Claims 3, 4, 5 and 6 of reissued letters patent No. 10,806,
granted February 8, 1887, to the National Meter Company as assignee
of Lewis Hallock Nash, for improvements in water meters, on the
surrender of original letters patent No. 211,582, granted to said
Nash, January 21, 1879, are not infringed by water meters
constructed according to letters patent reissued to the Hersey
Meter Company, No. 10,778, November 2, 1886, as assignees of James
A. Tilden, and to letters patent No. 357, 159, granted to James A.
Tilden, February 1, 1887, and to letters patent granted to said
company, as assignee of said Tilden, No. 385,910, July 10,
1888.
The Nash piston has a side-rocking movement across the center of
the cylinder, upon successive bearing points made by the contact of
a projection on the piston with the recess in the cylinder, or
conversely, and the piston rotates upon its own axis, so that each
projection comes successively into each recess of the cylinder. But
in the defendant's structure, there is no side-rocking, nor any
rotary motion, and each projection in the piston always operates in
connection with one particular corresponding recess in the
cylinder, and never leaves that recess.
In equity. The case is stated in the opinion.
MR. JUSTICE BLATCHFORD delivered the opinion of the Court.
This is a suit in equity, brought in the Circuit Court of the
United States for the Southern District of New York by the National
Meter Company, a New York corporation, against the Board of Water
Commissioners of the City of Yonkers, another New York corporation,
founded on reissued letters patent of the United States No. 10,806,
granted February 8, 1887, to the plaintiff, as assignee of Lewis
Hallock Nash, for improvements in water meters. The application for
the reissue was filed December 18, 1886, on the surrender of
original letters
Page 149 U. S. 49
patent No. 211,582, granted to said Nash January 21, 1879, for
improvements in water meters, the application therefor having been
filed September 4, 1878. The claims of the reissue alleged to have
been infringed are claims 3, 4, 5, and 6, which are as follows:
"3. A piston for water meters, pumps, and motors provided with
internal water passages, and having alternate bearing points or
projections and recesses adapted, by means of a cylinder chamber
having alternate bearing points or projections and recesses, to
have an eccentric or side-rocking movement within and upon
continually changing lines across the center of said chamber, to
effect its division at two or more points on its sides into
receiving and discharging spaces,
cc, which communicate
with the inlet and outlet."
"4. A piston for water meters, pumps, and motors having
alternate bearing points or projections and recesses adapted, by
means of a cylinder chamber having alternate bearing points or
projections and recesses, to have an eccentric or side-rocking
movement within and upon continually changing lines across the
center of said chamber, to effect its division at two or more
points on its sides into receiving and discharging spaces,
cc, which communicate with the inlet and outlet, said
piston having a free movement within said cylinder, controlled only
by the shape of the cylinder, the shape of the piston, and the flow
of water through the meter."
"5. A piston for water meters, pumps, and motors having
alternate bearing points or projections and recesses adapted, by
means of a cylinder chamber having alternate bearing points or
projections and recesses, to have an eccentric or side-rocking
motion within and upon continually changing lines across the center
of said chamber, to effect its division at two or more points on
its sides into receiving and discharging spaces,
cc, which
communicate with the inlet and outlet, said piston being formed of
hard rubber, and having a free movement
Page 149 U. S. 50
within said cylinder controlled by the shape of the piston, the
shape of the cylinder, and the flow of the water through the
meter."
"6. A piston for water meters, pumps, and motors having
alternate bearing points or projections and recesses adapted, by
means of a cylinder chamber having alternate bearing points or
projections and recesses, to have an eccentric or side-rocking
movement within and upon continually changing lines across the
center of said chamber, to effect its division at two or more
points on its sides into receiving and discharging spaces,
cc, which communicate with the inlet and outlet, combined
with ports controlled by said piston itself in its motion within
said chamber."
