con-
tain the combinations recited in the 20th, 21st, 22nd,
27th, 28th, 29th and 31st claims of said Letters Patent,
and after due consideration had, it is—
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendant, Detroit Citizens Street Rail-
3
way Company, and its associates, attorneys, Solicitors,
clerks, servants, agents and workmen, until the further
order of this Court, from directly or indirectly making
or causing to be made, constructing or causing to be
constructed, using or causing to be used, selling or
causing to be sold, or disposing of in any way, any
combination of electric railway motors and motor cir-
cuits and resistances, combined with controllers like
the controllers described in the affidavits of Edwin W.
Hammer and W. Channing Broadhurst, verified Feb-
ruary 4th, 1899, and illustrated in “Hammer Exhibit,
diagram type D2 controller " and “Hammer Exhibit
diagram type D controller,” or any other controllers
containing or embodying the inventions or improve-
ments recited in the said 20th, 21st, 22nd, 27th, 28th,
29th and 31st claims of said Letters Patent, which are
as follows:
“ 20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
Out of the motor-circuit without changing the
motor-connections to vary the power of the current
flowing through the motors. -
“21. The combination of a source of electric
energy, the coils of One or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and One or more
resistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
motors.
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
One at a time, contact-brushes from said resist-
ances, and connected to the source of electric
supply and resting on the contact-block, and
adapted to be brought into or out of contact with
it in succession, whereby the resistances may be
4
cut into or out of the motor-circuit without vary-
ing the connection of the motor-coils.
“ 27. The combination of an electric motor, a
source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or more
resistances, a resistance-switch to cut said resis-
tances gradually into or out of the motor-circuit,
and a connection between the said switches,
whereby a movement of the motor-switch will
first cut in one or more of the resistances, and
after changing the power of the motor automat-
ically cut the resistances out of circuit again.
“28. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistances
upon shifting the motor-switch to vary the
coupling of the motor-coils.
“29. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
or from infringing said claims or either or any of them,
in any way whatsoever.
AND IT IS FURTHER ORDERED that the operation of
said injunction as to the infringing equipments already
in actual use by the defendant, is suspended so far and
so long as to enable the defendant to comply there with
as follows:
The defendant shall remove at least 150 of the in-
fringing apparatus referred to in the moving papers
within 30 days from date ; and shall thereafter remove
at least 150 more of such infringing apparatus within
5
the next 30 days thereafter, and all the remainder of
such infringing apparatus within 75 days from date.
IT IS FURTHER ORDERED that this suspension of the
operation of said injunction is upon the further ex-
press condition, viz: That the defendant 30 days from
date, file with the clerk of this Court and serve a copy
upon complainant's solicitors, a sworn statement show-
ing that at least 150 of such infringing apparatus have
been removed, giving the numbers or other designating
marks of such apparatus, and of the cars from which
they have been removed, and a like sworn statement
at the end of 60 days from date, showing that at least
150 more of such infringing apparatus have been re-
moved, and a like sworn statement 75 days from date
showing that all of such infringing apparatus have been
removed.
In the case of any failure on the part of the defend-
ant to comply strictly with the conditions of this order,
or any of them, the said injunction shall ipso facto be-
come immediately operative and in full force and effect.
(Sd.) HENRY H. SWAN,
District Judge.
Approved as to form.
IBETTS, BETTS, SHEFFIELD & BETTS,
Sol's for Complainants.
HARDING & HARDING,
Counsel for Defendant.
We hereby acknowledge service of the foregoing in-
junction for the defendant. g
BRENNAN, DONNELLY & WAN DE MARK,
Solicitors for Defendant.
|13122]
393,323.
No. 22. .
Order for Injunction—Circuit Court.
Full text of Order for Preliminary Injunction in the case of
Thomson-Houston Electric Company and the General
> Electric Automobile Company, Complainants,
vs. Worcester and Clinton Street Railway
Company, Defendant, filed in the U. S.
Circuit Court, District of Massa-
chusetts, June 19, 1899.
. C. G. Burgoyne, Walker and Centre Streets, N. Y.
|
(ſitcuit (ſouvt of the Ölmited States,
DISTRICT OF MASSA CHUSETTS.
IN EQUITY.
THOMSON-Houston ELECTRIC CoM-
PANY and GENERAL ELECTRIC
AUTOMOBILE COMPANY
WS. No. 1089.
WORCESTER & CLINTON STREET RAIL-
WAY COMPANY and WILLIAM H.
TYLEE.
Order for Preliminary Injunction.
This cause came on to be heard upon motion of
complainants for a preliminary injunction, and now, to
wit, June 19, 1899, by consent of parties, it is ordered
by the court that a writ of injunction issue as prayed
for in the Bill of Complaint herein, strictly enjoining
and restraining the defendants, the Worcester & Clin-
ton Street Railway Co. and William H. Tylee, and
each of them and their and each of their associates,
attorneys, Solicitors, clerks, servants, agents and
workmen until the further Order of this court,
from directly or indirectly making or causing to
be made, constructing or causing to be con-
structed, using or causing to be used, selling or
causing to be sold, or disposing of in any way any
2
combination of electric motors and motor circuits and
resistances combined with controllers like the con-
trollers described in the affidavits of Edwin W. Ham-
mer and John Le D. Langdom, and illustrated in
“Hammer Exhibit Diagram No. 1, type 34 controller’,
and “Hammer Exhibit Diagram No. 2, type 34 con-
troller’ or any other controllers containing or em-
bodying the inventions or improvements recited in the
20th, 21st, 22nd, 27th, 28th, 29th and 31st claims of
Letters Patent of the United States No. 393,323, re-
ferred to in the bill of complaint, or from infringing
said claims or either or any of them in any way what-
SOé Vél'.
AND IT IS FURTHER ORDERED, that the operation of
said injunction in so far as the same relates to the de-
fendant, Worcester & Clinton Street Railway Com-
pany, and as to the infringing equipments already in
actual use by the defendant, Worcester & Clinton
Street Railway Company, is suspended so far and so
long as to enable the defendant, Worcester & Clinton
Street Railway Company, to comply there with an
follows:
It shall remove from its cars all of the infringing ap-
paratus referred to in the moving papers within 30
days from date.
AND IT IS FURTHER ORDERED, that this suspension of
the operation of said injunction is upon the further
express condition, viz.: that the defendant, Worcester
& Clinton Street Railway Company, 30 days from date
file with the Clerk of this Court and serve a copy upon
complainants' solicitors, a sworn statement, showing
that all of such infringing apparatus have been re-
moved, giving the numbers or other designating marks
of such apparatus and of the cars from which they
have been removed.
AND IT IS FURTHER ORDERED, that nothing herein shall
in any way be construed as suspending the operation
of this injunction as against the defendant, William
H. Tylee; provided, however, that the operation of the
3
cars with infringing equipments hereinbefore recited,
over the lines of the Worcester & Clinton Street Rail-
way Company, within the period of suspension of in-
junction so far as relates to said defendant company,
as hereinbefore set out, shall not be construed as a
violation of the injunction by the said William H.
Tylee. sº
In case of any failure on the part of the defendant,
Worcester & Clinton Street Railway Company, to
comply strictly with the conditions of this order, or
any of them, the said injunction shall ipso facto be-
come immediately operative and in full force and
effect.
AND IT IS FURTHER ORDERED that the complainants do
recover of the defendants and each of them the costs
of this motion, at the time as provided by the rules of
this court.
By the Court,
BENJ. H. BRADLEE,
Deputy Clerk.
Form of order approved.
E. S. HILL,
Sol. for Defts.
[13840]
424,695.
No. 22.
Order for Injunction—Circuit Court.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Order for Preliminary Injunction in the case
of Thomson-Houston Electric Company, Complainant,
vs. Worcester and Clinton Street Railway
Company, Defendant, filed in the U. S.
Circuit Court, District of
Massachusetts, June
I9, 1899.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
(ſitcuit (ſourt of the Klimited States
DISTRICT OF MASSACHUSETTS,
THOMSON-HOUSTON ELECTRIC Co.
W.
In Equity.
RAILWAY COMPANY and WILLIAM
H. TYLEE.
Order for Preliminary Injunction.
This cause came on to be heard upon motion of com-
plainant for preliminary injunction, and now, to wit,
June 19, 1899, by consent of parties, it is ordered by
the Court that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining defendants, Worcester & Clinton Street Rail-
way Company and William H. Tylee, and each of
them, and their and each of their associates, officers,
attorneys, solicitors, clerks, servants, agents, workmen
and employees, until the further order of the court,
from directly or indirectly making or causing to be
made, using or causing to be used, or vending to
others to be used, in any manner, any electric railway
system containing, embodying or employing the inven-
tions or improvements shown, described and claimed
in claims 3, 4, 11, 19, 20, 23, 25, 26 and 27 of Tuetters
Patent of the United States No. 424,695, referred to in
the bill of complaint, or from infringing upon or viola-
ting the said Letters Patent in any way whatsoever.
AND IT IS FURTHER ORDERED that the operation of said
injunction, in so far as the same relates to the defend-
ant, Worcester & Clinton Street Railway Company,
and as to the infringing equipments already in actual
use by the defendant, Worcester & Clinton Street Rail-
2
way Company, issuspended so far and so longas to enable
the defendant, Worcester & Clinton Street Railway Com-
pany, to comply therewith, as follows:–It shall re-
move from its road all of the infringing apparatus
within thirty days from date.
AND IT IS FURTHER ORDERED that this suspension of
operation of said injunction is upon the further ex-
press condition, namely, that the defendant, Worces-
ter & Clinton Street Railway Company, thirty days
from date, file with the clerk of this Court, and serve a
copy on complainant's solicitors a sworn statement
showing that all said infringing apparatus have been
removed, giving the number or other designating marks
of such apparatus.
AND IT IS FURTHER ORDERED that nothing herein shall
in any way be construed as suspending the Operation
of this injunction as against the defendant William H.
Tylee, provided, however, that the operation of the
road with infringing equipments of the Worcester &
Clinton Street Railway Company, within the period
of suspension of injunction so far as relates to said de-
fendant company as hereinbefore set out, shall not be
construed as a violation of the injunction by the said
William H. Tylee.
In case of any failure on the part of the defendant
Worcester & Clinton Street Railway Company, to com-
ply strictly with the conditions of this order, or any of
them, the said injunction shall, ipso faclo, became im-
mediately operative and in full force and effect.
IT IS FURTHER ORDERED that the complainant do re-
cover of the defendants and each of them, the costs of
this motion at the time as provided by the rules of this
Court. e
By the Court
BENJ. H. BRADLEE,
Deputy Clerk.
Form of order approved
E. S. HILL,
Sol. for T)efts.
ºf NEFA} º 424,695.
# º . . . . º No. 23.
} * & %
!,
Final Decree—Circuit Court.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Final Decree in the case of Thomson-
Houston Electric Company, complainan, VS.
Central Union Brass Company, Defendant,
filed in the U. S. Circuit Court,
Eastern District of Missouri,
June 29, 1899.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
At a regular Term of the Circuit Court
of the United States for the Eastern
Division of the Eastern District of
Missouri, held in the United States
Court Rooms in the Post-Office Build-
ing in the City of St. Louis, Mis-
souri, on the 29 day of June 1899.
Present: —HoN. DLMER B. ADAMS, U. S. Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
4.177 WS.
CENTRAL UNION BRASS COMPANY.
This cause having come on to be heard at this Term
of the Court, upon the bill of complaint and the pa–
pers heretofore filed in this Court and the proceedings
had herein, it is, upon consideration had, and upon
motion of Messrs. Seddon & Blair representing Messrs.
Betts, Betts, Sheffield & Betts, solicitors for the com-
plainant, and the defendant, Central Union Brass
Company, appearing by their solicitors, Messrs. Nagel
& Kirby, and all consenting thereto,
ORDERED, ADJUDGED AND DECREED that Letters Patent
of the United States issued to Charles J. Van Depoele,
dated April 1, 1890, #424695 for Improvements in Sus-
pended Switches and Traveling Contacts for Electric
Railways, are good and valid in law as to the 3rd, 4th,
2
11th, 19th, 20th, 23rd, 25th, 26th and 27th claims of
said Letters Patent, which are as follows:
“ 3: The combination, with an overhead wire
for receiving an underneath contact, of a switch-
plate attached to the wire in about the same
horizontal plane as the wire.
“4 : The combination of a track having
switches, an overhead conductor above the track
and having switches, and a car on the track
provided with a contact-carrying arm arranged
to engage the conductor at a point in rear of the
front wheels of the car.
“11 : The combination, with an overhead
line wire, of a grooved contact device pressed
against the wire and receiving the wire between
the flanges of the groove, and a guiding switch
plate connected to the wire against which the
said flanges bear in passing from One line to
another.
“ 19: In an electric railway, the combination,
with branching overhead conductors, of an up-
wardly-pressed contact arm carrying a grooved
wheel embracing the conductor, and a switch
plate at the branching-point adapted to receive
the tips of the wheel flanges, and provided with
depending ribs, between which the wheel is free
to move laterally to engage with One of the
branch conductors.
“20 : In an electric railway, the combination,
with an overhead switch-plate having depending
ribs, but open at its extremities, of main and
branch conductors extending from its two ex-
tremities, respectively, a vehicle, an upwardly
pressed contact-arm attached to the vehicle and
tending to move laterally therewith, and a track-
switch for the vehicle located so as to operate in
advance of the conductor-switch.
“23: The combination, with branching over-
head conductors, of a vehicle having a laterally-
swinging contact arm pressed upward to engage
the conductors, and a switch-plate at the
branching point having depending sides, but
open at its extremities, the interior width of the
plate between the sides being greater than the
thickness of the contact-wheel, whereby the
wheel is free to move laterally with relation to
the main conductor and engage one of the
branching conductors.
3
P-
“25 : In a branching electric railway, the
combination of a track-switch, an overhead
conductor-switch, and a vehicle having a rear-
wardly-extending contact-arm, whereby the
track-switch will operate in advance of the con-
ductor-switch.
“26: In a branching electric railway the
combination with a vehicle, of a track-switch,
an Overhead conductor-switch and a contact-arm
extending upward from the vehicle to the con-
ductor, and so located relatively to the length of
the vehicle and the two switches that the lateral
movement of the vehicle will give a correspond-
ing movement of the contact-device on the con-
ductor-switch.
“ 27: In a branching electric railway, the
combination, with a vehicle, of a track-switch,
a contact-device consisting of a trailing spring-
pressed arm having a grooved contact-piece em-
bracing the conductor and guided thereby, the
said arm being jointed to the car and tending to
move laterally there with, and an overhead con-
ductor-switch adapted to engage the contact-
piece and whereby the extremity of the arm is
flexibly guided from main to branch conductor.”
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the said Charles J. Van Depoele was the first and
Original inventor or discoverer of the inventions de-
scribed and claimed in the said 3rd, 4th, 11th, 19th,
20th, 23rd, 25th, 26th and 27th claims of said Letters
Patent No. 424,695, and that the Thomson-Houston
Electric Company, a corporation duly organized and
existing under the laws of the State of Connecticut,
the complainant herein, is the lawful and exclusive
owner of said Letters Patent, No. 424,695, and that
the defendant, Central Union Brass Company, has
infringed upon the said 3rd, 4th, 11th, 19th, 20th,
23rd, 25th, 26th and 27th claims of the said Letters
Patent, and upon the exclusive rights of the complain-
ant under the same.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the complainant do recover of the defendant the
sum of One Cent as profits, gains and advantages which
the defendant has derived or received by reason of the
4
manufacture and sale of apparatus in infringement of
the said 3rd, 4th, 11th, 19th, 20th, 23rd, 25th, 26th
and 27th claims of said Letters Patent, and as damages
which it, the said complainant, has sustained by reason
of the said manufacture and sale by the defendant of
apparatus in infringement of the said 3rd, 4th, 11th,
19th, 20th, 23rd, 25th, 26th, and 27th claims of the
said Letters Patent; but it is expressly understood
that the complainant hereby reserves unto itself any
and all rights to proceed against any and all users of
the infringing apparatus manufactured and sold by the
said defendant, Central Union Brass Company.
AND IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that a perpetual injunction issue out of and under the
seal of this Court strictly enjoining and restraining the
defendant, Central Union Brass Company, and its as-
sociates, attorneys, clerks, servants, agents and work-
men from directly or indirectly, constructing, making or
causing to be made, advertising for sale, using or caus-
ing to be used, selling or causing to be sold, or dis-
posing of in any manner, any structures, devices, or
apparatus containing or embodying the subject matter
of, or intended to be used in the combinations of the
said 3rd, 4th, 11th, 19th, 20th, 23rd, 25th, 26th and
27th claims of said Letters Patent No. 424,695, or from
infringing upon or violating the said claims, or any or
either of them, in any way whatsoever. It is not in-
tended by the above decree to enjoin the defendants
against the sale of switches by way of replacing for
repairs, in car equipments embodying the patented
combinations which have been previously sold by the
complainant to purchasers, in cases where such
switches have been broken, worn out by use or are
otherwise inefficient, but this permission does not give
authority to reconstruct or rebuild a combination which
has been sold by the complainant.”
AND.. IT IS FURTHER ORDERED, ADJUDGED AND DECREED
that the said defendant pay to the said complainant
245.4% Dollars as costs of this suit ; and that the
Thomson-Houston Electric Company, the complainant
herein, have execution for such costs and for the sum
5
above decreed to be paid unto the Thomson-Houston
Electric Company, as aforesaid. And thereupon com-
plainant acknowledges satisfaction of this decree in
Open court.
ELMER B. ADAMS,
Judge.
We hereby appear as solicitors for Central Union
Brass Company, in the above entitled suit, and submit to
the entry of the foregoing decree.
NAGEL & KIRBY,
Solicitors for Central Union Brass Co.
The undersigned Central Union Brass Co defendant
in the above entitled cause hereby acknowledges the
receipt of a copy of the foregoing decree and accept
service thereof
In Witness Whereof said Central Union f3rass
Co. has caused these presents to be
[SEAL.] signed by its President and attested
by its Secretary and its corporate
seal to be hereto attached
CENTRAL UNION BRASS CO
by GEO KINGSLAND,
|Prest.
Attest,
FRANCIS L. BOUQUET,
Secty.
6
Eastern Division of the
UNITED STATES OF AMERICA,
SS
EASTERN JUDICIAL DISTRICT OF MISSOURI.
I, T. L. CRAWFORD, Clerk of the Circuit Court of the
United States, in and for the Eastern Division of the
Bastern Judicial District of Missouri, do hereby certify.
the writing hereto attached to be a true copy of Final
Decree In Case No. 4177 of Thomson-Houston Elec-
tric Company Complainant against Central Union Brass
Company Defendant, as fully as the same remains on
file and of record in said case in my office.
In witness whereof, I hereunto subscribe
my name and affix the seal of said
Court, at office in the City of St.
[SEAL.] Louis, in the Eastern Division of
- said District, this 30th day of June
in the year of Our Lord, eighteen
hundred and ninety-nine.
T. L. CRAWFORD
$1. R. Stamp. Clerk of said Court.
10c. ! By
Canceled. Deputy.
|ENDORSED :]
No. 4177 United States Circuit Court Eastern Di-
vision of the Eastern Judicial District of Missouri.
Thomson-Houston Electric Company against Central
Union Brass Company Duly Certified Copy of Final
Decree in the above-entitled cause.
Filed June 29. 1899
[13895.]
GENERA. Liß ºf 393,323. .
3 : Y ºf - ;
jf.J. W. , , . ſ', t , . . . . . No. 23. t
: JE 2 : ſcº
Order and Injunction—Circuit Court.
A
y
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order and Preliminary Injunction in the
case of Thomson-Houston Electric Company et al.,
Complainants, vs. Mill Creek Valley Street Rail-
way Company, Defendant, filed in the U. S. *
Circuit Court, Southern District of Ohio.
Order filed July IO, 1899.
Injunction filed July 12, 1899.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
Order for Injunction.
Southern District of Ohio,
THE UNITED STATES OF AMERICA,
SS
WESTERN DIVISION,
At a Stated Term of the Circuit Court of the United
States of America, within and for the Western Divis-
ion of the Southern District of Ohio, in the Sixth
Judicial Circuit of the United States of America, be-
gun and had in the Court Rooms at the City of Cin-
cinnati, Ohio, in said District, on the First Tuesday of
April, being also the Fourth day of that month, in the
year of our Lord, One Thousand Eight Hundred and
Ninety-nine, and of the American Independence, the
One Hundred and Twenty-Third.
Present, the HoNorABLE ALBERT C. THOMPSON, Dis-
trict Judge. On Monday, the 10th day of July, A. D.
1899.
Among the proceedings had, were the following, to
wit :
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL ELECTRIC
AUTOMOBILE COMPANY,
In Equity.
Letters Patent No.
WS. 393,323.
MILL CREER WALLEY STREET RAIL-
WAY COMPANY.
An order to show cause why a preliminary injunc-
tion should not issue herein having been granted on
the 21st day of June, 1899, returnable July 6th, 1899,
and the same coming on to be heard upon the bill of
complaint and upon the affidavits of L. F. H. Betts (2),
Edward M. Bentley, Charles A. Coffin, Edwin W.
2
Hammer and the exhibits referred to therein, including
a copy of the Letters Patent in suit, No. 393,323, and a
copy of the opinion of the United States Circuit Court
of Appeals for the Second Circuit, in the suit of these
complainants against the Nassau Electric Railroad
Company upon said Letters Patent ; filed by the com-
plainants in support of said motion, and after hearing
Joseph Wilby, Esq., for the complainants, in support
of said motion, and after due consideration had, and it
appearing that the complainants have complied with
the order of this Court, dated June 21, 1899, by serv-
ing upon the defendants, on the 21st day of June, 1899,
copies of their affidavits and papers, in support of Said
motion ; and it further appearing that the defendant
has infringed upon the said Letters Patent, and upon
the rights of the complainants under the same, by us-
ing upon the cars of its electric railway, within the
Southern District of Ohio (which cars are propelled
by electricity delivered thereto from an outside source
through a line conductor), car equipments each includ-
ing the combination of two motors and motor-circuits
for operating the same in series and in parallel rela-
tion, with resistances, and a type or form of controller,
sold and supplied to it by the Johnson Company and
the Steel Motor Company, described in the affidavit of
Edwin W. Hammer in this cause, verified June 16,
1899, and illustrated in “Hammer Exhibit, Diagram
Mill Creek Controller, Type 34", which said combina-
tions of motors, resistances, motor-circuits and con-
trollers contain the combinations recited in the 20th,
21st, 22nd, 28th, 29th and 31st claims of said Letters
Patent, and after due consideration had, it is
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendant, Mill Creek Valley Street
Railway Company, its associates, attorneys, Solicitors,
clerks, servants, agents and workmen, until the further
Order of this Court, from directly or indirectly, making
or causing to be made, constructing or causing to be
constructed, using or causing to be used, selling or
causing to be sold, or disposing of in any way, any
3
combination of electric railway motors or motor-cir-
cuits and resistances, combined with controllers like
the controllers described in the affidavit of Edwin W.
|Hammer, verified June 16, 1899, and illustrated in
“Hammer Exhibit Diagram Mill Creek Controller,
Type 34", or any other controllels containing or em-
bodying the inventions and improvements recited in
said 20th, 21st, 22nd, 28th, 29th and 31st claims of
said Letters Patent, which are as follows:—
“20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a Switch to put said resistances into or
out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and One or more re-
sistances, said Switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
lm Otol’S.
“ 22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
One at a time, contact-brushes from said resist-
ances, and connected to the source of electric
Supply and resting on the contact-block, and
adapted to be brought into or out of contact with
it in succession, whereby the resistances may be
cut into or out of the motor-circuit without vary-
ing the connection of the motor-coils. -
“28. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and Out the said resistance
upon shifting the motor-switch to vary the
coupling of the motor-coils.
“29. The combination of a motor having sepa-
4
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance, upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for Operating the resistance-switch.
“ 31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
or from infringing the said claims, or either or any of
them, in any way whatsoever.
AND IT IS FURTHER ORDERED That the operation of
said injunction as to infringing equipments already in
actual use by the defendant, is suspended so far and so
long as to enable the defendant to comply therewith
as follows:– -
That the defendant shall remove all of the infringing
apparatus referred to in the moving papers, or appa-
ratus similar thereto, within thirty days from date.
AND IT IS FURTHER ORDERED that the suspension of
the operation of said injunction is upon the further
express condition, viz.: that the defendant thirty days
from date, file with the Clerk of this Court (and serve
a copy thereof upon complainants' solicitors) a sworn
statement showing that all of such infringing appa-
ratus have been removed,—giving the humbers or
other designating marks of Such apparatus, and the
cars from which they have been removed.
In case of any failure on the part of the defendant
to comply strictly with the conditions of this order or
any of them, the said injunction shall ipso facto become
immediately operative and in full force and effect.
Approved as to form ––
HARDING & HARDING,
Solicitors for Respondent.
BETTS, BETTS, SHEFFIELD & BETTS,
Solicitors for Complt.
July 6/99.
5
Southern District of Ohio,
THE UNITED STATES OF AMERICA,
SS
WESTERN DIVISION,
I, BENJAMIN R. COWEN, Clerk of the Circuit Court of
the United States of America, within and for the Dis-
trict and Division aforesaid, do hereby certify that the
foregoing Entry is truly taken and correctly copied
from the Journal of said Court.
In Testimony Whereof, I have hereunto set
my hand, and affixed the seal of said
(SEAL) Court, at the City of Cincinnati,
Ohio, this 10th day of July, A. D.
1899.
B. R. CoWEN,
Clerk.
By ROBT. C. GEORGI,
Deputy Clerk.
Received this writ at Cincinnati, Ohio, on the 10th
day of July, 1899, and on the same day I served the
within named Mill Creek Valley Street Railway Com-
pany, by handing a true copy of this writ with all the
endorsements thereon, to S. M. Felton, President of
said Company, at the hour of 3.20 P. M.
V. J. FAGIN,
U. S. Marshal,
S. D. O.,
By M. H. SPILLARD, -
Deputy.
1 copy, .50
1 service, 2.00
Mileage, .12
$2.62
9
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7
or discovery therein set forth The General Electric
Automobile Company is the owner and possessed of,
and entitled to all the right, title and interest in, to
and under said Letters Patent, subject to the aforesaid
exclusive license to said Thomson-Houston Electric
Company, and that you, the said The Mill Creek Valley
Street Railway Company, have infringed the 20th, 21st,
22nd, 28th, 29th and 31st claims thereof.
Now, therefore, we strictly command and enjoin you,
the said The Mill Creek Valley Street Railway Com-
pany, and your associates, attorneys, solicitors, clerks,
servants, agents and workmen, under the penalties
that may fall on you in case of disobedience, that you
forthwith and until the further order of this Court,
desist from directly or indirectly making or causing to
be made, constructing or causing to be constructed,
using or causing to be used, or disposing of in any
way any combination of electric railway motors and
motor-circuits and resistances combined with con-
trollers like the controllers described in the affidavit of
Edwin W. Hammer, verified June 16th, 1899, and
illustrated in “Hammer Exhibit Diagram Mill Creek
Controller, Type 34,” or any other controllers contain-
ing or embodying the inventions and improvements
recited in said 20th, 21st, 22nd, 28th, 29th and 31st
claims of said Letters Patent, which are as follows:
“20. The combination of a source of electric
energy, the coils of One or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
out of the motor-circuit without changing the
motor-commections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and one or more re-
sistances, said switch being adapted to put said
resistances in succession into or out of the motor-
S circuit without changing the motor-connections to
vary the power of the current flowing through the
lmot Ol'S.
“22. The combination of a source of electric
S
supply, a switch for coupling up the coils of a
motor or motors in a predetermined Order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
One at a time, contact-brushes from said resist-
ances, and connected to the source of electric
supply and resting on the contact-block, and
adapted to be brought into or out of contact with
it in succession, whereby the resistances may be
cut into or out of the motor-circuit without vary-
ing the connection of the motor-coils.
“28. The combination of a motor having sep-
arate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coup-
ling of the motor-coils.
“29. The combination of a motor having sep-
arate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance, upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for Operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to Operate both simultaneously.”
or from infringing the said claims, or either or any of
them, in any way whatsoever.
Witness the Hon. MELVILLE W. FULLER, Chief-
Justice of the United States, at the City of Cincinnati,
Ohio, on the eleventh day of July, A. D. 1899.
B. R. CowPN,
[SEAL.] Clerk,
U. S. Circuit Court,
S. D. O.
By ROB'T C. GEORGI,
Dep.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainants' Solicitors.
wº
9
Received this writ at Cincinnati, Ohio, on the 11th
day of July, 1899, and on the 12th day of July, 1899,
I served the within named the Mill Creek Walley
Street Railway Company, by handing a true copy of
this writ with all the endorsements thereon to S. M.
Felton, President of Said Company, personally.
W. J. FAGIN,
U. S. Marshal,
S. D. O.
By M. H. SPILLARD,
Deputy.
1 Service, $2 00
2 mi. writ, 12
$2 12
THE UNITED STATES OF AMERICA, \
Southern District of Ohio, SS
WESTERN DIVISION,
I, BENJAMIN R. COWEN, Clerk of the Circuit Court of
the United States of America, within and for the
Division and District aforesaid, do hereby certify that
the foregoing is a true and correct copy of the Original
Writ of Injunction issued out of the Clerk’s Office of
said Court, with the Marshal's Return thereon, as the
same appears of record and on file in the Clerk's Office
of said Court in the above-entitled cause.
In Testimony Whereof, I have hereunto
set my Hand, and affixed the Seal of
|SEAL.] said Court, at the City of Cincinnati,
Ohio, this 12th day of July, A. D.
1899. t
B. R. COWEN,
Clerk.
By RoPT. C. GEORGI,
Deputy Clerk.
|13917]
; ' ' ' ', - - ºf
ºf . . . . #
393,323.
} Niv. of f\{i Chi.
SEP 7 1899 No. 24.
º
Order and Injunction—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order and Preliminary Injunction in the
case of Thomson-Houston Electric Company et al.,
Complainants, vs. The Cleveland, Berea, Elyria
and Oberlin Street Railway Company,
Defendant, filed in the U. S. Circuit
Court, Northern District of Ohio,
August II, 1899.
C. G. BURGoyNE, Walker and Centre Street, N. Y.
Order for Injunction.
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL ELECTRIC
AUTOMOBILE COMPANY
5 NO. 5930.
In Equity. On Con-
WS dict Patent No.
tº 393,323.
THE CLEVELAND, BEREA, ELYRIA &
OBERLIN STREET RAILWAY COMPANY.
J
An order to show cause why a preliminary injunc-
tion should not issue herein having been heretofore
granted by this Court, returnable the 15th day of
August, 1899, and the same coming on to be heard
upon the bill of complaint, and upon the affidavits of
Charles A. Coffin, Samuel R. Betts (2), Edwin W.
Hammer and Edward M. Bentley, and the exhibits and
papers referred to therein (including a copy of the
opinion of the United States Circuit Court for the
District of Connecticut, in the case of Thomson-
Houston Electric Company et al., against the Hartford
& West Hartford Railroad Company, a copy of the
opinion of the United States Circuit Court for the
Eastern District of New York, and a copy of the opin-
ion of the United States Circuit Court of Appeals for
the Second Circuit, in the case of these complainants
against The Nassau Electric Railroad Company, upon
said Letters Patent in suit), filed by the complainants
in support of said motion, now, after hearing Squires
Sanders & Dempsey in support of Said motion, and it
2
appearing that the complainants have complied with
the order of this Court, dated the 25 day of July, 1899,
by serving upon the defendants on the day of
- copies of their affidavits and papers in Sup-
port of said motion, and it further appearing, that the
defendant has infringed upon said Letters Patent and
the rights of the complainants under the same, by
using upon the cars of its electric railway within the
Northern District of Ohio, (which cars are propelled
by electricity, delivered thereto from an outside source
through a line conductor), car equipments, each in-
cluding the combination of two motors and motor-cir-
cuits for Operating the same in Series and in parallel
relation with resistances, and a type or form of con-
troller sold and supplied to it by The Steel Motor
Company, or The Johnson Company or The Lorain
Steel Company, the successors of said Steel Motor
Company, described in the affidavit of Edwin W.
Hammer in this cause, verified the 21st day of June,
1899, and illustrated in Hammer Exhibit, Diagram
Nassau Controller No. 3, which said combinations of
motors, resistances, motor-circuits and controllers, con-
tain the combinations recited in the 20th, 21st, 22nd,
27th, 28th, 29th and 31st claims of said Letters Patent,
and after due consideration had, it is——
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendant, Cleveland, Berea, Elyria &
Oberlin Street Railway Company, its associates, attor-
neys, solicitors, clerks, servants, agents and workmen,
until the further order of this Court, from directly or
indirectly making or causing to be made, constructing
or causing to be constructed, using or causing to be
used, selling or causing to be sold, or disposing of in
any way, any combination of electric railway motors
or motor-circuits and resistances combined with con-
trollers like the controllers described in the affidavit of
Edwin W. Hammer, verified June 21st, 1899, and illus-
trated in Hammer Exhibit, Diagram Nassau Con-
3
troller No. 3, or any other controllers containing or
embodying the inventions or improvements recited in
said 20th, 21st, 22nd, 27th, 28th, 29th and 31st claims
of said Letters Patent, which are as follows:
“ 20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of One or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and one or more re-
sistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
lmOtOTS.
“ 22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined Order, a series
of resistances, a contact-block on said switch in
circuit with, the motor and resistances and having
contact-edges for cutting in or out the resistances
One at a time, contact-brushes from Said resist-
ances, and connected to the source of electric
supply and resting on the contact-block, and
adapted to be brought into or out of contact with
it in succession, whereby the resistances may be
cut into or out of the motor-circuit without vary-
ing the connection of the motor-coils.
“ 27. The combination of an electric motor, a
Source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or
more resistances, a resistanco-Switch to cut said
resistances gradually into or out of the motor-
circuit, and a connection between the said
switches, whereby a movement of the motor-
switch will first cut in one or more of the resist-
ances, and after changing the power of the motor
automatically cut the resistances out of circuit
again.
4
“28. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coup-
ling of the motor-coils.
“29. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“ 31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or multi-
ple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a Gonnection between
said switches to operate both simultaneously.”
or from infringing the said claims or either or any of
them in any way whatsoever.
AND IT IS FURTHER ORDERED that the operation of
said injunction, as to infringing equipments already in
actual use by the defendant, be suspended so far and
so long as to enable the defendant to comply there with
as follows:
That the defendant shall remove from its cars all of
the infringing apparatus referred to in the moving
papers, or apparatus similar thereto, within thirty
days from date.
AND IT IS FURTHER ORDERED that the suspension of
the operation of said injunction is upon the further
express condition, viz.: that the Cleveland, Berea,
Elyria & Oberlin Street Railway Company, thirty days
from date, file with the Clerk of this Court (and serve
a copy thereof upon the complainants’ solicitors), a
sworn statement showing that all of such infringing
apparatus have been removed, giving the numbers or
5
Other designating marks of such apparatus and of the
cars from which they have been removed. In case of
any failure on the part of the defendant to comply
strictly with the conditions of this order, or any of
them, then said injunction shall, ipso facto, become
immediately operative and in full force and effect.
Form of order approved.
BETTS, BETTS, SHEFFIELD & BETTs,
Solr’s. for Complt.
HARDING & HARDING,
Solicitors for Respondent.
THE UNITED STATES OF AMERICA, { U. S. Marshal’s
Northern District of Ohio, ss. Return.
Received this writ on the 8th day of August, 1899,
and on the 9th day of August, 1899, I served the same
at Berea, on the within named The Cleveland, Berea,
Elyria & Oberlin Street Railway Company, by deliver-
ing a true and certified copy thereof to A. H. Pomeroy,
President of said Corporation.
M. A. SMALLEY,
U. S. Marshal,
By JOHN J. KEELEY,
Deputy.
FEES.
Service - - - - - - - - - - - - $2.00
Travel 42 mi. ----...-- 2.52
Total ----------- $4.52
Northern District of Ohio,
THE UNITED STATES OF AMERICA,
SS
EASTERN DIVISION,
I, IRVIN BELFORD, Clerk of the Circuit Court of the
United States within and for said District, do hereby
certify that the within is a true copy of the Order for
6
Preliminary Injunction, entered upon the Chancery
Order Book of said Court, in the cause therein en-
titled, together with the return of the Marshal of the
Northern District of Ohio of his service endorsed
thereon ; that I have compared the said entry with the
Original order and the said return of said Marshal
endorsed thereon and it is a true transcript thereof.
