Boyden Power-Brake Co. v. Westinghouse Air-Brake Co. , 17 C.C.A. 430 ( 1895 )

HUGHES, District Judge

(after stating the facts). The foregoing statement of facts and explanation of the devices upon which the decision of this case depends is of unusual length, which has been a necessary result of the extraordinary magnitude of the record and the unusual number and volume of the briefs of counsel in the case; but it has been prepared at the expense of very much labor, and is, we trust, sufficiently correct to warrant the conclusions of law which we have founded upon them.

Of the technical “claims” set out by Westinghouse in his application for the patent No. 360,070, those numbered 1, 2, and 4 are the special subjects of this suit. The device described in these claims is the one which Westinghouse charges in the bill of complaint in this case to have been infringed by the Boyden invention. The three “claims” are as follows, and the words in italics indicate the device charged to have been infringed:

“(1) In a brake mechanism, the combination of a main air pipe, an auxiliary reservoir, a brake cylinder, a triple valve and an auxiliary valve device, actuated, by the piston of the triple valve, and independent of the main valve thereof, for admitting air in the application of the brake directly from the main air pipe to the brake cylinder, substantially as set forth.

“(2) In a brake mechanism, the combination of a main air pipe, an auxiliary reservoir, a brake cylinder, and a triple valve having a piston whose preliminary traverse admits air from the auxiliary reservoir to the brake cylinder, and which, by a further traverse, admits air directly from the main air pipe to the brake cylinder, substantially as set forth. ”

“(4) The combination, in a triple-valve device, of a case or chest, a piston fixed upon a stem and working in a chamber therein, a valve moving with the piston stem, and governing ports and passages in the case leading to connections with an auxiliary reservoir and a brake cylinder and to the atmosphere, respectively, and an auxiliary valve actuated by the piston stem, and controlling com-municat 'on between passages leading to connections with a main air pipe and with the brake cylinder, respectively, substantially as set forth. ”

The phrase, “substantially as set forth,” is technical, and is equivalent to saying, “by the means described in the text of the inventor's application for letters patent, as illustrated by the drawings, diagrams, and models which accompany the application.” These words limit the general terms of the specification which set out the func-fion performed by tbe invention, and confíne the inventor’s rights to Ms own special means of performing the function.

It is unnecessary to set out in totidem verbis the technical “claims” in which Boyden summarized his application to the patent office. Suffice it to say that his device, original and improved, which is represented in the patents issued to him as Nos. 481,134, 481,135, and 481,130, dated August 16, 1892, provided for the admission by a single valve, integral with the triple valve, of both train pipe air and auxiliary reservoir air to the brake cylinder, for emergency stops, lie accomplished this object, as Westinghouse did, by a device acted upon by the triple-valve piston when at the same extreme traverse at which it had been previously used for emergency work. As to using this extreme traverse, the patent for which had expired with No. 220,-556, he did what Westinghouse did; but the object of either being the discharge of train pipe air into the; brake cylinder (which was new) simultaneously with the discharge of auxiliary reservoir air.into that cylinder (which was old), Boyden invented a partitioning ring in the old triple valve to divide the chamber of the three valves from the chamber of the piston, and opened in this ring a port through which the train pipe air might pass from the piston chamber through the chamber of the valves to the brake cylinder; while Westinghouse attached an additional and individual machine to patent 220,556, consisting of a shun moved by the main piston in extreme traverse, an additional valve, and additional independent by-passages leading from the additional valve to the brake cylinder.' The same result was accomplished by the two devices, but these had but one means in common. Each used one common mechanical movement of the main piston, which was a movement for which the patent had expired. But the further mechanisms employed, respectively, by the two inventions were, respectively, as has been described.

