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October 13, 1932


The opinion of the court was delivered by: KIRKPATRICK

There are ten patents in suit, all relating to an auxiliary steam engine, commonly called a "booster," designed to furnish additional driving power, when required, to a steam locomotive. For convenience they may be divided into two groups. Four patents, constituting the first group, have to do principally with the means by which the engineer controls the operation of the booster, and may be called control patents. The remaining six patents relate to the construction of various parts of the booster and are referred to as structural patents.

The Control Patents Generally.

 The control patents, identified by descriptive names, are as follows: Ingersoll, No. 1,547,155, steam actuated entrainment; Ingersoll, No. 1,339,395, dual control; Ingersoll, No. 1,383,633, sequential control; Peters reissue, No. 16,483, preliminary entrainment steam. A number of the claims of the first three of these patents were in suit in Ingersoll et al. v. Delaware & Hudson Co. (C.C.A.) 37 F.2d 465, the opinion in which case may be referred to for such details of the patented devices as are applicable to this discussion.

 The idea of combining with the main driving means of a locomotive an auxiliary propulsion unit for use in starting and on grades is very old, dating back at least to Cathcart's patent of 1849. A condition, constant in all types of the device, has been that the auxiliary was to be operated by excess steam from the locomotive boiler and therefore could not be used when the locomotive was running at high speed using all its steam. Another condition, present in many types, was that the auxiliary driving wheels were smaller than the main driving wheels, and therefore, in those types, the auxiliary motor, if continuously engaged with its driven axle, would be badly racked at high speeds. Since the booster could not be used continuously, some method or system for putting it into operation and cutting it out when desired has always been a major problem in the art.

 Three general methods of meeting this problem have been developed, or at least experimented with:

 (1) Some devices, of which Cathcart, No. 6,818, and Helmholtz, No. 516,436, are typical, carried the driving wheels of the auxiliary lifted clear of the track when not in use and lowered them when auxiliary power was needed.

 (2) In devices of the type of Sturrock, No. 40,715, Friermood, No. 870,769, Henderson, No. 1,013,771, and Coapman & Ettenger, No. 1,236,910, the auxiliary driving means are really duplicate main driving means, entrained (but not driving) at all times when the locomotive is in operation, driving steam being supplied to the auxiliary motor only when desired. Locomotives of this type are generally known as "multiple locomotives."

 (3) In the remaining mechanisms the auxiliary motor is completely disengaged from its axle and wheels when not in use, the latter at such times functioning either as weight carrying wheels or guides. This type includes Creuzbaur, No. 173,164, Mallet & Behr, No. 389,232, Liechty, No. 970,512, Evans, No. 1,136,947, Liechty (German), and Holt (British).

 The plaintiffs' control patents, as well as the defendant's device, belong to the third class which, as may be readily seen, represents an approach to the problem fundamentally different from that of the two other classes.

 The combination of the elements noted above was old in the art when Ingersoll began to develop his control patents, and he has not produced anything patentable in the auxiliary motor or its control, nor in the entrainment mechanism itself. The point at which patentability is to be found, if anywhere, in these control patents, is in the control of the entrainment mechanism.

 The history and relationship of the three Ingersoll control patents may be briefly adverted to because of its bearing upon some of the defendant's contentions. Ingersoll appears to have started off in his original application with an idea covering the entire booster installation but without any thoroughly developed scheme of control for the entrainment mechanism, except that the application clearly contemplated control by steam only. He then, evidently, worked out a dual control system, using steam and compressed air, ultimately embodied in patent No. 1,339,395, made separate application for it, and, by transferring all the control claims of the original patent to it, temporarily left unclaimed and indefinite the control system of the original application. Shortly thereafter it was probably determined to reinstate the control mechanism as a feature of the original application. This was done by a third or divisional application which resulted in patent No. 1,547,155. However, the control mechanism so reinstated carefully excluded the supposed improvement of dual control, then included in patent No. 1,339,395, and was confined to what it had originally been (though specified in the divisional application with greater definiteness) -- control of the entrainment mechanism by steam only.