WITNESS my official signature and the Seal
* of said Court at Cleveland, in said
|SEAL.] District, this 11th day of August, A.
D. 1899, and in the 124th year of the
Independence of the United States
of America.
IRVIN BELFORD,
Clerk.
By JNo. WAN NostFAN,
Deputy Clerk.
CITY AND COUNTY OF NEW YORK, Ss. :
CHARLES FIGARO, being duly sworn, says that he is a
clerk in the office of Betts, Betts, Sheffield & Betts,
solicitors for the complainant herein ; that on the 16th
day of August, 1899, at about five o'clock in the after-
noon, he served the Order of which the within is a
copy, upon Harding & Harding, whom he believes to
be the solicitors for the defendant.herein, by enclosing
the same in a postpaid registered envelope, addressed
to said Harding & Harding, 9th and Chestnut Streets,
Philadelphia, Pennsylvania, and depositing said en-
velope, so addressed and containing said enclosure,
with a Registry Clerk in the General Post Office in the
City of New York, on the day and at the time afore-
said.
CHARLES FIGARO.
Sworn to before me this 17th !
day of August, 1899.
JAMEs J. COSGROVE,
[SEAL.] Notary Public,
N. Y. CO.
7
Injunction.
THE PRESIDENT OF THE UNITED STATES
TO
CLEVELAND, BEREA, ELYRIA & OBERLIN STREET RAIL-
WAY COMPANY, your associates, officers, attorneys,
Solicitors, clerks, agents, servants and workmen,
GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Sixth Circuit
and Northern District of Ohio, Eastern Division, that
Letters Patent of the United States were issued to
George Herbert Condict, assignor to The Electric Car
Company of America, in due form of law, on the 20th
day of November, 1888, No. 393,323, for Improvement
in Switches for Electric Motors, and that the said Let-
ters Patent were duly assigned to the General Electric
Automobile Company and the Thomson-Houston Elec-
tric Company, was duly licensed thereunder, and that
you, the said Cleveland, Berea, Elyria & Oberlin Street
Railway Company, have infringed the 20th, 21st,
22nd, 27th 28th, 29th and 31st claims thereof, which are
as follows:
“ 20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and One Or more
resistances, said switch being adapted to put said
resistances in succession into or Out of the motor-
circuit without changing the motor-connections to
S
vary the power of the current flowing through the
lm Otors.
“22. The combination of a source of electric sup-
ply, a switch for coupling up the coils of a motor
Or motors in a predetermined order, a series of re-
sistances, a contact-block on said switch in circuit
with the motor and resistances and having contact-
edges for cutting in or out the resistances one at
a time, contact-brushes from said resistances, and
connected to the source of electric supply and
resting on the contact-block, and adapted to be
brought into or out of contact with it in succes-
Sion, whereby the resistances may be cut into or
out of the motor-circuit without varying the con-
nection of the motor-coils.
“ 27. The combination of an electric motor, a
Source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or
more resistances, a resistance-switch to cut said
resistances gradually into or out of the motor-
circuit, and a connection between the said switches,
whereby a movement of the motor-switch will first
cut in one or more of the resistances, and after
changing the power of the motor automatically
cut the resistances out of circuit again.
“28. The combination of a motor having sep-
arate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coupling
of the motor-coils.
“29. The combination of a motor having sep-
arate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal re-
sistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series of mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
9
NOW, THEREFORE, we strictly command and enjoin
you, the said Cleveland, Berea, Elyria & Oberlin Street
Railway Company, your associates, officers, attorneys,
solicitors, clerks, agents, servants and workmen, under
the penalties that may fall on you in case of diso-
bedience, that you forthwith, and until the further
order of this Court, desist from, directly or indirectly,
making or causing to be made, constructing or causing
to be constructed, using or causing to be used, selling
or causing to be sold, or disposing of in any way, any
combination of Electric Railway Motors, or motor-
circuits and resistances combined with controllers
like the controller's described in the affidavit of Edwin
W. Hammer, verified June 21, 1899, and illustrated in
“Hammer Exhibit, Diagram Nassau Controller No. 3,”
filed in the suit in this Court brought against you by
the Thomson-Houston Electric Company, et al., or any
Other controllers containing or embodying the inven-
tions or improvements recited in said claims 20, 21, 22,
27, 28, 29 and 31 of said Letters Patent No. 393,323.
Witness the Hon. MELVILLE W. FULLER, Chief Jus-
tice of the United States, at the City of Cleveland, on
the 4" day of August, 1899.
IRWIN BELFORD,
Clerk.
SEAL. By JNo. WAN NOSTRAN,
Deputy.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainants' Solicitors.
THE UNITED STATES OF AMERICA, U. S. Marshal's
Northern District of Ohio, ss. 5 Return.
Received this writ on the 8th day of August, 1899,
and on the 9th of August, 1899, I served the same at
Berea, On the within named The Cleveland, Berea,
10
Elyria & Oberlin Street Railway Company, by deliver-
ing a true and certified copy thereof to A. H. Pome-
roy, President of said Corporation.
M. A. SMALLEY,
U. S. Marshal,
By JoHN J. KEELEy,
Deputy.
FEES.
Service . . . . -- - - - - $2.00
Travel 42 mi.- - - - - 2.52
Total - - - - - - $4.52
THE UNITED STATES OF AMERICA,
Northern District of Ohio, ss.
I, IRVIN BELFORD, Clerk of the Circuit Court of the
United States, within and for said District, do hereby
certify the foregoing to be a true copy of the Writ of
Injunction issued in the above entitled cause, together
with the endorsement of service by the Marshal of the
Northern District of Ohio, returned and filed in said
Court, and that the same is correctly copied from the
original now on file in my office.
WITNESS, my official signature, and the seal
of said Court, at Cleveland, in said
District, this 11th day of August, A.
[SEAL.] D. 1899, and in the 124th year of the
Independence of the United States
of America.
IRWIN BELFORD,
Clerk,
By JNO. WAN NOSTRAN,
Deputy Clerk.
[14082)
393,323.
rºy of micrl. No. 25.
SEP 7 1899
Order and Injunction—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order and Preliminary Injunction in the
case of Thomson-Houston Electric Company et al.,
Complainants, vs. The Lorain Street Railway
Company, Defendant, filed in the U. S.
Circuit Court, Northern District
of Ohio, August 11, 1899.
C. G. Burgoyne, Walker and Centre Street, N. Y.
Order for Injunction.
THOMSON-Houston ELECTRIC COMPANY |
and GENERAL ELECTRIC AUTO-
MOBILE COMPANY., I
NO. 5931.
* In Equity. On Con-
WS. dict Patent No.
- 393,323.
THE LORAIN STREET RAILWAY
CoMPANY.
J
An order to show cause why a preliminary injunction
should not issue herein having been heretofore granted
by this Court, returnable the 15th day of August, 1899,
and the same coming on to be heard upon the bill of
complaint, and upon the affidavits of Charles A. Coffin,
Samuel R. Betts (2), Edwin W. Hammer and Edward
M. Bentley, and the exhibits and papers referred to
therein (including a copy of the opinion of the United
States Circuit for the District of Connecticut, in the
case of Thomson-Houston Electric Company et al.,
against the Hartford & West Hartford Railroad Com-
pany, a copy of the opinion of the United States Cir-
cuit Court for the Eastern District of New York, and a
copy of the opinion of the United States Circuit Court
of Appeals for the Second Circuit, in the case of these
complainants against The Nassau Electric Railroad
Company, upon said Letters Patent in suit), filed by
the complainants in support of said motion, now, after
hearing Squires, Sandes & Dempsey in support of said
motion, and it appearing that the complainants have
complied with the order of this Court, dated the 25th
2
day of July, 1899, by serving upon the defendants, on
the day of , 1899, copies of their affi-
davits and papers in support of said motion, and it
further appearing that the defendant has infringed
upon said Letters Patent and the rights of the com-
plainant under the same, by using upon the cars of its
electric railway within the Northern District of Ohio,
(which cars are propelled by electricity, delivered
thereto from an outside source through a line con-
ductor), car equipments, each including the combina-
tion of two motors and motor-circuits for operating the
same in series and in parallel relation with resistances,
and a type or form of controller sold and supplied to
it by The Steel Motor Company, or The Johnson Com-
pany or The Lorain Steel Company, the successors of
said Steel Motor Company, described in the affidavit
of Edwin W. Hammer in this cause, verified the 21st
day of June, 1899, and illustrated in “Hammer Ex-
hibit Diagram of Nassau Controller No. 2,” and
“Hammer Exhibit Type C Controller for Four Motors,”
which said combinations of motors, resistances, motor-
circuits and controllers contain the combinations re-
cited in the 20th, 21st, 22nd, 27th, 28th, 29th and 31st
claims of said Letters Patent, and after due considera-
tion had, it is
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendant, Lorain Street Railway Com-
pany, its associates, attorneys, Solicitors, clerks, serv-
ants, agents and workmen, until the further order of
this Court, from directly or indirectly making or causing
to be made, constructing or causing to be constructed,
using or causing to be used, selling or causing to be
sold, or disposing of in any way, any combination of
electric railway motors or motor-circuits and resist-
ances combined with controllers like the controllers
described in the affidavit of Edwin W. Hammer, verified
June 21, 1899, and illustrated in “Hammer Exhibit
Diagram Nassau Controller No. 2 " and “Hammer Ex-
3
hibit Lorain Type C Controller for Four Motors,” or
any other controllers containing or embodying the in-
vention or improvements recited in said 20th, 21st,
22nd, 27th, 28th, 29th and 31st claims of said Letters
Patent, which are as follows:
“20. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and One or more
resistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
motors.
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined order, a series
of resistances, a contact-block on said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
One at a time, contact-brushes from said resist-
ances, and connected to the source of electric
Supply and resting On the contact-block, and
adapted to be brought into or out of contact with
it in succession, whereby the resistances may be
cut into or out of the motor-circuit without vary-
ing the connection of the motor-coils.
“27. The combination of an electric motor, a
Source of electric power, a motor-circuit, a motor-
Switch to vary the power of the motor, two or
more resistances, a resistance-switch to cut said
resistances gradually into or out of the motor-cir-
cuit, and a connection between the said switches,
whereby a movement of the motor-switch will first
cut in one or more of the resistances, and after
changing the power of the motor automatically cut
the resistances out of circuit again.
4
“28. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for coup-
ling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coup-
ling of the motor-coils.
“29. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling
up said coils, so as to vary the internal resistance
of the motor, a resistance, a resistance-switch to
cut in and out the said resistance upon shifting
the motor-switch to vary the coupling of the
motor-coils, and means controlled by the motor-
switch for operating the resistance-switch.
“ 31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
or from infringing the said claims or either or any of
them in any way whatsoever.
AND IT IS FURTHER ORDERED that the operation of
said injunction, as to infringing equipments already in
actual use by the defendant, be suspended, so far and
so long as to enable the defendant to comply therewith
as follows :
That the defendant shall remove from its cars all of
the infringing apparatus referred to in the moving
papers, or apparatus similar thereto, within thirty days
from date. -
AND IT IS FURTHER ORDERED THAT the suspension of
the operation of Said injunction is upon the further
express condition, viz.: That the Lorain Street Rail-
way Company, thirty days from date, file with the
Clerk of this Court, (and serve a copy thereof upon the
complainants’ solicitors), a sworn statement showing
that all of such infringing apparatus have been re-
moved, and giving the numbers or other designating
marks of such apparatus and of the cars from which
wº
5
they have been removed. In case of any failure on
the part of the defendant to comply strictly with the
conditions of this order, or any of them, the said in-
junction shall, ipso facto, become immediately in full
force and effect.
Form of order approved.
HARDING & HARDING,
Solicitors for Respondent.
DETTS, BETTS, SHEFFIELD & BETTS,
Solrs, for Complt.
THE UNITED STATES OF AMERICA, Q U. S. Marshal's
Northern District of Ohio, ss. S. Return.
Received this writ on the 8th day of August, 1899,
and on the 9th day of August, 1899, I served the same
at Lorain, on the within named The Loraln Street
Railway Company, by delivering a true and certified
copy thereof to W. A. Donaldson, Secretary and
Treasurer of said Corporation, the President or other
higher officer of said Corporation not found in my Dis-
trict.
M. A. SMALLEY,
U. S. Marshal.
By JOHN J. KEELEY,
Deputy.
Service--------- $2.00
Travel, 22 mi. - - - 1.32
Total.----- $3.32
THE UNITED STATES OF AMERICA,
Northern District of Ohio, Eastern Division,
I, IRVIN BELFORD, Clerk of the Circuit Court of the
United States within and for said District, do hereby
certify that the within is a true copy of the Order for
6
Preliminary Injunction, entered upon the Chancery
Order Book of said Court, in the cause therein entitled,
together with the return of the Marshal of the Northern
District of Ohio of his service endorsed thereon ; that
I have compared the said entry with the original Order
and the said return of said Marshal endorsed thereon,
and it is a true transcript thereof.
WITNESS my official signature and the Seal
of said Court at Cleveland, in said
District, this 11th day of August,
[SEAL.] A. D. 1899, and in the 124th year of
the Independence of the United
States of America.
IRWIN BELFORD,
Clerk.
By JNo. WAN NOSTRAN,
Deputy Clerk,
- *- -
CITY AND COUNTY OF NEW YORK, ss. :
CHARLES FIGARO, being duly sworn, says that he is a
clerk in the office of Betts, Betts, Sheffield & Betts,
solicitors for the complainant herein ; that on the 16th
day of August, 1899, at about five o'clock in the after.
noon, he served the order of which the within is a
copy, upon Harding & Harding, whom he believes to
be the solicitors for the defendant herein, by enclosing
the same in a postpaid registered envelope, addressed
to said Harding & Harding, 9th and Chestnut Streets,
Philadelphia, Pennsylvania, and depositing said en-
velope, so addressed and containing said enclosure,
with a Registry Clerk in the General Post Office in the
City of New York, on the day and at the time aforesaid.
CHARLES FIGARO.
Sworn to before me this 17th
day of August, 1899. ;
JAMES J. COSGROVE,
[SEAL.] Notary Public,
N. Y. CO.
Injunction.
THE PRESIDENT OF THE UNITED STATES
TO
THE LORAIN STREET RAILWAY COMPANY, your associates,
attorneys, solicitors, clerks, Officers, agents, Ser-
vants and workmen, GREETING:
WHEREAs, it has been represented to us in Our Cir-
cuit Court of the United States for the Sixth Circuit
and Northern District of Ohio, Eastern Division, that
Letters Patent of the United States were issued to
George Herbert Condict, assignor to The Electric Car
Company of America, in due form of law, on the 26th
day of November, 1888, No. 393,323, for Improve-
ments in Switches for Electric Motors, and that said
Letters Patent were duly assigned to the General
Electric Automobile Company and the Thomson-
Houston Electric Company, was duly licensed under
the same, and that you, the said The Lorain Street
Railway Company, have infringed the 20th, 21st, 22nd,
27th, 28th, 29th and 31st claims thereof, which are as
follows:
“20. The combination of a source of electric
energy, the coils of One or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more resist-
ances, and a switch to put said resistances into or
out of the motor-circuit without changing the
motor-connections to vary the power of the cur-
rent flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and one or more
resistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
S
vary the power of the current flowing through the
motors.
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined Order, a
series of resistances, a contact-block on said
switch in circuit with the motor and resistances
and having contact-edges for cutting in or out the
resistances one at a time, contact-brushes from
said resistances, and connected to the source of
electric supply and resting on the contact-block,
and adapted to be brought into or out of contact
with it in succession, whereby the resistances may
be cut into or out of the motor-circuit without
varying the connection of the motor-coils.
“27. The combination of an electric motor, a
Source of electric power, a motor-circuit, a motor-
switch to vary the power of the motor, two or
more resistances, a resistance-switch to cut said
resistances gradually into or Out of the motor-
circuit, and a connection between the said switches,
whereby a movement of the motor-switch will
first cut in One or more of the resistances, and
after changing the power of the motor automat-
ically cut the resistances out of circuit again.
“28. The combination of a motor having sep-
ate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a resist-
ance-switch to cut in and out the said resistance
upon shifting the motor-switch to vary the coup-
ling of the motor-coils.
“29. The combination of a motor having sep-
arate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor-
switch is being shifted, and a connection between
said switches to operate both simultaneously.”
9
NOW, THEREFORE, we strictly command and enjoin
you, the said The Lorain Street Railway Company,
and your associates, attorneys, Solicitors, clerks, officers,
agents, servants and workmen, under the penalties that
may fall on you in case of disobedience, that you
forthwith and until the further order of this Court
desist from, directly or indirectly, making or causing
to be made, constructing or causing to be constructed,
using or causing to be used, selling or causing to be
sold, or disposing of in any way, any combination of
electric railway motors or motor-circuits and resistances
combined with controllers like the controllers described
in the affidavit of Edwin W. Hanomer, verified June 21,
1899, and illustrated in “Hammer Exhibit, Diagram
Nassau Controller No. 2 " and “Hammer Exhibit,
Lorain Type C Controller for Four Motors,” filed in a
suit in the aforesaid Court brought by the Thomson-
Houston Electric Company ct al. against you, or any
Other controllers containing or embodying the inven-
tion or improvements recited in the said 20th, 21st,
22nd, 27th, 28th, 29th and 31st claims of said Letters
Patent No. 393,323.
Witness the Hon. MELVILLE W. FULLER, Chief
Justice of the United States, at the City of Cleveland,
on the 4" day of August, 1899.
IRWIN BELFORD,
SEAL. - Clerk.
- By JNo. WAN NOSTRAN,
Deputy.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainants' Solicitors.
THE UNITED STATES OF AMERICA, U. S. Marshal's
Northern District of Ohio, ss. Return.
Received this writ on the 8th day of August, 1899,
and on the 9th day of August, 1899, I served the same
at Lorain, on the within named The Lorain Street
10
Railway Company, by delivering a true and certified
copy thereof to W. A. Donaldson, Secretary and
Treasurer of said Corporation, the President or other
higher officer of said Corporation not found in my
District.
M. A. SMALLEY,
U. S. Marshal,
By JoHN J. KEELEY,
Deputy.
FEES
Service----------- $2.00
Travel, 22 mi. - - - - - 1.32
Total-------- sº
THE UNITED STATES OF AMERICA, ) .
e {º g SS.
Northern District of Ohio,
I, IRVIN BELFORD, Clerk of the Circuit Court of the
United States, within and for said District, do hereby
certify the foregoing to be a true copy of the Wiit of
Injunction issued in the above entitled cause, to-
gether with the endorsement of Service by the Marshal
of the Northern District of Ohio, returned and filed in
said Court, and that the same is correctly copied from
the original now on file in my office.
WITNESS, my official signature, and the seal
of said Court, at Cleveland, in said
District, this 11th day of August,
[SEAL.] A. D. 1899, and in the 124th year of
the Independence of the United
States of America.
IRWIN BELFORD,
Clerk,
By JNo. WAN NOSTRAN,
Deputy Clerk.
393,323.
No. 26.
Injunction—Circuit Court.
º
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Preliminary Injunction in the case of
Thomson-Houston Electric Company et al.,
= Complainants, vs. the Worcester and Clinton
* Street Railway Company, Defendant,
in the U. S. Circuit Court,
District of Massachusetts.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
Injunction.
|UNITED STATES OF AMERICA.
MASSACHUSETTS I)ISTRICT, ss.:
THE PRESIDENT OF THE UNITED STATES
(L. S.) OF AMERICA,
TO THE WORCESTER AND CLINTON STREET RAILWAY COM-
PANY, a corporation organized and existing under
and by virtue of the laws of the State of Massa-
chusetts, and WILLIAM H. TYLEE, both said com-
pany and Tylee, being residents and inhabitants
of the District of Massachusetts, each having a
regular and established place of business in said
State and District,
Your Agents and Servants, GREETING:
WHEREAs the Thomson-Houston Electric Com-
pany, a corporation duly organized and existing under
and by virtue of the laws of the State of Connecticut, a
citizen of said State, having an Office for the trans-
action of business in the City and County of Schenec-
tady, State of New York; and the General Electric
Automobile Company, a corporation duly organized
and existing under and by virtue of the laws of the
State of West Virginia, a citizen of said State, having
an office for the transaction of business in the City of
Philadelphia, County of Philadelphia, State of Pennsyl-
vania, have exhibited their Bill of Complaint before
the Justices of our Circuit Court of the United States
for the First Circuit, begun and holden at Boston,
within and for the District of Massachusetts, on the
15th day of May, A. D. 1899, against you the said
Worcester and Clinton Street Railway Company and
William H. Tylee, praying to be relieved touching the
matters therein complained of, and whereas, by an
order of said Court made on the 19th day of June,
2
A. D. 1899, it was ordered that a Writ of Injunction
issue under the Seal of the said Court, to restrain you
and each and every of you, from doing all the matters
and things from the doing of which you are prayed to
be restrained in said Bill, according in full with the
prayer of said Bill. -
We therefore, in consideration thereof, enjoin
and command you each, and every of you that
from and immediately after the receipt and notice of
this out Writ by you, or any of you, you shall not
directly or indirectly make or cause to be made, con-
structed or cause to be constructed, use or cause to be
used, sell or cause to be sold, or dispose of in any way
any combination of electric motors and motor circuits
and resistances combined with controllers like the con-
trollers described in the affidavits of Edwin W. Ham-
mer and John Le d. Tangdon, and illustrated in
“Hammer Exhibit Diagram No. 1, type 34 controller "
and “Hammer Exhibit Diagram No. 2, type 34 con-
troller’’ or any other controllers containing or em-
bodying the inventions or improvernents recited in the
20th, 21st, 22nd, 27th, 28th, 29th and 31st claims of
Letters Patent of the United States No. 393,323; nor
directly or indirectly infringe said claims or either or
any of them in any way whatsoever, as appears by the
order of the court, a copy whereof is hereto annexed.
Whereof you aré not to fail on pain of ten thou-
sand dollars, to be levied on your and each of your
goods, chattels, lands and tenements, to our use.
WITNESS the Honorable MELVILLE W. FULLER, Chief
Justice of the United States, at Boston, this twenty-
fourth day of June, in the year of Our Lord one thou-
sand eight hundred and ninety-nine.
BENJ. H. BRADLEE,
|SEAL.] Deputy Clerk.
A true copy :
Attest :
BENJ. H. BRADLEE,
Deputy Clerk.
3
DOSTON, June 27th, 1899.
UNITED STATES OF AMERICA,
Massachusetts District, SS.
I hereby certify that I have made service of the
within precept this day at two o'clock P. M. by giving
in hand to Edgar S. Hill attorney for the within
uamed defendants the Worcester and Clinton Street
Railway Company and William H. Tylee a duly at-
tested copy of this precept for each defendant, the said
Edgar S. Hill accepting service for the said defendant
company and Tylee.
ALBERT TUTTLE,
Deputy U. S. Marshal.
Fees.
Service $8.00
Travel .12
$8.12
BosTON, June 27, 1899.
I hereby accept service for the within named Wor-
cester and Clinton Street Railway Company and
William H. Tylee.
EDGAR S. HILL,
Attorney for Worcester & Clinton Street
Railway Company.
A true copy:
Attest :
BENJ. H. BRADLEE
|SEAL.] Deputy Clerk.
[ENDORSED :]
No. 1089, Eq. Thomson-Houston Elec. Co. et al.,
versus Worcester & Clinton Street Ry. Co. et al. Writ
of Injunction. Fish, Richardson & Storrow, Attorneys.
cºrp, ºn No. 27.
UN V, tº fit. . . 393,323.
ce r -: •. zº -' ſ . . .
* *. ** f * t
* . - ~ .
Injunction—Circuit Court.
Series-Parallel - Controller Case.
(Condict Patent No. 393,323.)
-
Full text of Preliminary Injunction in the case of
Thomson-Houston Electric Company et al.,
. — Complainants, vs. Detroit Citizens Street
Railway Company, ZXefendanſ, in
the U. S. Circuit Court,
Eastern District of
Michigan.
C. G. Burgoyne, Walker and Centre Street, N. Y.
THE PRESIDENT OF THE UNITED STATES,
To THE DETROIT CITIZENS STREET RAILWAY COMPANY.,
its associates, attorneys, solicitors, clerks, serv-
ants, agents and workmen, GREETING:
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Sixth Circuit
and Eastern District of Michigan, that Letters Patent
of the United States were issued to George Herbert
Condict, assignor to the Electric Car Company of
America, in due form of law, on the 20th day of
November, 1888, No. 393,323, for Switches for Electric
Motors, and under which Letters Patent the Thomson-
Houston Electric Company is the exclusive licensee
for certain purposes, and of which Letters Patent and
the inventions and improvements or discoveries therein
set forth, The General Electric Automobile Company
is the owner and possessed of and entitled to all the
right, title and interest, subject to the aforesaid ex-
clusive license to said Thomson-Houston Electric
Company, and that you, the said Detroit Citizens
Street Railway Company, have infringed the 20th, 21st,
22nd, 27th, 28th, 29th and 31st claims of said Tetters
Patent ;
NOW, THEREFORE, we strictly command and enjoin
you, the said Detroit Citizens Street Railway Com-
pany, your associates, attorneys, solicitors, clerks,
servants, agents and workmen, under the penalties that
may fall on you in case of disobedience, that you
forthwith and until the further order of this Court,
desist from, directly or indirectly, making or causing
to be made, using or causing to be used, or vending to
others to be used, or disposing of in any way, any
2
combination of Electric Railway Motors and Motor-
circuits and resistances combined with controllers like
the controllers described in the affidavits of Edwin W.
Hammer and W. Channing Broadhurst, verified
February 4th, 1899, and illustrated in “Hammer Ex-
hibit, diagram type D and D* controller" (filed in a
suit in this Court brought against you, the Detroit
Citizens Street Railway Company, by the Thomson-
Houston Electric Company, et al.), or any other con-
trollers containing or embodying the inventions or
improvements recited in the said 20th, 21st, 22nd, 27th,
28th, 29th and 31st claims, which are as follows:
“ 20. The combination of a source of electric
energy, the coils of One or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, one or more re-
sistances, and a switch to put said resistances
into or out of the motor-circuit without changing
the motor connections to vary the power of the
current flowing through the motors.
“21. The combination of a source of electric
energy, the coils of one or more electric motors, a
switch for connecting said coils in different ways
to vary the motor resistance, and one or more
resistances, said switch being adapted to put said
resistances in succession into or out of the motor-
circuit without changing the motor-connections to
vary the power of the current flowing through the
motors.
“ 22. The combination of a source of electric
supply, a switch for coupling up the coils of a
motor or motors in a predetermined Order, a series
of resistances, a contact-block on Said switch in
circuit with the motor and resistances and having
contact-edges for cutting in or out the resistances
one at a time, contact-brushes from said resist-
ances, and connected to the source of electric
supply and resting on the contact-block and
adapted to be brought into or out of contact with
it in succession, whereby the resistances may be
cut into or out of the motor-circuit without vary-
ing the connection of the motor-coils.
“ 27. The combination of an electric motor, a
Source of electric power, a motor-circuit, a motor-
3
switch to vary the power of the motor, two or
more resistances, a resistance-switch to cut said
resistances gradually into or out of the motor-
circuit, and a connection between the said switches,
whereby a movement of the motor-switch will
first cut in one or more of the resistances, and
after changing the power of the motor automatic-
ally cut the resistances out of circuit again.
“28. The combination of a motor having
separate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, and a re-
sistance-switch to cut in and out the said resistance
upon shifting the motor switch to vary the coup-
ling of the motor coils.
“29. The combination of a motor having sepa-
rate coils, a motor-circuit, a motor-switch for coup-
ling up said coils so as to vary the internal re-
sistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance upon
shifting the motor-switch to vary the coupling of
the motor-coils, and means controlled by the
motor-switch for operating the resistance-switch.
“ 31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or
multiple to vary their internal resistance, a resist-
ance, a switch to insert the resistance when the
motor-switch is being shifted, and a connection
between said switches to operate both simul-
taneously.”
or from infringing the said claims or either or any of
them in any way whatsoever. -
Witness the Hon. MELVILLE W. FULLER,
Chief Justice of the Supreme Court
|SEAL.] of the United States, at the City of
Detroit, on the 1st day of Septem-
ber, 1899.
WALTER S. HARSHA,
Clerk.
By ADELAIDE ANDERSON WOORHEIS,
Deputy Clerk
4
EASTERN DISTRICT OF MICHIGAN, Ss. :
Thereby certify and return that on the first day of
September, A. D. 1899, I served the within injunction
upon The Detroit Citizens' Street Railway Company
within named, by delivering to Antoine B. Du Pont,
Manager, personally, a true copy, at Detroit, in Said
District. -
WM. R. BATEs,
Marshal,
By C. P. TAYLOR,
Deputy.
[14128]
, -’ º - * r: s: . . . .
* . . . . . . " ‘. . . ; .
, , . . . . . . .-: 393.323
... ?, ; ; i., § - iº . . . J ſº
* - * ...". . . .
, , §§ 3 ; ; ; Y-, ; }; No. 28
yº º 9 tº O. ſº
Order and Injunction—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order and Preliminary Injunction in the
case of Thomson-Houston Electric Company et al.,
Complainants, vs. Exeter, Hampton & Amesbury
Street Railroad Company, Defendant, filed
in the U. S. Circuit Court, District
of Massachusetts.
Order filed January 4, 1900.
Injunction served January 5, 1900.
C. G. Burgoyne, Walker and Centre Streets, New York.
Order for Injunction.
|liſtſ Sales (iſtlil (OIII.
DISTRICT OF MIASSACHUSETTS.
\
THOMSON-HOUSTON ELECTRIC COM-
PANY, and GENERAL ELECTRIC AU-
TOMOBILE COMPANY.,
N tº In ECluity
Complainants, No. #3.
On Letters Patent
WS. to G. H. Condict,
: 393,323.
EXETER, HAMPTON & AMESBURY
STREET RAILWAY COMPANY.
COLT, J. :
This cause having come on to be heard upon motion
of complainants for a preliminary injunction, upon the
pleadings, proceedings, affidavits and papers filed on
behalf of the respective parties herein, now on motion
of Betts, Betts, Sheffield & Betts, counsel for Com-
plainants, and Defendant's counsel not appearing to
Oppose,_it is
ORDERED by the Court, that a writ of injunction is-
sue as prayed for in the bill of complaint herein,
strictly enjoining and restraining the defendant, Exeter,
Hampton & Amesbury Street Railway Company, its
associates, officers, attorneys, Solicitors, clerks, servants,
2
agents, workmen and employees, until the further order
of this Court, from directly or indirectly making or
causing to be made, using or causing to be used, or
vending to others to be used, in any manner, any com-
bination of electric motors and motor-circuits and
resistances, combined with controllers like the con-
trollers described in the affidavit of Edwin W.
Hammer herein, and known as, “Type H No. 3",
and “Type No. 34”, and any other electric con-
trollers, devices or apparatus, containing, em-
bodying or employing the inventions, improve-
ments or discovery recited in the 20th, 21st, 22nd,
27th, 28th, 29th and 31st claims of Letters Patent of
the United States, granted to G. H. Condict, No. 393,-
323, dated November 20, 1888, referred to in the bill
of complaint, or from infringing said claims or either
or any of them in any way whatsoever.
AND IT IS FURTHER ORDERED, that the operation of
said injunction in so far as the same relates to the de-
fendant, Exeter, Hampton & Amesbury Street Railway
Company, and to the infringing equipments already
in actual use by the defendant, Exeter, Hampton &
Amesbury Street Railway Company, is suspended so
far and so long as to enable the defendant, Exeter,
Hampton & Amesbury Street Railway Company, to
comply there with as follows: •
It shall remove from its cars all of the infringing
apparatus referred to in the moving papers within
thirty days from date.
AND IT IS FURTHER ORDERED, that this suspension of
the operation of said injunction is upon the further
express condition, viz: that the defendant, Exeter,
Hampton & Amesbury Street Railway Company, thirty
days from date file with the Clerk of this Court a
sworn statement showing that all of such infringing
apparatus have been removed, giving the numbers or
other designating marks of such apparatus and of the
*
3
cars from which they have been removed, and serve a
copy thereof upon Complainants’ solicitors.
In case of any failure on the part of the defendant,
Exeter, Hampton & Amesbury Street Railway Com-
pany, to comply strictly with the conditions of this
order, or any of them, the said injunction shall ipso
facto become immediately operative and in full force
and effect.
AND IT IS FURTHER ORDERED, that as to the Type of
controller used by the defendant and designated as
“Type 38” in the affidavits filed herein, the complain-
ants have leave to withdraw their motion for Prelimi-
nary Injunction without prejudice, by reason of the
withdrawal, to their renewing such motion hereafter, if
so advised, and on other and further papers. But the
affidavits already filed on the Injunction Motion herein,
shall remain on file, with the right reserved to either
party to use them or any of them, on any renewal of
the Injunction Motion herein.
Dated January 4, 1900.
By the Court :
BENJ. H. BRADLEE,
Deputy Clerk.
Form approved.
HARDING & HARDING,
Solicitors for Respondent.
BETTS, BETT, SHEFFIELD & BETTs,
Solrs. & Counsel for Complts.
Injunction.
UNITED STATES OF AMERICA.
Massachusetts District, ss.
(L. S.) THE PRESIDENT OF THE UNITED
STATES OF AMERICA,
To the ExETER, HAMPTON & AMESBURY STREET RAILWAY
COMPANY, a corporation Organized and existing
under and by virtue of the laws of the State of
New Hampshire, a citizen of said State and a
resident and inhabitant of the District of New
Hampshire, but having a regular and estab-
lished place of business in the City of Boston,
within the District of Massachusetts,
Your Agents and Servants, GREETING :
WHA'ſ EAS the Thomson-Houston Electric Com-
pany, a corporation duly organized and existing under
and by virtue of the laws of the State of Connecticut,
a citizen of said State, having an office for the trans-
action of business in the City and County of Schenec–
tady, State of New York, and the General Electric
Automobile Company, a corporation duly organized
and existing under and by virtue of the laws of the
State of West Virginia, a citizen of said State, having
an office for the transaction of business in the City of
Philadelphia, County of Philadelphia, and State of
Pennsylvania, have exhibited their Bill of Complaint
before the Justices of our Circuit Court of the United
States for the First Circuit, begun and holden at
Poston, within and for the District of Massachusetts,
on the 15th day of October A. D. 1899, against you
the said Exeter, Hampton & Amesbury Street Railway
Company, praying to be relieved touching the matters
therein complained of, and whereas, by an order of
said Court made on the fourth day of January, A. D.
ve
5
1900, it was ordered that a Writ of Injunction issue
under the Seal of the said Court, to restrain you and
each and every of you, from doing all the matters and
things from the doing of which you are prayed to be
restrained in said Bill, according in full with the
prayer of said Bill. -
WE, therefore, in consideration thereof ENJOIN
AND COMMAND you each, and every of you that
from and immediately after the receipt and notice of
this our Writ, by you, or any of you, you shall not
directly or indirectly make or cause to be made use or
cause to be used, or vend to others to be used, in any
manner any combination of electric motors and motor-
circuits and resistances, combined with controllers like
the controllers known as “Type H No. 3” and “Type
No. 34”, or any other electric controllers, devices or
apparatus, containing, embodying or employing the
inventions, improvements or discovery recited in the
20th, 21st, 22nd, 27th, 28th, 29th and 31st Claims of
Letters Patent of the United States, No. 393,323,
dated November 20, 1888, and issued to G. H. Condict
for Improvements in Switches for Electric Motors,
except as appears by the order of court hereto
annexed.
WHEREOF you are not to fail on pain of ten thou-
sand dollars, to be levied on your and each of your
goods, chattels, lands and tenements, to our use.
‘ſtitutes g the HONORABLE MELVILLE W.
FULLER, Chief Justice of the United States, at
Boston, this fourth day of January, in the year of our
Lord one thousand nine hundred.
BENJ. H. BRADLEE,
Deputy Clerk.
- A true copy :
Attest :
ALEX. H. TROWBRIDGE,
[SEAL.] Clerk.
t;
UNITED STATES OF AMERICA. S
Massachusetts District, \
BoSTON, January 5th, 1900.