The defenses set up in the answer are (1) That the reissue is
invalid as to the said four claims because it was applied for and
secured eight years after the grant of the original patent, not for
the purpose contemplated by the statute -- of correcting any error
that arose from inadvertence, accident, or mistake -- but for the
purpose of changing the patent so that it would claim combinations
of devices which were not the subject of the claims of the original
patent nor described therein as being the inventions of Nash for
which he obtained said original patent, in order that, by means of
the reissue, the plaintiff might prevent the Hersey Meter Company,
which manufactured the meters used by the defendant and had assumed
the defense of the suit, from carrying on its business, and further
on the ground that Nash and the plaintiff unreasonably and
fraudulently delayed undertaking to correct the alleged defects by
a reissue, and did not make application for the reissue until the
Hersey Company had made and sold large numbers of meters of the
type in question, and that the reissue was applied for the obtained
for the sole purpose of procuring a new patent for other and
different inventions from those forming the subject matter of the
claims of the original patent, and further that the reissue was
procured by deceiving the Patent Office, and by fraudulent and
untrue representations to that office, and that any right to the
reissue was forfeited by the plaintiff's delay and laches in not
applying
Page 149 U. S. 51
for it until long after the plaintiff had full knowledge of all
the facts upon which such application purported to be based and
long after the Hersey Company had made, sold, and introduced into
use meters identical with those used by the defendant; (2) that
Nash did not particularly point out and distinctly claim the part,
improvement, or combination which he claimed as his invention or
discovery, but, on the contrary, willfully and fraudulently made
his claims in the original patent and the reissue in ambiguous
language, intended to mislead the public, with the view of making
it difficult to determine the real scope of his claims and of
reserving the right to contend for such interpretation thereof as
the exigencies of any particular case might, in his judgment or
that of his assignee, require; (3) noninfringement, and that the
meter used by the defendant is substantially different, in
construction and mode of operation, from the meter of the reissue,
and that no invention is shown or described in the reissue upon
which is, or could have been, based any claim which would be
infringed by the defendant's meter.
Proofs were taken, and the case was heard before Judge Wallace,
who delivered an opinion (38 F. 588) holding that the defendant's
meter did not infringe any of the claims in question, and entered a
decree dismissing the bill, with costs. From that decree the
plaintiff appealed to this Court.
We do not find it necessary to consider the question of the
validity of the reissue, because we are of opinion that the decree
of the circuit court must be affirmed on the ground that the
defendant has not infringed.
The original patent had eight claims, as follows:
"1. A piston for water meters, pumps, and motors having
alternate bearing points or projections and recesses adapted, by
means of a cylinder chamber having alternate bearing points or
projections and recesses, lines across the center of said chamber,
movement within and upon continually changing lines across the
center of said chamber, to effect its division at two or more
points on its sides into receiving and discharging spaces,
cc, which communicate with the inlet and outlet. "
Page 149 U. S. 52
"2. The piston of a water meter, pump, or motor constructed with
alternate recesses and bearing points or projections,
a
and
b, and a cylinder chamber having alternate wall
recesses and bearing points or projections,
a' and
b' adapted to intermatch with each other at one or more
bearing points at one side of the cylinder, and allow the
projections of each part to bear upon and to pass each other at two
or more points at a different side of the chamber, to allow the
piston to revolve while it also rocks in constantly changing lines
across the center of the cylinder chamber, for the purpose
stated."
"3. The piston of a water meter adapted to have an eccentric or
side-rocking movement across the center of the cylinder chamber and
a revolving motion, combined with a registering mechanism by means
of a free or shifting connection acting with the continually
changing, side-rocking movements of the piston while maintaining a
driving relation with the dial mechanism."
"4. The combination, with a piston having an eccentric or
side-rocking motion across the center of the cylinder chamber, and
a revolving motion around its own center, to divide the cylinder at
two or more bearing points on its sides, of a valve controlled by
the movements of said piston, and adapted to open and to close
receiving and discharging ports in succession, to effect the
purpose stated."
"5. A rotary piston having a valve formed therein by opposite
end ports or depressions, and adapted to act, in connection with
receiving and discharging ports or passages in the cylinder
chamber, to form a valve and piston, into and through which the
water entering at the inlet-cylinder end ports passes through one
end of the valve into the cylinder on one side thereof, and,
reentering the valve from the other side of said cylinder, passes
out at the opposite and ports of said valve, to effect the purpose
stated."