 In view of this history, the defendant's contention that the reassertion of the steam control claims in the course of the application was not permissible because it involved an undue expansion of the original claims cannot be sustained; nor do I find double patenting in the two patents, No. 1,547,155 and No. 1,339,395, except possibly in claim 16 of the former, which will be dealt with later. The scope and purpose of the two are obviously entirely distinct.

 The Defendant's Structures.

 The alleged infringing device manufactured by the defendant presents the same general combination of major elements -- main driving means, booster motor, and entrainment mechanism with their controls -- as appears in the plaintiffs' patents well as in the prior art patents of the third class. There are two forms. In both, however, steam starts the booster engine, and, in the initial movement of its piston, the gears, by which the booster engine and the axle of the tender are to be connected, are thrown automatically into mesh. After being so engaged, the booster engine drives the axle and its wheels. The defendant has added a secone throttle or booster throttle to control the supply of steam from the locomotive boiler to the booster cylinders. In its first from the booster throttle admits steam to the booster cylinders regardless of whether the main throttle is open or the main driving means of the locomotive are operating. In the second form steam will not pass to the booster engine unless the main throttle is first opened.

 The whole arrangement is comparatively simple. The reverse lever of the locomotive has absolutely no control of or effect upon the movement of the booster. There is no separate mechanism for entraining the auxiliary driving apparatus, nor are there any of the elaborate devices of the plaintiffs' control patents designed to secure sequential operation of entrainment mechanism and booster motor or preliminary actuation of the booster. When the booster cylinders start, the apparatus goes into gear with the axle which it is to drive.

 It is possible that the defendant sacrifices something to simplicity of construction. Its booster can only operate in one direction -- forward -- and it may not always engage with perfect smoothness. The testimony is that when the gears entrain "they go in with a bang." But we are concerned with infringement, not comparative efficiency.

 Ingersoll, No. 1,547,155 -- Steam Actuated Entrainment.

 Taking up the patents of the control group separately, Ingersoll, No. 1,547,155, logically comes first. Claims 16, 19, 34, and 36 are in suit. Attention should be directed to the entrainment mechanism.

 Unless "means controllable by said throttle lever" of claim 16 be limited to steam actuated means, the claim obviously will be entirely too broad to stand against the prior art, including Ingersoll, No. 1,339,395. The other three claims in suit all specify in terms a steam actuated entrainment mechanism.

 Many of the prior art references cited against these claims fail to disclose a steam actuated entrainment mechanism.

 Creuzbaur's entrainment mechanism is a clutch. It is operated by mechanical means -- a rod which also opens the booster throttle to admit steam into the booster motor. The movement into gear of the clutch does not depend upon the booster being operated and is not accomplished by steam from the boiler or controlled by the main engine throttle. In Mallet & Behr entrainment is effected through a friction clutch of a special construction, but its operation is purely mechanical by means of a spindle and is entirely independent of the booster motor and its control as well as of the main throttle of the locomotive. Evans' entrainment mechanism consists of a set of gears, but they also are shifted by mechanical operation and are not dependent upon the booster steam or the controls.

 There remain, however, the Holt British patent of 1876, the two Liechty patents, and the German publication of 1916 in "Organ fuer Eisenbahnwesen."

 In the Holt patent the entrainment mechanism consists of chains which move a pivoted arm to throw a jaw clutch into gear. A steam-actuated piston by turning a sprocket wheel gives the initial pull to the chains. The steam comes from the cylinder of the auxiliary motor, which must be started first or at least simultaneously. True, it is only remotely controllable by the main throttle lever and hence probably does not anticipate claim 19. But its entrainment system is "controlled and operated solely by the pressure influence of steam" and is "initially actuated under the pressure influence of the steam" just as truly as the plaintiffs' device, and therefore, unless claims 34 and 36 can be limited by the disclosures of the patent, the Holt patent will invalidate them.

 The plaintiffs say that the Holt device has never been and could never be used in practical operation; and the antiquated structure shown in the drawings, as well as some rather curious features of the patent wholly unrelated to the entrainment mechanism, lend plausibility to the argument. But Ingersoll in his original application suggested "gears, chains or belts" as suitable driving connections and, in view of well-known usage, it cannot be held that a clutch operated by a chain connection is necessarily unworkable.

