booster. The present booster made and sold by the plaintiffs is known as the C-2 type and differs from the C-1 primarily in the slight changes which were made in the control.
While the tests referred to upon the type A booster were in progress and in the calendar year 1920, the plaintiffs accepted orders for boosters of the A type amounting to $223,000, covering upwards of forty boosters. These boosters, or most of them, where manufactured and delivered to the plaintiffs' customers prior to the application dates of the patents in question. Most if not all of those delivered were later recalled and rebuilt by the plaintiffs so as to conform to the C type. I think it may be fairly assumed that for some considerable period at least they were in service in the hands of the purchasers. In June, 1920, and subsequently in January, 1921, the plaintiffs advertised the booster for sale in the Railway Age.
In the light of the foregoing facts, it is impossible to sustain the plaintiffs' contention as stated by one of their witnesses that the booster did not pass out of the experimental stage until the C-2 booster was made standard in 1922, or even the contention that the public uses prior to the application dates of the patents, beginning June 22, 1923, were experimental and collateral to the development of the invention in its complete form.
There is no question about the rule stated by the court in Reo Motor Car Co. v. Gear Grinding Co. (C.C.A.) 42 F.2d 965, that use and even sales are not necessarily a bar provided they are merely a stage of the development of the invention in its complete form, and this rule might apply here if the booster with its controls and structural details all comprised one general invention which was being gradually worked out until the C-1 type was finally evolved. That, however, is not the case. The detailed patents here referred to (splash lubrication system, bed frame supports, and stuffing boxes for piston and valve rods), while parts of a combination, were for complete structures entering into that combination, and I have been unable to find any evidence that the type C-1 booster represented any advance over or modifying of these structures as embodied in the A type. From any point the whole record indicates that the sales were ordinary commercial transactions, and I so find.
As was well said in Monroe v. Bresee (C.C.A.) 239 F. 727, 728: "The machines may not have been perfect; the inventor and manufacturer may have intended to improve his product; but the transactions were nevertheless not merely, or even primarily, an arrangement for trying out and testing the (booster), but were sales of completely operative machines. The machines were purchased, not in order to aid (the inventor) in his experiments, but in order to secure efficient (boosters) for actual use." I have slightly paraphrased the above and find it fully applicable to the situation in this case. See, also, Wende v. Horine (C.C.A.) 225 F. 501; Covert v. Covert (C.C.) 106 F. 183; and Mayer v. Mutschler (D.C.) 248 F. 911.
The prior use found above, together with the publication contained in the Railway Review of September 4, 1920, constitutes a complete anticipation of many of the claims of these patents. This is true of claims 1 to 6, inclusive, of the Roberts splash lubrication patent (No. 1,600,427) and all the claims in suit of the Roberts stuffing box patent (No. 1,647,146).As to the others, I am unable to find in them any inventive advance over the structures of the type A booster. No doubt they represent improvements, giving the device, in some cases greater strength and in others increased efficiency; but when we consider the degree of engineering and mechanical skill which represents minimum expert qualifications in the field of locomotive designing, it cannot be said that such changes as have been made are anything beyond normal development to be expected.
Summary of Findings and Conclusions.
Ingersoll, No. 1,547,155.
1. In claim 16, "means controllable by said throttle lever" must be construed as limited to steam actuated means.
2. Claims 16, 19, 34, and 36 are limited to devices having steam-actuated entrainment mechanism with double control one element of which is the reverse lever of the locomotive. As so limited, these claims are not infringed by the defendant's structure.
3. The claims in suit are not an undue expansion of the claims of the original application of this patent. There is no double patenting in relation to Ingersoll, No. 1,339,395.
Ingersoll, No. 1,339,395.
1. Claims 30, 32, and 39 are limited to devices in which the entrainment mechanism is under the control of both the main throttle and the reverse lever of the locomotive.
2. The "train of gears" of claim 32 does not necessarily mean more than two gears and may be anticipated by devices having two gears only:
Ingersoll, No. 1,383,633.
1. Claims 16 and 17 are limited to devices in which entrainment is effected before the booster motor begins to operate. As so construed, these claims are not infringed by the defendant's devices.
Peters Reissue, No. 16,483.
1. Claims 11, 12, 13, and 16 contemplate a structure in which steam is admitted into the booster cylinders in two distinct stages: First, in small quantities insufficient to drive the motor but sufficient to effect entrainment; and, second, full driving steam.
2. The defendant's booster does not admit steam into the booster motor in distinct stages, but a single admission of steam drives the motor and effects entrainment.
3.The pilot valve of the defendant's booster throttle is not the equivalent of the plaintiffs' by-pass valve.
4. The defendant's system of vents and relief cocks prevents steam entering the booster cylinders until it arrives in sufficient quantities to drive them.
Ingersoll, No. 1,375,293.
1.Claims 12, 13 to 18, 20, and 22 are anticipated by Johnson, No. 702,655 and are invalid.
Pflager, No. 1,357,928.
1. Claims 1, 2, 3, 6, 7, and 8 are not infringed by the defendant's structures. If construed to cover the defendant's structures, these claims would be invalid for want of patentable novelty over Wagenhals, No. 830,940.
2. None of the claims in suit of this patent nor of the preceding one cover a flexible support located approximately at the center of gravity of the booster frame.
Peters, No. 1,539,270.
1. Claims 1, 2, 3, 4, 5, and 6 are invalid for want of patentable novelty and invention.
Roberts, No. 1,600,427.
Roberts & Peters, No. 1,602,124.
Roberts, No. 1,647,146.
1. The claims in suit of all these patents are invalid by reason of prior public use and prior publication.
The bill may be dismissed, with costs.
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