The transmission of train pipe air and auxiliary reservoir air simultaneously to the brake cylinder is a result: or function, and is not patentable. The means by which this or any other result or function is accomplished may be many and various, and, if these several means are not mechanical equivalents, each of them is patentable. The question at bar is whether Boy den’s brass ring partition, with the port it contains, inserted in and made a part of the triple valve itself, successfully accomplishing the function of discharging train pipe air into the brake cylinder simultaneously with the triple valve’s discharge of auxiliary reservoir air into that cylinder, is the mechanical equivalent of Westingliouse’s attached machine, nonintegral, segregate», and individual, consisting of another stem, another valve, and by-passages peculiar to itself leading from the additional valve to the brake cylinder; both devices being put: in action by the triple-valve piston when on its old extreme ■ traverse. This question was presented, necessarily, to the patent office of the United Hiatus when Hoyden applied for a patent for the device under consideration. That officii employs the best experts in mechanics which it can secure in this and other countries. Its examinations are, indeed, ex parte in form, hut: they are, nevertheless, conducted under hot and skilled contestation m every case of importance; and its decisions, though not conclusive, are entitled to great respect. That office, after full examination, awarded a patent to Boyden on the ICth day of August, 1892, for his quick-action improvement on the expired patent 220,550, and thereby ruled that the Boyden device did not infringe Westinghouse’s quick-action patent No. 360,070. That ruling takes rank here as the testimony of experts of the highest experience, skill, and knowledge in mechanics. That ruling was subsequent to the issuing to Westinghouse of both the patents Nos. 300,070 and 376,S87, four years after the latter patent, when the patent office had full knowledge of them.

The circuit court held, in its decision of this case, that the Boyden device was the functional equivalent of that of Westinghouse, as described in claim 2 of patent 300,070; that both devices depended upon the extreme traverse of the triple-valve piston of patent 220,550, and that tins traverse was new and unusual. It held, virtually, that the novelty of this extreme traverse, on which both the quick-action devices of the two inventions depended, and their functional equivalency, made Boyden’s device an infringement of Westinghouse’s. That the mechanism of Boyden differed from that of Westinghouse, so far as the mechanical means which were used in availing of the extreme traverse was concerned, does not seem to have been controverted by the circuit court. But it held, virtually, that because the extreme traverse was new, and was a pioneer invention of Westinghouse, and was necessary to put both of the two devices into action, and because the means devised for utilizing the extreme traverse in emergency work were functional equivalents of Westinghouse’s, therefore Boyden’s device was an infringement. It is obvious to us that the circuit, court erred in imputing novelty to the extreme traverse of the triple-valve piston of patent 220,556 and its predecessor, 217,838. That machine was designed both for graduated braking and for emergency braking. The former was provided for in the sensitive valve inserted in the stem of the triple-valve piston, through which compressed air was vented, in quantity graduated at the will of the engineer, from the auxiliary reservoir into the brake cylinder. But this earlier and expired patent contained more than the sensitive valve in the stem of the piston, and more room in the piston chamber than was necessary for a partial traverse of the piston. It contained a main valve, and a sufficient prolongation of the piston chamber for the extreme traverse. This main valve and this prolongation of the chamber were entirely useless for graduated work, and was intended and employable .only for emergency work. The main valve would not have been contrived, nor the chamber prolonged, except for the purpose, by giving the piston its extreme traverse in the extended chamber, and thus bringing the main valve into action, of fitting it for emergency work. The machine patented as Nos. 217,838 and 220,556 did good emergency work in short trains, and the extreme traverse of the piston was constantly employed in that work; and this employment of it was not “unusual.” But in long trains, and especially in long trains of heavy freight cars, it i'ailed to do emergency work with sufficient quickness. Tlie emergency apparatus, however, was there, to wit, the main valve and the extended chamber. They had been patented, and the patent had expired when patent 360,070 was issued. The extreme traverse of the piston in its extended chamber for emergency use was as old as ihe expired patent, No. 220,550. The circuit court, therefore, erred in supposing and ruling that it was new and unusual.