I HEREBY CERTIFY that I have notified the within-
named defendant the Exeter, Hampton & Amesbury
Street Railway Company of the within writ of injunc-
tion by giving to Edwin L. Pride, Treasurer of said
Exeter, Hampton & Amesbury Railway Company, at
four o’clock P. M. this day at Boston, a true and
attested copy of said writ. I also at the same time
gave said Edwin L. Pride an attested copy of the
order of court, the original of which is affixed to this
writ.
ALBERT TUTTLE,
Deputy U. S. Marshal.
FEES :
Service. -- - - - - - $4.00
Travel - - - - - - - .24
$4.24
A true copy :
Attest :
ALEX. H. TROWBRIDGE,
[SEAL, Clerk.
[15091]
º
*. tº . a ; , ; ; * * f : , ;", f : . }
£5% Aſ if:{R} {Y,
} | . . . . . . sº * r -
Jº (; ; , , , tº A$4CH. 393,323.
MºW 20 1900 No. 29.
Opinion—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Opinion of Judge Lacombe, in the case
of Thomson-Houston Electric Company et al.,
Complainants, vs. Brooklyn Heights Railroad
Company, Defendant, filed in the U. S.
Circuit Court, Eastern District of
New York, October 8, 1900.
C. G. Burgoyne, Walker and Centre Streets, New York.
Ulniteb States Circuit Court,
EASTERN DISTRICT OF NEW YORK.
THOMSON-HousTON ELECTRIC COM-
PANY and another
WS. )
BROOKLYN HEIGHTS RAILROAD
CoMPANY.
LACOMBE, Circuit Judge :
The record is voluminous, but a large portion of it
on which mainly defendant relies has never been sifted
by cross-examination. The claims in question have been
sustained and construed by the Circuit Court of Con-
necticut at Final Hearing and by the Circuit Court of
Appeals in this Circuit, and such construction will be
followed here. As thus construed infringement seems
plain.
Motion granted.
(16672]
r - * * w -
“, , , * * - -
• ' '. '. * * . . . . … ', * &
*** * * **, 393.323
4.
- * . - :- • J. : * * * y e
• * . • * * * & & .:-
4 * * ”, “ , ” * , ; * ~ * - s
, , , , , *, *s ſº No. 3O
t . . ; ºr, t; ū tº
* . .'
Order and Injunction.
-- - - - - - - - - - - -- * - * * * * * * * * ~ * ** - - ----------~ * - - --- - - - J. : - -, -º-º-º-º-º: " - - - -
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order and Preliminary Injunction in the case
of Thomson-Houston Electric Company et al.,
Complainants, vs. Brooklyn Heights Railroad
Company, Defendant; filed in the U. S.
Circuit Court, Eastern District
of New York.
Order entered Oct. 29, 1900.
Injunction entered Nov. 5, 1900.
—&–
C. G. Burgoyne, Walker and Centre Streets, New York.
Order.
At a Stated Term of the Circuit Court of
the United States held in and for the
Second Circuit and Eastern District
of New York, on the 29th day of
October, 1900.
Present : HoN. E. HENRY LACOMBE, Judge.
THOMSON-HOTISTON ELECTRIC COM-
PANY and EDWARD H. LEVIS
ri In Equity on Patent
vs. ſ No. 393,323.
BROOKLYN HEIGHTS RAILROAD
COMPANY.
An order to show cause why a preliminary injunc-
tion should not issue herein having been granted, on
motion of complainants, and the same coming on to
be heard upon the bill of complaint, and upon the affi-
davits of Charles A. Coffin, L. F. H. Betts (3), Edwin
W. Hammer, John T. Crouse, Louis B. Lewis, Al-
bert B. Fleming and Edward M. Bentley, and the ex-
hibits referred to therein, on the part of the complain-
ants; and upon the affidavits of Frank J. Sprague,
Cary T. Hutchinson, George R. Preble, George J.
Harding, Frank Mansfield, Frank P. Lewis, Eugene
R. Carichoff, Henry B. Brownell, Patrick O'Shaugh-
messy, Robert H. McPherson and William L. Stevens,
and the exhibits referred to therein, filed by the defend-
ant in opposition thereto ; and upon the affidavits of
L. F. H. Betts, Edwin W. Hammer, Edward M. Bent-
2
ley, George H. Condict and William C. Fahy, and the
exhibits referred to therein, filed by the complainants
in rebuttal thereto ; and
Upon motion of the defendant an order to show
cause having been granted why the preliminary injunc-
tion should not be reopened and further affidavits
filed, and the said motion for preliminary injunction
be then reheard and considered upon such new and
additional affidavits, and the defendant upon such
order to show cause having filed the Original affidavits
of Leo Daft executed August 25, 1900, Cary T. Hutch-
inson, August 17, 1900, (2), Robert H. McPherson,
August 17, 1900, George W. Mansfield, August 17,
1900, and Frederick H. Reed, August 18, 1900, and
the exhibits referred to therein ; and the affidavits of
Otto M. Rau, Guy M. Guest, Guyon F. Greenwood,
Joseph Wetzler, John Riddell, Charles H. Hines,
Houarth Hargraves, William Vizenne, Frank H.
Strieby, Frank B. Aspinwall, Frank H. Chamberlain,
Samuel M. Brewster, Lucien M. Roath, William J.
Jenks, William B. Potter, Edward M. Bentley and
Alexander F. Macdonald, and the exhibits referred to
therein, filed by the complainants in reply thereto, and
the same coming on to be heard, printed briefs having
been filed by both parties, and after hearing Mr. Fred-
eric H. Betts in support of said original motion for
preliminary injunction, and Messrs. Charles E. Mitchell
and Thomas Ewing, Jr., in opposition thereto, and it
appearing that the defendant has infringed upon the
said Letters Patent in suit, No. 393,323, issued to
George H. Condict on November 20th, 1888, and upon
the rights of the complainants under the same, by using
upon the cars of their electric railway in the Borough
of Brooklyn, City of New York, which are propelled by
electricity delivered thereto from an outside source
through a line conductor, the combination of two elec-
tric motors and motor circuits for Operating the same in
series and in parallel relation, with resistances, Sup-
plied to it by the Sprague Electric Company, which
3
said combinations of motors, resistances, circuits and
controllers contain the combinations recited in the
20th, 21st, 22nd, 27th, 28th, 29th and 31st claims of
said Letters Patent, and after due consideration had,
it is - -
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendant, Brooklyn Heights Railroad
Company, and its officers, associates, attorneys, so-
licitors, clerks, servants, agents and workmen, and each
of them, until the further order of this Court, from,
directly or indirectly, making or causing to be made,
constructing or causing to be constructed, using or
causing to be used, acquiring or causing to be ac-
quired, contracting for the purchase or acquisition of,
or causing to be contracted for the purchase or acqusi-
tion of, (except from the owners of the Letters Patent
in suit, or their licensees), or disposing of in any way,
any combination of electric railway motors and motor-
circuits, and resistances, with controllers containing
or embodying the inventions Or improvements recited
in the said 20th, 21st, 22nd, 27th, 28th, 29th and 31st
claims of said Letters Patent, which are as follows:
“20. The combination of a source of electric en-
ergy, the coils of one or more electric motors, a switch
for connecting said coils in different ways to vary the
motor resistance, one or more resistances, and a switch
to put said resistances into or out of the motor-circuit
without changing the motor connections to vary the
power of the current flowing through the motors.
“21. The combination of a source of electric en-
ergy, the coils of one or more electric motors, a
switch for connecting said coils in different ways to
vary the motor resistance, and One or more resistances,
said Switch being adapted to put said resistances in
succession into or Out of the motor-circuit without
changing the motor-connections to vary the power of
the current flowing through the motors.
“22. The combination of a source of electric supply,
a switch for coupling up the coils of a motor or motors
in a pre-determined order, a series of resistances, a
contact-block on said switch in circuit with the motor
4
and resistances and having contact-edges for cutting
in or out the resistances one at a time, contact-brushes
from said resistances, and connected to the source of
electric supply and resting on the contact-block, and
adapted to be brought into or out of contact with it in
succession, whereby the resistances may be cut into or
out of the motor circuit without varying the connec-
tion of the motor-coils.
“ 27. The combination of an electric motor, a source
of electric power, a motor-circuit, a motor-switch to
vary the power of the motor, two or more resistances,
a resistance-switch to cut said resistances gradually
into or Out of the motor-circuit, and a connection be-
tween the said switches, whereby a movement of the
motor-switch will first cut in one or more of the re-
sistances, and after changing the power of the motor
automatically cut the resistances out of circuit again.
“28. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling up
said coils so as to vary the internal resistance of the
motor, a resistance, and a resistance-switch to cut in
and out the said resistance upon shifting the motor-
switch to vary the coupling of the motor-coils.
“29. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling up
said coils so as to vary the internal resistance of the
motor, a resistance, a resistance-switch to cut in and
out the said resistance upon shifting the motor-switch
to vary the coupling of the motor-coils, and means con-
trolled by the motor-switch for operating the resistance-
switch.
“31. The combination of two motors, a source of
electric power, a motor-circuit, a Switch for coupling
the coils of the motors in Series or multiple to vary
their internal resistance, a resistance, a switch to insert
the resistance when the motor-switch is being shifted,
and a connection between said switches to operate both
simultaneously,” J
or from infringing the said claims, or either or any of
them, in any way whatsoever.
(Sgd.) E. HENRY LACOMBE,
U. S. O. J.
October 29, 1900.
5
Injunction.
THE PRESIDENT OF THE UNITED STATES,
TO
BROOKLYN HEIGHTS RAILROAD COMPANY, ITS OFFICERs,
ASSOCIATES, ATTORNEYS, SOLICITORS, CLERKs,
SERVANTS, AGENTS AND WORKMEN, AND EACH OF
THEM,
GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Second Circuit
and Eastern District of New York, that Letters Pat-
ent of the United States were issued to George Her-
bert Condict, assignor to the Electric Car Company of
America, in due form of law, on the 20th day of No-
vember, 1888, No. 393,323, for Improvements in
Switches for Electric Motors, and that an exclusive
license under the same, for certain purposes, was duly
obtained by the Thomson-Houston Electric Company,
and that you the said Brooklyn Heights Railroad Com-
pany have infringed upon the 20th, 21st, 22nd, 27th,
28th, 29th and 31st claims of said Letters Patent and
the rights of the complainants under said license ;
Now, therefore, we strictly command and enjoin you,
the said Brooklyn Heights Railroad Company and your
officers, associates, attorneys, Solicitors, clerks, Serv-
ants, agents and workmen, under the penalties that
may fall on you in case of disobedience, that you forth-
with and until the further order of this Court, desist
from directly or indirectly, making or causing to be
made, constructing or causing to be constructed, using
or causing to be used, acquiring or causing to be ac-
quired, contracting for the purchase or acquisition of,
6
or causing to be contracted for the purchase or acqui-
sition of, (except from the owners of the Letters Pat-
ent in suit or their licensees) or disposing of in any
way, any combination of electric railway motors
and motor circuits, and resistances with con-
trollers containing or embodying the inventions or
improvements recited in the said 20th, 21st, 22nd,
27th, 28th, 29th and 31st claims of said Letters Patent,
which are as follows:
“ 20. The combination of a source of electric energy,
the coils of one or more electric motors, a switch for
connecting said coils in different ways to vary the
motor resistance, one or more resistances, and a
switch to put said resistances into or out of the
motor-circuit without changing the motor-connections
to vary the power of the current flowing through the
motors.
“21. The combination of a source of electric energy,
the coils of one or more electric motors, a switch for
connecting said coils in different ways to vary the
motor resistance, and One or more resistances, said
Switch being adapted to put said resistances in
succession into or out of the motor-circuit without
changing the motor-connections to vary the power of
the current flowing through the motors.
“ 22. The combination of a source of electric supply,
a switch for coupling up the coils of a motor or
motors in a pre-determined Order, a series of
resistances, a contact-block on said switch in circuit
with the motor and resistances and having contact-
edges for cutting in or out the resistances, one at a time,
contact-brushes from Said resistances, and connected
to the source of electric supply and resting on the
contact-block, and adapted to be brought into or out
of contact with it in succession, whereby the resistances
may be cut into or out of the motor-circuit without
varying the connection of the motor coils. -
“27. The combination of an electric motor, a source
of electric power, a motor-circuit, a motor-switch to
vary the power of the motor, two or more resistances,
a resistance-switch to cut said resistances gradually
into or Out of the motor-circuit, and a connection
between the said switches, whereby a movement of
the motor-switch will first cut in one or more of the
7
resistances, and, after changing the power Cf the
motor, automatically cut the resistances out of circuit
again. * * tº
“28. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling up
said coils so as to vary the internal resistance of the
motor, a resistance and a resistance-switch to cut in
and out the said resistance upon shifting the motor-
switch to vary the coupling of the motor-coils.
“29. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling up
said coils so as to vary the internal resistance of the
motor, a resistance, a resistance-switch to cut in and
out the said resistance upon shifting the motor-switch
to vary the coupling of the motor-coils, and means
controlled by the motor-switch for operating the
resistance-switch.
“31. The combination of two motors, a source of
electric power, a motor-circuit, a switch for coupling
the coils of the motors in series or multiple to vary
their internal resistance, a resistance, a switch to
insert the resistance when the motor-switch is being
shifted, and a connection between said switches to
Operate both simultaneously.”
Witness the Hon. MELVILLE W. FullLER,
Chief-Justice of the United States,
|SEAL.] at the City of New York, Borough
of Brooklyn, on the 5th day of
November, 1900.
(Sgd.) B. LINCOLN BENEDICT,
Clerk.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainant's Solicitors.
[16791]
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J No. 31.
Order Partially Suspending Injunction.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Order Partially Suspending Injunction in the
case of Thomson-Houston Electric Company et al.,
Complainants, vs. Brooklyn Heights Railroad
Company, Defendant, filed in the U. S.
Circuit Court, Eastern District of
New York, October 30, 1900.
*
f
C. G. Burgoyne, Walker and Centre Streets, N. Y.
Order.
At a Stated Term of the United States Cir-
cuit Court, held in and for the East-
ern District of New York, at the
Court House in the Post Office
Building in the City of New York,
Borough of Manhattan, on the 30th
day of October, 1900.
Present—HON. E. HENRY LACOMBE, U. S. Circuit
Judge.
THOMSON-HOUSTON ELECTRIC COMPANY
ET AL.,
In Equity.
WS. / On Patent No.
393,323.
BROOKLYN HEIGHTS RAILROAD
COMPANY.
An order having this day been entered granting a
motion for preliminary injunction in the above-entitled
cause, and the defendant now making a motion to sus-
pend the Operation of said injunction order, so far as
it relates to equipments actually in use upon the lines
of the said Brooklyn Heights Railroad Company, and
the same coming on to be heard upon affidavits filed
on behalf of both parties, and, after hearing Mr. Charles
E. Mitchell in support of said motion, and Mr. Fred-
eric H. Betts in reply thereto, and it appearing that
the defendant has now in use forty-eight cars equipped
with infringing controllers, supplied to it by the
Sprague Electric Company, it is—
(1) ORDERED that the said injunction as to said forty-
eight motor cars already in actual use be suspended so
far and so long as to enable the defendant to comply
therewith as follows :
The defendant shall remove at least sixteen of
the infringing apparatus referred to on or before Janu-
6
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393,323.
Y, No. 32.
Restraining Order and Amended Restraining Order.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Restraining Order in the case of Thomson-
Houston Electric Company et al., Complainants, vs.
Sprague Electric Company, Defendant, filed in
the U. S. Circuit Court, District of New
*- Jersey, November 20, 1900, and
- Amendment to same, filed >.
November 26, 1900.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
Cirúlit COIt Of the United States
DISTRICT OF NEW JERSEY.
THOMSON-HousTON ELECTRIC COM-
PANY ET AL.
In Equity on Con-
dict Patent No.
WS. 393,323.
SPRAGUE ELECTRIC COMPANY.
On the Bill of Complaint in the above-entitled cause,
the Condict patent in suit, No. 393,323, the affidavits
of C. A. Coffin, L. F. H. Betts (2), Otis E. Turner,
William B. Potter, Edwin W. Hammer, Edward M.
Bentley, and the papers and exhibits referred to
therein and annexed thereto, and, on motion of Betts,
Betts, Sheffield & Betts, Solicitors for the Complain-
ants, it is
ORDERED, That the defendant Sprague Electric Com-
pany show cause, at the Court room of this Court, in
the City of Trenton, New Jersey, at 10:30 A. M., on
the 3d day of December, 1900, why a preliminary in-
junction should not be issued against it as prayed for
in said Bill, and that, in the meantime, and until the
hearing and decision of said prayer for a preliminary
injunction, and the further order of this Court, the de-
fendant, its officers, clerks, attorneys, servants, agents
and workmen be, and the same are hereby, enjoined
and restrained from delivering, shipping or supplying,
or allowing or causing to be delivered, shipped or Sup-
plied to The South Side Elevated Railway Company,
of Chicago, Illinois, or its associates, officers, attor–
neys, agents, servants or workmen, the series-parallel
controllers for the fourteen motor-car equipments,
or any of them, referred to in the said affidavit of
2
William B. Potter; from equipping any of the cars
or vehicles of said Company with the said series-
parallel controllers, or any of them ; from disposing of
or causing or allowing to be disposed of, series-parallel
controllers for the said fourteen motor-car equipments,
or any of them, in any way whatsoever, or from re-
moving or allowing or causing them, or any of them,
to be removed from the jurisdiction of this Court; and
also from carrying Out, completing or executing the
contract referred to in the said affidavit of William B.
Botter, to supply the Boston Elevated Railway Com-
pany, of Boston, Massachusetts, with series-parallel
controllers for sixty of its cars or vehicles, from equip-
ping said sixty cars, or any of them, of said Company,
with the series-parallel controllers, or any of them, re-
ferred to in said affidavit of William B. Potter ; from
delivering, shipping or supplying, or allowing or caus-
ing to be delivered, shipped or supplied to the said
Boston Elevated Railway Company, its associates,
officers, servants, agents or Workmen, the said series-
parallel controllers, or any of them ; from disposing of,
or causing or allowing to be disposed of, said series-
parallel controllers, or any of them, in any way what-
soever, or from removing, or allowing or causing them,
or any of them, to be removed beyond the jurisdiction:
of this Court.
A copy of this order, the Bill of Complaint, the Pat-
ent in Suit and the moving affidavits shall be served
upon the defendant within two days from the date
hereof, and the defendants shall serve on complainants'
solicitors, Betts, Betts, Sheffield & Betts, 120 Broad-
way, New York City, such affidavits and papers on
which it intends to rely in opposition to the grant of
said preliminary injunction, on or before the 29th day
of November, 1900, and the complainants shall serve
their affidavits in reply on the defendant, or its solic-
itors, on or before the 3rd day of December, 1900.
ANDREW KIRKPATRICK,
Judge.
Dated November 20, 1900.
U. S. CIRCUIT COURT,
DISTRICT OF NEW JERSEY.
THOMson-Houston ELECTRIC Co.
WS. r
SPRAGUE ELECTRIC Co.
------- - - - -- J
A motion on part of defendant having been made to
vacate the restraining order heretofore granted, so far
as the Boston Contract is concerned, and the same
coming on to be heard, after reading the affidavits of
the respective parties, and after hearing Counsel, it is
ordered that the restraining order be amended so as to
cover and forbid the delivery of apparatus to either
party in the restraining order as follows: Any machine
or apparatus containing a device or devices which has
or have been adjudicated to be infringements of any of
the claims of the complainant's patent No. 393,323 as
construed by his Hon. Judge Towns BND, his Hon.
Judge LACOMBE or by the Court of Appeals of the
Second Circuit. '
ANDREW KIRKPATRICK,
Judge.
[17016]
22.3 GENERAL LIBhai, , 393,323.
: Tſ ONIV. OF MAACP), 2 * *
- - * - No. 33.
Tº ſº. «yſ, “e, who w O

Opinion—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Opinion of Judge Thomas in the case of
Thomson-Houston Electric Company et al.,
Complaimants, vs. Nassau Electric Railroad
Company and The Lorain Steel Company,
Defendants, filed in the U. S. Circuit
Court, Eastern District of New
York, March 18, 1901.
C. G. Burgoyne, Walker and Centre Streets, New York.
Ülniteo 5tates Circuit Court
FOR TELE EASTERN DISTRICT OF NEW YORK.
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL FLECTRIC AUTO-
MOBILE COMPANY
March 18, 1901.
WS.
NASSAU ELECTRIC RAILROAD COMPANY
and THE LORAIN STEEL COMPANY.
# /
Bełłs, Betts, Sheffield & Betts, solicitors for complain-
ants ; Frederic H. Betts and Samuel R. Betts, of
counsel. f
Harding cé Harding, solicitors for defendants; George
J. Harding and Jºchard Eyre, of counsel.
THOMAS, J. :
The complainants own letters patent, dated Novem-
ber 20, 1888, numbered 393,323, issued to one Condict,
upon an application filed April 26, 1888, and allege
that the defendants use devices infringing certain claims
thereof, to wit : 27, 28, 29 and 31 of one group, 20, 21,
22, of another group, and also claims 2, 7, 10, 23, 24
and 30. The defense is anticipation, lack of patenta-
bility and non-infringement. The alleged infringing
apparatus is contained in controllers for electric-rail-
way motors used in the cars of the Nassau Electric
Railway Company, and manufactured by the Lorain
Steel Company, and are designated in the record as
Nos. 1, 2, 3 and 4. The Condict invention involves,
2
both for the purposes of diminishing or precluding in-
jury to the motor, and for regulating speed, the com-
bined or mixed use of external resistances and series-
multiple control. The specification distinctly de-
scribes these two purposes and advantages, giving,
however, chief prominence to the preservation of the
machinery by use of these two means of control in
suitable adjustment and sequence. Although many
claims are involved, for present purposes the main
invention claimed is presented with sufficient fullness
in claim 31, which is as follows:
“31. The combination of two motors, a source
of electric power, a motor circuit, a switch for
coupling the coils of the motors in series or mul-
tiple to vary their internal resistance, a resistance,
a switch to insert the resistance when the motor
switch is being shifted, and a connection between
Said switches to operate both simultaneously.”
The term “mixed control" has been employed to
describe Condict's invention, and the definition of the
term by Mr. Bentley, complainaut's expert, may be
useful : -
“I understand that it relates to a principle of
controlling or regulating railway motors, partly on
the variation of the internal resistance of the
motors by changing their circuits from series to
multiple, and partly upon the variation of the cir-
cuit resistance external to the motors by a dead
resistence.”
The present inquiry is aided, and at the same time
somewhat constrained, by the decision of Judge Town-
SEND, in The Electric Car Company vs. The Hartford,
&c., Railroad Company (87 F. R., 733), where the Condict
IPatent was sustained and infringement found, and by
the order of Judge LACOMBE, whereby a temporary
injunction was granted in the present suit (89 F. R.,
204), which was affirmed on appeal, Judge SHIPMAN
writing the opinion (91 F. R., 142). Inasmuch as
3
Judge TownsLND had decided upon final hearing,
Judge LACOMBE accepted his construction of the Con-
dict claims, and held that the defendant's devices in-
fringed them, and Judge SHIPMAN considered the ques-
tion on appeal, not only in the light of the Hartford
decision, but also in view of any new evidence con-
tained in the motion papers. The record in the Hart-
ford case was not before the Circuit Court of Appeals,
and the anticipatory patents presented to that Court
are alleged to be those of Buell, No. 255,249; Thom-
son & Houston, No. 220,948; Spang, No. 289,036 ;
Edison, No. 273,490; Hunter, No. 385,055 ; and Paine,
No. 321,749. Other evidences of prior use and knowl-
edge are presented in this record which were not before
Judge Towns CND, or the Circuit Court of Appeals, but
they amplify the view of the prior art, and lead to a
somewhat different conclusion respecting it. The
principal contention herein relates to Nassau con-
troller No. 4, and if it shall be found to be an infringe-
ment of a valid patent, a like conclusion should be
reached in regard to the other controllers. It is urged
that the resistances used in No. 4 are rheostatic pure
and simple, and that they have no functions and give
no advantages not present in rheostatic control. That
is, they are used purely for the purpose of regulating
speed, and not for the purposes of preventing the in-
jury more specifically pointed out by Condict. It may
be said at this time, that the evidence does not seem
to sustain this claim of the defendants, for it appears
from the record, and seems to be conceded on the
argument, that the preservative influence upon the
motor is always present, although it is claimed that
the advantage is incidental and very subsidiary. In-
deed it is difficult to understand how the two advan-
tages may be separated, whatever principal purpose
may have influenced the use of the two systems. For,
as stated in the defendants’ brief, “The same means
which prevent too rapid acceleration, are always avail-
able for regulating speed.”
4
No proper appreciation of the prior art may be
obtained save by a thorough understanding of the
intimate knowledge that existed concerning both
rheostatic and series-multiple control. It is quite safe
to say that the use of external resistance was known
for the last half of the 19th century, and that it was
commonly employed to regulate electric motors. All
the expert witnesses state that the rheostatic method
was common before the Condict invention. Mr. Bent-
ley, for the complainants, says that,
“Prior to the Condict invention the most com-
mon method of regulation was to insert an artifi-
cial resistance between the motor and its source of
current, which could be varied in amount and
check to any desired degree the flow of current to
the motor,”
and that it was the
“standard arrangement used by Mr. Van Depoele,
the Thomson-Houston Electric Company, the
Bentley-Knight Electric Railway Company, The
Westinghouse Company and others.”
Dr. Kennelly, for the defendants, says:
“It was the common practice, therefore, in
starting any but the smallest motors from the rest
to inject a resistance or rheostat into their circuit
for the purpose of checking the flow of current
until such time as the armature of the motor had
been brought to speed, and had been enabled to
protect itself against unduly heavy currents by
opposing the requisite and automatically adjusted
counter electro-motive forces.”
Mr. Wightman, for defendants, states :
“The use of resistances to choke down the flow
of current to prevent too sudden acceleration of
the motor was as common and well understood a
device in the hands of the electrical engineer as
the throttle valve to the steam engineer.”
5
The use of resistance in accelerating a motor gradu-
ally from one speed to another was also common in the
prior art. g
While the use of the rheostat was so familiarly known
in the prior art as something that could be employed
or laid aside at will, it was equally well understood
that it was wasteful of energy because it reduced the
effective voltage by consuming it and thereby withhold-
ing it from use in propelling the motor. As Mr. Bent-
,ley stated :
“This resistance acted to absorb to a greater or
less degree the impressed electro-motive force de-
livered from the line wire and leave only a remain-
der to be applied to the motor. The amount
absorbed represented a dead loss.”
So in Letters Patent No. 271,042, issued to Curtis &
Crocker, it is stated that the rheostatic method is
objectionable,
“for the reason that whenever any resistance ex-
ternal to the motor is introduced into the circuit
electrical energy is absorbed by it and transformed
into heat without producing any useful electro-
dynamic effect in the motor.”
There was an effort to avoid this wastefulness which
arose from a too prolonged use of the rheostat, and to
this end, and to vary the power of the current applied
to the motor, the series-parallel system was preferred.
Hopkinson's English Patent No. 2,989, of 1881, de-
scribes the series-parallel system :
“If desired, two or more dynamo-electric or
magneto-electric machines may be employed in
conjunction. When so used they are rendered
particularly adapted for the propulsion of tram
engines, tram cars, and other vehicles so as
to obtain required variations in the speed by
the employment of a switch so arranged as to
throw the said machines into parallel circuit or
($
into series, according as it is desired to drive the
electro-locomotive or vehicle at full speed or at a
less speed. In lieu of two or more complete
machines a single machine having two or
more independent circuits may be used. * * *
In Order to economically vary the speed of a tram
car, tram engine, or other vehicle, driven by
electricity, two dynamo electric machines may be
used on the car, engine or vehicle, and when high
speed is desired these are arranged in parallel
circuit ; when a low speed and greater tractive
force is required they are arranged in series.”
In 1884, Reckenzaun secured English patent No.
6275, wherein he states the wastefulness of idle re-
sistance, and among other things says :
“I so arrange the circuits that by means of a
switch or commutator, the motors may run in
* Series,’ in parallel,' or singly, or partly in
‘ series and partly in parallel.’ I may also al-
range the field magnet circuits distinct from the
armature circuits, and join their terminals in a
variety of ways known as in series or in par-
allel,' and thereby vary the resistance of the cir-
cuit without inserting any ‘ idle or artificial re-
sistance.”
This illustrates a knowledge of the use of rheostatic
and series-multiple control and a preference for the
latter to the exclusion of the former. In The Tele-
graphic Journal and Electrical Review for July 6, 1888,
July 13, 1888, and August 3, 1888, Reckenzaun de-
scribes the tests made in December 1887 with his sys-
tem in this country, whereby he shows the effective
working of the system. Sprague used a similar system
on his Richmond Road in 1887, differing from Recken-
zaun in that he provided three sets of field coils in
place of two, and made changes by short-circuiting
and then throwing in parallel One only of those coils
at a time. The evidence tends to show that the system
was reasonably successful and that there was a con-
siderable commercial demand for the controllers. The
7
Julien patents, U. S. Nos. 384,580, 384,447, and British
No. 2470 of 1886, illustrate the series-parallel system
of control. The Electrical World of November 20,
1886 described this system and said :
“The car is started up by turning the lever,
without the slightest shock. The movement is, in
fact, remarkably smooth and pleasant, and the
car can be stopped instantaneously. * * * ſt
is noteworthy that M. Julien depends in no way
upon artificial resistances. The rapidity of move-
ment is controlled by the batteries, and full speed,
half speed, full stop and reverse motion are all
obtained by the merest turn of the lever. To the
regulator are brought the connections of all the
sections of the battery, working alternatively in
series and in parallel.”
The Julien system employs batteries as a source
of supply and is lacking in economy. The fact that
the use of external and internal resistances was well
known and that the series-multiple was preferred, does
not show that it was not understood that the two could
be used in conjunction. It must have been a matter
of familiar knowledge that there could be a combined
use, but it is undoubted that the thorough appre-
ciation of the wastefulness of the rheostatic method
diverted the mind to the system that would ex-
clude or minimize such use. Reckenzaun stated
in 1884, in English patent No. 6275, where he showed
motors in parallel and in series :
“Hitherto, engineers have resorted to artificial
resistances inserted between the motor and the
‘ leads’ supplying the current ; but, though by re-
course to such means, the amount of current flow-
ing could be regulated, still such artificial or ‘idle’
resistances are exceedingly wasteful.”
He stated that he used the series-parallel system,
and thereby varied
“the resistance of the circuit without inserting
any ‘idle or artificial resistance.”
S
Obviously Reckenzaun knew that the rheostat could
be used, but judged it better, and more economical not
to use it. Condict knew it could be used, and judged
that it was better to use it.
But the prior art shows not only full knowledge of
the two systems, and of ability to use them in conjunc-
tion, but their actual use and adaption are shown in
letters patent No. 431,720, issued to Rudolph M. Hun-
ter, July 8, 1890, upon an application filed January 26,
1887, more than a year before Condict's application.
The specification states :
“The motors are connected together by a circuit
and may be coupled in multiple or series connec-
tion, alld provision is made for varying the resis-
tance of the motor circuit. * * R is the
motor circuit and connects both motors in circuit
with the contact-shoes i i. The current may be
regulated by the resistance-changer r, which may
be operated by a lever or handle s on the front of
the car-body, as in the case of the brush-shifting
devices. As shown in Fig. 2, the motors are in
parallel or multiple circuit, but may be put in ser-
ies connection by switches TT when necessary—
as, for instance, in starting, or when the potential
of the current has greatly increased and volume of
current decreased from any cause.”
* *
*—º
*
The diagram embodies this description, and together
with the specification shows a union of the two meth-
Ods operated by separate switches. Mr. Bentley, com-
plainants’ expert, states, that Hunter was Condict's at-
torney in the matter of Condict's patent, but Hunter's
description above antedates that relation. The same
witness states that,
“So far as any regulator is shown it is a rheo-
stat, and this is Only indicated diagramatically.”
This second statement seems erroneous, but it is quite
necessary that the witness’ evidence concerning this
patent of Hunter be set out more fully. He says:
9
“The patent is directed toward an electric truck
and the claims pertain to the arrangement of the
motor upon the vehicle. So far as any regulator
is shown it is a rheostat, and this, is only indicated
diagrammatically. As a distinct matter from the
rheostat two separated and disconnected switches,
are shown, by which it is said that while the mo-
tors are in parallel or multiple circuit, yet they may
be put in series connection when necessary, as at
starting or when the potential of current is
greatly increased and the volume of current
decreased from any cause. This slowing is a
mere incident, no claim is made to it in the patent
and no organized controller on the mixed principle
of Condict shown or suggested. The series-mul-
tiple switches are not connected together so as to
be operated simultaneously, or in any prescribed
sequence, Inor are the two switches for changing
the circuit connected together themselves. Thus
they would have to be operated apart from and by
separate movements from the rheostat, and each
would itself require a movement distinct from the
other. Thus, taking the suggestion of Hunter, it
amounts simply to the use of the rheostat as the
ordinary and fundamental controller with an occa-
sional operation of the series-multiple switch in an
emergency to put the motors in series before oper-
ating the usual controller. There is no construc-
tion teaching the art to give up the rheostatic
method of control and go to the mixed system of
Condict. Much less does it contain an organized
structure explaining and illustrating the practical
way of building an apparatus on this principle *
Beyond his statement that there is no unity of switch
control, the attempted avoidance of the Hunter Patent
by Mr. Bentley seems to result in the concession that
what Hunter says and shows “amounts simply to the
use of the rheostat as the ordinary and fundamental
controller with an occasional operation of the series-
multiple switch in an emergency to put the motors in
series before operating the usual controller.” But the
statement of Hunter is plain. He directs the use of
“the resistance-changer 7, ” to regulate the current ; he
states that the motors are shown in parallel, but that
r
10
{ {
they “may be put in series connection by switches TT
when necessary *-as for instance, in starting, or
when the potential of the current has greatly in-
creased and volume of current decreased from any
cause. This is a description of the conjunction of the
two systems, in few but precise words, and to the lay
mind the language is, fully expressive of the idea of
mixed control. Mr. Bentley's sentence, “There is no
construction teaching the art to give up the rheostatic
method of control and go to the mixed system of Con-
dict ’’, is not understood. He has just stated that the
rheostat is the “fundamental controller’’, and that
there is an “occasional operation of the series-multiple
switch in an emergency.” Hunter has not limited his
use of the series-multiple to an emergency, but has pal-
pably extended it to common operation. Hunter did
not claim that it was an invention—indubitably because
he was speaking of devices that were common knowl-
edge and usual adaptation. The construction of
Hunter's device by Mr. Jenks, one of the complainants'
experts, is not more fortunate for the complainants.
|He says :
“From these statements, which I think com-
prise all in the specification which throw any light
upon the method of control of the propelling
motors, it appears that three plans of regulation
were aggregated on One car, and that it was left to
the judgment of the motorman which of these
three should be used under any given circum-
stances. A considerable amount of attention is
paid to the method by which the brushes are
shifted as to their bearing points on the commu-
tators of the motors, and it may properly be
inferred that this method was to be fre-
quently utilized by the motorman, because
the apparatus for this shifting was placed directly
within his easy reach ".
Dr. Kennelly states:
“In a patent to the same grantee, No. 431,720,
which was issued in 1890, but which was applied
11
for in January, 1887, series-parallel of two motors
is shown and described in conjunction with rheo-
static control. In other words, there is a system
of switches both for changing the motors from
series to parallel or vice versa, and also for insert-
ing and retaining a variable amount of resistance
in the circuit of both. These switches are dia-
grammatically represented and are not shown as
collocated into a single structure or co-ordinated
in their functions. . . . . . If you mean what
references show series-parallel control with the
addition of an auxiliary rheostat or rheostatic
control, my answer is : . . . U. S. Patent No.
431,720, to Hunter ’’.
At a later time, March 15, 1888, and still before
Condict's application, Hunter in Letters No. 385,180
states :
“I may vary the resistance exterior to the
source of power in many ways, some of which may
be enumerated as varying the internal resistance
of the motor either by cutting in or out its coils
or by coupling up said coils in various ways, or
by varying a resistance in the motor-circuit and
exterior of the motor, or both combined ’’.
From the foregoing it appears that the use of the
rheostat and series-multiple systems of control, sepa-
rately or in conjunction, had been understood and
described before Condict's invention.
The serious inquiry follows, whether there was any
prior knowledge or use of the unity of switch control
shown in Condict's invention. Each of claims 27, 29
and 31 clearly comprises as one of its combined ele-
ments a provision for collocating the switches into a
single structure and co-ordinating their functions.