 The Liechty American patent, No. 970,512, shows a disengageable booster with a clutch for effecting entrainment but, as he expressly states in his specification, "no means are herein shown for operating the clutch." This element is also lacking in the Liechty German patent. Otherwise, these two patents have many features like Ingersoll's.

 The German publication referred to describes several different motors designed under what it refers to as the "System Liechty." One of them is substantially the auxiliary motor and locomotive of the Liechty patents. A drawing is reproduced which shows disengageable gears connecting the auxiliary propulsion device with its driven axle. The article says that the drive of the truck axles "is disconnected on level or sloping portions of the road when the cylinders of the auxiliary drive mechanism are not fed with steam, because the steam piston operating the disengaging device is connected with its chest."

 It is not easy to say from the agreed translation whether the description of the locomotive and auxiliary refers to an engine in actual use or to a design for one, but the view of the plaintiffs, that a design for a proposed engine is described, may be accepted. The question still is whether the prior publication is in such full, clear, and exact terms as to enable any person skilled in the art to construct the invention to the same practical extent as he would be enabled to do if the information was derived from a prior patent. This is the rule laid down in Seymour v. Osborne, 11 Wall. 516, 555, 20 L. Ed. 33, and followed in Cohn v. U.S. Corset Co., 93 U.S. 366, 23 L. Ed. 907; Downton v. Yeager Milling Co., 108 U.S. 466, 3 S. Ct. 10, 27 L. Ed. 789; Eames v. Andrews, 122 U.S. 40, 7 S. Ct. 1073, 30 L. Ed. 1064; and many other decisions.

 The circuit Court of Appeals for the Second Circuit had claims 16 and 19 before it in the Delaware & Hudson Case, supra, and there held that these claims, in view of the disclosures of the specification and drawings, must be limited to steam-actuated entrainment mechanism having a double control -- by the main throttle of the engine and the reverse lever. This conclusion was reached because the specification and drawings show a reversible mechanism with a valve (35 on Fig. 5 of the patent) which conditions the direction in which the booster is to drive its axle and which is positioned by the reverse lever of the locomotive. If this reversible mechanism is really an essential feature of the combination intended to be patented, the "means," "mechanism," or "device" for entrainment called for by the claims in suit must be construed to include it. The plaintiffs argue that the Circuit Court of Appeals misconceived the function of this device and that it is no more essential to the operation of the whole device than the governor, which all agree is unimportant.

 The question as it was presented in the Delaware & Hudson Case was certainly a close one. On the one hand, where the specification sets forth the purpose of the invention, it is a legitimate argument that any structure not necessary to accomplish that purpose is negligible. On the other hand, general language of the patent claims should never be interpreted so as to transcend the limits of the real invention and, unless the specification clearly indicates or implies that some feature included in the combination is nonessential, such feature would usually limit the broad language of the claims. In the absence of any conviction that the decision of the Circuit Court of Appeals upon this point is wrong, I would be constrained by the rule of comity to follow it; but, as has been indicated, there is in this case another and more compelling reason for reaching the same conclusion, namely, the necessity of adopting this construction in order to save the patent from invalidity in view of the prior art, particularly the German publication referred to taken in connection with the Liechty patents.

 Adopting, therefore, the view that the claims of this patent must be limited to a steam-actuated entrainment mechanism having a double contro one element of which is the reverse lever of the locomotive, none of them are infringed by the defendant's device, in neither from of which the reverse lever has anything to do with the operation or control.

 The plaintiffs argue that claims 34 and 36 can be sustained over the prior art, even if anticipated at all other points, by the fact that they refer to the booster as "an auxiliary propulsion unit." This, they say, implies a patentable advance over even a disengageable booster (with steam-actuated entrainment mechanism) which is attached to the locomotive frame as it is in the Liechty patents. This contention, however, attempts to read into the claims a feature which they nowhere even remotely suggest. Of course, we may always turn to the specification and drawings for guidance in interpreting the claims, but there must be something to interpret. The word "unit" does not carry with it the slightest implication of physical disassociation from the locomotive nor of any particular type of connection with it. The auxiliary motors of Creuzbaur, Evans, and Liechty are just as much units as that of the plaintiffs. The matter of ...

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