As there was no novelty in the extreme traverse of the old triple-valve piston, it must be eliminated from consideration, and the mechanical equivalency of Eoyden’s device of the partitioning ring integral with the triple-valve itself on one hand, and, on the other hand, the Westinghouse device attached to the triple valve, and consisting wholly of apparatus not integral, hut segregate, individual, several, additional to and independent of it, depends upon the character of the two devices themsehes, considered and compared apart from the extreme traverse, mid not upon their biting put into action by the extreme traverse of the triple-valve piston. Comparing the two devices apart from the triple-valve piston in extreme traverse, we are unable to entertain a doubt that the ruling of the patent office was correct to the effect that Boyden’s device was not the mechanical equivalent of that of Westinghouse. They seem to us to differ as widely from each other as two devices for accomplishing the same1 result can well differ. We think that when claim 2 of 360,070, in its language describing the action of that device, failed to describe the means by which the extreme traverse of the piston produced it, declaring merely that the piston, “by a further traverse, admits air directly from the main air pipe to the brake cylinder,” it was fatally defective, claiming only a result, which is public property, and not identifying the specific means (his own properly) by which the result is achieved. That Oils invention of Westing!muse, thus undefined, ⅛ one of the highest value to the public, and that it is a pioneer one in the art of quick-action air brakes, is not denied, and is conceded. It is conspicuously one of those pioneer inventions which entitle the proprietor to a liberal protection from the courts in construing the claim. Bui: there is a limit to the judicial liberality in this direction. If an inventor is ambiguous, or obscure, or halt, or limp in his language of description, the courts will help him out, and so construe the claim as to give distinct identity to his device. If there be a doubt in the mind of the court or of a jury on the issue of mechanical equivalency, the court will give, and instruct the jury to give, the benefit, of the doubt to the pioneer inventor. But where the inventor falls so far short in Ms description as to claim only the result which Ms machine accomplishes, and omits an explicit definition of the means by which lie does it, as in the case at bar, the courts have another duty to perform, one which they owe to the public and to the worthy fraternity of inventors, and must decline to give him general rights where he is entitled only to sjiccial rights.

The inventor in the present case seemed himself to feel that his claim was too broad in terms. In his original application for patent 360,070 his first claim was couched in this language:

“In a brake mechanism, the combination of a main pipe, an auxiliary reservoir, a brake cylinder, and a triple valve provided with a device for admitting air directly from the main air pipe to the brake cylinder.”

This language covered any device which might accomplish the object mentioned, and he found it necessary to erase it from his specification, and to substitute claim 1 as it now stands. In the same specification Westinghouse’had also used this language:

“Further, while in the specific construction described and shown the function of admitting air from the main pipe is performed by a valve separate from that which effects the preliminary admission of reservoir pressure to the cylinder, a modification in which the same office is performed by a valve integral with the main valve, and formed by an extension thereof, would be included in and embody the essential.operative features of my invention.”

Here, again, was a claim for a function irrespectively of the mechanical means used in accomplishing it, which the inventor found it necessary to erase from his specification. In the'suit at bar he virtually asks the court to restore to his claim the two erasures which he felt himself' unable to sustain at the patent office. Our duty to the public and to inventors at large forbids our doing so.

Home notice is proper, in this connection, of the contention of appellees that the additional valve, 4, in the additional stem of the quick-action apparatus attached to the original triple valve 220,536 by Westinghouse in patent 360,070, is the mechanical equivalent of ihe poppet valve of Boyden which he designates as 22 in the triple valve of 220,556 as he improves it in his device. This contention is urged on the ground, as alleged, that Boyden makes it perform the same purpose which Westinghouse’s fourth valve performs in his attached apparatus. But Boyden simply substituted in the original triple valve his poppet valve 22 for the slide valve which is the main valve of patent 220,556. Bovden’s is not an “auxiliary” valve; it is mechanically the original main valve of the original triple valve, and it performs the service which is performed by the main valve of 220,556. It is not the mechanical equivalent of valve 4 in the attached apparatus of Westinghouse simply by taking part in emergency service in admitting train pipe air into the brake cylinder. In the original triple valve it performed no other service than admitting auxiliary reservoir air into the brake cylinder. In Boyden’s device it continues to perform that service, and is made incidentally instrumental in allowing the passage of train pipe air. The performance incidentally of quick-action service does not make it an auxiliary valve. ■ It is the same valve. The incidental service is auxiliary, but the valve itself is the same and unchanged. We think the circuit court was correct in its view that the poppet valve, 22, of Boyden, is the original main valve of 220,556.