Judge SHIPMAN says of Condict's invention :
“His controller therefore utilizes each system
by the movement of one handle, so that the shock
which would be caused by a sudden change of
motor connections is prevented by the introduction
of dead resistance before or at the time of such
12
change. The switch can also be used for slight
changes in the resistances, ‘when slight variations
in the speed or power of the motors is required ' ".
The value of this element of a single switch con-
troller is undoubted, but was Condict privileged to ap-
propriate a combination whereby the several switches
in a controller should be operated in co-ordination by
the movement of one lever ? This question calls for
an examination of the state of the art anterior to Con-
dict. Mr. Bentley says:
“The Condict controller has a definite operative
connection between the several switches, so that
the operation of one involves a subsequent opera-
tion of the other, and each complete Operation of
the controller as a whole involves the Operation
of both the motor-circuit switch and the resistance
switch ''.
There are several principal movements actuated by
the controller, (1) variations in resistance of the circuit ;
(2) grouping the motors or field coils, or both ; (3) rever-
sal of direction. With one switch Sprague before
Condict's time controlled variations of resistance and
reversal of direction, with the other he effected the
grouping of the motors. Condict controls the motors
and resistances with one switch, and the reversal of
direction with the other. The Paine patent, No. 321,–
748 of 1885, relates to an Improvement in Regulators
for Electric Lights. The specification states :
“The object we have in view is to increase the
efficiency of the apparatus so that the variations
in the light will be more gradual. This we do by
combining in a single progressively-acting switch
the principal of throwing the lamps into and out
of circuit in groups, with that of varying the can-
dle-power of the lamps of each group, both by
throwing the groups into and Out of arrangements
in series and by the use of external resist-
ances. . . . . Our object, further, is to pro-
13
vide means for operating two or more of the
switches together or separately, as desired ".
Mr. Bentley thinks that he is justified by Judge
SHIPMAN's opinion in distinguishing between the con-
trol of lamps and the regulation of motors. But Judge
SHIPMAN in distinguishing the Paine patent was at-
tentive to the main question of the mixed system of
control, and not to the mere mechanical devices for
effecting their co-action by the use of the single lever.
It will be observed that the Weston patent No. 264,982
of 1882 provides for the use of one lever to control
circuit changes and insert resistances. It is true that
the circuit changes that Weston desired to make were
not the same changes involved in the Condict letters.
After a more extended description, which is worthy of
consideration, Weston states,
“ that the combination of devices just described
serves not only as a shifting device, but as a con-
venient means of effecting the regulation of the
speed of the motor by shifting the position of the
brushes and at the same time interposing re-
sistance as the counter electro-motive force is re-
duced ''.
So in letters patent No. 320,630, issued to Daft in
1885, which relate to an Improvement in Switches, de-
signed to cause motors to operate in either direction,
and to regulate their speed, there are evidences of
similar knowledge. Concerning this matter Mr. Bentley
states :
“It had long been well known in ordinary rhe-
Ostatic control that the rheostat could be oper-
ated by means of the same handle which worked
the reverse-switch, a duplicate set of rheostat con-
tacts being provided, or a similar expedient
adopted, by which either movement of the revers-
ing-handle could operate the controlling rheostat.
It is not obvious what bearing this has upon the
Condict invention, since it involves no series-par-
allel control at all, and is not related in the re-
14
motest degree to the problem before Condict and
the structure he devised therefor. It is sufficient
to dispose of this patent, to point out that it has
mo series-parallel regulation of the motor, and that
Dr. Rennelly himself omits it from the list given
in answer to the question propounded to him.”
In letters patent No. 279,036, issued to Spang in
1883, the second claim is as follows:
“The combination, with an electromotor, of a
switch or shunting device having a movable lever
and contact-pieces with which the terminals of the
coils of the field-magnet and resistances respect-
ively connect, whereby a movement of said switch
will cut out or shunt a portion of the coils of said
magnet and simultaneously introduce into the cir-
cuit resistances equivalent to that of the portion
of the magnet cut out or shunted ".
This inventor with one switch control cuts out or
shunts a portion of the coils of the field-magnet, and
at the same time he cuts in equivalent resistance.
Condict couples the coils of the motor in series or in
multiple, by short-circuiting or shunting, cutting in
and out resistances to effect the result. In letters
patent No. 346,527, issued to Beattie in 1886, it is
said :
“The system including my invention consists
of an armature provided with two sets of grooves—
the one longitudinal and the other circular—
around the axis of the armature, and with a groove
running across each end of the armature ; of field-
magnets provided with several independent coils
upon each leg or arm of the magnets; of a gov-
ernor geared to the armature-shaft and to a lever
which is adapted by its movements to cut out one
or more of the field-magnet coils and to substitute
therefor one or more equivalent coils which are
not a part of the field-magnets ''.
This is understood to show a unitary control of the
circuit and rheostats. The fact seems to be that be-
15
fore Condict there was no description of a mech-
anism effecting, by a single lever, an Operation
of rheostatic and series-multiple switches. Coils
had been coupled in series or multiple, and resist-
ances used in conjunction, but each switch had
been moved by a separate lever. Although a survey of
the prior art lends much support to the claim that
Condict simply used a single switch to produce circuit
changes in the appropriate introduction and removal
of resistances, as had been done before, yet Condict's
changes were essentially different. Condict's system
of bringing the resistances and motors under the con-
trol of a single lever, and separating the reversing
switch, is the present adopted method. Why did not
Hunter employ this system 2 It could not have been
advantageous for him to use two switches. Modern
experiences derived from the extended use of motors
for the movement of cars prove this. Hunter was a
solicitor of patents; he was himself skilled in the
subject matter here involved; he united external re-
sistances and series-multiple control; he invented but
a year before Condict ; he knew presumptively all
that existed; he knew that one switch had been used
for the rheostat and reverse switch, that was well
known; he must have known that one switch was
common for circuit changes and rheostatic resistances,
yet with all his knowledge as an attorney making a
specialty of patents, and an inventor, he did not see
that the successful operation of his device required
that one hand should control by one lever the external
resistances and internal changes. Sprague states that
he was called upon to make a choice either of grouping
resistances and motor changes, or of grouping one of
them with the reversal of direction. He put variation
of resistance and reversal together. Events have con-
demned his selection and prove his choice so unwise
as to indicate lack of conception of the Condict method.
Any plan that requires the conjunctive use of mechan-
ism for rheostatic and series-multiple control demands
16
that there should be one lever, whereby the mechan-
ism may be controlled with unity of thought and
action. It may be that a skilled mind could use two
hands and two levers, making a nice adjustment of
these two systems. But the hands that hold the levers
On tens of thousands of cars operating under constantly
varying conditions and emergencies are not those of
electrical engineers. Practice and discipline may aid,
but there must be such unitary and automatic action
of the machinery that the mind may instinctively
direct the hand of the operator to the proper use of
the controlling appliance. It is difficult to under-
stand why Hunter did not grasp this necessity and
advantage, but he did not and Condict did, and
the value of it is so great that it is not logical
to assert that these known unitary controls of cir-
cuit changes and resistances made Condict's de-
vice no new thing in mode of operation. This
conclusion has not been reached without consider-
able doubt, but the considerations that support it
preponderate. The final inquiry is, does the de-
fendants’ device infringe any of Condict's claims herein
held to be valid 2 The defendants’ painstaking and
instructive brief is clear and has been read with great
care upon this subject, but in the end the impression
obtained upon the argument has grown to suitable
conviction that there is infringement. Notwithstand-
ing the long time occupied in the hearing and consid-
eration of this case, the Court would pursue the de-
fendants’ argument step by step, and point out the
process by which its conclusion has been reached,
were it not that the case, in the matter of infringement,
shows no new fact not before the Circuit Court of
Appeals that would justify a departure from its hold-
ing respecting infringement. But the nature of the
Condict invention is, under the facts in this record,
not that stated by Judge TOWNSEND and by the Circuit
Court of Appeals. The invention as regards mixed
control seemed then to be unanticipated and broad.
17
It is now narrowed by the fact that the invention de-
rives its chief novelty from the unitary control. But
that control is provided for apparently in Only claims
27, 29 and 31 of the principal group. If there should
be doubt about the precise claims that cover the
invention as above construed, counsel will be heard
in that regard. The Court also desires to hear counsel
respecting the group of claims 20, 21, 22, and also
claims 2, 7, 10, 23, 24 and 30, to which slight atten-
tion was given on the argument, and concerning some
of which the recent decision of the Circuit Court of
Appeals, in Thomson-Houston Electric Company v.
Lorain Steel Company has a bearing. Counsel can be
heard on motion day.
393,323.
No. 34.
Opinion—Circuit Court.
Series Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Opinion of Judge Thomas granting motion to
reopen case in Thomson-Houston Electric Company
et al., Complainants, vs. Nassau Electric R. R.
Company et al., Defendants, filed in the
U. S. Circuit Court, Eastern District
of New York, June 4, 1901.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
Ulnited 5tates Circuit Court,
EASTERN DISTRICT OF NEW YORK.
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL ELECTRIC
AUTOMOBILE COMPANY., \
In Equity.
WS. Qulty
NASSAU ELECTRIC RAILROAD COMPANY
and THE LORAIN STEEL COMPANY.
Betts, Betts, Sheffield có Betts, solicitors for complain-
ants, Frederic H. Betts and Samuel ſº. Betts, of counsel.
Harding d? Harding, solicitors for defendants, George
J. Harding and Richard Eyre, of counsel.
THOMAS, J. :
After an extended and expensive litigation in this
and other courts, it has been determined that the
complainants were entitled to enjoin others from in-
fringing certain letters patent. Before the entry of
such decree in this court the defendants made appli-
cation to reopen the case upon the ground that a
certain patent issued by the Government of Austria
was an anticipation of the complainants' main inven-
tion. The existence of such Austrian Patent seems to
have been absolutely unknown and without influence
upon the complainants' alleged invention, and notwith-
standing most earnest and extended investigation by
the defendants and persons acting in their behalf, the
existence of such patent was not discovered until
shortly before the present motion. The defendants
ask that they may be allowed to set up and use such
patent to defeat the results of the long and expensive
2
struggle in this suit, when in fact such patent should
have been pleaded at the very outstart of the litigation,
when, if as effective as now claimed by the defendants,
it would have decided at once the complainants’ status.
Notwithstanding the very great hardship which must
result to the complainants from allowing this patent
to be pleaded, it is felt that it is so important and
relevant to the issue that the application cannot be
justly denied ; but the complainants must be placed in
the position in which they were at the time when the
patent should have been interposed as a defense.
Therefore, the motion to reopen the case and amend
the answer by setting up such patent is granted; pro-
vided the defendants shall give a bond in the sum of
$50,000, conditioned for the payment to the complain-
ants of all moneys expended, whether taxable or other-
wise, In the conduct of this suit, to the present time,
including all counsel fees paid to the complainants'
solicitors, attorneys and counsellors, and all fees and
sums paid to experts, and all other necessary expendi-
ture, which payment shall be made in case it shall be
decided finally by this or any other court in this
action that the complainants are not entitled to recover
by reason of the Austrian patent which is now sought
to be set up as a defense ; and provided further, that
the defendants shall, within thirty days after the filing
of this decision, pay to the complainants the sum of
$2500 counsel fees, and stipulate to pay all the ex-
penses of taking the evidence, both of the complain-
ants and defendants, relevant or made relevant by
reason of the answer amended as above, which counsel
fees and expenses shall be independent of the sum
secured to be paid by the bond. The particular form
of the order to be entered herein and the form of bond
will be settled with the court upon the application of
the parties.
[18356]
393,323.
No. 35.
CENFE, ! {3RA hy
Uiº, W.
(j }. WiiC
4. Chi.
Now, 26) 12: …,
Order—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323)
**-
Full text of Order granting motion to reopen case in
Thomson-Houston Electric Company et al.,
Complainants, vs. Nassau Electric R. R.
Company et al., Defendants, filed
in the U. S. Circuit Court,
Eastern District of New
York, June 14, 1901.
Cs G. Burgoyne, Walker and Centre Streets, N. Y.
(lníteo $5tates Circuit Court,
EASTERN DISTRICT OF NEW YORK.
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL ELECTRIC AUTO-
MOBILE COMPANY
WS.
THE NASSAU ELECTRIC RAILROAD
COMPANY and THE LORAIN STEEL
COMPANY.
A motion having been made herein, on behalf of the
defendants, to reopen the testimony in this cause, and
for leave to amend the answer herein, setting up the
alleged prior patent granted to Alithony Reckenzaun,
in the Empire of Austria, alleged to have been granted
on the 30th day of September, 1887, and the same
coming on to be heard on the affidavits of George H.
Condict, Rudolph M. Hunter, William C. Fahy, John
R. Johnson, Victor S. Beam, Thomas E. Robertson,
Edwin W. Hammer and Edward M. Bentley, for the
complainants, and of Frank A. Merrick, Arthur E.
Kennelly (2), Richard Eyre, George J. Harding (2),
William W. White, Ernest Szemelenyi, Carl Hering
(2), Jesse B. Heller (2) and John W. Henderson, for
the defendants, and after hearing counsel for the re-
spective parties, and after due consideration had, it is
ORDERED, that the said motion to reopen the case
and amend the answer, by setting up said patent, is
granted, provided the defendants shall, within fifteen
days from the date hereof, give a bond in the sum of
fifty thousand dollars ($50,000), conditioned for the
2
payment to the complainant of all moneys expended,
whether taxable or otherwise, in the conduct of this suit
to the present time, including all counsel fees paid to
the complainants’ solicitors, attorneys and counsellors,
and all fees and sums paid to experts, and all other
necessary expenditures (to be taxed and adjusted by the
Clerk of this Court within 30 days from date hereof),
which payment shall be made in case it shall be de-
Čided finally by this or any other Court in this action
that the complainants are not entitled to recover by
reason of the Austrian Patent, which is now sought
to be set up as a defense, and, provided, further, that
the defendant shall, within 30 days after the filing of
this order, pay to the complainants the sum of
$2,500 counsel fees, and stipulate to pay all expenses
of taking the evidence, both of complainants and de-
fendants, relevant or made relevant by reason of the
answer amended as above, which counsel fees and ex-
penses shall be independent of the sum secured to be
paid by the said bond. *
AND IT IS FURTHER ORDERED, that the defendants
herein shall take all evidence on their behalf in sup-
port of the said defense of said Austrian patent within
60 days from the date of payment of said $2,500, and
that complainants have 60 days thereafter to reply
thereto ; and it is further provided that this order is
without prejudice to any proceedings, orders, injunc-
tions or decisions heretofore had in this cause ;
and, if the defendants shall not within the time speci-
fied herein comply with the terms and conditions of
this order, then, and in that event, said motion to re-
open the testimony and amend the answer be, and
hereby is, denied.
EDWARD B. THOMAS,
U. S. J.
Dated Brooklyn, N. Y., June 14th, 1901.
18407
393,323.
No. 36.
&J tº i ! :-. . . &
Supplemental Opinion—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323.)
Full text of Supplemental Opinion of Judge Thomas in
the case of Thomson-Houston Electric Co. et al.,
Complainants, vs. Nassau Electric Railroad Com-
pany' and The Lorain Steel Company,
Defendants, filed in the U. S. Circuit
Court, Eastern District of New
York, June 29, 1901. -
C. G. BURGovNE, Walker and Centre Street, N. Y.
(lniteo $tates Circuit Court,
EASTERN DISTRICT OF NEW YORK.
THOMSON-Houston ELECTRIC COM-
PANY and GENERAL ELECTRIC
AUTOMOBILE COMPANY
WS.
NASSAU ELECTRIC RAILROAD COM-
PANY and THE LORAIN STEEL
COMPANY.
Betts, Betts, Sheffield & Betts, solicitors for com-
plainants; Frederic H. Betts and Samuel ſº. Betts, of
counsel.
Harding c( //arding, solicitors for defendants;
George J. Harding and ſºichard Eyre, of counsel.
THOMAS, J. :
The opinion recently filed herein reached the con-
clusion that the defendants infringed claims 27, 29
and 31, and there was reserved for further hearing the
question whether there was infringement of claims 20,
21 and 22, 28, 2, 7, 10, 23, 24 and 30. Such hearing has
been had, and the following conclusions result. The
language of claim 28 is precisely that of claim 29,
save the following words in claim 29 : “ and means
controlled by the motor switch for operating the re-
sistance switch.” In other words, claim 28 does not
2
in terms provide for unitary control. But the com-
plainants urge that the words “substantially as de-
scribed ” should be deemed a part of that claim, under
the decisions of Mitchell v. Tilghman, 19 Wall., 287,
391; Westinghouse v. 'Gardner Brake Co., 2 B. & A.,
55, 57; Matthews v. Shonberger, 4 F. R., 635,
639. But if such words were supplied claim
28 would not be infringed unless it were con-
strued to have the precise meaning due to claim 29.
In such case claim 28 would be an exact duplication
of claim 29, and meaningless within the decision of
Thomson-Houston Electric Co. v. Elmira & H. Ry.
Co., 71 F. R., 396. The effort should be in the con-
struction of the letters to ascribe a purpose to each
claim, and to avoid a construction that would deprive
a claim of a distinct purpose. It may be that claim
28 has an independent use, and that under some other
state of facts its applicability would appear. There-
fore, while their may be propriety in supplying words,
nothing may be gained in the present case by adding
the words indicated. It is sufficient to determine that
claim 28 is not infringed by the defendants, and to
leave it to fulfil on other occasions such purpose as the
patentee may have intended by the language employed
by him.
Claims 21 and 22 have reference to the conception
stated in the following language in the specifica-
tion. -
“It is also evident that while the motors are coupled
in a given manner a slight movement of the switch will
have the effect of cutting in or out one or more of the
resistances Y, and thereby provide an additional means
of regulation where slight variations in the speed or
power of the motors is required.”
The obvious intention was to provide means for
regulating the speed and power of the motors where
the combinations described in 27, 29 and 31 are em-
ployed. Under such an interpretation claims 21 and
22 are infringed, but claim 20, while providing for
3
means of varying the power of the current flowing
through the motors, is similar to claim 28, in this,
that it does not provide for the unitary control which
is essential to the validity of claims 27, 29
and 31. Claim 20 might be construed with
reference to the specifications to relate to such combi-
nation. But if that construction were adopted, claim 20
would have the same meaning as claim 21, and would
be superfluous. There is no occasion for so limiting
claim 20. The fact that claim 21 in haec verba makes
the proper provision, excludes the propriety of such
construction. Hence, it is sufficient to conclude that
claim 20 is not infringed. The next group to be con-
sidered is that including claims 2, 7 and 10. Claim
10 provides for a specific mechanism, which is in-
fringed by defendants’ controller No. 1. There is no
evidence as to the specific mechanism of other con-
trollers of the defendants upon which a decision can
now be predicated. It is sufficient, therefore, to limit
the infringement of claim 10, to all controllers so
similar to No. 1 in construction as may come within
the scope of the present holding. It is questioned
whether claims 2 and 7 of this group are broad enough
to fall within the condemnation of Thomson-Houston
Electric Co. v. Lorain Steel Co., 107 F. R., 711. It is
unnecessary to discuss the process of reasoning by
which the conclusion is reached' that claims 2 and 7
cannot be sustained by reason of the holding of the
Appellate Court. In neither claim is there a new ele-
ment, nor does the union of the parts described result
in any new function, or mode of operation.
It is further thought that claims 23, 24 and 30 are
not infringed by defendants, even if such claims may
be sustained, in view of the prior art. The invention
is a very narrow one. Claim 30 provides :
“The combination of two motors, a source of electric
power, a motor circuit, a switch for coupling the coils
of the motors in series or multiple to vary their inter-
nal resistance, and a switch to cut either of said motors
gº
4
out of circuit without impairing the operation of the
switch.”
What is the meaning of the expression “without im-
pairing the operation of the switch 2" It is thought
that it was the intention of the patentee to state that
the employment of the cut-out switch does not prevent
the motor switch from coupling the coils of the motors
in series or in multiple, to vary their internal resist-
ance. But the defendants contend, and it is thought
justly, that when their controllers cut one motor from
the circuit they can only control the remaining motor
by external resistances, and that the only switch corre-
sponding to the complainants' switch mentioned in the
claim is thereby rendered ineffective. While on the
other hand, when Condict cuts out the motor, he cuts
out, the external resistance also. It is understood that
Nassau controllers Nos. 3 and 4 alone may infringe
&laims 23 and 24. These claims call for a controlling
switch, and among other elements, they demand an
independent switch to cut one of the motors out of
Operative circuit. But the defendants use a single
switch, which both combines the means of reversing
and of cutting out either motor. In addition Condict
cuts out the motor by short-circuiting it, while the de-
fendants cut out the motor by disconnecting both its
terminals. There is at least sufficient dissimilarity in
the devices employed by the complainants and de-
fendants to differentiate the means of effecting the de-
sired result to justify the conclusion already stated
that infringement is not proven.
It results that there should be a decree adjudging
the validity and infringement of claims 27, 29, 31, 21,
22 and 10, and the non-infringement of claims, 2, 7, 20,
28, 23, 24 and 30.
|18492]
393,323.
No. 37.
Decree—Circuit Court.
Series-Parallel Controller Case
(Condict Patent No. 393,323).
- Full text of Decree in the case of Thomson-Houston
Electric Company et al., Complainants, vs. Nassau
- Electric Railroad Company and The Lorain
Steel Company, Defendants, filed in the
U. S. Circuit Court, Eastern District
of New York, August 16, 1901.
C. G. "Burgoyne, Walker and Centre Streets. N. Y.
At a Stated Term of the Circuit Court of the
United States for the Eastern Dis-
trict of New York, held in and for
the said District, at the Court
Rooms, in the City of New York,
Borough of Brooklyn, on the 16th
day of August, 1901.
Present—HON. EDWARD B. THOMAS, District Judge,
holding Court.
THOMSON-HOUSTON ELECTRIC COM-
PANY and GENERAL ELECTRIC A.U.
TOMOBILE COMPANY
WS. In Equity.
THE NASSAU ELECTRIC RAILROAD
COMPANY and THE LORAIN STEEL
COMPANY.
This cause having come on to be heard at a stated
Term of this Court upon the pleadings, proceedings
and proofs, after hearing counsel for the respective
parties, and after due proceedings had, it is, upon con-
sideration,
ORDERED, ADJUDGED AND DECREED that the Letters
Patent of the United States issued to George Herbert
Condict, assignor to the Electric Car Company of
America, dated November 20, 1888, No. 393,323, for
Improvements in Switches for Electric Motors, are
2
good and valid in law as to the 10th, 21st, 22d, 27th,
29th and 31st claims thereof, which are as follows:
“10. The combination of a movable controlling-
switch for varying the power of the motors having a
cam-surface, a reversing-switch having holes or open-
ings, and a bolt actuated by the cam-surface of the
controlling-switch and adapted to be projected through
the holes or openings in the reversing-switch to lock it
against movement when said controlling switch is
moved.
“21. The combination of a source of electric energy,
the coils of one or more electric motors, a switch for
connecting said coils in different ways to vary the
motor resistance, and One or more resistances, said
switch being adapted to put said resistances in succes-
sion into or Out of the unotor-circuit without changing
the motor-connections to vary the power of the current
flowing through the motors. º
“22. The combination of a source of electric supply,
a switch for coupling up the coils of a motor or motors
in a predetermined Order, a series of resistances, a con-
tact-block on said switch in circuit with the motor and
resistances and having contact-edges for cutting in or
out the resistances one at a time, contact-brushes from
said resistances, and connected to the source of electric
supply and resting on the contact-block, and adapted
to be brought into or Out of contact with it in succes-
sion, whereby the resistances may be cut into or out of
the motor circuit without varying the connection of
the motor-coils.
“ 27. The combination of an electric motor, a source
of electric power, a motor-circuit, a motor-switch, to
vary the power of the motor, two or more resistances,
a resistance-switch to cut said resistances gradually
into or Out of the motor-circuit, and a connection be-
tween the said switches, whereby a movement of the
motor-switch will first cut in one or more of the re-
sistances, and after changing the power of the motor
automatically cut the resistances out of circuit again.
“29. The combination of a motor having separate
coils, a motor-circuit, a motor-switch for coupling up
said coils so as to vary the internal resistance of the
motor, a resistance, a resistance-switch to cut in and
out the said resistance upon shifting the motor-switch
to vary the coupling of the motor-coils, and means
controlled by the motor-switch for Operating the
resistance switch.
3
“31. The combination of two motors, a source of
electric power, a motor circuit, a switch for coupling
the coils of the motors in series or multiple to vary
their internal resistance, a resistance, a switch to in-
sert the resistance when the motor switch is being
shifted, and a connection between said switches to
operate both simultaneously.”
That the said George H. Condict was the first, true
and original inventor and discoverer of the inventions
and improvements described in Said letters patents, and
recited in said claims numbered 10, 21, 22, 27, 29 and
31 of said letters patent ; and that the complainants are
the lawful owners thereof, the Thomson-Houston Elec-
tric Company being the lawful and exclusive licensee
for certain purposes under said letters patent and the
said claims thereof.
That the defendants The Nassau Electric Railroad
Company and The Torain Steel Company, and each of
them have infringed upon said letters patent, and
particularly the said claims Nos. 10, 21, 22, 27, 29 and
31, and upon the exclusive rights of the complaimants
under the same.
That the complainants do recover of the defendants
and each of them the profits, gains and advantages
which the said defendants, and each of them, have de-
rived, received, or made by reason of the said infringe-
ment of the said claims of the said letters patent ; and
do also recover any and all damages it has Sustained
by reason of any infringement of said letters patent by
the defendants and each of them.
And it is hereby referred to B. Lincoln Benedict,
a standing Master of this Court, to take and state the
account of said gains, profits and advantages, and to
assess such damages and to report thereon with all
convenient speed. And the defendants, and each of
them, are hereby directed and required to attend be-
fore said Master from time to time as required, and to
produce before him such books, papers and documents
as relate to the matters at issue, and to submit to such
oral examination as the Master may require.
4.
That a perpetual injunction issue out of and under
the seal of this Court, strictly enjoining and restrain-
ing the defendants The Nassau Electric Railroad Com-
pany and The Lorain Steel Company, their and each
Of their directors, associates, attorneys, clerks, serv-
ants, agents and workmen, and each of them, from
directly or indirectly making or causing to be made,
constructing or causing to be constructed, using or
causing to be used, or vending to others to be used, or
disposing of in any way, controllers, switches for elec-
tric motors, or other apparatus, containing, involving,
or employing the invention or inventions covered by the
said 10th, 21st, 22d, 27th, 29th and 31st claims, or
either or any of them, of said Letters Patent No.
393,323, or material or substantial parts thereof.
It is further ordered, adjudged and decreed that said
Letters Patent No. 393,323, so far as claims 2 and 7
are concerned, are invalid. * -
It is further ordered and decreed that said Letters
Patent No. 393,323, so far as claims 20, 23, 24, 28 and
30 are concerned, has not been infringed by The Nas-
sau Electric Railroad Company and The Lorain Steel
Company or either of them.
It is further ordered, adjudged and decreed that the
bill of complaint, so far as claims 2, 7, 20, 23, 24, 28
and 30 of said Letters Patent No. 293,323 are con-
cerned, be, and the same hereby is, dismissed.
It is “urther ordered, decreed and adjudged that
neither party recover costs.
EDWARD IB. THOMAs,
U. S. J.
[18657] .
393,323. .
No. 38.
ſº :
• * * { i At , -
Injunction—Circuit Court.
Series-Parallel Controller Case.
(Condict Patent No. 393,323).
Full text of Injunction in the case of Thomson-Houston
Electric Company et al., Complainants, vs. Nassau
Electric Railroad Company and The Lorain
Steel Company, Defendants, filed in the
U. S. Circuit Court, Eastern
District of New York,
August 20, 1901.
C. G. Burgoyne, Walker and Centre Streets, N.Y
THE PRESIDENT OF THE UNITED STATES
TO
THE NASSAU ELECTRIC RAILROAD COMPANY AND THE
LORAIN STEEL COMPANY, AND THEIR AND EACH OF
THEIR DIRECTORs, ASSOCIATES, ATTORNEYs, CLERKs,
SERVANTs, AGENTS AND WORKMEN, AND EACH OF
THEM,
GREETING :
WHEREAs, it has been represented to us in our Cir-
cuit Court of the United States for the Second Circuit
and Eastern District of New York, that letters patent
of the United States were issued to George Herbert
Condict in due form of law, on the 20th day of Novem-
ber, 1888, No. 393,323, for Improvements in Switches
for Electric Motors, and that the Thomson-Houston
Electric Company is the lawful and exclusive licensee
thereunder for certain purposes, and that you have
infringed the 10th, 21st, 22d, 27th, 29th and 31st
claims thereof, which are as follows:
“10. The combination of a movable controlling-
switch for varying the power of the motors having a
cam-surface, a reversing-switch having holes or open-
ings, and a bolt actuated by the cam-surface of the
controlling-switch and adapted to be projected through
the holes or openings in the reversing-switch to lock
it against movement when said controlling switch is
moved.
“21. The combination of a source of electric energy,
the coils of one or more electric motors, a switch for
connecting said coils in different ways to vary the
motor resistance, and one or more resistances, said
switch being adapted to put said resistances in succes-
sion into or out of the motor-circuit without changing
the motor connections to vary the power of the current
flowing through the motors.
2
“22. The combination of a source of electric supply,
a switch for coupling up the coils of a motor or motors
in a predetermined Order, a series of resistances, a
contact-block on said switch in circuit with the motor
and resistances and having contact-edges for cutting in
or out the resistances one at a time, contact-brushes
from said resistances, and connected to the source of
electric supply and resting on the contact-block, and
adapted to be brought into or out of contact with it in
succession, whereby the resistances may be cut into or
out of the motor-circuit without varying the connec-
tion of the motor-coils.
“ 27. The combination of an electric motor, a source
of electric power, a motor-circuit, a motor-switch to
vary the power of the motor, two or more resistances,
a resistance-switch to cut said resistances gradually
into or Out of the motor-circuit, and a connection be-
tween the said switches, whereby a movement of the
motor-switch will first cut in One or more of the resist-
ances, and after changing the power of the motor au-
tomatically cut the resistances out of circuit again.”
“29. The combination of a motor having separate
'coils, a motor-circuit, a motor-switch for coupling up
said coils so as to vary the internal resistance of the
motor, a resistance, a resistance-switch to cut in and
out the said resistance upon shifting the motor-switch
to vary the coupling of the motor-coils, and means
controlled by the motor-switch for operating the re-
sistance-switch.”
“ 31. The combination of two motors, a source of
electric power, a motor-circuit, a switch for coupling
the coils of the motors in series or multiple to vary
their internal resistance, a resistance, a switch to in-
sert the resistance when the motor-switch is being
shifted, and a connection between said switches to
operate both simultaneously.”
NOW, THEREFORE, we strictly command and enjoin
you, the said The Nassau Electric Railroad Company
and The Lorain Steel Company, and your and each of
your directors, associates, attorneys, clerks, servants,
agents and workmen, under the penalties that may fall
On you in case of disobedience, that you forthwith and
forever desist from, directly or indirectly, making or
causing to be made, constructing or causing to be con-
3
structed, using or causing to be used, or vending
to others to be used, or disposing of in any
way, controllers, switches for electric motors, or
other apparatus, containing, involving or employing the
Invention or inventions covered by the said 10th, 21st,
22d, 27th, 29th and 31st claims, or either or any of
them, of said Letters Patent No. 393,323, or material or
substantial parts thereof.
Witness the HON. MELVILLE W. FULLER,
Chief-Justice of the United States,
[SEAL.] at the City of New York, Borough
of Brooklyn, on the 20th day of
August, 1901.
B. LINCOLN BENEDICT,
Clerk.
BETTS, BETTS, SHEFFIELD & BETTS,
Complainant's Solicitors.
(18657a]
363,186.
A. c. Motors.-D.
399,801.
428,650.
No. 1.
Opinion—Circuit Court.
Thomson Induction Motor.
(Patents Nos. 363,186–399,801–428,650).
Thomson-Houston Electric Company,
sº
gº Complainant,
VS. -
Dayton Fan and Motor Company and E. O. Waymire,
Defendants.
Judge Thompson's Opinion, filed in the U.S. Circuit Court,
- Southern District of Ohio, Nov. 2, 1903.
C. G. BURGoyne, walker and centre Streets, N. Y.
unites $tates Círcuit Court.
SOUTHERN DISTRICT OF ORIO,
WESTERN DIVISION.
THOMSON-Houston ELECTRIC
COMPANY.,
NO. 5209.
WS. In Equity.
Opinion.
DAYTON FAN AND MOTOR COMPANY
and E. O. WAY MIRE.
This is a suit to enjoin the infringement of Letters
Patent Nos. 363,186, 399,801 and 428,650.
I. Letters Patent No. 363,186 were granted for an
alternating-current motor device, May 17, 1887, upon
an application filed January 26, 1887. The claims of
this patent alleged to have been infringed by the de-
fendants, are as follows:
“1. An electromotor device for producing
continuous movement in the same direction,
consisting, essentially, of a closed circuit con-
ductor such as described and an inductive agent
of alternately opposite polarity acting on said
conductor, said conductor and inducing agent,
one or both, being movable, as and for the pur-
pose set forth.
“2. An electromotor device consisting, essen-
tially, of an endless conductor of copper or other
diamagnetic material, as described, and an in-
ductor acting on the same in the manner de-
scribed to set up rapid induced alternations of
current, whereby a continuous repulsion and
consequent movement of the parts away from
one another may be produced.
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3
rent, or to the continuous rotation of an arma-
ture-coil, as in the case of a continuous-current
electric motor.
“My invention may be carried out by the
employment of an alternating-current coil acting
directly to induce currents in the closed circuit
conductor ; or said alternating-current coil may
be utilized in producing rapid alternations of
magnetic polarity in a mass of iron, which mass,
or the alternating magnetic field produced by
said mass, may act on the closed circuit con-
ductor in proper way to set up alternating cur-
rents in the latter, the resultant motive effect of
which I find to be a tendency to continuous
movement of the two parts with relation to one
another, instead of a movement first in One and
then in the other direction ; or the alternations
of magnetic state in the inductive field of the
closed circuit might be produced in any other
way instead of by a coil directly or a stationary
core of iron, the only conditions being that the
magnetic fields of alternately-opposite sign shall
be of proper kind to set upstrong induced currents
in the closed conductor, and that the alterna-
tions shall be of sufficient rapidity to result in a
considerable lapping of each induced current
through self-induction upon the magnetic field
by which the succeeding induced current is
set up.
“In the simplest form of my invention I em-
ploy a coil of wire carrying an alternating cur-
rent and a closed-circuit conductor placed in
proper relation to the coil to have alternating
currents set up in it. I find that the effect of
the alternating currents in the coil of wire is to
cause a continuous strong repulsion of the
closed circuit conductor, due to the self-induc-
tion of the induced currents and their conse-
quent tendency to be prolonged beyond the
point of change of the inducing agent.”
X X +)-
“Referring to Fig. 1, P indicates a coil of in-
sulated wire arranged to be traversed by alter-
nating currents of moderate rapidity. C indi-
cates an outer cylinder or tube of good conduct-
ing material, such as copper. The conductor C
or the coil P being mounted so as to be mova-
ble, it will be found that the passage of the al-
ternating currents in P will cause a mutual
4
repulsion in the directions indicated by the
arrows. Such repulsion will be absent only
when the center of C is exactly coincident with
the center of P, so that there will be an equality
of repulsive effects in both directions. The
closed conductor or casing C may be made quite
thick, so as to carry a very strong induced cur-
rent. A vigorous thrust may then be obtained
by the employment of strong alternating cur-
rents in the coil P.
“The action is, I believe, due to the self-
induction of the currents induced in the con-
ductor C C, whereby such currents are contin-
ued beyond the point of change of intensity and
polarity in the inducing alternating currents
circulating in coil P, so that where attraction
would result repulsion is produced, such repul-
sion occurring at and near the time of maximum
currents in the coil P and conductor C, while
whatever attractions occur exist near the Zero
of currents in both C and P. If an iron core, I,
of iron wires or sheet iron, be added, as indicated
in Fig. 2, the effects will be greatly intensified.”
The remainder of the specification points out how
the device may be made and used.
Of the defenses set up in the answer, but two are
relied upon, namely, first, that the description of the
invention in the specification of the patent is insuffi-
cient to enable any person skilled in the art to make
or use the same ; second, non-infringement.
