FEDERAL REPORTER. Con, J'. All the parties interested-the creditors, the assignee, and the bankrupt-consented that the entire subject of compensation to the assignee be referred to the register in charge. He heard the parties at length, and made his report, awarding $250 in view of the protracted and successful litigation carried on by the assignee. The report has not been filed or excepted to. Though technical objections might be urged to this manner of presenting the case, I have, under the provisions of general order No. 30, considered it my duty to examine the question de nov(). The opinion of the register, who for some time has had personal knowledge of the matters in controversy, is entitled to great weight, and, in these circumstances, I do not feel justified in disturbing it. The finding of the register that, in addition to the ordinary and usual duties in such matters, the assignee "was engaged in litigation from the beginning of his trust (October, 1877,) until May, 1884, and in such litigation succeeded in reducing a claim upon the assets of the estate from $32,000 to about $300," seems to be fully sustained by the proof, and is sufficient to justify the granting of the small allowance reported by him. The report of the register is confirmed, and, with the concurrence of the circuit judge, an additional allowance of $200 is awarded to the assignee. OTIS BROS. MANUF'G Co. and others v. CRANE BROS. MANUF'G CO.l (Oireuit Oourt, N. D. illinois. March 22,1886.) 1. PATENTS FOR INVENTIONS-PATENTEE BOUND BY H:rs Cr,AIMs.
Letters patent No. 44,740, of October 18,1864, to Charles R. Otis. must be limited to the peculiar arrangement which patentee describes; he having acquiesced in the rejection by the patent-office of broad claims. The fact that patentee produced an old result by a more effective combination of old elements is no reason why defendants should not be allowed to make new combinations of such elements to produce the same result, so long as they do not use the combination of parts claimed by complainants' patent.
2.
SAME-NEW COMBINATIONS OF OLD MECHANISMS.
8.
SAME.
Patent No. 44,773, of May 18,1865, is a mere improvement upon the principle shown in the English patent of Gidlow, 1858, and of Law, 1861; and as the defendant was also an Improver upon old devices in this art, held, that the readier and more natural conclusion was that defendants' improvement was not the same combination of devices that was shown in and covered by complainants' patent. Where owners of patents had the entire interest in them for certain territory, but upon certain condItions which grantees were to perform, and, upon failure to perform. the title was to revert to grantors, held. that grantor's title was never fully divested, or at least they had a possible reversionar1 interest, so that it was proper to join them as complainants in a suit for infringement of the patents within the territory covered by the grant.
.. SAME-CONDITIONAL ASSIGNMENT OF PATENTB-PARTIES.
In Equity.
Offield <t Towle, (Mr. Phillips, of counsel,) for complainants. West tt Bond, for defendants.
1
Edited by ChariesC; Linthicum, Esq., of the Chicago bar.
OTIS BROS. MANUF'G CO. W. CRANE BROS. MANUF'G 00.
051
BLODGETT, J; The bill in this case alleges infringement by'defendants of patent No. 44,740, granted October 18, 1864, to Charles R. Otis, for "an improvement in brakes of hoisting apparatus," and patent No. 44,773, granted May 18, 1865, to said Charles R. Otis and Norton P. Otis, for an "improvement in steam-hoisting apparMus," and asks for an injunction and accounting. The principal controversy centers about the patent No. 44,740, and this patent will be first considered. The patentee in his specifications says of this device:
"This invention consists in so combining the brake of a hoisting-machine with the stop-valve of the hoisting engine t!lat, when the said valve is closed, and the steam or other motive fluid shut off from the engine, the brake is always in operation, and. when the valve is open to admit steam or othAr fluids to the engine. the hoisting engine is relieved of the fl:iction of the brake."