We think the circuit court was correct in ruling that Boyden’s invention under consideration does not infringe claim 1 of Westinghouse. The language of that claim, in defining the additional apparatus of Westinghouse embraced in patent 360,070, is, “and an auxiliary valve device, actuated by the piston on the triple valve, and independent of the main valve,” for admitting air directly from the train pipe to the brake cylinder. Obviously, there is no “auxiliary valve,” “independent of the main valve,” in the Eovden device, and we think the ruling was correct. The case is similar in respect to claim 4 of Westinghouse. The language there is, “And an auxiliary valve actuated by the piston stem, and controlling communication between passages leading to connections with a main air pipe and with the brake cylinder.” None of these terms can fairly be applied to the Boyden device, or to any of its details; and we think that the circuit "court ruled correctly in holding that claim 4 is not infringed by Boyden.

The distinction suggested by the circuit court between inventions employing cranks and levers visible to the senses and those employing compressed air, which operates by modes not visible to the senses,— as to which latter devices the circuit court held that, “in judging of an infringement we are to direct our attention rather to functional equivalents than to mechanical equivalents,” — we do not think well taken, even in favor of pioneer inventions. The supreme court, in its ruling in the great leading case of O’Reilly v. Morse, 15 How. 62, which was one in which the far more subtle agency of electricity was under consideration, neither made nor intimated such a distinction. As to the adjudications in the federal courts of the Southern district of New York on the subject of the air brakes invented by Westinghouse, it is incumbent upon us to consider whether the questions now before this court are in any respect res judicata, and binding precedents in the case at bar. Technically, they are not. The patent charged to have been infringed in the first suit in the circuit court of New York, and on appeal in the appellate court of that circuit, was that taken out by Westinghouse as No. 376,837. That patent contained an important — indeed, a vital — improvement upon No. 360,-070, which is in suit here, and which has been found in practice to be insufficient for its purposes. It contained a supplemental or auxiliary piston, as well as an additional stem, an additional valve, and independent by-passages, composing an additional segregate machine, as we have before mentioned. In the second suit before the New York circuit and appellate courts, the parties complainant and defendant being the same, and (he defendant’s invention being the same, suit was based upon two patents of Westinghouse, Nos. 360,-070 and 376,837, and also upon a patent issued to II. B. Park, numbered 393,784. The question in both suits was whether the air brake contrived by the defendant in those suits had infringed the three patents. Judge Lacombe — who was affirmed on appeal — described the machine of tin» defendant there as having “the main air pipe [train pipe], an auxiliary reservoir, a brake cylinder, a triple vaha; [these constituting the old triple-valve mechanism of patent 220,556], and an auxiliary valve device independent of the main valve for admitting air in the application of the brake directly from the main air pipe to the brake cylinder.” A diagram which illustrates this additional and “auxiliary valve device independent of the main valve” of the defendant in the New York suits is given below, and is attached t.o and made part of this opinion.

NEW YORK AIR BRAKE CO.’S VALVE.

Decreed by Judge Lacombe to Infringe Patent No. 360,070, because it contains the “additional members” of that Patent.

It will be apparent, from an inspection of this diagram, that no decision affecting' that device can affect one as different from it structurally and in every respect as is that of the Boyden device. It would require the verdict of a jury and the conclusive testimony of experts upon the question of mechanical equivalency to enable a court to decide whether they present a ca.se of res judicata.

Prima fade, a decision founded upon one patent not in suit here, and another decision founded upon three patents collectively, one only of which is in suit here, 1lie two decisions declaring that an invention used by a defendant who is not the defendant here, against a machine of that defendant differing widely in its structure from the one complained of here, cannot be treated as binding in the decision which this court may feel bound to render in the suit at bar. Here it is contended that the mere use of the extreme traverse of the triple-valve piston to effect the same functional result which was effected by Westinghouse in 360,070 constitutes an infringement, irrespectively of the additional means employed. There it was ruled that the use of the extreme traverse and of an additional machine attached to the original 220,556, which was structurally and mechanically equivalent- to 360,070, was an infringement of. the latter patent. The cases are different, and not on all fours with each other, and do not control or affect our own ruling.

Decrees will he entered, in accordance with the views expressed in this opinion, affirming the ruling of the court below in respect to claims 1 and 4- of the complainant's patent No. 360,070, and reversing the ruling of the court below in respect to claim 2 of the said patent.