In support of the first of these defenses it is urged
(Defendants’ Brief, pages 6 and 7), that the case, so
far as it is founded upon Letters Patent No. 363,186,
“rests upon the device shown in Figure 15 of
the drawings of the patent, and upon claims 1,
2, 3, 5 and 6 of the patent, and upon the fol-
lowing paragraphs of the specification of the
patent :
‘A motion of rotation may be obtained by
the devices already described by mounting the
inducing coil, or the coil or conductor in which
the induced currents are excited on an axis,
as indicated in Fig. 15, where the closed cir-
cuit conductor C Cº, is mounted on an axis.
(Indicated at T.)
5
‘When alternating currents circulate in coil
P, the conductor C will be deflected to a po-
sition at right angles to the plane of the coil
P, as indicated by the dotted lines K K. The
coil P might be used as a closed circuit con-
ductor and alternating currents passed through
the coil C with a similar result.”
‘If the alternating-current coil and the
closed circuit conductor or coils or their cur-
rent planes exactly coincide, they will remain
at rest ; but a very slight displacement will
give rise to a deflection to one side or the
Other, which will be continued until the coils
are at right angles to one another.’”
And that a device made in conformity with that of
figure 15 will not be operative. That the armature, if
put in motion by external means, will not revolve con-
tinuously under the influence of the alternating current
in the magnet coil P, but will turn only through a
quarter of a revolution and then stop. On the other
hand, the claim of the complainant is, that if given a
start sufficiently strong to carry it past the “dead
point,” it will continue to run and rotate indefinitely
under the influence of the alternating current in the
magnet coil P. To determine the fact thus put in
issue, the defendants caused three machines to be made
in substantial accordance, as it is claimed, with
Figure 15 of the patent, and these machines were in-
troduced in evidence, and the makers thereof testified
that when tested, they were found to be inoperative ;
that although given a strong start, they would rotate
only for a short time and then stop. The complainant
made four such machines and the maker testified that
when given a sufficient start, they ran continuously as
long as the alternating current was maintained in the
field coil. Two of these machines, “Complainant's
Iºxhibit Motor No. 4,” and “Defendants' Exhibit
|Parry's Apparatus,” are conceded by both parties to
be “made in undebatable conformity with that of
Figure 15 of the patent " (Defendants' Brief, Page 23),
and at the hearing these machines were exhibited to
6
the court, and the current being applied, both were
successfully operated at a high rate of speed.
The evidence, therefore, fails to support this de-
fense.
But the defendant denies that its device, “Com-
plainant's Exhibit Defendants' Motor,” infringes Let-
ters Patent No. 363,186.
The device of the defendant is an alternating cur-
rent electric motor of the induction type. It has a
coil carrying an alternating electric current, a
closed-circuit conductor of copper, Or rather, a
series of such conductors, within the meaning of Claim
5 of the patent ; an inductive agent of alternately op-
posite polarity acting on such conductor, the conductor
being movable rotatably ; and these are means for pro-
ducing induced circuits of rapid alternations, whose
self-induction will cause them to be carried over to the
phase of active repulsion by the inductor. The iron
core for the exciting coil will be found in the polar
projections of the field magnet. In short, it embraces
all the elements of Claims 1, 2, 3, 4, and 5 of the pat-
ent, and there can be no classification of inductive
motors, such as is suggested by counsel for the defend-
ant, which would relieve the defendant from liability
for the infringement of these claims.
But it is alleged that the facts relied upon to show
infringement will equally show infringement of the
Tesla patents Nos. 511,559 and 511,560, and that this
Court has heretofore found that the defendants’ de-
vice infringes these patents, the suggestion being that
a finding in favor of the complainants in this case
would be inconsistent with the former finding. No
defence is set up in the answer to warrant this sugges-
tion, but it could not be entertained, if it were properly
before the Court.
Letters Patent Nos. 511,559 and 511,560 do not
necessarily employ the Thomson invention. The
purpose of one of these patents was to start a single
phase motor by employing the Tesla field of
rotating polarity, and when given speed is attained to
continue the rotation by alternating the poles, and in
7
the other, to distribute the currents to the motor cir-
cuits by the Tesla method of derivation from a single
original source—a single line of transmission from the
generator, and these purposes can be accomplished
without infringement of the Thomson patent.
II. Letters Patent Nos. 399,801 and 428,650, the
first dated March 19, 1889, and the second dated May
27, 1890, in the language of complainant's counsel—
“Telate to appliances auxiliary to or im-
provements upon those used in effecting rota-
tion in accordance with the invention of the first
Thomson patent in Suit, and adapted to act to
give a directive start to the rotation of the mov-
able member of the motor.” • .
The claims of these patents alleged to have been in-
fringed, are claims 12 of No. 399,801 which reads as
follows:
“12. The combination, with an alternating in-
ductor, of a local phase distorter or modifier
and an armature subjected to the simultaneous
action of the inductor and the distorter or mod-
ifier.”
And claims 1, 2, 5 and 6 of No. 428,650 which read as
follows :
“1. The combination, with an alternating in-
ductor, of an induction modifier or retarder lo-
cated to One side of the general magnetic axis,
and serving to produce a compound field of alter-
nating induction whose parts differ or are dis-
placed in phase.
“2. The herein-described method of pro-
ducing two sets of magnetic alternations differing
in phase at the free pole of an alternating coil
or magnet consisting in shading or inductively
retarding the alternations in a part of Said mag-
netic field to one side of the general magnetic
axis, as and for the purpose described.
26. * * * +
“5. The combination, with a magnet produc-
ing an alternating magnetic field having parts
S
lying in the same general plane transverse to
the general magnetic axis, differing or displaced
in their phases of alternations, of an armature
in the field of inductive influence of said mag-
netic field, as and for the purpose described.
“6. The combination with an alternating mag-
netic field, of a modifier or retarder operating
upon a portion of the field to one side of the
magnetic axis to produce a lagging in the alter-
nations, and an armature placed within the
compound field thus produced, which field has,
as described, adjoining portions in which the
alternations have their phases displaced.”
The Thomson and Wightman device employs two
field currents, alternating currents, one transmitted
from an external source to coil P, by which the other
is induced in closed-circuit coil S. The coil or magnet
P is designated as the inductor, and the coil S, as the
modifier or retarder. Both coils are wound on the
same pole piece. The two currents differ in phase
owing to the self induction of the induced current.
“The consequence of this is that the alterna-
tions of the inductive field, of whatever nature
that field may be, over or in proximity to the
conductor S will be retarded from the time of
development of the field of the inductor at those
points not influenced by said conductor S or
where coil S is not applied, so that in effect
there is produced in jaxtaposition a compound
field of induction having alternations with a dis-
placed development of field or phase.
“The retarder S is preferably applied, as
shown, at or near one end of the inductor P.
“The effect of the retarder applied to a part
of the inductor as shown Inay also be considered
as resulting in the production of a consequent
pole or magnetic pole, which is the resultant of
the currents in the inductive band or circuit S
and in the coil P, such magnetic pole, however,
changing constantly in intensity or position,
while at the same time the magnetic effects
develop themselves during the flow of alter-
nating currents in the coil P in different times
or intensities at various parts of said coil.”
9
Now, if an armature, such as is employed by the de-
fendants in their device :
“ be mounted, so as to be free to turn in a posi-
tion where it will be subjected to the action of
the two parts of alternating field produced by
the modifying action of the conductor S, and by
the operations of the portions of conductor P
not subjected to the action of S, or subjected in
a less degree to such action, currents will be in-
duced ”
in the armature, which will result in the rotation of
the same.
|By this method the equivalent of the Tesla field of
rotating polarity, or progressive shifting of the poles,
is produced ; but the Tesla method, as shown in Letters
Patent Nos. 382,279 and 555,190, for the individual
and independent action of the field currents upon the
armature is not found in the Thomson and Wightman
device, nor is the compound simultaneous action of the
field currents upon the armature, of the Thomson and
Wightman device found in the Tesla method; nor is
the winding of the coils on the same pole-piece found
in the Tesla method.
The characteristic and essential features of the
Thomson and Wightman invention are the overlapping
or superposition of the two coils on the same magnet
and the compound simultaneous action of the fluxes
upon the armature, as distinguished from the winding
of the coils on separate pole-pieces and the individual
and independent action of the fluxes in the Tesla de-
vices. The Thomson and Wightman method is used
in the defendants’ device and they thereby secure a
material advantage by being able to employ all the
poles after the green circuit is cut out, whereas, if they
followed the Tesla method they would be able to em-
ploy but one half of the poles. The defendants' de-
vice employs the Tesla field of rotating polarity, or the
equivalent thereof, but uses the Thomson and Wight-
man method of obtaining it, and the defendants thereby
secure a material advantage not known to the Tesla
10
method, and cannot escape liability for the infringe-
ment, upon the ground that they have heretofore been
held liable for the infringement of the Tesla patents.
The second Thomson patent is for an improvement
upon the Thomson and Wightman invention, which
consists, essentially, in applying an induction modifier
or retarder, to a part of the field of induction lying to
one side of the general magnetic axis of the inductor.
The defendants seek to distinguish the method of
their device from that of the Thomson and Wightman
and the second Thomson patents, upon the ground that
the current in the green coils is not induced by the
current flowing in the blue coils, but is derived from
that current by the Tesla method, whereas, in the device
of the Thomson and Wightman and the second Thom-
son patents, the current in the modifying coil is in-
duced by the primary current from the generator.
This method of supplying the current for the modifier,
however, is not an essential feature of the invention
of Thomson and Wightman and the second Thomson
patents. The inventions covered by these patents as-
sume the presence of the current in the modifier
through some or any of the then well-known methods
of supplying it, and the choice of one, rather than
another, will neither add to nor detract from the inven-
tion. The methods by induction and by derivation
were then known to the art and the inventors were free
to choose either One.
A decree will be entered for the complainant, as
prayed in the bill.
SouTHERN DISTRICT OF OHIO-Ss.
A true copy of Original on file.
Attest : • B. R. Cow EN, Clerk.
By ROBT. C. GEORGI,
Deputy Clerk.
FREDERICK P. FISH, CHARLES NEAVE and MORISON R.
WAITE, for Complainant.
ALBERT H. WALKER, for Defendant.
tº
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• * * * , ; 4. . $ i 24 Fº * \,, --
º 3 tº. tº # 4 º’ \, ,
ºriº gº tº .
wº ſ. –Z /.../2 *% , , ….. 394,039.
* ()-2-m- * * ! - '.' ' - * * * ~. *
7- - ey tº * No. 1.
22.3 - &

Opinion—Circuit Court.
Turnbuckle Case.
(Van Depoele Patent No. 394,039.)
Thomson-Houston Electric Company,
sº
* - Complainant,
VS.
Ohio Brass Company et al.,
Defendants.
Judge Hale's Opinion filed in the U. S. Circuit Court,
District of Massachusetts, April 27, 1904.
C. G. BURGoyne, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
(ſiccatit (Jourt of the Kituited $fates,
DISTRICT OF MASSACHUSETTS.
IN EQUITY.
THOMSON-HOUSTON ELECTRIC COM-
PANY
No. 1237.
Q7.
OHIO BRASS COMPANY ET AL.
Opinion of the Court.
April 27, 1904.
HALE, J. This suit is brought for infringement of
claim 18 of Letters Patent No. 394,039, dated Decem-
ber 4, 1888, to Charles J. Van Depoele. The claim al-
leged to have been infringed is as follows:
“A turn buckle, the body portion of which is com-
posed of insulating material, Substantially as de-
scribed.”
KX
The defenses are that there is no invention, and that
there has been no infringement. The claim covers an
insulated turn buckle such as is alleged to be used on
an electric railway under the suspended conductor sys-
tem. The purpose of the device is to unite in a single
structure means for tightening the Span-wire and
means for furnishing insulation between the trolley
wire and the ground. It is well known that the
2
grounded rails on an electric road usually form the re-
turn circuit of an overhead trolley railway ; necessa-
rily the trolley wire must be carefully insulated from
the ground or from any structure electrically con-
nected with the ground. It is alleged that the practice
is to insulate the trolley wire itself from the span-
wire, and then to place an insulating turn buckle in
the span-wire also, so that, if any accident should de-
stroy the insulation at the first point, there would still
remain effective insulation between the electric current
and the ground. Previous to this device, it is alleged
that a metallic turn buckle had always been used with
separate insulating devices wherever such insulation
was required. The problem in the mind of the in-
ventor was to unite the two functions of tightening the
span-wire and at the same time affording an electrical
barrier to prevent the passage of the electric current.
The defendants urge the defense of invalidity ; they
insist that turn buckles were old, and insulating mate-
rial was old, and that it was not invention that put
them together. It does not appear that these two ele-
ments have ever been put together until this union was
affected by Van Depoele. The devices referred to in
the prior art are ordinary metallic turn buckles and
swivels; some of the swivels to which reference is
made contain insulating material, and are alleged to
have been used for purposes of insulation as well as
for the usual purposes of swivels. Where swivels are
so constructed, they require only the addition of a
screw to make them insulating turn buckles. The
Clark patent, No. 227,095, comes the nearest to pre-
senting a case of anticipation, but this patent in any
event requires the function of tightening to be added
to the swivelin order to make it a reference for an insu-
lating turn buckle. It is claimed, too, that the Clark
patent does not even present an insulated swivel,
and that provision is made for preventing the
insulation instead of effecting it. We think, how-
ever, the discussion on these lines is immaterial. The
whole question of invalidity is presented clearly and
distinctly by the learned counsel for the defendant in
*
3
his claim that the turn buckle of the patent in suit
presents merely a union of two well-known devices,
namely, the old metallic turn buckle and insulating
material, which also was old. It is urged with great
force that the mere uniting of two instruments is not
invention. The well known theory of the patent law
is cited as contained in the Supreme Court decision
that it is not invention to substitute rubber for part of
the lead in lead pencils, so that the lead pencil will
form a combined pencil and eraser. Beckendorfer v.
Faber, 92 Fed. 347. See also Rubber Tip Pencil Co.
v. Howard, 20 Wall. 498. The Supreme Court has
announced the doctrine with great clearness that
the combination of old devices into a new article
without producing any new mode of operation is
not invention. Pickering v. McCulloch, 104 U. S.,
310. Florsheim v. Schilling, 137 U. S. 64. These
cases present the uniting of two functions without
adding any new utility. On this subject, the well
known door-knob case is perhaps the leading one and
demands careful consideration. //otchkiss v. Green-
wood, 11 Howard 248. The patent in the case was for
a clay or porcelain door knob. The Court said:
“But in the case before us, the knob is not new, nor
the metallic shank and spindle, nor the dovetail form
of the cavity in the knob, nor the means by which the
metallic Shank is securely fastened therein. All these
were well, known, and in common use; and the only
thing new is the substitution of a knob of a different
material from that heretofore used in connection with
this arrangement.
Now it may very well be, that, by connecting the clay
or porcelain knob with the metallic shank in this well-
known mode, an article is produced better and
cheaper than in the case of the metallic or
wood knob ; but this does not result from any new
mechanical device or contrivance, but from the fact
that the material of which the knob is composed
happens to be better adapted to the purpose for which
it is made. The improvement consists in the superior-
ity of the material, and which is not new, over that
previously employed in making the knob.
But this, of itself, can never be the subject of a
patent. No One will pretend that a machine, made, in
4
whole or in part, of materials better adapted to the
purpose for which it is used than the materials of
which the old one is constructed, and for that reason
better and cheaper, can be distinguished from the old
one ; or, in the sense of the patent law, can entitle the
manufacturer to a patent.
The difference is formal, and destitute of ingenuity
or invention. It may afford evidence of judgment and
skill in the selection and adaption of the materials in
the manufacture of the instrument for the purposes in-
tended, but nothing more.”
But on careful examination of the device claimed in
the patent in suit, and of all that class of author-
ities to which we have called attention, we are satis-
fied that the insulated turn buckle does not come
within the reasoning of these cases. In the lead-
pencil case, no new utility was presented by the
patent; the device still remained a lead pencil at
one end and an eraser at the other end. The
combination of the old devices did not produce
any new and single mode of Operation ; the two old
functions were left, of erasing at One end and of writ-
ing at the other. So also in the door-knob case, the
patent did not produce any new mode of operation;
it did not unite any two functions; the door
knob was still a door knob, and Only a door knob ; it
presented a plain, simple substitution of materials and
an improvement of a commercial product by such sub-
stitution ; but while the commercial product was im-
proved, it was not made functionally different. The
courts have, however, distinctly held that where
to a prior structure a part is added which gives a new
utility, there is invention. In the Faber case, which
we have cited, Mr. Justice HUNT clearly draws the
distinction between a case where no new utility is
found, and a case in which a new combination does
result in a new utility. He says, in speaking of the
result in the matter of the rubber-ended lead pencil :
“A pencil is laid down and a rubber is taken up,
one to write, the other to erase ; a pencil is turned
over to erase with, or an eraser is turned over to write
with, the principle is the same in both cases.”
5
He further in his opinion shows other instances of
the same character. He says:
“It is the case of a garden rake, on the handle end
of which should be placed a hoe, or on the other side
of the same end of which should be placed a hoe. In
all these cases there might be the advantage of carry-
ing about one instrument instead of two, or of avoiding
the liability to loss or misplacing of separate tools.
The instrument placed upon the same rod might
be more convenient for use than when used separ-
ately. Each, however, continues to perform its
own duty and nothing else. No effect is produced,
no result follows from the joint use of the two. A
handle in common, a joint handle, does not create a
new or combined operation. The handle for the
pencil does not create or aid the handle for the eraser.
The handle for the eraser does not create or aid the
handle for the pencil. * * * Perfection of work-
manship, however much it may increase the convenience,
extend the use or diminish expense, is not patentable.
* * * The combination, to be patentable, must
produce a different force or effect, or result in the com-
bined forces or processes from that given by their
separate parts. There must be a new result produced
by their union, if not so, it is Only an aggregation of
separate elements. An instance and an illustration.
are found in the discovery that by the use of sulphur
mixed with india rubber, the rubber could be vulcan-
ized, and that without this agent the rubber could not
be vulcanized. The combination of the two produced
a result or an article entirely different from that before
in use. * * * A stem winding watch key is
another instance. The Office of the stem is
to hold the watch or hang the chain to the
watch ; the office of the key is to wind it. When the
stem is made the key, the joint duty of holding
the chain and winding the watch is performed by the
same instrument. A double effect is produced or a
double duty performed by the combined result. In
these and numerous like cases the parts co-operate in
producing the final effect, sometimes simultaneously,
sometimes successively. The result comes from the
combined effect of the several parts not simply from
the separate action of each, and is, therefore, patent-
able.”
In the case at bar, the insulated turn buckle pre-
sents a case in which there is combined in one device
6
the utility of tightening the wire and of insulating it at
the same time and in the same instrument. We think
this involves invention. The device is a very simple
one, but its simplicity should not be urged against its
patentability. As in the case of the watch key, a double
effect is produced, and a double duty performed by the
combined result. To the Ordinary duties of the
turn buckle is added the new function of insula-
tion ; after the combination is made it seems entirely
easy and simple, so easy and simple that expert wit-
nesses readily say that nothing was involved in it but
the mere “expected skill of the mechanic ’’. But we
must remember that we are examining a combination
after it is made, and we must not be misled by what
Judge PUTNAM calls “ the ease with which interested
ingenuity dresses up matters occurring after the fact ’’.
American Pulp Company v. Howland Company, 70
Fed. 986. However obvious the combination before
us may be said to have been, it was never made before,
so far as the testimony shows. In Webster Doom Com-
pany v. Higgins, 105 U. S. 580, Mr. Justice BRADLEY
SaVS :
“. It may be laid down as a general rule, though
perhaps not an invariable one, that if a new
combination and arrangement of known elements
produce a new and beneficial result never attained
before, it is evidence of invention. * * * It may
have been under their very eyes, they may almost be
said to have stumbled over it, but they certainly failed
to see it, to estimate its value and to bring it into
notice. * * : * Now that it has succeeded it may
seem very plaim to any one that he could have done it
as well. This is often the case with inventions of the
greatest merit.”
In Idegent Company v. Penn Company, 121 Fed. 83,
Judge BAKER says:
“The device seems exceedingly simple, but its sim-
plicity in such an old field should be a warning against
a too ready acceptance of ea;-post facto wisdom of the
bystander.” -
v.
7
On examination of the device in suit, we think it
presents more than an aggregation. Although it is a
simple device, under the great mass of patent decisions
relating to simple devices, we think this may properly
be held not to have been the result of the mere use of
the skill of a mechanic, nor the mere use of the reason-
ing faculty, but to present some patentable invention.
It remains for the court to inquire whether or not
the patent has been infringed. The device of the pat-
ent is a turn buckle, the body of which has in it an
insulating material. The thought of the inventor is,
as we have said, to combine the process of tightening
and insulating in one instrument. To do this he makes
an ordinary turn buckle with a body of an insulating
material. The body of a turn buckle is the middle of
it, the part between the ends, the portion that rotates.
This is the natural construction to give to the term
“body portion ” as used in the patent. As you take a
turn buckle in your hand and look at it, it naturally
divides itself into two parts; the portion which con-
stitutes the body is one part ; and the ends are the
other part ; in other words, the body is everything
except the ends. This interpretation of the word
“body '' is borne out by the use of the term in
former patents. It is not necessary that the whole
of the body should be of insulating material ; the
inventive idea was that there should be enough
insulation in the turn buckle to make the device
perform the function of an insulator. The device
which the defendants use is composed partly of metal
and partly of insulating material. The complainant's
device has the same composition. Without describing
in detail the two devices, it is enough to say that,
when put to use, the Operation of the device
used by the defendants is that an insulating material
is placed under compression, while in the complain-
ant's device, it is placed under tension. The result is
that the device used by the defendants appears to be
stronger and better adapted to resist strain than the
device of the complainant. But we cannot find that it
is functionally different. It effects the same result by
8
substantially the same method. The fact that the con-
struction used by the defendants improves the construc-
tion of the complainant does not tend to prove that
it does not infringe; in fact, it must infringe before it
can improve. In the recent case of Electric Smelting
Company v. Reduction Company, 125 Fed. 926, Judge
COXE says:
“If the inventor produces a new and useful result,
he does not lose his reward because he or some one
else subsequently renders it more useful.”
In the case at bar, we find the defendants using a
device which both infringes and improves the com-
plainant's device. It is not necessary to decide
whether the defendants themselves have effected the
improvement, or whether they are using an improve-
ment that some one else has invented. It seems clear
to the court that there has been an infringement by the
defendants of the patent in suit. We conclude that
the patent is valid and that it has been infringed.
A decree is to be entered for complainant for an in-
junction and for an accounting.
(A true copy :)
Attest :
[SEAL) L. C. TUCKER,
Deputy Clerk.
THOMAS J. JoHNSTON, for Complainant.
MACLEOD, CALVER & RANDALL, for Defendants.
... [25306]
393,278.

3% - Co- 2- */ . . . . . .396,313.
7- / y $ No. 1.
2. 23 - -
, 7-?
7 6.
Opinion—Circuit Court.
|
Overhead Crossing Case.
(Van Depoele Patents Nos. 393,278, 396,313.)
Thomson-Houston Electric Company,
- Complainant,
VS.
Ohio Brass Company et al.,
Defendants.
Judge Hale's Opinion filed in the U. S. Circuit Court,
District of Massachusetts, April 27, 1904.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
(ſixcuit (Jourt of the tunited states,
DISTRICT OF MASSA CHUSETTS.
IN EQUITY.
THOMSON-HOUSTON ELECTRIC
COMPANY
W. No. 1236.
OHIO BRASS COMPANY ET AL.
Opinion of the Court.
April 27, 1904. -
HALE, J. This suit in equity is for infringement
of claims 4, 5 and 6 of Letters Patent No. 393,278,
dated November 20, 1888, to Charles J. Van Depoele,
for crossing or switch for overhead electric conductors;
also for infringement of claims 1, 2 and 3 of Letters
Patent No. 396,313, dated January 15, 1889, to the said
Charles J. Van Depoele, for adjustable crossing and
switch for overhead conductors.
Claims 4, 5 and 6 of patent No. 393,278, are as
follows:
“4. A crossing or switch for electric conductors,
comprising arms connected with and radiating from a
plate or surface in electrical connection with said arms,
and a conductor attached to each arm, the extremity
of an entering conductor being located opposite to the
continuation of said conductor leaving the crossing,
substantially as described.
5. A crossing or switch for electric conductors, com-
prising arms connected with and radiating from a
2
a plate or surface in electrical connection with said
arms, a conductor attached to each arm, the extremity
of an entering conductor being located opposite to the
continuation of said conductor leaving the crossing,
and a projection or flanges upon the plate to prevent
lateral displacement of the trolley wheel, substantially
as described. -
“6. A crossing or switch for electric conductors, com-
prising arms connected with and radiating from a cen-
trally-located plate or Surface in electrical connection
with said arms, a conductor attached to each arm, the
extremity of an entering conductor being located oppo-
site to the continuation of said conductor leaving the
crossing, and a projection upon the central plate ar-
ranged to engage the contact device to prevent lateral
displacement thereof when passing upon the plate be-
tween the ends of the conductors, substantially as de-
scribed.”
Claims 1, 2 and 3 of patent No. 396,313 are as
follows :
“1. A crossing or switch for suspended electric con-
ductors, comprising two or more adjustably connected
members adapted for attachment to the respective con-
ductors, substantially as described.
2. A crossing or switch for suspended electric con-
dnctors, comprising two or more adjustably connected
members and electric conductors Secured to the said
members, substantially as described.
3. A crossing or switch for electric conductors, com-
prising a contact or surface, members connected in ad-
justable relation thereto and extending from the sur-
face, and ribs or extensions upon the members to
which the conductors are attached, substantially as
described.”
The defenses in the case are that the patents in-
volve no invention, that they have been anticipated,
and that they have not been infringed. The specifica-
tion of the first patent states:
“My invention relates to improvements in switches
for suspended electric conductors. My improved
switches are also applicable to other uses and may be
employed in connection with electric conductors
otherwise placed ; but for illustration I have shown
them applied to aerial lines only.”
3
In further describing the arrangement, construction
and operation of his said invention the patentee de-
scribes only suspended or overhead electric con-
ductors.
The use of these patents is stated by the complain-
ant to be in connection with the Van Depoele
electric railway system which consists of an under-
running upwardly pressed trolley in combination with
a line-wire Lonductor hung from above so as to co-
Operate with the trolley in supplying current to the
moving vehicle on the track below.
Claims 1, 2, and 3 of the second patent in suit add
the adjustable feature to the crossing described in the
claims at issue of the first patent. It is impossible to
use a right-angled crossing at an acute-angled inter-
section. Such attempted use would throw a trolley off
the track. Adjustability of the arms or ribs is required
to make the first patent adaptable to all situations.
This feature is the only matter brought before the
court by the second patent.
The defenses of anticipation and of no invention
are based upon the claim that the principle
of the invention is involved in patents relating
to railroad frogs and crossings, car replacers, and
store-service apparatus, as well as to certain over-run-
ning electric railway trolleys. In the unpatented art,
defendant claims also the prior use in 1888 of a switch
at Harrisburg, Pennsylvania. f
On inquiry into the state of public knowledge in the
art at the date of these patents, we find that the case
does not show any prior structure embracing a cross-
ing for an under-running trolley. It is, however,
claimed that certain patents for railroad frogs embody
a principle which may be applied to such crossing ;
and that they render the patents in suit void for want
of invention. Reference is made to two patents show-
ing a construction of railroad frogs where the rails of
One track cross the rails of another track. These frog
patents disclose methods by which the wheel of the car
is engaged with the rail in the manner similar to the
method by which the trolley passes from one arm to
4
the other of the contact plate ; they present some sug-
gestions for, and similarities to, the construction of
the crossing patents in suit. Can they be regarded
as a proper and controlling reference in the art
involved in these patents 2 Or do the patents in the
under-running trolley system present a new use and a
new result different from anything shown us relating
to railroad crossings P ,
In Potts v. Creager, 155 U. S. 597, the Supreme
Court has settled the principle relating to the transfer
of devices from one art to another. Mr. Justice BROWN
in that case 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 ; but,
if the relations between them be remote, and especially
if the use of the old device produce a new result, it may
at least involve a use of the inventive faculty. . . . In-
deed it often requires as acute a perception of the re-
lation between cause and effect, and as much of the
peculiar inventive genius which is characteristic of great
inventors to grasp at the idea that a device used in one
art may be made available in another, as would be
necessary to create the device de novo.”
He applies the following test :
“What alterations were necessary to adapt the de-
vice to this new use, and what was the value of such
adaptation, and what value has such adaptation been
to the new industry.”
This leading case of the Supreme Court is discussed
suggestively and forcibly by Judge COXE in Electric
Vehicle Company v. Winton Motor Carriage Company,
104 Fed. 814. In Guaranty Trust Company v. Wew
JHaven Gas Light Company, 39 Fed. 268, Judge WAL-
LACE says:
“The fact that the older organizations which it is
now claimed were susceptible of being modified by
mere mechanical skill into the apparatus of the patent
remained without any modification until the patentee
made it, and his improvement when made was so use-
5
ful and valuable as to commend itself at Once to those
shilled in the art to which it relates, is sufficient to
resolve any doubt whether the improvement embodies
invention in favor of the patent.”
The test which the English authorities apply is that
when there is an application of an old invention to a
new purpose, such application is regarded as patent-
able if there is some novelty in the method of using it.
Those authorities go to the extent of holding that a
patent may be granted for applying an old machine to
an analogous purpose if the result is “a new machine”,
although that machine may contain old and well-known
mechanical appliances. Edmunds on Patents, page 44,
and cases cited. In the Second Circuit, in Thomson-
Houston Electric Co. v. Elmira & H. Railway Com-
pany, 71 Fed. 400, the court discussed briefly the
question whether it would involve invention to invert
the track frog and unite it with electrical conductors in
an overhead crossing, but did not find it necessary to
decide the question. In speaking of a switch plate
very similar to the contact plate of the patents before
us, the court said :
“The switch plate of the patents is peculiarly
adapted for use with a light, flexible conductor.
** * .*.
gº
* * The ordinary track frog, as a structural de-
vice, has only a remote resemblance to it. The sug-
gestion that it could be utilized in an overhead line-
wire junction would seem ludicrous, and it could only
be done by denuding it of its most conspicuous char-
acteristics.”
The court finds some valuable suggestion in the
above expression of Judge WALLACE. We also find in-
struction of value in the cases cited and quoted and in
the English authorities to which we have referred in
the text citation. From all the instruction which we
can derive from the cases and from a careful study of
the exhibits and models, we have no hesitation in con-
cluding that these patents in the under-running
trolley system present a new result and practically
what the English authorities call a “new machine ‘’.
It seems clear to the court that it required more
6
than mere mechanical skill to reorganize and in-
vert the Ordinary frogs and switches of a rail-
road track and apply their principles to the use of
suspended conductors in an electric railway system.
Such reorganization and application do not create what
the Supreme Court calls a “double use.” Assuming that
the patentee's attention was called to railroad frogs
upon surface tracks, we believe that it involved inven-
tion to transfer such use to the overhead line wire as
used in the under-running trolley System. Even assum-
ing that there was mere transference of uses, such
transference, with the necessary adaptation, involves
more than the act of the mechanic, and should be pro-
tected by the court. As to the value of such adapta-
tion the testimony clearly indicates that the under-
running trolley and the suspended conductor have
taken their place in nearly all the electric railway
mileage of the country. The great use to which these
patents have been put should have some weight with the
court in resolving any doubt that might exist as to
whether the inventive faculty has been employed in the
matter of adapting old uses to new results.
The defendants also refer to the car replacer pat-
ents, and urge that they are important, especially in
relation to the adjustable features of the second pat-
ent. It appears from the exhibit and model before us
that the car replacer is a track-frog having one part
adjustable, so that the wheel of a car which is off the
track may be brought up to ride over the rail and thus
be placed upon the track, and that it is very little more
than an adjustable switch so arranged as to put a de-
railed car back upon the track. It is well suggested by
the complainant that if this may be differentiated from
a railroad frog, then the devices of the patents at bar
may be held to be patentably different from the rail-
road frog as well as from the car replacer.
The cash carrier patents are also referred to by
the defendant. These patents bring before us double-
track store-service constructions in which a light
car is used to carry cash from one part of a
store ; they do not seem to us to show anything
7
which meets the description in the claims of the
patents in suit. There is no single wheel with
any device for preserving the alignment of the
wheel travelling upon One conductor in passing
across any intermediate gap to another; there seems
to be nothing to suggest the method of crossing the
contact plate. In the cash-carrier system, thre is no
problem analogous to that of forcing the trolley to re-
main in contact with the trolley-wire, while the car
pursues its own course guided by another track. Cer-
tain patents for an overrunning trolley are also cited
as affecting the validity of the patents in suit; but
they present no method of crossing which suggests the
method of the inventions before us in this case.
Other patents of the patentee are also urged as
references. Upon examination of these patents,
we find that none of them can be sustained
as vital in the matter of anticipation or as
affecting the validity of the patents before us. Nearly
all of them are later patents which cannot form a valid
defense to the earlier patents.
References are also made to certain patents which
are subsequent to those in suit, although their appli-
cations appear to have been filed prior to the issue of
these patents. The study of the prior art in a patent
case is necessary in order to prevent the unlawful ap-
propriation of the invention of another, when that
invention had become public. An application prior
to the patent in suit can have weight only if there has
been some actual use of the invention, so that there
may be elements of publicity ; such an application
cannot be said to be a part of the prior art, unless this
element of publicity is present.
In the unpatented art, the defendants cite the Wet-
more switch at Harrisburg in 1888 as involving the
principle of guidance by the groove of the trolley
wheel; they insist that the switch is the kind of
device shown in the cross-over of the patents in suit.
The proof of the use of this switch is rather
vague ; but if we assume that its use is proved, there
appears to us to be an entire want of identity of func-
8
tion with the crossing claimed in these patents. As a
matter of fact, it was never modified into a crossing.
The patents speak interchangeably of a switch and
crossing ; this interchangeability is liable to be mis-
leading ; a switch presents a distinct and different ele-
ment from that of a crossing ; the purpose of a switch
is to direct a car from the course ; the purpose of a
crossing is to keep it on its course ; there is an obvious
anomaly in making a switch in the prior art a refer-
ence for a crossing ; but if there is any element in the
switch which may properly be the subject of such
reference, the same element was present in a switch
which the complainant is shown to have used at Mont-
gomery, Alabama, at a time previous to the use of the
Wetmore switch.
After a full examination of the prior patented art
and of the condition of public knowledge in the unpat-
ented art, we must conclude that the evidence before
us shows an arrangement and adaptation of mechan-
ical appliances in the patents in suit, some of which
were old, but which, taken together, produced a new
and useful result by a method different from any old
method. In coming to this conclusion, we follow
Judge COLT in Tammage Company v. Donallan, 93 Fed.
912, where he decides that some weight should be
given to the fact that a patent has proved successful
and has made a great impression upon the art in which
it has its field of operation. The court should prop-
erly give some regard to the fact that an invention has
met with public acceptance and has proved a practical
and desirable improvement. In Boyer v. Keller Tool
Co., 127 Fed. 130, a case just decided, the court gives
great weight to this consideration. Judge ARCHBALD
says: e
“Convinced, as we are, that the plaintiff has
supplied features that have brought success,
where others who had preceded him failed, we
are not inclined to scan narrowly the means by
which it has been obtained. The mechanical elements
combined are no doubt old, and So, to a certain extent,
may be the result accomplished. But nowhere do we
find the same combination employed to produce it, and
9
the efficiency attained is so much in advance of that
which has gone before, as of itself to suggest, if it does
not prove, the exercise of inventive skill.”
The following authorities are important touching
this element of the case : Palmer v. Johnston, 34 Fed.
336. Smith v. Vulcanite Co., 93 U. S. 436. Union Bis-
cuit Co. v. Peters, 125 Fed. 601. Guaranty Trust Co.
v. New Haven Gaslight Co., 39 Fed. 268. Sessions v.
Romadka, 145 U. S. 29. Hobbs v. Beach, 180 U. S.
383. Taylor v. Sawyer Spindle Co., 75 Fed. 301. Ma-
tional Break Beam Co. v. Interchangeable Brake Beam
Co., 106 Fed. 693. Stevenson v. McFassell, 90 Fed. 707.