The patent contains but one claim, which is: "The combination and arrangement of levers and connections substantially as herein described, whereby the brake is automatically applied while the valve is closed, and withdrawn when the valve is open to set the apparatus in motion." The parts 01 this device operating together as contended by the complainant to produce the stated result, are: (1) A stop, start, and reverse valve to a steam-engine; (2) a lever by which said valve is worked; (3) a rod attached to the end of such lever, the upper end of which is toothed; (4) a sLDall pinion, turning freely upon a fixed stud or axle so located, in relation to the toothed rod, that the teeth of the rod may be made to engage with the teeth of the pinion, and, by t.nrning the pinion in the different directions, the valve lever is moved to open, shut off, or reverse the steam; (5) a pulley affixed to this pinion, around which passes a belt by which the pinion can be turned; (6) a friction wheel attached to the winding drum of a hoisting apparatus, upon which is a band-brake; (7) a lever to work the brake, the end of which is weighted with a weight sufficiently heavy set the brake, or a lever with toggle-joints to set the brakes; (8) a pulley which is fastened to the side of the pulley which works the valve lever, so that when the pulley that works the valve lever is revolved it will also revolve this side pulley; (9) a chain connecting the brake lever with this side pulley, so that when the pulley that works the valve lever is turned, it will wind or unwind the chain attached to the brake lever, and thereby release or set the brake. Simply stated, the valve lever and the brake lever are both attached to a . pulley which is moved by a belt, and. t·he parts are so arranged that when the valve is closed, the weight upon the end of the brake lever is acting to set the brake, and when the valve is open, by revolving this pulley, it releases the brake. The defense is, in effect; prior use of the devices here olaimed, and a denial of the alleged infringement, and the testimony and arguments of have taken a wide range in regard to the state of tlie' art
FEDERAL REPORTER.
and mode of operation of many older devices for the same or analogous purposes. The defendants use a device whereby the brake is set when the valve is closed, and released when the valve is open. The combination of parts to produoe this result in the defendant's rnachinei'l3 stated by the defendants' counsel to be: (1) A start, stop, and reverse valve; (2) a lever attached to the stem of this valve, by which the valve is moved into the required position for starting, stopping, and reversing; (3) a friction wheel attached to the winding shaft of a hoisting engine with a band brake; (4) a lever by which this brake is operated, one end of which lever is weighted, and rests in a notch in a two-way or heart-shaped cam; (5) a rod oonnected at the upper end with the valve lever, and at the lower end eccentrically with the cam on which the end of the brake lever rests,-all so arranged that when the valve is closed, the brake is set, and the end of the lever rests in the notch of the cam; but when the valve is open, either to start or reverse, the brake is released by the turning of the cam sO as to lift the weighted end of the brake lever. Although the Otis claim speaks "of the arrangement of levers whereby the brake is automatically applied," yet it is evident that neither of these devices of the complainant or defendant are automatic,-that is, they are not self-acting, and put in opemtion from within the machine itself, but must be put in action by the person in charge of the machinery,-and the operation of the parts in both machines is such that both the brake and valve levers act simultaneously, by one movement from the operator in charge. The chief use to which both c.Jmplainants' and defendants' machines have so far been applied is in running elevators or lifts, in which, by means of a shipping rope or chain connected with the part which controls the brake and valve levers, the movement of the machinery is controlled from the cab or cage; and the advantages claimed for the device covered by complainants' patent are that, in case of accidents to the brake, the cage can be stopped by stopping the engine, because the engine is connected directly with the drum, and this stopping can be performed by moving the valve into its intermediate position, or, if the weight is too heavy upon the cage, the valve can be. reversed the same as a lever in a locomotive, when it is deRired to suddenly stop. It also permits operator to slow up, and to reduce the speed of the cage as he approaches the floor where he desires to stop, either in going up or coming down; also that the engine is not used, and steam not expended, nnless work is done, and the cage moved np or aowu; that is, the engine is stationary, and steam is only used when the cage is The proof shows many old devices for hoisting apparatus applied to raising ores and coal from mines, and also one old passenger elevator, (see Knight, Mechanical Diet. tit. "Hoisting Engines ;") and since the introduction of the several arrangements by \Vhich ,the brake and valve can be operated simultaneously are shown by the proof. The English patent granted to Robert Car.1eron, in
OTIS BROS. MANUF'G CO. fl. CRANE BROS. MANUF'G 00.