In reference to the second patent, it is urged by the
defendants that the adjustable feature to which it re-
lates does not show patentability. To adapt the first
patent to all situations seems to us rather more than a
mere mechanical problem. Even if the element of
patentability in the second patent should be held to be
broadly a part of the inventive conception presented
by the first patent, it seems to us to present a patent-
able improvement and adaptation of the device to
places where such device could not be used under, the
first patent. Where there are two inventions in the
same structure, the law does not require them both to
be claimed in the same patent. In Thomson-Houston
Jºlectric Co. v. Elmiya, cé H. Jºy. Co., cited supra,
Judge WALLACE says :
“While two or more inventions residing in the same
combination or structure may be covered by a cor-
responding number of claims in a single patent, the
law does not require them all to be claimed in the
same patent, and the inventions may, at the option of
the patentee, be secured by different patents. It is
quite immaterial that both inventions originate at the
same time, and from a single conception.”
We think that the invention of the second patent dis-
closes a patentable element, which should be recog-
nized by the court. -
Have these patents been infringed 2 The learned
counsel for the defense argues with great force and
10
ability that defendants’ device does not infringe, be-
cause it presents a case of the electric wires passing,
uncut, above the contact plate ; whereas the claim of
the patent, alleged to be infringed, assumes that the
wires, in passing below the contact plate, are cut ; it
contains the following limitation, “the extremity of
the entering conductor being located opposite to the
continuation of such conductor leaving the cross-
ing.” On examination of the specification, we
find that a description of the arrangement, con-
struction and operation of the invention clearly
shows that the purpose of the cutting of the wire is to
provide for the passage of the trolley wheel across the
interrupted trolley line without interference. The
problem before the mind of the patentee was to pro-
vide “for the passage of the trolley wheel without any
change in its horizontal plane, so that no jerking,
jumping, and consequent sparking will take place ’’.
This is done in the manner shown in the claim ; but
the patentee in his specification refers to the method
of arranging the main conductor to cross the upper
side of the plate instead of being cut, and illustrafes
this method by drawings. This manner of passage is
clearly an equivalent of the way named in the claim.
The same result is obtained by a method not function-
ally different.
The doctrine of equivalent has been fully stated by
the Court of Appeals of this circuit in Reece v. Globe
Company, 61 Fed. 985. In that case, a form of machine
not mentioned in the specification was held to be an
equivalent of that set forth in the specification and
claims. In the case at bar, the patentee has mentioned
a form or method which is clearly an equivalent of the
method stated in the claim. If he had not mentioned
it in the specification, he would not be debarred
from claiming it as an equivalent. By mentioning it
he has not sought to establish another invention, and
so cannot be held to have abandoned it. He clearly
ought not to be held to be in any worse position than
he would have been if he had not mentioned it. In
J3oyer v. Jºeller Too! Co., a case just decided, cited
11
supra, the doctrine of equivalents is stated with great
clearness by the court. The case presents facts which
make the decision of value in the case at bar. In
speaking of the throttle valve which was an element of
a combination in question in that case, the court
said :
“This they have located the same as the plaintiff,
in the grasping portion of the handle, and it operates
equivalently to control the admission of fluid pressure
into and through the duct. So far as claims 42 to 45
are concerned, no particular form of construction or
mode of operation is specified in them, and none
is therefore to be imposed ; the combination is
simple of a throttle valve in the handle in
conjunction with a supply duct running through
it, and that is all that is required
to fulfil their terms. It is true that the inventor in his
specifications describes a particular kind of valve, the
same as shown in his drawings and in the diagram
above; and, while a device of that general character
may be called for, he expressly declares, as we have al-
ready seen, that he does not intend to limit himself
with regard to the different parts of his invention—a
reservation sufficient, as it would seem, to overcome the
customary formula ‘substantially as described at the
end of the claim. . . . The only possible distinc-
tion to be made is that in the one machine-–the de-
fendant's——the spring is attached to the plunger, which
Opens and closes the duct, while in the other——the
plaintiff's——it is attached directly to the lever; but this
is not material. In each construction the spring serves
to hold both the valve and the lever in normal position,
and both, against the resistance of the spring, are
moved from normal position to Open the valve. The
same result is therefore accomplished by substantially
the same means, acting in substantially the same way,
which is sufficient.”
To the same effect, we refer also to another case just
decided, Diamond Match Co. v. Ruby Match Co., 127
Fed. 345.
In Dowagiac Mfg. Co. v. Minnesota Moline Plow
Company et al., 118 Fed. 136, the court held that by
changing the form of complainant's combination and
12
not essentially varying the principle or mode of Opera-
tion, defendant cannot escape infringement.
In the case at bar, if the construction with reference
to the wires running over the plate should be held to
be an improvement on complainant's device, this fact
of improvement does not permit the defendants to
appropriate the invention of the patents in suit. In
Electric Smelting Co. v. Reduction Co., 125 Fed. 926,
the court says : *
“He (the defendant) does not acquire the right to
use the Bradley process simply because he has im-
proved that process. He is entitled to enjoy what is
his, but in so doing he cannot appropriate the prop-
erty of another. . . . If the inventor produces a
new and useful result, he does not lose his reward
because he or some one else subsequently renders it
more useful.”
Taking the whole case together, in the light of the
decisions under the Patent Law, we are of the opinion
that the defendants have infringed.
The evidence as to the actual sale of the crossing of
the defendants is very slight, but there is some evi-
dence of such sale ; and it is not denied by any witness.
The device sold did not include the electric conductors;
but it was clearly adapted to be used with them, al-
though they had not been attached. The case seems
to us to present an instance of contributory infringe-
ment like that in Bishop cé Babcock Co. v. Levine, 119
Fed. 363, 365, where Judge LACOMBE for the Court of
Appeals of the Second Circuit, says:
“As it leaves defendant’s hands, the cabinet is not
the completed structure of the patent. It is made and
sold, however, adapted to receive pipes and faucets so
as to become an operative apparatus ; its parts are so
arranged that when these are inserted it will be such a
structure as the patent describes and claims; without
this adaptability it could not be sold at all, for it would
have no commercial utility. That the defendant knows
this, and that he makes and sells his ‘shell' with the
intention that it shall thus be fitted with pipes and fau-
cets, seems entirely clear. He is a contributory in-
fringer under all the authorities.”
13
In the case at bar, there is certainly as much reason
as in the case which we have just cited to hold the de-
fendants as contributory infringers. Taking the whole
case, we come to the conclusion that both patents are
valid and have been infringed by the defendants.
A decree is to be entered for complainant for an injunc-
tion and for an accounting.
A true copy.
Attest :
[SEAL.] g L. C. TUCKER,
Deputy Clerk.
THOMAS J. JoHNSTON, for Complainant.
MACLEOD, CALVER & RANDALL, for Defendants.
[25305]
: Reissue 11,872.
(Original 495,443).
No. 39.
Opinion—Court of Appeals.
Underrunning Trolley Case.
(Van Depoele Reissue Patent No. 11,872).
Thomson-Houston Electric Company,
*
sº CoImplainant-Appellant,
VS.
Black River Traction Company,
Defendant-Appellee.
Judge Wallace's Opinion filed in the U. S. Circuit Court
of Appeals, Second Circuit, Jan. 23, 1905.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
(ſimited States (ſitcuit (Jourt of Appeals,
SECOND CIRCUIT.
THOMSON-HousTON ELECTRIC Co.,
Appellant, Before WALLACE,
Circuit Judge,
WS. and WHEELER
and HAZEL Dis-
º trict Judges.
BLACK RIVER TRACTION Co.,
Appellee.
BETTS, BETTS, SHEFFIELD & BETTs, Solicitors for
Complainant.
FREDERIC H. BETTS,
L. F. H. BETTS,
GEORGE J. HARDING, Solicitor for Defendant.
JoHN R. BENNETT, Counsel for Defendant.
; Counsel for Complainant.
WALLACE, Circuit Judge –
This is an appeal from a decree dismissing the bill
of complaint in an action for the infringement of re-
issued letters patent No. 11,872 to Thomson-Houston
Electric Company assignee of Charles J. Van Depoele,
granted Nov. 13, 1900. It was decided by the court
below that the reissue was void, among other reasons,
because the invention described and claimed therein
had been described and claimed by Van Depoele in
letters patent No. 424,695, granted to him April 1,
1890, and previously to the patent of which the patent
in suit is the reissue. The original patent, No. 495,443,
was granted April 11, 1893, upon an application
by Van Depoele filed March 12, 1887, and is for “trav-
elling contact for electric railways.”
The questions which have been argued upon this
appeal are whether the reissued patent is void because
the invention claimed therein had been patented by
Van Depoele previously to the issue of the original
letters patent; whether there was any statutory
ground for a reissue; and whether the reissue is not
for the same invention as the original.
The invention of Van Depoele described in the
original patent relates to improvements in the class
of electric railways in which a suspended con-
ductor is used to convey the working current,
and a travelling contact is carried by the car for
taking off the current and Operating the motor for
propelling the car, the return circuit being com-
pleted through the rails; and the invention consists
generally in a combination with a supply conductor,
suspended above the track and line of travel of the car,
of devices carried by the car so as to form a unitary
structure there with, of which the principal are a con-
tact device, and devices employed for maintaining it in
travelling contact with the conductor. These consist
of a contact device carried at the end of a contact arm,
a contact arm hinged and connected with the car so as
to bridge the space between the car and the conductor,
and moving freely both vertically and laterally, and a
tension device operating upon the hinged arm so as to
maintain constant upward pressure and keep the con-
tact device in proper engagement with the conductor.
As described in the specification, and shown in the
drawings, the contact device is a grooved wheel carried
at the end of the contact arm which approaches the
conductor and arranged to rotate there on ; the arm is
mounted upon a post upon the top of the car, and
hinged and pivoted upon the post so as to be capable
of swinging both vertically and horizontally through
considerable arcs, and is of a length that will place the
contact wheel about over the rear wheels of the car ;
and the tension device is attached to the short end of
the arm and regulates the movement of the arm by
pulling and holding that end down and pressing the
long end upward to bring the grooved wheel into
engagement with the under side of the conductor.
The tension device is thus described in the specifica-
tion :
3
“To the lower end of the arm F is attached
a spring G, to the lower extremity of which is
secured a cord which passes downward through
suitable grooves or over suitable rollers and is
provided with a weight H which serves to hold
the spring down and keep the contact wheel E
always pressed up against the under side of the
conductor D, at the same time the spring will
instantly yield to allow the wheel to pass under
the switches or any obstruction. Being held in
position by the weight, the motorman can at
any time lower the contact wheel by raising the
same, rendering the arrangement very conven-
ient for many purposes.”
The patent contained sixteen claims, of which for
present purposes it is necessary to refer only to the
following:
“ (4) The combination of a car, an overhead
conductor above the car, a contact device mak-
ing underneath contact with the conductor, and
an arm on the car movable on both a vertical
and a transverse axis and carrying the contact
device.”
In Thomson-J/ouston Electric Company vs. Union
Railway Co. (30 C. C. A. 313) it was decided that claim 4
was void because the invention therein specified had pre-
viously been described and claimed in the patent granted
Van Depoele (No. 424,695) on April 1, 1890. In Thom-
son-I/ouston Flectric Co. vs. Jeffrey Manufacturing Co.,
(101 Fed. Rep., 121) the Circuit Court of Appeals for
the Sixth Circuit reached the same conclusion.
The patent of April 1, 1890 was for “suspended
switch and travelling contact for electric railways.”
The invention therein described consisted of certain
devices and their relative arrangements by means of
which a contact device carried by a rod or pole extend-
ing from the car and pressed upwardly into contact
with the conductor is switched from one line to
another correspondingly with the vehicle. It con-
tained thirty-five claims, a number of which were for
a combination between the switches and the travelling
contact devices, and a number were for a combination
4
of the travelling contact devices irrespective of the
switches. The description of the devices comprising
the unitary structure of the travelling contact was prac-
tically identical with that in the patent granted April
11, 1893, and the drawings illustrating the same were
identical.
Subsequent to the decisions referred to, and on Sep-
tember 28, 1900, the complainant applied for the re-
issued patent now in suit. The specification omits de-
scriptive matter contained in the specification of the
original, and contains new matter by way of disclaimer.
Instead of the detailed description of the spring and
weight which has been quoted, the new specification
reads as follows:
“To the lower end of the arm F is attached
a suitable tension device ; but as the par-
ticular form and arrangement of this tension
device are not essential to the present invention
it need not be further described.”
It contains also the following disclaimer:
“The combination with the contact carrying
arm of a weighted spring, or of a weight and
spring, as the special means for holding the con-
tact arm pressed upward and of enabling the
motorman to lower the contact wheel, are not
claimed herein, because this special improvement
has been claimed already in the patent No.
424,695, dated April 1, 1890, which was issued
as a division of this application. Nor is there
claimed herein the so arranging of a weight or
spring (as by causing it to work through suit-
able grooves or rollers arranged in the car roof)
as to tend to cause the arm to assume a llormal
central position, or one parallel with the longi-
tudinal centre of the car, as that has also been
already claimed in said divisional patent No.
424,695, being an arrangement which is of es-
pecial value only in connection with the switches
to which said divisional patent more particu-
larly relates. In the present application no
special form or arrangement of tension device
is essential to or a part of the invention
claimed.”
5
The claims are as follows :
“1. In an electric railway, the combination
of a car, an overhead conductor above the car,
an upwardly extending and laterally swinging
arm mounted on the roof of the car, and carry-
ing a contact device at its free end and making
underneath contact with the conductor, substan-
tially as described.
“2. In an electric railway, the combination
of a car, an electric overhead conductor above
the car and parallel with the line of travel, an
upwardly extending trailing arm carrying a con-
tact device at its free end, adapted to make un-
derneath contact with the conductor, said arm
being supported on the car on vertical and
transverse axes, so as to permit said contact
device to follow the position of the conductor,
not withstanding the great variations of height
and of lateral displacement thereof, substantially
as described.”
The question whether the inventions of the two
claims had been patented previously to the original
patent depends upon the construction which is to be
given to these claims. It was the purpose of the reis-
sue so to modify some of the claims of the Original
patent that they should no longer specify the same in-
vention claimed in the patent granted to Van Depoele
April 1, 1890. Although in none of the claims of the
original patent were the tension devices made in terms
an element of the claim, it was held by this court in
Thomson-Houstom Flectric Company vs. Union ſail-
way Co., (30 C. C. A., 313) that the device was an
element of claim 4 by implication, and for that
reason that the patent was for the same inven-
tion which was covered by some of the claims
of the patent of April 1, 1890. It seems to us quite
clear that the object of the reissue has been effectually
accomplished. The combination of the claims is by
their terms one of which the four elements are the
Overhead conductor, the car, the Swinging arm, the
contact device proper, and these four elements alone.
The omission in the reissue of the detailed description
6
of the tension device in the original patent, and the
disclaimer inserted in the reissue by way of abundant
caution, are to be given due effect in determining the
meaning and correct construction of the claims; and
the claims are to be read in the light of the extrinsic
facts surrounding their allowance by the Patent Office.
Having been applied for and allowed expressly to
differentiate them from some of the claims of the
patent of April 1, 1890, the proceeding in the Patent
Office would be a nugatory one if they are to be read
as meaning to specify the identical invention claimed
in the original patent. When the meaning of a grant
or other document is so clearly deducible from its
language as not to be capable of different interpreta-
tions, the construction which the parties to it have
themselves placed upon it is of no assistance in its
construction by a court : but when there is room for
different interpretation, the construction which the
parties have placed upon its meaning is of persuasive
and often of controlling force. It is true that it is to
be inferred that neither the Commissioner of Patents
nor the patentee contemplated the insertion of claims
in the original patent which would be worthless be-
cause the inventions had been previously patented ; but
when the original was granted the attention of the par-
ties to the grant had not been called to the question of
the possible identity of some of the claims, and Owing
to the difference of phraseology the possibility
of identity would naturally escape their attention.
When however the reissue was granted this question
was specifically presented to their attention, and the
construction which they have placed upon the mean-
ing of the new claims is so definite and unmistakable
that it must, prevail in determining what construction
the court should place upon them if their mean-
ing is open to doubt. In view of these considerations
we are not constrained to decide that the new claims
are in substance identical with claim 4 and other simi-
lar claims of the Original ; and notwithstanding this
court in its previous decision was of the opinion that
claims in the Original patent which did not in terms in-
7
clude , the tension device as an element did include it
by implication, we are not constrained to place the
same meaning upon claims in the reissue which may be
phrased substantially like some of the claims in the
Original.
The learned judge who heard the cause in the court
below placed his decision mainly upon the effect which
he deemed should be given to the decision of this court
in the Union Railway Company case, and was of the
opinion that because in that case this court had con-
sidered the tension device to be an element of the
fourth claim of the original patent, it should also be
considered an element of the claims of the reissue.
If the combination now claimed was new and useful
Van Depoele was entitled to make a claim for it,
as for a sub-combination, notwithstanding addi-
tional means may have been necessary to place the
specific parts in co-operative relations with the over-
head conductor to effect a travelling contact. As the
means for doing this are described in the patent, and as
at the date of the patent tension devices of various
kinds for maintaining the normal relations between
the contact device and the overhead conductor were
well known in the art, it was unnecessary to specify
these means in the claims. Thus the exact combina-
tion of Van Depoele, except a spring or weight, and
with a magnet substituted therefor, had been described,
before the original patent issued, but subsequent to
the application therefor, in the Hunter patent No.
444,556. In the patent to Parrish and Munn of April
22, 1884, a tension device for producing an effectual
and yielding engagement between the overhead con-
ductor and the contact device, consisting of a swinging
arm mounted upon the top of a car, the co-ordinated
devices being designed for the transmission of an elec-
tric current through the Swinging arm, had been de-
scribed. These tension devices were springs carried
by braces extending from the post on which the swing-
ing arm was mounted to the Swinging arm. In the
patent to Atwood of August 26, 1890, a contact sup-
8
port is described which consists of an arm that is in
itself a spring.
Many sub-combinations, although new are not useful
except to perform their appropriate functions in the
machine of which they are a part. The description in
the patent of the whole machine, and of the means or
mode by which the sub-combination is brought into
co-operative relations with the other parts, usually in-
dicates how the sub-combination may effect a useful
result. When this is so, the combination need not be
operative alone, because to use the language of Mr.
Walker, “ Utility is justly ascribed to things which
have their use in co-operating with other things
to perform a useful, work.” In Taylor vs. Sawyer
Spindle Co. (75 Fed. Rep., 301, 309) in considering
the objection that the claims by themselves were void
because not composing an Operative mechanism, the
court said :
“The law upon this subject is too well settled
to be open for discussion. A patentee is not
required to claim the entire machine in each
claim. Each of the claims at issue is for a
complete combination of the spindle and its
supporting tube and devices and there was no
necessity for expressing in terms the devices for
revolving the spindle. Any appropriate means
for operating it will be understood. The omis-
sion of the sleeve whirl does not affect the
validity of either one of the claims, which belong
to that class where reference may be made to
the specifications to supply in a claim what it
is plain to any one skilled in the art.”
The language of Mr. Justice BRADLEY in Loom Co.
vs. Higgins (105 U. S., 585, 586) is in point :
“If a mechanical engineer invents an im-
provement on any of the appendages of a steam
engine, such as the valve gear, the condenser,
the steamchest, the walking-beam, the parallel
motion, or what not, he is not obliged, in order
to make himself understood, to describe the
engine, nor the particular appendage to which
the improvement refers, nor its mode of con-
9
nection with the principal machine. These are
already familiar to others skilled in that kind
of machinery. He may begin at the point
where his invention begins, and describe what
he has made that is new, and what it replaces
of the old. That which is common and well
known is as if were written out in the patent,
and delineated in the drawings.” *
In Thomson-Houstom Electric Co. vs. Almira Rail-
way Co. (71 Fed. Rep., 396, 405), this Court used this
language :
“There may be sub-combinations in a ma-
chine which are new and useful, and operate
conjointly to perform some subordinate function.
Such a sub-combination, if not patented by a
claim, might be appropriated by another with-
out infringing a patent for the machine. Being
for a different invention it is the proper subject
of a distinct patent.”
The court was considering a case in which distinct
patents had by the action of the patent office been
carved out of one application, and it is obvious that
the court did not mean to say that the subordinate
invention could always be the subject of a distinct
patent. In another part of the opinion the court said:
“An inventor by describing an invention in a
patent granted to him does not necessarily pre-
clude himself from patenting it subsequently.
His omission to claim what he describes may
Operate as a disclaimer, Or an abandonment of
the matter not claimed, but it has no such
effect when it appears that the matter thus de-
scribed, but not claimed, was the subject of a
pending application in the patent office by him
for another patent.”
The original patent in the present case was a
division of the application for the patent to Van
Depoele of April 1, 1890, required by the Patent
Office; consequently the description of the unitary
structure or mechanism of the original patent, to-
gether with claims for combinations embracing the
10
whole structure or apparatus, or combinations of the
elements of the reissue with additional elements, such
as the tension device, did not work an abandonment
or disclaimer of the combination specified in the re-
issue. Suffolk Co. vs. Hayden (3 Wall., 315); Barbed
Wire Case (143 U. S., 275). Holding as we do that
the tension device is not an element of the claims of
the reissue, it is plain that the invention of those
claims had not been patented previously to the Original
patent, because in none of the claims of the patent of
April 1, 1890, was there one for a combination of the
elements now claimed which did not also specify a
tension device as an element.
The question of the novelty and utility of the
inventions specified in the claims of the reissue was
not greatly discussed in the argument at bar, but has
been considered in the briefs of counsel. For the rea-
sons we have stated their utility cannot be impeached.
They are useful because they are for sub-combinations
which are capable of doing useful work in the machine
or structure of which they are a part. We have care-
fully examined the proofs in the record which bear
upon the question of the novelty of the combination
of the claims. We find nowhere in the prior art a
combination between such an overhead conducting-
wire, under-running grooved-wheel contact device, and
swinging arm mounted upon the car as are described
in the patent. The swinging arm was old; the over-
head wire in practically the same substantial arrange-
ment with the tracks was old; a grooved contact
wheel, but so mounted as to run upon a track beneath
the car, was old ; and, as has been shown, tension de-
vices to hold contact devices in engagement with con-
ductors were old. But the history of the prior and
subsequent art shows that Van Depoele devised a con-
struction and arrangement of these parts such as others
seeking to accomplish the same result had failed to
conceive. As this court pointed out in Thomson-
Houston Electric Company vs. Kelsey Electric Rail-
way Specialty Company (75 Fed. Rep., 1006) Van De-
poele's combination of devices proved to be one of
11
great utility and which superseded pre-existing at-
tempts at trolley road equipment. Considered with
respect to the devices of the combinations now claimed,
the nearest approximation to the inventions is shown
in the patent to Parrish and Munn to which we have
referred. That patent shows an overhead conducting-
wire located above each of the rails of the track,
and an arm mounted upon the car so as to swing
vertically and laterally. But it shows no grooved
contact wheel, and indeed it has no distinct contact
device, the arm being a straight rod which of itself is
the conducting arm. The patentees in a later patent
describe a friction plate attached to the end of the
arm, as an improved means of contact between the
arm and the overhead wire. In neither patent is there
shown an underrunning contact device, the parts being
arranged for an Overrunning contact between the arm
and the conducting wire. The mechanism of these
patents was designed for use in a system of train sig-
nalling, and while it contains what in general terms
are the devices of the present combination, the devices
are so essentially different in construction and arrange-
ment, as hardly to afford a suggestion of value for use
in supplying the Operating current in a trolley system.
What Van Depoele did was something more than a
mere mechanical adaptation of the several parts; he
was the first to point out to the inventors in this
branch of the electrical art, how modifications of con-
struction and arrangement could be introduced which
would substitute success for failure.
The question next arises whether the inventions of
the two claims are different from any which were de-
scribed and intended to be claimed in the original.
That the invention was described in the original can-
not be questioned. It was also claimed in the Original
in terms, but the court in the Union Railway Co. case
modified the claims as expressed by incorporating a
tension device into them by implication. The court
did not express any opinion that the claim was void
upon its face, and the Opinion apparently proceeded
upon the reasoning that as there would be
12
no combination between the parts without
a suitable tension device, and as it was the
combination which was claimed, the tension device
was to be deemed incorporated into the claims,
notwithstanding it was not in terms included, applying
the rule which is found among other authorities in
Hartshorn vs. Saginaw Barrel Co. (119 U. S., 678) and
Consolidated Roller Mill Co. vs. Walker, (138 U. S.,
124, 133). We are not now called upon either to ques-
tion or to reaffirm the correctness of that decision. It
suffices for present purposes that the patentee not only
described the same invention as is described in the re-
issue (with an amplification now omitted as to the de-
tails of construction and arrangement of the tension
device) but also endeavored to claim the combination
now claimed. Unless a reissue is invalid because un-
important changes are made in the descriptive matter
and the language of the claims so as to express beyond
any chance of misapprehension what the patentee in-
tended to claim in the original, there is nothing to mili-
tate against the present reissue. It is urged for the
appellee that there was no statütory ground for a re-
issue, because the specification for the original was not
in any sense defective. If it should be conceded that
the changes in the description of the reissue are of no
materiality, and that the claims are identically such
as some of the claims of the Original, the circumstance
would not impeach their validity. In many cases where
the new claims in a reissue have been held invalid,
the claims repeated from the original have been sus-
tained. It suffices to refer to Gage vs. Herring (107
U. S., 640); Mahn vs. Harwood (112 U. S., 354). A
patentee who reissues his patent for the purpose of
correcting a clerical error, or improving the phrase-
ology of his description, may do what is un-
necessary, but the public are not injured. Al-
though the Commissioner exceeds his statutory
authority by granting a reissue for , an invention
which was not described or intended to be claimed in
the Original patent, he does not do so by permitting a
change in the phraseology for the purpose of defining
13
more perfectly what was described and claimed in the
original. When patents were issued by the Secretary
of State it was held that the power to correct a mis-
take resided in that officer, irrespective of the statute.
Grant vs. Raymond, (6 Peters, 243). By the laws
creating the office of Commissioner of Patents, and
transferring to the Secretary of the Interior the power
previously exercised by the Secretary of State, it has
devolved upon the Commissioner to Superintend exe-
cute and perform all acts respecting the granting and
issuing of patents, subject to revision by the Secre-
tary of the Interior. Original power was conferred
upon him to grant reissue by permissive language. By
the act of 1870 the permissive words were substituted
by the mandatory words of the statute as it now exists.
It is the effect of this legislation to delegate to the
Commissioner, subject to the interposition of the Sec-
retary of the Interior, all those acts with respect to
the issuing of patents which Originally devolved upon
the Secretary of State. If the claims in a reissue are
valid which were contained in the original notwith-
standing its new claims are invalid, it would seem to
follow that where there are no new claims in the re-
issue all the claims should be valid, although in
attempting to correct a mistake the Commissioner has
done nothing more than to introduce unimportant
changes into the description.
No question has been raised as to any laches upon
the part of the complainant in obtaining the reissue,
and infringement by the defendant is not contested. If
the reissue is not invalid, and the inventions of the
claim were not covered by the claims of the patent of
April 1, 1890, the complainant is entitled to a decree
for an injunction and accounting.
The decree of the court below is reversed with costs,
and with instructions to decree conformably with this
Opinion.
A true copy.
WM. PARKIN,
- Clerk.
[26759]
393,323.
No. 40.
Injunction Order—Circuit Court.
Series - Parallel Controller Case.
*
(Condict Patent No. 393,323.)
Thomson-Houston Electric Company, et al., .
wº
— Complainants,
VS.
Morgan-Gardner Electric Company,
Defendant.
Order for Preliminary Injunction filed in the U. S. Circuit
Court, Northern District of Illinois, Northern
Division, March 13, 1905.
C. G. Burgoyne, Walker and Centre Streets, N. V.
Order.
Ciròlit COIrſ Of the United States
NORTHERN DISTRICT OF ILLINOIS,
NoFTHERN DIVISION.
MONDAY, MARCH 13, 1905.
Present : HON. CHRISTIAN C. KOHLSAAT, District Judge.
THOMSON-HOUSTON ELECTRIC
COMPANY and EDWARD H. LEVIS,
Complainants,
In Equity No. 27,-
W. 469. On Condict
Patent No. 393,-
323.
MORGAN-GARDNER ELECTRIC
COMPANY., -
Defendant.
/
A motion having been made for a preliminary injunc-
tion restraining the defendant from infringing upon
claims 10, 21, 22, 27, 29 and 31, of United States
Letters Patent granted to George Herbert Condict on
November 20, 1888, No. 393,323, for improvements in
Switches for Electric Motors; now, upon reading the
affidavits of George H. Condict, L. F. H. Betts (2),
Charles A. Coffin (2), W. Channing Broadhurst, Edward
M. Bentley (3), James R. Sheffield and Edward D.
Mullin, and the papers and exhibits referred to therein
and annexed thereto, filed on behalf of the complain-
2
ants, and the notice of defendant's solicitor, and the
affidavits of Robert Ryan (3), Henry A. Gardner, Glenn
S. Noble (2) and Ralph E. Noble (2), and the papers
and exhibits referred to therein and annexed thereto,
filed on behalf of the defendant, and after hearing James
R. Sheffield, Esq., in support of the motion, and
Brown, Esq., and Glenn S. Noble, Esq., in
opposition thereto, and after due consideration having
been had, it is
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, directed to the said
defendant, Morgan-Gardner Electric Company, and its
associates, directors, officers, attorneys, solicitors,
clerks, servants, agents, workmen and employees, re-
straining them, and each of them, until the further
order of this Court, from directly or indirectly, making
or causing to be made, using or causing to be used, or
vending to others to be used, or disposing of in any
manner, any combination of electric railway motors
and motor circuits and resistances, with controllers or
switches containing, embodying or employing the in-
ventions and improvements of said 10th, 21st, 22nd,
27th, 29th and 31st claims of said Letters, which claims
read as follows:
“10. The combination of a movable control-
ling-switch for varying the power of the motors
having a cam-surface, a reversing-switch having
holes or openings, and a bolt actuated by the
cam-surface of the controlling-switch and
adapted to be projected through the holes or
openings in the reversing-switch to lock it
against movement when said controlling-switch
is moved.
“21. The combination of a source of electric
energy, the coils of one or more electric motors,
a switch for connecting said coils in different
ways to vary the motor resistance, and one or
more resistances, said switch being adapted to
put said resistances in succession into or out of
the motor-circuit without changing the motor-
connections to vary the power of the current
flowing through the motors. e
“22. The combination of a source of electric
supply, a switch for coupling up the coils of a
3
motor or motors in a predetermined order, a
series of resistances, a contact-block on said
switch in circuit with the motor and resistances
and having contact-edges for cutting in or out
the resistances one at a time, contact-brushes
from said resistances, and connected to the
source of electric supply and resting on the
contact-block, and adapted to be brought into
or out of contact with it in succession, whereby
the resistances may be cut into or out of the
motor-circuit without varying the connection of
the motor coils.
“ 27. The combination of an electric motor, a
Source of electric power, a motor-circuit, a
motor-switch to vary the power of the motor,
two or more resistances, a resistance-switch to
cut said resistances gradually into or out of the
motor-circuit, and a connection between the said
switches, whereby a movement of the motor-
switch will first cut in one or more of the resist-
ances, and after changing the power of the
motor automatically cut the resistances out of
circuit again.
“29. The combination of a motor having sep-
arate coils, a motor-circuit, a motor-switch for
coupling up said coils so as to vary the internal
resistance of the motor, a resistance, a resistance-
switch to cut in and out the said resistance
upon shifting the motor-switch to vary the
coupling of the motor-coils, the means controlled
by the motor-switch for operating the resistance-
switch.
“31. The combination of two motors, a source
of electric power, a motor-circuit, a switch for
coupling the coils of the motors in series or
multiple to vary their internal resistance, a re-
sistance, a switch to insert the resistance when
the motor-switch is being shifted, and a con-
nection between said switches to operate both
simultaneously.”
Or from infringing upon or violating the said Letters
Patent and the said claims, or either or any of them,
in any way whatsoever.
KOHLSAAT, J.
4.
NORTHERN DISTRICT OF ILLINOIs,
e * e SS.
Northern Division.
I, MARSHALL E. SAMPSELL, Clerk of the Circuit Court
of the United States, for said Northern District of
Illinois, do hereby certify the above and foregoing to be
a true and complete copy of the Order entered of rec-
ord in said Court on the 13th day of March A. D., 1905,
in the cause wherein Thomson-Houstom Electric Co.,
et al., are the Complainants and Morgan-Gardner Elec-
tric Company, is the Defendant, as the same appears
from the original records thereof now remaining in
my custody and control.
In testimony whereof, I have hereunto set my hand
and affixed the seal of said Court at my office at
Chicago, in said District, this 25th day of March A.
D., 1905. e
.* MARSHALL E. SAMPSELL,
[SEAL Clerk.
[27203]

%22 %. *7. •ć. £2%– 393,323.
.7-? , 3 of T No. 39.
7-5. & g
Opinion—Circuit Court.
Injunction Motion.
Series - Parallel Controller Case
(Condict Patent No. 393,323.)
Thomson-Houston Electric Company, et al.,
Complainants,
sº
* *
!
VS.
J.
Morgan-Gardner Electric Company,
* * Defendant.
Judge Kohlsaat's Opinion rendered March 7, and filed in
the U. S. Circuit Court, Northern District of Illinois,
Northern Division, March 17, 1905.
C. G. Burgoyne, Walker and Centre Streets, N. Y.
IN THE
Circuit Cºurt of the United States
FOR THE NORTHERN DISTRICT OF ILLINOIS.
NORTHERN DIVISION.
THOMSON-HOUSTON ELECTIRIC CO.
ET AL.
W No. 27,469.
MORGAN-GARDNER ELECTRIC CO.
/
BETTS, BETTS, SHEFFIELD & BETTs, for Complainants.
GLEN. S. NOBLE, for Defendant.
ROHLSAAT, J.
Complainants have brought suit to restrain in-
fringement of Claims 10, 21, 22, 27, 29 and 31 of Pat-
ent No. 393,323, granted to Condict on November 20,
1888, for a System of Motor Control for Electric Rail-
way Motors. The cause is now before the Court on a
motion for a preliminary injunction.
Claims 21 to 31 inclusive pertain to a controller
wherein the regulation of the introduction of electric
currents to motors is effected by means of the com-
bined use of both the rheostatic or dead resistance
coils and live resistance coils, that is the coils of the
motor itself, so adjusted as to avoid the loss of energy
and the danger arising from sparking or short circuit-
ing during changes of circuit connection, and also to
2
the placing of the manipulation of the current under
the control of one handle or its equivalent devica.
The patentee states
“I have constructed my switch so that at the
time of changing the connections, I insert re-
sistances more or less great according as to the
resistance of the motor connections,—that is to
say, if the motor resistance is great the auxiliary
resistances would be small, and vice versa. I
also so arrange the switch that the resistances
are all cut out of circuit as soon as the new
motor connection is made. Their function is to
reduce the current flowing so that, at the
time of making the change in the motor
connections, the current is small com-
pared with what it would be if these
resistances were not inserted, and, furthermore,
these resistances are gradually cut in and out,
so as not to suddenly change the resistance to
the current beyond a given amount.”
Claim 10 calls for a reversing switch, arranged in the
same case with the controlling switch and
“combined with a locking device which is
operated by the controlling switch so that when
current is flowing through the motors, the re-
versing switch cannot be moved,”
but which can be moved when the current is substan-
tially cut off, and which is operated simultaneously
with the controlling switch and by the same handle.
The patent in suit has been frequently before the
Court and uniformly sustained. In Electric Car Co.
et al. v. Hartford and West Hartford R. R. Co., tried
in the United States Court for the District of Connecti-
cut, 87 Fed. Rep., p. 733, the Court held that the chief
feature of the patent in suit consisted in so arranging
“the switch as to momentarily or temporarily
introduce dead resistance coils into the circuit, .
and then cut them out again, so that in passing
from one running point, where the current was
at a given rate, to another running point, there
should be a reduction of energy or current, by
3
means of which the switch and motors were pro-
tected, and sparking, shocks, and all evils which
would result from an excess of current were
prevented.”
and declares the invention to be a broad one. Origin-
ally Condict claimed the prevention of sparking to be
his chief object. Now it is claimed by him to be the
regulation of the current. In the above case the Court
found that Condict's description and claims cover both
theories. In Thomson-IIowston Co. et al. v. Wassau
Flectric R. R. Co. et al., decided by the Circuit Court
for the Eastern District of New York, it is held that
Condict's method for the use of the rheostat and series-
multiple systems of control was not new but had been
understood and described before. The Court also
holds that the novelty in the patent in suit rests in
the unitary control of the device, and declares the patent
to be a narrow One.