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1789, for hoisting apparatus, shows such an arrangement of valves and brake levers that thtl engineer in charge of the engine could reo lease the brake and open the valve, or close the valve, and set the brake, simultaneously, the two levers not being actually nected, but being arranged so near together that both could be actuated at substantially the same time. The English patent of 1856 to Rossum shows a device for the purpose of applying a brake, and at the Hame time cutting off the steam; but it is urged that this was only a danger device, to be resorted to in an emergency or peril, and not for the purpose of controlling the ordinary operation of the mao chine. So, too, the English patent of 1857 to James Robertson showed a start, stop, and reverse valve, operated by "a lever, to which was connected a brake mechanism so arranged that when the valve was closed the brake was set, and when the valve lever was moved into position to open the valve it released the brake. When the valve was closed it set the brake, and when the valve lever was moved to reverse, the brake was released. The mechanism shown in that patent is very complicated; yet, if not as simple and as effectual as the Otis device, it seems to have accomplished all that he did; that is, it opened the valve and released the brake, and closed the valve and set the brake, by the movement of one lever. It allowed the basket or cage to be stopped at any point in the ascent or descent, and enabled the operator to control the motion so as to run fast or slow, and the movement was stopped by shutting off the steam and applying the brake, so that the steam was not used while the move. ment of the weight was arrested·. So, too, in the English patent of 1861 to Walmsley & Bostrom, a device is shown for automatically stopping the- hoisting apparatus in a warehouse or building at any floor or story of the building, without the aid of an attendant, so, as I understand its operation, the cage or platform could be loaded at the lower floor and sent up to any desired upper floor, to be un· loaded, without an operator to accompany it; and in the specifications these patentees speak of "the ordinary stopping rope" as if that were then a well-known device for controlling the movement of a hoisting apparatus. 'fhe testimony further shows that E. G. Otis, the father of C. R. Otis, the patentee, was for many years prior to his death, which was in April, 1861, engaged in and near the city of New York in con· structing and putting in operation hoisting-machines or elevators, for transporting passengers and merchandise between the different floors of factories, warehouses, stores, etc.; that in January, 1861, he took a patent in this country for a device by which the brake could be applied and the operating power suspended simultaneously by means of a forked rope, one end of which opera-ted the brake lever and the other operated a shipping shaft, so as to throw the hoisting belt onto a loose pulley, this forked rope extending to the cage, and by means ()f which the movement could be controlled from the cage. It also
554
FEDERAl. Rl,U'ORTEB.