The validity of the patent is also sustained by the
Court in Electric Car Co. et al. v. The Wassau Électric
R. ſº. Co., 89 Fed. Rep. 204, affirmed by the Court of
Appeals for the Second Circuit, 91 Fed. Rep., p. 142;
by the Circuit Court for the Eastern District of New
York in the case of Thomson-Houstom Electric Co. et al.
vs. Brooklyn Heights /ø ſº. Co., and in several other
courts.
From an examination of the record and the decisions
aforesaid, I am satisfied the patent in suit should be
held valid for the purposes of this motion.
Defendants set up for defense (1) non-infringement;
(2) no irreparable injury ; (3) laches ; (4) that com-
plainant is seeking to destroy competition. While de-
fendant's device is not very satisfactorily described, it
appears that it consists of a controller and reverser in
one case, governed by a single handle; that the motors
are protected from injury during change of current by
the introduction of auxiliary resistance, and that dead
resistance and live resistance coils are used in combi-
nation. It seems clear that whatever difference there
is between the two devices consists rather in details of
arrangement than in principle.
4
The patent in suit will expire in November of the
present year. From the record it is apparent that in-
fringement has been wide spread. Evidently it is im-
portant that the public be advised of the rights of pat-
entee. The recovery of damages at law cannot be
held in such a case to be an adequate remedy.
The defenses of laches and monopoly do not fairly
arise in the case as presented.
There seems to be no reason why defendants should
not be restrained from infringing the paten, in suit
until such time as the cause may be disposed of on
final hearing. It will be so ordered.
[ENDORSED :] Filed March 17, 1905, Marshall E.
Sampsell, Clerk.
NORTHERN DISTRICT OF ILLINOIs,
e - e. SS.
Northern Division.
I, MARSHALL E. SAMPSELL, Clerk of the Circuit Court
of the United States for said Northern District of
Illinois, do hereby certify the above and foregoing to
be a true and complete copy of the Opinion, filed in
said Court on the 17th day of March A. D. 1905, in the
cause wherein Thomson-Houston Electric Co. et al are
the Complainants and Morgan-Gardner Electric Co. is
the Defendant, as the same appears from the original
now remaining in my custody and control.
In Testimony whereof, I have hereunto set my hand
and affixed the seal of said Court at my office in
Chicago, in said District, this 20th day of March A. D.
1905. -
MARSHALL E. SAMPSELL,
(SEAL) Clerk.
[27140.]
Reissue 11,872.
(Original 495,443).
No. 41.
Injunction Order—Circuit Court.
Underrunning Trolley Case.
(Van Depoele Reissue Patent No. 11,872).
Thomson-Houston Electric Company,
- - Complainant,
VS, &
International Trolley Controller Company,
Defendant.
sº
Order for Preliminary Injunction filed in the U. S. Circuit
Court, Western District of New York, May 20, 1905.
C. G. BURGoyNE, Walker and Centre Streets, N. Y. -
Ulniteb 5tates Circuit Court,
WESTERN DISTRICT OF NEW YORK.
w
THOMSON-HOUSTON ELECTRIC
COMPANY *
In Equity No. 249.
WS On Van Depoele
o Re-issue Patent
No. 11,872.
INTERNATIONAL TROLLEY CONTROLLER
COMPANY.
A motion having been made for a preliminary in-
junction restraining the defendant from infringing
upon the claims of United States Teissued Letters
Patent granted to the Thomson-Houston Electric
Company on the invention of Charles J. Van Depoele,
on the 13th day of November, 1900, No. 11,872, for t
Improvements in Traveling Contacts for Electric Rail-
ways, upon the bill of complaint herein, the Reissued
Letters Patent in suit, the affidavits of T. F. H. Betts
(2), verified February 7, 1905, and March 2, 1905,
Charles A. Coffin, verified February 7, 1905, Victor S.
Beam, verified February 2, 1905, Jacob N. McIntire,
verified February 3, 1905, W. Channing Broadhurst,
verified February 6, 1905, M. A. Wiele, verified Febru-
ary 7, 1905, and Edward M. Bentley, verified March 2,
1905, and the exhibits and papers referred to therein
and annexed thereto, filed by the complainant in sup-
port of said motion, and the answer of the defendant
herein, verified February 11, 1905, the affidavit of Her-
schel E. Chase, verified February 27, 1905, and
the exhibits and papers referred to therein,
and the stipulation between counsel, dated
2
February 20, 1905, and the testimony referred to in
said stipulation, filed on behalf of the defendant in
opposition to said motion for preliminary injunction,
Now, after reading the aforesaid pleadings, affida-
vits, papers and exhibits filed by the respective
parties, and after hearing Frederic H. Betts, Esq.,
in support of said motion, and Howard P. Denison,
Esq., in opposition thereto, and after due considera-
tion having been had, it is
ORDERED that a preliminary injunction issue out
of and under the seal of this Court, directed to the
said defendant International Trolley Controller Com-
pany, its associates, directors, officers, attorneys,
solicitors, clerks, servants, agents, workmen and
employees, enjoining and restraining each of them,
until the further order of this Court, from directly or
indirectly making, or causing to be made, using or
causing to be used, or offering or advertising for sale,
or causing to be offered or advertised for sale, or
contracting to sell, or causing to be contracted for
sale, or proposing to equip any electric railways with,
or selling, or causing to be sold to others, or dispos-
ing of in any manner, any devices, apparatus, trolleys,
traveling contacts, trolley-stands, or Milloy trolley-
bases, containing, embodying or employing, or that
may be employed in completing, making or using,
the inventions and improvements of either of the
claims of the said Reissued Letters Patent No. 11,872,
or substantial or material parts of the same, which
claims read as follows :
“1. In a electlic railway, the combination of
a car, and overhead conductor above the car
an upwardly-extending and laterally-swinging
arm mounted on the roof of the car, and carry-
ing a contact device at its free end and making
underneath contact with the conductor, sub-
stantially as described.
“2. In an electric railway, the combination
of a car, an electric overhead conductor above
the car and parallel with the line of travel, an
upwardly-extending trailing arm carrying a
3
contact device at its free end, adapted to make
underneath contact with the conductor, said
arm being supported on the car on vertical
and transverse axes, so as to permit said con-
tact device to follow the position of the con-
ductor, notwithstanding great variations of
height and of lateral displacement thereof, sub-
stantially as described.”
Or from carrying Out any such contracts, proposals,
offers or advertisements, or from infringing upon or
violating the said Reissued Letters Patent No. 11,872,
or contributing to any infringement or violation
thereof, in any way whatsoever.
Dated, Buffalo, N. Y., May 20th 1905.
JoHN R. HAZEL,
U. S. Judge.
[27644]
Reissue 11,872.
(original 495,443).
No. 40.
Opinion—circuit Court.
On Motion for Injunction.
Underrunning Trolley Case.
(Van Depoele Reissue Patent No. 11,872).
*
Thomson-Houston Electric Company,
*me
assº
- Complainant,
WS.
International Trolley Controller Company,
- Defendant.
Judge Hazel's Opinion filed in the U. S. Circuit Court,
Western District of New York, May 8, I905.
~,
*** *. C. G. BURGoyNE, Walker and Centre Streets, N. Y.
unites $5tates Círcuit Court.
WESTERN DISTRICT OF NEW YORK.
IN TEQUITY NO. 249.
THOMSON-HOUSTON ELECTRIC COM-
.* PANY.,
Complainant,
WS.
INTERNATIONAL TROLLEY CONTROLLER
COMPANY.,
Defendant.
/
Application for preliminary injunction restraining
infringement of complainant's reissue patent No.
11,872, dated November 13, 1900.
BETTS, BETTS, SHEFFIELD & BETTs, for complaimant.
HOWARD P. DENISON, for defendant.
HAZEL, J.
The proposition relating to the proper construction
of the claims of the earlier patent, together with the
validity of the reissue, have recently been fully and
finally decided by the Circuit Court of Appeals for this
Circuit, in Thomson-Houston Electric Company v.
MBlack River Traction Company (135 Fed. Rep., 759)
and this court, of course, is bound by that decision.
Hence, it is entirely needless to again construe the
claims, determine the validity of the reissue patent or
narrate its history or that of the litigations in which
the generic patent was for a number of years involved.
2
Nor is it useful to dwell upon the grounds leading to
the decision holding the reissue valid. The single
point, infringement not being disputed, upon which
stress is laid is the question of laches. Defendant con-
tends that the reissue patent was granted by the patent
office seven years and six months after the original
patent, and, therefore, was not applied for within a
reasonable time after the discovery of the mistake
upon which the reissue was based. Assuming the de-
fense of laches well pleaded and maintainable, which
may be doubted where the question has been con-
sidered by the appellate court, (American Sulphite
Pulp Co. v. Burgess Sulphite Co. et al., 103 ſed. Rep.,
975), I am satisfied that the peculiar circumstances
which protmpted the application for a correction of the
earlier patent, were such as to excuse any delay. The
delay was not unreasonable and certainly is explained
by the unusual course of litigation in which the original
patent was involved. An injunction pendente lite may
ISSUlé.
[27595]
413,293.
No. 1.
Opinion—Circuit Court.
Series and Multiple Distribution Case
Thomson & Rice Patent No. 4IS,293.
Thomson-Houston Electric Company,
-* * Complainant,
WS.
Salem Electric Company,
-- Defendant.
Judge Lanning's Opinion filed in the U. S. Circuit Court,
District of New Jersey, September 19, 1905. *
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
[Printed from Certified Copy.
(lníteo $5tates Circuit Court,
DISTRICT OF NEW JERSEY.
THOMSON-HOUSTON ELECTRIC CO.
In Equity.
On final hearing
WS. upon pleadings
and proofs.
SALEM ELECTRIC Co.
MR. RICHARD N. DYER for complaimant.
MR. JOSEPH C. FRALEY for defendant.
LANNING, District Judge.—The complainant's patent
No. 413,293, for a system of electrical distribution,
was applied for by Elihu Thomson and Edwin Wilbur
Rice, Jr., on July 30, 1888, and granted to them Octo-
ber 22, 1889. Subsequently it was assigned to the
complainant who brings this suit for an injunction to
restrain the defendant from an alleged infringement
and for an accounting for profits. The defenses are
invalidity of the patent and non-infringement.
The patentees, in the opening words of the specifi-
cation in their letters patent, said :
“Our invention relates to systems of electric
distribution generally, but is primarily designed
for use in those systems employing alternating
currents. The object of our invention is to
run electric lamps—such, for instance, as incan-
descent lamps or other translating devices—in a
series circuit on the same system with other
2
translating devices run in multiple. A further
object of our invention is to run series incan-
descent or arc lamps from the same source of
supply as incandescent lamps run in multiple.”
The claims of the patent alleged to have been in-
fringed are the first, third, fourth and sixth, which are
as follows: ~
“1. A system of electric distribution com-
prising constant-potential mains having trans-
lating devices of any desired character in
multiple between them, a series circuit of dis-
tribution connected across said mains and cón-
taining translating devices in series, and a
current-regulator in said series circuit.
3. The herein described system of electric
distribution, comprising alternating-current mains
of constant potential, a series circuit containing
translating devices—such as series lamps—
means for keeping the current of said circuit
constant, transformers or converters connected
in multiple between said mains, and incandescent
lamps or other translating devices supplied in
multiple from said transformers.
4. In an alternating-current system of elec-
tric lighting, constant-potential mains having
transformers or compensating coils connected in
multiple between them, incandescent lamps
supplied in multiple from sub-circuits connected
to said transformers, a series circuit connected
between 3aid mains and containing incandescent
series lamps, and a current regulating device
included in said series lamp circuit.
6. In an alternating-current system of dis-
tribution, alternating-current mains of constant
potential, translating devices of any desired
character supplied in multiple between said
mains, a series circuit of distribution containing
translating devices in series, a variable reactive
coil in the series circuit, and devices responsive
to the variations in the current on said circuit
for adjusting the reaction of said coil.”
The defense of invalidity of the patent in suit is
based on the theory that, at the time the patent was
applied for, its essential elements were old, and that
3
the combination of those elements in the manner de-
scribed in the patent involved no invention but was a
mere non-patentable aggregation of them. Mr. Carl
Hering, the defendant's principal expert witness, says
of the patent :
“The series circuit in the patent in suit is
old ; its regulation to adapt it to be connected
to constant potential mains is old ; the multiple
arrangement of transformers connected to con-
stant potential mains is old ; all this I have
shown in previous answers. There is therefore
no new problem involved, nor is there any new
function of any of the elements, or any co-
operation of the several devices in connecting
two or more to the same circuit.”
It will be observed that the two objects of the pat-
ent, as stated in its specifications, are (1) to run trans-
lating devices in series and in multiple on one and the
same system, and (2) to run translating devices in
series and in multiple from one and the same source
of supply. In each of the four claims, which the
complainant insists the defendant infringes, there are
mentioned translating devices run in series and trans-
lating devices run in multiple ; and these devices are
shown to be connected with one and the same system
and to have but one and the same source of supply.
This is made clear by a careful reading of the claims.
The first claim of invention is for a system of electric
distribution having constant potential mains, with
which are separately connected (1) translating devices
in multiple, and (2) translating devices in series, with
a current regulator in the series circuit. The third
claim is for a system of electric distribution having
alternating-current constant-potential mains, with
which are separately connected (1) transformers or
converters in multiple, with other translating devices
supplied in multiple, from the transformers, and (2)
translating devices in series with means for keeping
constant the current of the circuit. The fourth claim
is for an alternating-current system of electric light-
ing having constant-potential mains, with which are
4
separately connected (1) transformers or compensating
coils in multiple, with incandescent lamps supplied
in multiple from the sub-circuits connected with the
transformers, and (2) incandescent lamps in series,
with a current-regulating device in the series circuit.
The sixth claim is for an alternating-current system of
distribution having constant-potential mains, with
which are separately connected (1) translating devices
in multiple, and (2) translating devices in series, with
a variable reactive coil in the series circuit and devices
responsive to the variations in the current for the
purpose of adjusting the reaction of the coil.
In a normally operated series system of distribution
there is required approximately constant current or
amperage with a variable potential or voltage, but in a
normally operated multiple arc system of distribution
there is required an approximately constant potential
or voltage with a variable current or amperage. For
a long time these opposing characteristics made it
impossible to combine a series system and a multiple
arc system in one general system, or to obtain for
them their supplies of electric energy from a common
source. Especially was this true concerning the
operation of arc lights in series with incandescent
lights in multiple. Concerning the introduction of
the system described in the patent in suit for street
arc lighting, Professor Charles P. Steinmetz, admittedly
one of the world's greatest living electricians, says
that
“ it permitted the operation of constant
current circuits and constant potential circuits
from the same generating plant, that is, the
same engines and dynamos, while before this
these two types of circuits had to be operated
from different machines, and every series circuit
had to be operated from a separate machine,
therefore requiring in the generating station not
only two classes of machinery, but also a large
multiplicity of units of relatively small size in
the machines devoted to constant current dis-
tribution.”
5
I do not understand that this statement is disputed.
Brofessor Steinmetz also shows quite clearly, I think,
... that the Shallenberger system (described in patent
No. 390,990, applied for by Oliver B. Shallenberger,
October 1, 1887, and granted to him October 9,
1888, and which the defendant insists is an
anticipation of the patent in suit) is not adapted to
the use of arc lights in series on a constant potential.
Figure 2 accompanying the Shallenberger Patent shows
a generator of alternating currents and constant poten-
tial mains running therefrom, with which mains are
separately connected a number of lamps run in series
and a number of lamps run in multiple arc. In the
series circuit each lamp is provided with a reactive coil
through which, if the lamp be destroyed, the current
will pass, and thus preserve to the other lamps of the
series their normal quantity of current.
These reactive coils are suitable devices for a series
circuit of incandescent lamps. But an arc lamp, when
starting, is at short circuit by reason of the carbons
being in contact.
“Hence,” says Professor Steinmetz, “using
the Ordinary series arc lamp, as it is used on
constant current circuits, in such a system as
described in Figure 2 of Shallenberger's patent,
and attempting to start the series circuit by
connecting it across the mains, we would throw
a short circuit on the generator, probably with
the usual disastrous results. Furthermore, if
the system should be operating and in one of
the lamps the carbons, during feeding, come in
contact with each other, this lamp short-
circuits; but this device described by Shallen-
berger does not keep the same current if one of
the translating devices is short-circuited, and the
result is that the current in the other lamps
will be increased. What I understand the
Shallenberger patent to mean is therefore a
method of operating a constant potential circuit
of a voltage higher than that of an individual
translating device by the use of several trans-
lating devices in series, with protective devices.
But it is not the operation of a constant-current
circuit from a constant-potential supply ; it is
6
not possible therefore to operate any desired
number of translating devices in series, or to
cut out translating devices by short-circuiting .
them, as shown in the Thomson-Rice Patent.
While the Shailenberger invention therefore
did not solve the problem, as far as it
goes it has found a useful application in the
operation of incandescent lamps in series with
each other between high-potential constant-po-
tential mains, and in such numbers that the sum
of the lamp voltages equals the voltage of the
supply mains.”
In the patent in suit, there is but one reactive coil
in a series circuit, and that is so constructed that parts
or sections of it may be thrown, either by band or au-
tomatically, into or out of the series circuit according
as more or less lamps in the series circuit may be in
use. By this arrangement a practically constant cur-
rent is maintained through the series of lamps used,
whatever may be their number. In the use of arc
lamps in series in connection with constant potential
mains, the complainant's system is without doubt
greatly superior to that of the Shallenberger patent.
And in the combination described in the patent in suit,
there is, in my opinion, patentable subject matter and
patentable novelty. Mr. William J. Jenks, an expert
witness for the complainant, after comparing the sys-
tem described in the patent in suit with that of the
Shallenberger patent and with other systems, sums up
as follows :
“As I understand the step of progress which
was taken by the patentees of the patent here
in suit, beyond the most advanced ground pre-
viously occupied in the art of electrical distribu-
tion, it consisted in finding out and disclosing
to the world through this patent, how to com-
bine a system of electrical distribution having
main conductors extending from a generating
source through a territory to be supplied, and
having attached thereto, in multiple arc, branch
circuits, including translators each independ-
ently controllable and taking the entire poten-
tial of the system (such as transformers), which
7
have established as the basis of system operation a
standard of practically constant-potential, with
one or more series circuits, also connected across
the main conductors, and supplying translators
individually controllable as to use or non-use and
to amount of work performed, each circuit being
also rendered controllable as a unit by a single regu-
lator capable of maintaining practically constant-
current through its series of translators under all
eaſpected conditions of circuit resistance caused by
changes in numbers of lamps or other causes ;
thus overcoming the former undesirable and
impracticable results of serious changes of cur-
rent caused by the conflicting conditions of two
combined systems, these conditions being
constant-potential at the terminals of the series
circuits and variable resistances in those cir-
cuits.”
This “step of progress '' was an important one. It
was not a step that, at the time of the application for
the patent in suit, was obvious to those skilled in the
art of electric distribution. The Shallenberger patent
embodies the strongest elements of defense disclosed
by the record of this case, but it is clear that the com-
bination described in the patent in suit is not that de-
scribed in the Shallenberger patent. Nor does any of
the other systems of electric distribution referred to in
the proofs employ any combination that may be prop-
erly regarded as an anticipation of the patent in suit.
In my judgment the defense of invalidity fails and the
complainant's patent must be sustained.
The testimony of Mr. Edwin W. Hammer satisfies
me that the system of electric distribution employed
by the defendant is an infringement of the complain-
ant's patent.
There will be a decree for the complainant adjudging
the defendant an infringer of the first, third, fourth and
sixth claims of the patent in suit, and requiring the
defendant to account for profits.
W. M. LANNING,
Judge.
8
UNITED STATES OF AMERICA, SS :
District of New Jersey, g
I, HENRY D. OLIPHANT, Clerk of the Circuit Court of
the United States of America, for the District of New
Jersey, in the Third Circuit, do hereby certify the fore-
going to be a true copy of the original Opinion on file,
and now remaining among the records of the said
Court, in my office.
IN TESTIMONY WHEREOF, I have hereunto subscribed
my name and affixed the Seal of the said Court, at
Trenton, in said District, this Twentieth day of Sep-
tember, nineteen hundred and five.
|BI. D. OLIPHANT,
(SEAL.) Clerk Circuit Court, U. S.
[28236]
Reissue 11,872.
(original 495,443).
No. 42.
Opinion and Order—Circuit Court.
On Motion for Preliminary Injunction.
~
Underrunning Trolley Case.
Van Depoele Reissue Patent No. 11,872.
Thomson-Houston Electric company,
* - Complainant,
VS,
Milloy Electric Company et al.,
•. Defendants.
Judge Tayler's Opinion and Order filed in the U. S.
Circuit Court, Northern District of Ohio,
Eastern Division.
Opinion filed Dec. 27, 1905.
Order entered Dec. 29, 1905.
C. G. BURGoyNE, walker and centre Streets, N.Y.
[Printed from certified copy.]
Ill filº CirClit (Ollrt Of the United States
FOR THE NORTHERN DISTRICT OF OHIO,
EASTERN DIVISION.
THOMSON-HOUSTON ELECTRIC
COMPANY,
Complainant,
W. 6970. Equity.
THE MILLOY ELECTRIC ComPANY.,
ET AL.,
Defendants. ſ
L. F. H. BETTS, ESQ., for Complainant.
E. L. THURSTON, ESQ., for Defendant.
Opinion of the Court.
ON MOTION FOR PRELIMINARY INJUNCTION.
TAYLER, J. :
In this case a temporary restraining order has already
been granted to the complainant, and I have now for
consideration the question as to whether a preliminary
injunction should be allowed.
On this proposition, I conclude as follows: (1) that
for the purpose of determining this question of prelim-
inary injunction, whatever determination might be ar-
rived at on final hearing, in view of the history of this
2
patent and the large amount of litigation respecting it,
the patent, in the respects involved in this case, is
valid ; (2) that the defendants are infringing the pat-
ent, and ought to be restrained from so doing until the
final hearing of the case ; (3) that the defendants are
not entitled to have the temporary restraining order
modified in the form proposed, namely, by adding the
following words : - - *
“It is not intended to enjoin the defendants against
the sale of trolley-stands or trolley-poles or trolley-
wheels or trolley-harps by way of replacing such in-
volved parts in car equipment embodying patented
combinations which have been previously sold by
complainant to purchasers, in cases where such parts
have been broken, worn out by use or are otherwise
inefficient, but this permission does not give authority
to reconstruct or rebuild a combination which has
been sold by the complajnant.”
The case of Thomson-Houston Electric Company
vs. Kelsey Electric Company, 75 Fed. 1005, is cited as
the basis for the defendants' contention that this modi-
fication ought to be inserted.
The facts in the Kelsey case, as related to this par-
ticular phase of the Order, are to be distinguished
from the facts in this case. I think that the language
of Judge TAFT, in the decision of the Circuit Court of
Appeals in Thomson-Houston Electric Company vs.
Ohio Brass Company, et al., 80 Fed. 712, states the
rule correctly, and, indeed, as controlling over this
Court.
The proposed modification of the order in this case
does not come within the principle of the opinion in
the Ohio Brass Company case. There it was indicated
that it might have been proper to modify the order in
so far as permission might be given for the continuance
of sales to express or implied licensees of the patentee.
Of course, the complainant is not entitled to an
order restraining the defendants, or anyone else'
possessing the right, by license from the complainant,
to make the articles covered by the patent ; but the
3
language by which it is proposed by the defendants
to modify the order is very much broader than, as it.
seems to me, the Circuit Court of Appeals intended to
justify in the Ohio Brass Company case, and certainly
goes to the length of authorizing the furnishing of
prohibited parts to persons who may or may not be
licensees to manufacture the parts themselves.
The preliminary injunction may be allowed in the
general form. -
TAYLER, J.
December 27, 1905.
4.
[Printed from certified copy].
Order for Preliminary Injunction.
*
THE UNITED STATES OF AMERICA, }
Northern District of Olhio, SS. .
EASTERN DIVISION, §
At a stated term of the Circuit Court of the
United States, within and for the Eastern Division of
the Northern District of Ohio, begun and held at the
City of Cleveland, in said District, on the first Tuesday
in October, being the third day of said month, in the
year of Our Lord one thousand nine hundred and five,
and of the Independence of the United States of
America, the one hundred and thirtieth to-wit : on
Friday, the 29th day of December, A. D. 1905.
Present : HONORABLE ROBERT W. TAYLER,
United States District Judge.
Among the proceedings then and there had were the
following to-wit : -
THOMSON-HOUSTON ELECTRIC
COMPANY
No. 6970.
AGAINST In Equity
On Van Depoele
Reissued Patent
THE MILLOY ELECTRIC COMPANY, No. 11,873.
PETER. D. MILLOY, C. H. STEWART
and R. SIBSON.
WHEREAs, on the 11th day of October, 1905, an order
was made and entered herein requiring the defendants,
and each of them, to show cause why a preliminary
injunction should not be granted herein as prayed for
5
in the bill of complaint, and the same coming on to be
heard upon the affidavits of Charles. A. Coffin, L. F. H.
IBetts, James J. Cosgrove, Victor S. Beam, W. Chan-
ning Broadhurst, F. B. Perkins, A. G. Davis and Ed-
ward M. Bentley ; and a copy of the Reissued Letters
Patent No. 11,872 and of the exhibits referred to in
the aforesaid affidavits filed by the Complainant in
support of said motion ; and upon the affidavits of
Peter D. Milloy and William A. Skinkle, and copies of
Milloy Patents Nos. 762,831 and 760,231 and the ex-
hibits referred to in said affidavits filed by the defend-
ants in opposition to Complainant's application for
preliminary injunction ; and upon the affidavits of A.
G. Davis, C. A. Terry, J. C. Barry, G. J. Harding, L.
F. H. Betts, E. W. Hammer and E. M. Bentley, and
the patents and exhibits referred to in said affidavits,
and after hearing Mr. L. F. H. Betts, of counsel for
Complainant in support of said motion, and Mr.
Thurston of counsel for Defendants in opposition
thereto, and upon due consideration having been had,
it is, upon motion of Complainant's solictors,
ORDERED, that a preliminary injunction be, and the
same hereby is granted and ordered to issue out of and
under the seal of this Court, strictly enjoining and re-
straining the defendants, The Milloy Electric Com-
pany, Peter D. Milloy, C. H. Stewart and R. Sibson,
and each and all of them, and the directors and officers
of The Milloy Electric Company, and the associates,
servants, agents and employees of each and all of said
defendants, specifically and jointly and severally, from
directly or indirectly making or causing to be made,
using or causing to be used, offering or advertising for
sale, or causing to be offered or advertised for sale, or
contracting to sell, or causing to be contracted for sale,
or proposing to equip any electric railways with, or
selling or causing to be sold to others, or disposing of
in any manner, any devices, apparatus, trolleys, travel-
ling contacts, trolley stands or Milloy trolley bases,
containing, embodying or employing, or that may be
6
employed in completing, making or using, the inven-
tions and improvements of either of the claims of the
said Reissued Letters Patent No. 11,872, or any sub-
stantial or material parts of the same.
Dated, Cleveland, Ohio, Décember 29th, 1905.
THE UNITED STATES OF AMERICA, ss.
I, IRWIN BELFORD, Clerk of the Circuit Court of the
United States, within and for the Northern District of
the State of Ohio; do hereby certify that I have com-
pared the within and foregoing transcript with the
Original Order granting preliminary injunction entered
upon the Journal of the proceedings of said Court in
the therein entitled Cause, at the term, and on the day
therein named ; and do further certify that the same is
a true, full and complete transcript and copy thereof.
WITNESS, my official signature and the seal of said
Court, at Cleveland, in said District, this 29th day of
December A. D., 1905, and in the 130th year of the
Independence of the United States of America.
- - IRWIN BELFORD,
(SEAL) Clerk.
By JAMES C. MUNN,
Deputy Clerk.
|28991]
423 UNIv. of MICH, - Reissue 11,872.
* *, ' MAR 10 1906 - . .
.7% RECEIVED (Original 495,443).
f-g - No. 43.
Opinion—Circuit Court.
On Motion for Preliminary Injunction.
Underrunning Trolley Case.
Van Depoele Reissue Patent No. 11,872.
Thomson-Houston Electric Company,
ºr - - Complainant,
VS,
Henry Holland et al.,
Af Defendants.
Judge Tayler's Opinion filed in the U. S. Circuit Court,
Northern District of Ohio, Eastern Division,
February 20, 1906.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
In the Cirúlliſ COllrt Of the United States
FOR THE NORTHERN DISTRICT OF OHIO
EASTERN DIVISION.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant,
7022. Equity.
AGAINST qully
HENRY HOLLAND ET AL.,
Defendants.
/
BETTS, SHEFFIELD & BETTS, for Complainant.
THURSTON & WooDWORTH, for Defendants.
Opinion of the Court.
TAYLER, J. :
This is a bill filed by the complainant, based on the
Van Depoele Reissue Letters Patent No. 11,872 (origi-
mal No. 495,443), for “a travelling contact for electric
railways,” charging infringement of the patent referred
to, and seeking to enjoin the defendants from making,
using, selling, etc., any devices, apparatus, trolleys,
travelling contacts, or trolley-stands, containing, em-
bodying or employing the inventions and improvements
covered by Reissued Letters Patent No. 11,872, or the
substantial Or material parts of the same, etc., and for
an accounting.
2
No serious question is made as to the infringement,
taking the device of the defendants as a whole; but a
primary and secondary question arise, as follows: (1)
whether the reissued patent is valid ; and, (2) if it is,
whether any injunction allowed should be so modified
as to permit the defendants to supply, as an additional
to the device of the complainant, certain rotating parts
which, without displacing the vertical pivot in the
complainant's device, will permit further and freer
movement of the trolley arm through a lateral arc.
The original patent, No. 495,443, has been many
times before the courts, and a brief history of the liti-
gation respecting it is necessary in order to arrive at a
determination of the rights of the parties in this par-
ticular controversy.
Prior to the decision of the Supreme Court, in Miller
v. Manufacturing Company, 151 U. S., 186, this patent,
No. 495,443, was invariably sustained when its validity
was attacked in the courts. In that case, the Court
held as follows:
“No patent can issue for an invention actually
covered by a former patent, especially to the
same patentee, although the terms of the claims
may differ; the second patent, although contain-
ing a broader claim, more generical in its char-
acter than the specific claims contained in the
prior patent, is also void ; but where the second
patent covers matter described in the prior
patent, essentially distinct and separable from
the invention covered thereby and claims made
thereunder, its validity may be sustained.”
The Circuit Court of Appeals for the Second Circuit,
n the case of Thomson-Houstom Electric Company v.
Union Jęailway Company, 86 Fed., 636, held that this
Van Depoele Patent, No. 495,443; for a traveling
contact for electric railways, must be construed, as to
claims two and four, as including, by implication,
means for retaining the contact device and the con-
ductor in their normal relations, and, so construed, is
void as being for the same invention as that covered
by letters patent No. 424,695, to the same inventor.
3
To the same effect is the case of Thomson-M/ouston
Electric Company v. Jeffrey Mfg. Co., 101 Fed. 121,
decided by the Circuit Court of Appeals for the Sixth
Circuit. The proposition of the syllabus in that case
is as follows :
“The Van Depoele patent, No. 495,443, for a
traveling contact for electric railways, is ren-
dered invalid by pate.)t No. 424,695, previously
issued to the same inventor for precisely the
same devices; the only difference being that the
earlier patent states an additional function to be
performed by one of the elements.”
This decision was rendered March 15, 1900. The
decision in the Union Railway Company case was ren-
(lered in 1898.
Referring to claims two and four, and the other
claims of patent No. 495,443, and the analogous claims
of patent No. 424,695, the court, in deciding the Jeffrey
Mfg. Co. case, say :
“The specifications are, in every, material re.
spect, the same.”
A similar decision was reached by the Circuit
Court of Appeals for the Second Circuit, in the case of
Thomson-Houston Flectric Co. v. Hossick Railway
Co., 82 Fed., 461, respecting claims 6, 7, 8, 12 and 16
of the original patent ; but it is not necessary to refer
in detail to that opinion.
To avoid the effect of these decisions, the patentee,
September 28, 1900, applied for, and, later, was
granted, this reissue, No. 11,872, on a new specifica-
tion, which expressly disclaimed the element whose
inclusion, by implication, in No. 424,695, had rendered
the second patent, No. 495,443,-invalid.
The claims made in the reissued patent are as fol-
lows :
( &
(1) In an electric railway, the combination
of a car, an overhead conductor above the car,
an upwardly extending and iaterally swinging
4
arm mounted on the roof of the car, and car-
rying a contact device at its free end, and
making underneath contact with the conductor,
substantially as described.”
“ (2) In an electric railway, the combination
of a car, an electric overhead conductor above
the car and parallel with the line of travel, an
upwardly extending trailing arm carrying a con-
tact device at its free end, adapted to make un-
derneath contact with the conductor, said arm
being supported on the car on vertical and
transverse axes, so as to permit said contact
device to follow the position of the conductor,
motwithstanding the great variations of height
and of lateral displacement thereof, sub-
stantialy as described.” -
The following disclaimer is contained in the specifi-
cations :
“The combination with the contact carrying
arm of a weighted spring, or of a weight and
spring, as the special means for holding the con-
tact arm pressed upward, and enabling the motor-
man to lower the contact wheel, are not claimed
herein, because this special improvement has
been claimed already in the patent No. 424,695,
dated April 1, 1890, which was issued as a division
of this application. Nor is there claimed herein
the so arranging of the weight or spring (as
by causing it to work through suitable grooves
or rollers arranged in the car roof) as to tend to
cause the arm to assume a normal central
position, or Oue parallel with the longitudinal
center of the car, as that has also been already
claimed in the said divisional patent, No.
424,695, being an arrangement which is of espe-
cial value Only in connection with the switches
to which said divisional patent more particularly
relates. In the present application no special
form or arrangement of tension device is essen-
tial to or a part of the invention claimed.”
We thus find that, prior to this reissue, the Circuit
Courts of Appeals for the Second and Sixth Circuits
had held that the claims made in patent No. 495,443,
which are substantially the same as the two claims made
5
in the reissued patent under consideration, were void
because covered by patent No. 424,695, granted April
1, 1890; and the question now before this court is as to
whether the subsequent proceedings, resulting in the
reissued patent under consideration, are effective to
make the claims in the reissued patent valid. .
We are not without judicial information and author-
ity in relation to this question. In the case of Thom-
son-Houston //ectric Co. v. Black ſºver Traction Co.,
124 Fed. 495 ; the Circuit Court for the
Northern District of New York, in a decision
by Judge RAY, August 12, 1903, explicitly held
this reissued patent No. 11,872, (original
No. 495,443) to be void, for the same reason as the
Original was void, because such swinging arm was fully
described and claimed in patent No. 424,695, to the
same inventor, as an essential part of the combination
of the patent, and that the invalidity of the original
patent, declared in a number of decisions, was not be-
cause it was rendered inoperative because of defective
or insufficient specifications, or for any other reason
which could be obviated by a reissue.
A very elaborate and instructive opinion Was deliv-
ered by Judge RAY, in support of the proposition laid
down above.
This case was appealed to the Circuit Court of Ap-
peals, and is reported in 135 Fed. 759. It was heard
before WALLACE, Circuit Judge, and WHEELER and
HAZEL, District Judges. Judge WALLACE had sat in
both the Hoosick Railway Company case and the Union
Railway Company case. He delivered the opinion in
the former. In the latter, the opinion is per curiam.
The decision of the lower court was reversed. The
reissue patent, No. 11,872, was held valid ; that it
covered a novel and useful combination, disclosed in-
vention, and was infringed. &
The opinion in this case was written by Judge WAL-
LACE, and reference is made in it to the former de-
cision of , the court in the Union Railway
Company case, and to the Jeffrey Mfg. Co. case
6
in the Sixth Circuit Court of Appeals ; and the Court
held that, notwithstanding the invalidity of the Original
patent, on the ground that the invention had previ-
ously been described and claimed in patent No. 424,695
to the same inventor, the reissued patent in contro-
versy was valid. I quote, as follows, from the opinion :
“Where claims of a patent were construed
to include by implication an element not ex-
pressly claimed therein, but which was de-
scribed and shown in the specification and draw-
ings, and, as so construed, held anticipated, and,
to avoid the effect of such decisions, the patentee
applied for and was granted a reissue on a new
specification, which expressly disclaimed such
element, it should not be read into the claims
of the new patent, although they are in terms
substantially like those of the old; but the
courts should, if possible, adopt the construc-
tion placed on them by the patentee and the
Patent Office giving effect to the disclaimer.”