appears that in the fall of 1860, and the winter of 1861, E. G. Otia construoted three elevators in the warehouse of H. B. Claflin & Co., in the city of New York, in two of which, according to the testimony of Mr. C. R. Otis, the shipper rope was passed around a pulley working upon a shipper shaft, on which pulley was a pinion, which worked a toothed rod or rack connected with the valve lever, so that the valve was opened, shut, and reversed by the co-action of the same parts that open, shut, and reverse the valve in the patent now under consideration. There is also considerable testimony in the defendants' record tending to show that the valve and brake in each of these elevators were so connected that when the endless rope or chain in the cage was pulled down or up, it opened the valve and the brake at the same time, by one movement. But, without considering or attempting to decide the question as to where the weight or preponderance lies, between the conflicting testimony as to whether or not either of the Claflin elevators were controlled by one chain or rope, whioh opened the valve and brake together, it is sufficient for the present to say that all the advance C. R. Otis made in the art was to improve the device used by his father, by connecting the weighted end of the brake lever with the pinion which actuated the valve lever, so that when the pulley Wf1S revolved by the belt or shipping rope for the purpose of opening the valve either to start or reverse it also lifted the weighted end of the brake lever, and released the brake. In other words, he merely made the pulley, f, and fastened it to the side of the pulley, c, of the valve-operating device, and connected the end of the brake lever with this new pull I, by the chain, e. All y, the other operative parts which complainants' counsel inS'ist are called for by the claim of the patent were in the Claflin elevators, and designed and constructed by Mr. E. G. Otis; and the proof also shows that when C. R. Otis applied for his patent he claimed particularly: "So combining the brake of a hoisting apparatus with the stop-valve of an engine by which it is worked that when the said valve is closed the brake is in operation, and when the said valve is open the hoisting-machine is relieved of the friction of the brake, substantially as herein stated." His application with this broad claim was rejected, and it was decided by the commissioner of patents that he could only have a patent for his "peculiar arrangement." He acquiesced, and took his patent for "the combination and arrangement of levers and connections, substantially as herein described." His patent is not, broadly, for applying the brake automatically while the valve was closed, and releasing it when the valve was open; because he had applied for such a broad claim, and it had been denied, and he had been told.that he could only have a claim on his "peculiar arrangeand his claim is limited to such arrangement. "In patents for combination of IDee hanism, limitations and provisos:iIDp<:,sedupon tbeinventor, Eluchas were introduced into an
OTIS BROS. MANUF'G CO. 'II. CRANE BROS. MANUF'G
00.065
application after it had been persistently rejected, muat be strietly construed against the inventor, and in favor of the public, and looked upon as in the nature of disclaimers." Sargent v. Hall Safe ft Lock 00.,114 U. S. 63; S. C. {) Sup. Ct. Rep. 1021; Dodds v. Stoddard, 17 Fed. Rep. 645; Manufacturing 00. v. Oorbin, 103 U. S. 791. "It is well known that the terms of the claims of letters patent are care,; fully scrutinized in the patent-office. Over this part of the specification the chief contest generally arises. It defines what the office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to. The courts, therefore, should be careful not to enlarge by construction the claim which the patentoffice has admitted, and which the patentee has acquiesced in, beyond the fair interpretation of its terms." Burns v. Meyer, 100 U. S. 672. If this patentee had described the state of the art upon which he wished to engraft his improvement, he would have said, in substance: "1 have connected the valve levers and the brake lever of the E. G. Otis machines, by means of the pulley, f, and the chain, e, so that the valve and the brake can be simultaneously worked by one movement of the shipper belt; the shipper belt haviug formerly worked the valve only." Read in the light of the proof in this case, it seems to me all that this inventor did which had not been done by his father, and immediate predecessor in business, was to connect the brake and valve attachments together by his peculiar mechanism; for he was not the first to connect the valve of a steam-engine with the brake of the hoisting apparatus, so that the brake would be open when the valve was opened, and closed when the valve was closed; as Robertson, in his patent of 1857, had shown how that could be done in two ways; and in the Claflin machines 2 and 3, according to the testimony of Mr. C. R. Otis, the steam could be shut off and the brake applied by pulling down the two ropes at the same time; and it would seem, also, from his testimony that the two ropes were placed near' together, so as to enable them to be pulled and the brakes and valves closed at substantially the same time. Looking upon this patent, then, as limited to the peculiar arrange. ment of parts shown, and not to the results produced,-for such results were not new,-the question is, do defendants use the combination or arrangement of parts shown in the patent, or known equivalents, for performing the same function? 'rhe defendants' valveactuating mechanism consists of a valve lever, movable up and down from its central or closed position by an endless rope or chain. There is no rack or pinion movement, and no belt around a pulley. The endless rope attached to the lever is simply pulled up and down to start, stop, or reverse, without the intervention of the rack, pinion, or pulley, substantially as shown in complainants' model Claflin machine Nos. 2 and 3. Defendants' brake lever is operated by a cam, to which motion is communicated by means of a rod from the valve le'ver, combined with a peculiar safety device for setting the brake in