And this, also, is held in that case —
“A patentee of a combination may also ob-
tain a patent on a divisional application for a
sub-combination of some of the same elements,
if new and useful in itself, or in connection with
previously known means or devices necessary to
make the whole an operative machine or struct-
ure.”
“Even though the changes in description
in the specification of a reissued patent are not
material, and the claims are identical with some
of those of the original patent, such facts do not
impeach their validity.”
We, therefore, have a situation wherein the Circuit
Court of Appeals, which has had the validity of
this patent before it many times, and held, as the
Circuit Court of Appeals for the Sixth Circuit
has held, that original patent No. 495,443, was
invalid, has, by its latest decision, held the
7
reissued patent valid because of the form of
the claims and disclaimers made in the application for
the reissued patent. The Circuit Court of Appeals for
the Second Circuit does not indicate, in any way, in its
opinion in this last case, that it was qualifying its
former conclusion ; that it had come to a determina-
tion inconsistent with its former holdings; or that
there is any contradiction between its later holding
and the decision of the Circuit Court of Appeals for
this Circuit in the Jeffrey Mfg. Co. case. Certainly,
the decisions in the Hoosick Railway Company case
and the Union Railway Company are as explicit and
unqualified as the decision of our Circuit Court of Ap-
peals in the Jeffrey Mfg. Co. case; and, unless some
manifest error appears in this last decision, there would
seem to be no reason why we ought not to conclude
that the Circuit Court of Appeals for this Circuit
would come to the same conclusion on this new state
of facts.
A just regard for the comity that should exist be-
tween a circuit court in one circuit and a circuit court
of appeals in another circuit, under these conditions,
would at least suggest,--if not require, that this
court should follow the decision of the Circuit Court
of Appeals for the Second Circuit. And this spirit of
comity is emphasized, if not controlling, in view of the
fact that the court which passed upon the question in
the Black River case has so often, and so thoroughly,
considered this patent in all of its phases.
In the Circuit Court of Appeals for the First Cir-
cuit, in Beach v. Hobbs, 92 Fed. 146, it was held that,
as a general rule, and especially in patent cases, for
the purpose of according to a patent the same recog-
nition throughout the country as contemplated by law,
the decision of a circuit court of appeals of another
circuit should be followed with respect to the issues
determined, if based on substantially the same state of
facts.
In the case of Fairfield Floral Co. v. Bradbury, 87
Fed. 415, which is not a patent case, and, therefore a
case in which the rule of comity is not as necessary of
8
application, Circuit Judge PUTNAM, sitting in circuit
court, says, on page 417 :—
“If I were free to follow my own judgment,
I should say that congress, neither directly,
nor through the postmaster general or any one
else, has any constitutional authority to impose
the penalty of forfeiture of the use of the
mails of the United States, at least without
a trial. But I am not sure that I will be able
to follow my own convictions in this case, even
if on a final hearing they remain as they now
stand. I am not sure that I will not be bound
by the decision of the court of appeals in the
Sixth Circuit (Association v. Zumstein, 67 Fed.
1000), when the case comes to a final hearing.
My own view is that the decisions of the
court of appeals in One circuit should ordi-
marily be followed quite implicitly by the courts
in other circuits. The case in the Sixth Circuit
does not seem to have been taken to the Su-
preme Court. I cannot find anything to indi-
cate that it was taken up by writ of error or
otherwise, and it seems to have been left on
the decision of the court of appeals ; so that
it stands today the highest judicial authority
which we have on the validity of the statute.”
I am therefore constrained to follow the decision
of the Circuit Court of Appeals for the Second Cir-
cuit, and hold the reissued patent valid, and that it is
infringed by the defendents.
As to the second question, I see no reason why the
injunction, which ought to be allowed in this case,
should not be so qualified as to permit the defendants
to sell the portion of their trolley base which, attached
to the complaimant's trolley-base, may make freer the
lateral movement of the trolley-arm, and this, notwith-
standing the fact that the addition of such a member
to the complainant's device may exhibit a superiority,
for the purpose designed, over that portion of the
complainant's device which is designed to permit the
trolley-pole to freely move in a lateral direction.
Its use requires the use of complainant's device;
and the complainant is not, therefore, prejudiced if the
9
purchaser of its device obtains another device which
he may think adds to the efficiency of the original
purchase. One might as well say that the user of
complainant's trolley-base could not lubricate the
vertical pivot in order to increase the freedom of move-
ment upon it.
An order may therefore be drawn, allowing a pre-
liminary injunction, with the modification suggested
above.
R. W. TAYLER.
February 20, 1906.
THE UNITED STATES OF AMERICA, SS. .
Northern District of Ohio, & J e e
I, IRVIN BELFORD, Clerk of the Circuit Court of the
United States, within and for said District, do hereby
certify the foregoing to be a true copy of the opinion
of the Court in the above entitled cause, in said Court,
and that the same is correctly copied from the original
now on file in my office.
WITNESS my official signature, and the seal
of said Court, at Cleveland, in said
District, this twenty-seventh day of
|SEAL.] February A. D. 1906, and in the
& 130th year of the Independence of
the United States of America.
IRWIN BELFORD,
Clerk.
JAMES C. MUNN,
Deputy Clerk.
[23453)
Reissue 11,872.
(Original 495,443).
No. 44.
Injunction Order.—Circuit Court.
Underrunning Trolley Case.
Van Depoele Reissue Patent No. 11,872.
Thomson-Houston Electric Company,
— * Complainant,
VS, -
Henry Holland et al.,
- Defendants.
Order for Preliminary Injunction filed in the U. S. Circuit
Court, Northern District of Ohio, Eastern
Division, March 8, 1906.
C. G. BURGoyNE, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
THE UNITED STATES OF AMERICA,
Northern District of Ohio, {*
EASTERN DIVISION.
At a stated term of the Circuit Court of the United
States, within and for the Eastern Division of the
Northern District of Ohio, begun and held at the City
of Cleveland, in said District, on the first Tuesday in
February, being the 6th day of said month, in the year
of Our Lord One thousand nine hundred and six, and
of the Independence of the United States of America,
the one hundred and thirtieth, to-wit : on Thursday,
the 8th day of March A. D. 1906.
Present : HONORABLE ROBERT W. TAYLER, United
States District Judge.
Among the proceedings then and there had were the
following, to-wit : 2"
N
THOMSON-HousTON ELECTRIC CoM-
PANY
WS. In Equity No. 7022.
On Van Depoele
T Reissued Letters
HENRY HOLLAND and ERNEST BECKEN- Patent No. 11,872.
DORF, composing the firm of H. *
Holland Trolley Supplies Com-
pany. -
–
Whereas, on the 24th day of January, 1906, an
order was made and entered herein requiring the de-
fendants, and each of them, to show cause why a
2
Preliminary Injunction should not be granted as
prayed for in the bill of complaint, and the same com-
ing on to be heard upon the affidavits of Eugene Grif-
fin, L. F. H. Betts, W. Channing Broadhurst and Ed-
win W. Hammer, and a copy of the Reissued Letters
Patent in suit, No. 11,872, and of the exhibits referred
to in the aforesaid affidavits, filed by the complainant
in support of said motion ; and upon the affidavit of
Henry Holland and copies of the Van Depoele patents
Nos. 424,695 and 495,443, and the exhibits referred to
in the said affidavit, filed by the defendants in opposi-
tion to complainant's application for a Preliminary In-
junction ; and upon the affidavit of W. Channing
Broadhurst, filed by the complainant in rebuttal
thereto, and after hearing Mr. L. F. H. Betts, of coun-
sel for the complainant, in support of said motion, and
Mr. Thurston, of counsel for defendants, in opposition
thereto, and upon due consideration having been had
thereon, it is, upon motion of complainant's solicitors
ORDERED that a Preliminary Injunction be, and the
same hereby is, granted and Ordered to issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendants, Henry Holland and Ernest
Beckendorf, and each and both of them, composing:
the firm of H. Holland Trolley Supplies Company, and
their associates, servants, agents and employees, and
jointly and severally, from directly or indirectly
making or causing to be made, using or causing to be
used, offering or advertising for sale, or causing to
be offered or advertised for sale, or contracting to
sell or causing to be contracted for sale, or
proposing to equip any electric railways with, or
selling or causing to be sold to others, or disposing
of in any manner any trolley stands or combined
trolley bases and stands in the form or in substantially
the form exhibited by the complainant herein, as
Broadhurst's Exhibit Defendants' Holland Trolley
Bases, or in any form which contains, embodies, or
employs or that may be employed in completing,
making or using the inventions and improvements,
3
of either of the claims of the said reissue patent
No. 11,872, or any substantial or material parts of the
Så,]]] 0. -
It is not however intended to enjoin defendants
against the sale of their anti-friction bases, disasso-
ciated from their trolley stands, for use with any trol-
ley stand which in and of itself is adapted to connect a
trolley pole with a car.
March 8, 1906.
THE UNITED STATES OF AMERICA, SS. :
I, IRVIN BELFORD, Clerk of the Circuit Court of the
United States, within and for the Northern District of
the State of Ohio, do hereby certify that I have com-
pared the within and foregoing transcript with the
original decree entered upon the Journal of the
proceedings of said Court in the therein entitled
Cause, at the term and on the day therein named ; and
do further certify that the same is a true, full and com-
plete transcript and copy thereof.
Witness, my official signature and the seal of said
Court, at Cleveland, in said District, this 8th day of
March A. D. 1906, and in the 130th year of the Inde-
pendence of the United States of America.
IRWIN BELFORD,
Clerk.
|SEAL.] By
B. C. MILLER,
Deputy Clerk.
|30060)
Reissue 11,872.
(Original 495,443).
No. 45.
Injunction Order.—Circuit Court.
Underrunning Trolley Case.
Van Depoele Reissue Patent No. 11,872.
Thomson-Houston Electric Company,
*
gº Complainant,
vs.
Western Electric Company,
Defendant.
Order for Preliminary Injunction filed in the U.S. Circuit
Court, Southern District of New York,
A.
*
June 5, 1906.
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
[Printed from certified copy.]
(ſimited States (ſircuit (ſourt,
SOUTHERN DISTRICT OF NEW YORK.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complainant, In Equity, on Van
Depoele Reissued
WS. Letters Patent
No. 11,872.
WESTERN ELECTRIC COMPANY.,
Defendant.
/
A motion having been made for a preliminary in-
junction restraining the defendant herein from infring-
ing upon claims 1 and 2 of United States Reissued
Letters Patent, issued to the complainant on Novem-
ber 13, 1900, No. 11,872, upon the invention of Charles
J. Wandepoele, for Improvements in Trolleys or
Travelling Contacts for Electric Railways, upon the
notice of motion, the bill of complaint, the patent in
suit, and the affidavits of T. F. H. Betts, Charles A.
Coffin, James J. Cosgrove, Francis N. Lawton, Edwin
W. Hammer and Lyman Clarke, and the exhibits and
papers referred to therein, filed on behalf of the com-
plainant, and the said motion having come on to be
heard on May 25, 1906, and no one appearing for the
defendant, the said motion having been adjourned to
June 1, 1906, and no one appearing for the defendant
on that day, and no affidavits or papers having been
filed by it, and it appearing to the Court that the said
notice of motion, the bill of complaint, the patent in
suit, and the affidavits, exhibits and papers upon which
2
this motion was made having been duly served upon
the defendant on May 23, 1906, -
Now, upon motion of complainant's solicitors, and
after due consideration having been had, it is
ORDERED that a preliminary injunction issue out of
and under the seal of this Court, strictly enjoining and
restraining the defendant, Western Electric Company,
and its directors, officers, attorneys, solicitors, clerks,
servants, agents, workmen and employees, until the
further order of this Court, from directly or indirectly
making or causing to be made, using or causing to be
used, or offering or advertising for sale, or causing to
be offered or advertised for sale, or contracting to sell,
or causing to be contracted for sale, or proposing to
equip, any electric railways with, or selling, or causing
to be sold to others, or supplying or delivering, or dis-
posing of in any manner, any devices, apparatus, trol-
leys, travelling contacts, or trolley-stands or trolley-
bases, and particularly , the trolley-stands or trolley-
bases manufactured by the Sterling-Meaker Company,
of Newark, New Jersey, containing, embodying or em-
ploying, or that may be employed in completing,
making or using the inventions and improvements of
either of the claims of said Reissued Letters Patent
No. 11,872, or material or substantial parts of the
Same, or from carrying out any such contracts, pro-
posals, offers or advertisements, or from infringing
lupon or violating either of the claims of said Reissued
Letters Patent, in any way whatsoever.
Dated, June 5, 1906.
E. H. LACOMBE,
U. S. Circuit Judge.
(A Copy)
JOHN A. SHIELDs,
Clerk.
|30246]
uniºr 424,695.
Opinion—Circuit Court.
Motion for Injunction.
Suspended Switch Case.
(Van Depoele Patent No. 424,695.)
Full text of Opinion in the case of Thomson-Houston
Electric Company, Complainant, vs. Sunday Creek
Company, Defendant, filed in the U. S.
Circuit Court, District of New Jersey,
August I, I906.
C. G. BURGoxNE, Walker and Centre Streets, N. Y.
[Printed from Certified Copy.]
Ulnited 5tates Circuit Court
FOR THE DISTRIOT OF NEW JERSEY.
THOMSON-Houston ELECTRIC
COMPANY
WS. In Equity.
SUNDAY CREEK COMPANY. - )
On Motion for a Preliminary Injunction.
BETTS, SHEFFIELD & BETTS, Solicitors.
L. F. H. BETTs, of Counsel with the Complainant.
STETSON, JENNINGS & RUSSELL, Solicitors.
CHARLEs McWEAGH, H. H. BLIss, and
GLENN S. NOBLE, of Counsel with Defendant.
MEMORANDUM.
CROSS, District Judge.
This matter is presented to the court on an ap-
plication for a preliminary injunction. The patent
in suit is No. 424,695, and was issued April 1, 1890,
to one C. J. Van Depoele, for certain new and useful
improvements in Suspended Switches and Traveling
Contacts for Electric Railways. There are thirty-
five claims in the patent, of which 3, 4, 11, 19, 20,
23, 25, 26 and 27 only are involved in this suit.
2
Claims 3, 11, and 19 relate to the combination
with an overhead conductor or trolley wire of
an under-running contact device and a switch-
plate secured to the conductor. Claims 4, 20, 23, 25,
26 and 27 relate to the trolley and the relative
arrangement of the contact device and the overhead
switches. All of the claims in suit have been sus-
tained in numerous cases in the Circuit Courts, and
after hard and protracted litigation in the Second and
Sixth Circuit Courts of Appeals. Thomson-Houston
|Blectric Co. v. Ohio Brass Co. et al., 80 Fed. 712.
Under the circumstances the only defenses open On
this motion are non-infringement and new evidence
which must be of a conclusive a character that had
it been introduced in the earlier cases, it would prob-
ably have led to a different conclusion. In Edison
Electric Light Co. v. Beacon Vacuum Pump, &c., Co.
et al., 54 Fed. 678, 679, Judge CoLT says:
“The general rule is that where the validity of
“a patent has been sustained by prior adjudica-
“tion, and especially after a long, arduous, and
“expensive litigation, the only question open on
“ motion for a preliminary injuction in a subse-
“quent suit against another defendant is the
“ question of infringement, the consideration of
‘ other defenses being postponed until final hear-
“ing. Brush Electric Co. v. Accumulator Co.,
“50 Fed. Rep., 833; Robertson v. Hill, 6 Fish,
“Pat. Cas., 465; Cary v. Domestic Co., 27 Fed.
“Rep. 299; Coburn v. Clark, 15 Fed. Rep. 804;
“ Mallory Manufacturing Co. v. Hickok, 20 Fed.
“Rep. 116; Green v. French, 4 Ban. & A. 169; Blan-
“chard v. Reeves, 1 Fish, Pat. Cas. 103; Good-
“ year v. Rust, 6 Blatchf. 229 ; Cary v. Manu-
“ facturing Co., 24 Fed. Rep. 141; Sargent Manu-
“facturing Co. v. Woodruff, 5 Bliss, 444; Kirby
“Bung Manufacturing Co. v. White, 1 McCrary,
“155, 1 Fed. Rep. 604 ; Putnam v. Bottle Stopper
“Co., 38 Fed. Rep. 234 ; Consolidated Bunging
&
3
“ Apparatus Co. v. Peter Schoenbofen Brewing *
“Co., 28 Fed. Rep. 428 ; Newall v. Wilson, 2 De
“Gex. M. & G. 282 ; Davenport v. Jepson, 4 De
“ Gex. F. & J. 440 ; Bovill v. Goodier, 35 Beav.
“ 427. -
“The only exception to this general rule seems
“ to be where the new evidence is of such a con-
“clusive character that, if it had been introduced
“in the former case, it probably would have led
“ to a different conclusion. The burden is on the
“ defendant to establish this, and every reason-
“able doubt must be resolved against him. Ladd
“ v. Cameron, 25 Fed. Rep. 37; Cantrell v. Wal-
“ lick, 117 U. S. 689, 6 Sup. Ct. Rep., 970;
“ Winans v. Eaton, 1 Fish. Pat. Cas. 181 ; Ma-
“chine Co. v. Adams, 3 Ban. & A. 96 ; Spring Co.
“v. Hall, 37 Fed. Rep. 691 ; Lockwood v. Faber,
“27 Fed. Rep. 63 ; Glaenzer v. Wiederer, 33 Fed.
“ Rep. 583; Cary v. Spring Bed Co., 26 Fed.
“Rep. 38.”
See also Putnam et al. v. Key Stone Bottle Stopper
Co. et al, 38 Féd. 235 ; Electric Mfg Co. v. Edison
Blectric Light Co., 61 Fed., 834; Westinghouse Elec-
tric Co. v. Royal Weaving Co., 115 Fed., 733; A. B.
Dick Co. v. Pomeroy Duplicator Co., 117 Fed., 154;
Mast. Foos Co. v. Stover Mfg. Co., 177 U. S., 485,
489.
Without going into the record at length, it is suffi-
cient to say that it discloses infringement by the de-
fendant of some of the claims in controversy in this
suit. The complainant's affidavits clearly show in-
fringement, and no serious attempt is made to deny it.
The complaimant's testimony shows that some of flie
IElectric Railways used and operated by the defend-
ant, embody the essential features and elements of the
inventions described in the claims of the patent in
suit. Furthermore, the defendant is using switches
manufactured under the complainant's patent, which
were sold to it under a restricted license as follows:
4
“ licensed and agreed to be used only with trolley and
car equipments purchased from the General Electric
or Westinghouse Electric & Manufacturing Company,”
licensees of the complainant. The defendant is using
one or more motors manufactured by the General Electric
or Westinghouse Companies, and their use in connection
with such switches is unquestionably proper; but it is
also using a large number of other locomotives manu-
factured by other makers than the complainant or its
licensees in connection with the switches sold to it
under the restricted license above mentioned. The pat-
entee had the right to sell his invention with a restricted
license as to the manner of its use and a breach
of such condition or restriction is a violation of the
license and an infringement of the patent. Heaton,
&c., Co. v. Eureka Specialty Co. et al., 77 l'ed. 288. In
this case at page 290, Judge LURTON speaking for the
Sixth Circuit Court of Appeals, says :
“ Undoubtedly, the general rule is that if a
“ patentee make a structure embodying his inven-
“tion and unconditionally make a sale of it, the
“ buyer acquires the right to use the machine
“ without restrictions, and, when such machine is
“lawfully made and unconditionally sold, no re-
“striction upon its use will be implied in favor of
the patentee. By such unconditional sale the
machine passes without the limit of the monop-
oly. Adams vs. Burke, 17 Wall. 453-457;
Mitchell vs. Hawley, 16 Wall. 544–547 ; that
the complaimant has attempted to state a case
not within this rule is very obvious, for it
charges that every sale has been under an ex-
press restriction as to the use of the invention
embodied in the machine. In view of the con-
spicuous character of both the machine and the
motice permanently affixed thereon, every one
“ buying must be conclusively presumed to have
“ notice that the owners of the patents intended
“ by the inscription on the machine to grant only
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a restricted license for its use, and it is
difficult to see why such purchaser is not to be
regarded as acquiring and accepting the struc-
ture subject to this restriction. The buyer of
“ the machine undoubtedly obtains the title to
the materials embodying the invention, subject
to a reverter in case of violation of the condi-
tions of the sale. But, as to the right to use
the invention, he is obviously a mere licensee,
having no interest in the monopoly granted by
the letters patent. A license operates only as a
waiver of the monopoly as to the licensee, and
estops the licensor from exercising its prohib-
itory powers in derogation of the privileges con-
ferred by him upon the licensee.” Rob. Pat.
§§ 806-808. It has been said that the sole
matter conveyed in a license is the right not to
be used. Hawks W. Swett, 4 Hun, 146. A li-
censee is one who is not the owner of an inter-
est in the patent, but who has, by contract, ac-
quired a right to make or use or sell machines
embodying the invention. Gaylor v. Wilder,
10 How. 477 ; Oliver v. Chemical Works, 109
U. S. 75, 3 Sup. Ct. 61 ; Rob. Pat. §§ 606–
608. All alienations of a mere right to use
the invention operate only as licenses. It
must follow, therefore, that the pur-
chaser of one of complainant's machines
subject to a restricted use takes the structure
with a license to use the invention only with
staples made by the patentee. That the com-
plainant sells the machine through jobbers, and
not directly to those who buy for use, is imma-
terial, under the facts stated on the face of the
bill. The jobber buys and sells subject to the
restriction, and both have notice of the condi-
tional character of the sale, and of the restric-
tion on the use. Supply Co. v. Bullard, 17
Blatchf. 160 Fed. Cas. No. 294; Cotton-Tie Co.
v. Simmons, 106 U. S. 89, 1 Sup. Ct. 52 * * *
6
“If a patentee may lawfully make and sell ma-
“chines embodying his inventions, and restrict the
use of the invention in respect of territory or
time or business, or purposes to which it may be
put, or material to be used in conjunction there-
“with, it would seem very obvious that the effect
of the restrictions and limitations on the use
would operate to prevent the machine from pass-
ing, as in the case of an unconditional sale, be-
yond the monopoly of the patent. The control
reserved by the patentee as to the use of the ma-
chine has the effect of continuing it within the
prohibition of the monopoly. The license de-
fines the boundaries of a lawful use, and
estops the licensor from the assertion of his
monopoly contrary to its terms. On the other
“ hand, a use prohibited by the license is a use
“ in defiance of the monopoly reserved by the pat-
“entee, and necessarily an unlawful invasion of
“ the rights secured to him by his patent. The
“license would be no defense to a suit for in-
fringement by a use in excess of its terms. The
patentee has the exclusive right of use, except
in so far as he has parted with it by his
license. The essence of the monopoly conferred
by the grant of letters patent is the exclusive
“right to use the invention or discovery de-
scribed in the patent.”
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The principle above announced is well established,
and has been substantially followed in the following
cases: Edison Phonograph Co. v. Kauffman, et al., 105
Fed. 961; Cortelyou et al. v. Low et al., 111 Fed. 1005;
Victor Talking Machine Co. v. The Fair, 123 Fed. 424,
426 ; Bement v. National Harrow Co. 186 U. S. 70.
The defendant, however, contends that notwith-
standing the complainant's patent has been estab-
lished by divers suits, it has new evidence which
was not then considered, which nullifies the complain-
ant's patent. Such evidence is claimed to reside in
7
patent No. 333,352, to one Hervey Smith, issued De-
cember 29, 1885, for Conveyer Apparatus, relating
to improvements in carrier systems, for store
and other service. In setting up this defense the
burden is upon the defendant to establish it, and every
reasonable doubt must be resolved against it. It is
true that this patent was not considered in the litiga-
tion which established the patent in suit, but patents
in the same art and not unlike it in principle, were
considered, and among them patent No. 326,929 issued
to the same patentee. The patent now under consider-
ation evidently embodied a device intended to convey
in suitable cars running on a taut wire, cash or pack-
ages to “different terminals, and as Operated, used a
switching system at the intersecting or branching of
the wires or tracks, in order that such cars might be
guided in different directions as desired. It is evi-
dent that the patent it suit relates to an entirely dif-
ferent art ; it is in no sense analogous to the art
embraced by the Smith patent. The latter uses a taut
wire and a grooved wheel or wheels running on it, the
conveyer travels on the upper side of the wire and is
held in place by a weighted basket, and the problem
of shifting it to a branch track is in all respects similar
to that of shifting an ordinary railway car from the
main to a side track ; the Smith conveyer is an over-
running device, and there is no connection between it
and a traction device running on another track. It is
true that Smith says that his device may have under-
running wheels as well as Over-running, but
such under-running wheels he admits are not
essential, but are intended to steady the car
and prevent it from swinging or swaying
while passing a switch ; they apparently
serve no purpose whatever in Operating the switch; the
conveyer can be switched as well without as with them.
The Smith patent has no suspended conductor, no up-
ward pressing contact device, no guiding switch-plate,
no co-operating car on an independent track, and no
trailing arm attached to the car, making upward pres-
8
sure through its contact device with the conductor and
switch, all of which are essential elements of the patent
in suit. As already mentioned, the Smith Patent does
not at all disclose an under-running trolley system, but
rather the over-running cash-carrier system. Smith’s
switch is of the frog type with a set tongue which con-
trols the operation of the trolley wheel; its use is not
unlike that ordinarily found in railway tracks. Such a
frog has no direct action whatever, but allows a wheel
that has been switched or guided by some outside
agency, to pass a point where two rails meet or cross.
Speaking of the ordinary track frog, Judge WALLACE,
who delivered the opinion of the Circuit Court of Ap-
peals of the Second Circuit, says: “the Ordinary track-
frog as a constructural device has only a remote re-
semblance to it. The suggestion that it could be
utilized in an Over-head line wire junction, would seem
ludicrous; and it could only be done by denuding it of
its most conspicuous characteristics.” In the
Smith's construction the meeting rails are over-
lapped, and whatever direction the wheel takes it
constantly embraces the rail between its flanges,
while in the patent in suit the wheel flanges
escape completely from the conductor ribs, and run
freely in a smooth passage over the plate which is
itself free from obstruction, and the wheel would
manifestly jump the track were it not prevented by
the Outside depending edges of the switch-plate.
The patent in suit has been successful ; devices for
Switching an electric railway trolley by the use of
frogs have generally been unsuccessful. The Smith
patent cited is in principle so nearly like some which
were considered in the suits establishing the validity
of the complainant's patent, and so obviously belongs
to a foreign art, that it demands luo further attention
at this time. The defendant has certainly not
established this alleged new defense, beyond a
reasonable doubt, whatever it may be able to do
upon full proofs at final hearing.
The defendant further claims, however, that it has
9
the right to use the switches under the patent in suit,
because Van Depoele, in an endeavor to improve his
original switch-plate, took out two patents known as
Nos. 393,278 and 397,451, which have expired. The
application for these patents were filed subsequently
to the filing of the application for the patent in
suit, but the issue of the patent on the latter
application was so long delayed in the Patent Office,
that the improvement patents were issued prior to the
original patent, and as they have expired, it is claimed
that they may rightfully be used by the defendant.
It is the claims, however, which fix the bounds
of the inventor's monopoly. It is not contended that
the improvement patents are for same invention as
those of the original patent. A case of double patent-
ing is not therefore presented. In the case of the com-
plainant v. Elmira and H. Ry. Co. (supra) it was said
that the granting of patents for distinct structural
improvements pending an application for the broad in-
vention, will not invalidate a patent subsequently
granted for the latter, although the elements covered
by the claims were described and illustrated, but not
claimed in the earlier patents. The claims of the
original patent, notwithstanding the expiration of the
improvement patents, are as valid and effective as ever,
and will continue so until the full statutory term of
seventeen years from its issue has elapsed. Articles
manufactured under and pursuant to the claims of the
improvement patents may undoubtedly be made with-
out infringement of the claims of those patents. In
this case, however, there is a generic patent still exist-
ing upon which the improvement patent depends, and
without which they cannot be used. The owner of the
existing patent has the same right to prevent the in-
fringement of its claims that it ever had. This matter
was fully considered in the cases establishing the
validity of the patent in suit already referred to, and
its protracted discussion here and now is unnecessary.
The point was there raised that the existence of
the improved patents invalidated the claims of the
10
patent in suit, or otherwise its existence would be
prolonged beyond the statutory period, but the con-
trary was held, notwithstanding such determination
might seemingly result in prolonging the statutory
monopoly. In Thomson-Houston Electric Co. v. Ohio
Brass Co. (supra) at page 726 the court said “the
patent for the improvement expires in seventeen years,
after that any one may use the improvement without
infringing the patent issued upon it. If he uses the im-
provement without a license to use the main invention,
he is liable for the infringement, not of the patent for
the improvement, but of the patent for the main inven-
tion, and in estimating the damages for the same, the
value of the main invention, and not that of the im-
provement, would be the basis for estimating the
damages.” The expiration of the two subsidiary
patents of Van Depoele obviously did not affect those
claims of the patent in suit which are devoted to the
relative arrangement of the conductor switch and the
trolley or contact device on the top of the car ; these
claims are unaffected by the expiration of the improve-
ment patents. It has been strongly urged on behalf
of the defendant, that the decision of Judge KOHLSAAT,
in Thomson-Houston Electric Co. v. Illinois Telephone
Const. Co., 143 Fed. 534, is directly opposed to the
contention of the complainant herein, and that in
conformity there with a preliminary injunction
should not be issued. That decision is cer-
tainly entitled to great weight with this court,
but it is not controlling. A careful read-
ing of the opinion of the learned Judge shows.
that it was not based, or at least was not entirely based
upon the ground of the expiration of the improvement
patents. On the contrary an equitable estoppel was
found to exist therein, “which '' as the Judge said,
“for the purpose of this hearing make it the duty of
the court to defly the motion for a preliminary injunc-
tion,” and this seems to have been the real basis of his
decision. There are no facts found in this case, which,
in my opinion, estop the complainant, nor has it been
11
shown to be guitly of laches, as claimed. It seems to
me, therefore, with great respect, that the discussion
by Judge KOHLSAAT above referred to, is somewhat
academic as he has termed a similar discussion in the
decisions of the Circuit Court of Appeals, establishing
the patent in suit. But however that may be, I am not
convinced that the expiration of the improvement pat-
ents throw open to the public the right to use the pat-
ent in suit to the extent the defendant claims. What-
ever was claimed by the expired patent is open to
public use, but nothing more. And if such use .
trenches upon the claims of an existing generic patent,
then a license must be obtained from the holder of the
existing patent, or such use will be enjoined. Both of
the expired patents were before the Circuit Court of
Appeals, and in view of those decisions and the many
authorities cited in them, and in the complainant's
brief of like import, I shall upon the case as now
presented, upon ex payle affidavits, allow the
complainant a preliminary injunction. The
injunction, however, should except from its operation
all motors made by the complainant or its licensees
when used in connection with licensed switches, and
should, under the circumstances, not be made opera-
tive until after a period of sixty days to afford the
defendant opportunity to adjust its business with refer-
ence thereto. Furthermore, the injunction will only
issue after a bond shall have been given to the defend-
ant in the penal sum of ten thousand dollars, condi-
tioned to indemnify it against any and all damages
that may accrue to it from its issuance in case it
should be held hereafter that such preliminary injunc-
tion was improvidently issued.
JOSEPH CROSS
Judge.
12
|UNITED STATES OF AMERICA, SS :
District of New Jersey, &
I, HENRY D. OLIPHANT, Clerk of the Circuit Court of
the United States of America, for the District of New
Jersey, in the Third Circuit, do hereby certify the fore-
going to be a true copy of the Original Memorandum
on file, and now remaining among the records of the
said Court, in my office. * *
*: In Testimony Whereof, I have hereunt
subscribed my name and affixed the
(SEAL) Seal of the said Court, at Trenton, in
- said District, this first day of August,
nineteen hundred and six. -
H. D. OLIPHANT,
Clerk Circuit Court, U. S.
[30488]
424,695.
No. 25.
Injunction Order.—Circuit Court.
Suspended Switch C ase.
Van Depoele Patent No. 424,695.
Thomson-Houston Electric Company,
*m. - * Complainant,
VS, .*
Sunday Creek Company, -
- Defendant.
Order for Preliminary Injunction filed in the U.S. Circuit
- Court, District of New Jersey,
August 17, 1906. -
C. G. Burgoyne, Walker and Centre Streets, N. Y.
|Printed from certified copy]
Giult ºut ºf it United States,
DISTRICT OF NEW JERSEY.
THOMSON-HOUSTON ELECTRIC
COMPANY.,
Complaimant,
AGAINST
SUNDAY CREER COMPANY.,
Defendant.
A motion made herein for a preliminary injunction,
restraining the defendant from infringing upon claims
3, 4, 11, 19, 20, 23, 25, 26 and 27 of United States
Letters Patent granted to Charles J. Van Depoele on
April 1, 1890, No. 424,695, for Improvements in Sus-
pended Switches and Traveling Contacts for Electric
Railways, having come on to be heard.
Now, upon reading the bill of complaint, the patent
in suit, the affidavits of James J. Cosgrove (2), Edwin
W. Rice, Jr., Eugene Griffin, L. F. H. Betts, W. C.
Broadhurst (2), Edwin W. Hammer, William Tallman,
Victor S. Beam, A. F. MacDonald and W. J. Cary,
and the papers and exhibits referred to therein and an-
nexed thereto filed on behalf of the complainant in
support of the motion, and the answer of the defend-
ant and the affidavits of John M. Roan, Frank E. Falk
2
(2), William F. Brown, Edward Fluke (2), William F.
Mandt, Martin B. Welch, F. J. Patrick, John
C. Lilley, Elmer A. Sperry, Glenn S. Noble,
John J. Ryan, C. A. Suydam, Thomas E. Roan (2),
Edward Muir, David H. Williams and Arthur
Stiff, and the papers and exhibits referred to
therein and annexed thereto and after hearing L. F. H.
Betts, Esq., in support of the motion, and H. H. Bliss,
Esq., and Henry L. Sprague, Esq., in opposition thereto,
and after due consideration,
IT IS ORDERED, -
1. That the said motion be, and hereby is, granted.
2. That a preliminary injunction issue out of and
under the seal of this Court restraining the defendant,
Sunday Creek Company, its directors, officers, asso-
ciates, Solicitors, attorneys, agents, servants, workmen,
and employees, and each of them, from directly or in-
directly making, offering for sale, selling, using or dis-
posing of, or causing to be made, offered for sale, used,
sold or disposed of, any suspended switches and trav-
eling contacts for electric railways, containing or em-
bodying the subject-matter of the invention covered by
claims 3, 4, 11, 19, 20, 23, 25, 26 and 27, or either or
any of them, of the said Letters Patent No. 424,695, or
any material or substantial part thereof, or any trolley
frogs, switch plates, devices or apparatus adapted to
or intended to be used in the combination covered by
the said claims, or either or any of them, of said Let-
ters Patent, or substantial or material parts thereof,
excepting all motors made by the complainant or its
licensees when used in connection with licensed
switches, or from infringing upon said Letters Patent
in any way whatsoever.
3. That said injunction shall only issue after a bond
shall have been given to the defendant in the penal
sum of Ten Thousand ($10,000.00) Dollars, conditioned
to indemnify the defendant against any and all dam-
ages that may accrue to it from its issuance, in case it
should be held hereafter that such preliminary injunc-
tion was improvidently issued.
3
4. That in order to afford the defendant an oppor-
tunity to adjust its business, with reference to the
provisions of the preliminary injunction, it shall only
become operative and binding upon the defendant on
and after sixty (60) days from the date of issuance of
said injunction.
Dated August 17, 1906. -
r JOSEPH CROSS,
(SEAL.) Judge.
*mm-mm-mmº
Please Take Notice that the Order of which the
within is a copy, was entered in the office of the clerk
of the United States Circuit Court for the District of
New Jersey on the 17th day of August, 1906.
Dated, New York, August 21, 1906.
Yours etc. s
BETTS, SHEFFIELD & BETTS,
Complainant's Solicitors.
[30553]