"6. A rotary valve piston having opposite end ports,
dd', communicating with the piston sides by diagonal
passages,
ee' in combination with a cylinder having
receiving and discharging ports, communicating with said opposite
valve end ports
Page 149 U. S. 53
and with the receiving and discharging spaces of said cylinder,
whereby said valve opens some and closes others of its ports in
succession, and to effect the equalization of the pressure of the
water at right angles to the direction of the side-rocking and
rotary movements of the said valve piston, as stated."
"7. The inlet device, L, having side walls, a perforated end,
and an open-end bearing rim, seated adjustably in and forming the
inlet port, J, of the cylinder chamber, in combination with the
rotary piston, against one end of which the said device bears, for
the purpose stated."
"8. The spaces or recesses,
c', in the walls of the
cylinder, between the bearing points,
b', and the
recesses,
a', in combination with the piston having
alternate bearing points and recesses, whereby to prevent the
choking of the flow, and insure a uniform action of a piston
adapted for operation with a side-rocking motion across the center
of the cylinder and a rotary motion around its own center."
The meters alleged to infringe were constructed under patents
granted to Hersey Bros., as assignees of James A. Tilden. The first
one was No. 324,503, dated August 18, 1885, on an application filed
December 22, 1884, for a rotary fluid meter. It was reissued to the
Hersey Meter Company, November 2, 1886, as reissue No. 10,778, on
an application for reissue filed September 30, 1886. Another patent
was granted to James A. Tilden, February 1, 1887, No. 357,159, on
an application filed August 15, 1885, for a water meter with a
revolving, nonrotating piston. A third patent was granted to the
Hersey Meter Company, as assignee of James A. Tilden, No. 385,970,
for a rotary fluid meter, July 10, 1888, on an application filed
January 25, 1887. The manufacture of the alleged infringing meters
was begun, a large number of them were put upon the market, and
they were extensively advertised prior to the filing of the
application for reissue No. 10,806.
Nash took one form of the Galloway rotary engine, that described
in Reuleaux's Kinematics of Machinery, translated by Kennedy and
published in London, England, in 1876, and made improvements upon
it which were necessary and valuable
Page 149 U. S. 54
to adapt it for practical use as a water meter. The Galloway
engine was a steam engine. At that time, it was well known that
steam and water engines, whether rotary or reciprocating, could be
used as meters to measure the flow of fluids passed through them,
and various forms of both kinds had been used as meters. The
original patent of Nash states that it is contemplated to use the
apparatus as a motor or as a pump, and so does the reissue.
Galloway had patented another form of engine in England, by
English patent No. 11,485, sealed December 14, 1846, and
specification enrolled June 14, 1847. Tilden, the inventor of the
defendant's water meter, took the form of this latter Galloway
engine, and made such improvements upon it is were necessary to
adapt it to practical use as a water meter. Both Nash and Tilden
supplied the arrangements of ports and discharging spaces necessary
for the special form of piston and cylinder chamber in the
respective Galloway engines, adding also a registering device, to
operate by attachment to the piston. In the Galloway engine
described in the Kinematics, there is a piston having projections
and a cylinder having recesses, but the recesses are more in number
than the projections on the piston. In the engine of Galloway's
patent of 1846, the piston has the same number of projections that
the cylinder has recesses. In the engine in the Kinematics and in
the plaintiff's apparatus, the piston has a side-rocking movement
across the center of the cylinder, upon successive bearing points
made by the contact of a projection on the piston with the recess
in the cylinder, or conversely, and the piston rotates upon its own
axis, so that each projection comes successively into each recess
of the cylinder. But in the piston of Galloway's patent and in the
defendant's structure, there is no side-rocking nor any rotary
motion, and each projection on the piston always operates in
connection with one particular corresponding recess in the
cylinder, and never leaves that recess.
The descriptions of the apparatus in the original and reissued
patents of Nash are the same, but in reissue No. 10,806 there is a
disclaimer in these words, which was not in the original
Page 149 U. S. 55
specification:
"I do not claim, broadly, a piston for water meters, pumps, and
motors having at alternate bearing points or projections and
recesses adapted, by means of a cylinder chamber having alternate
bearing points or projections and recesses, to have an eccentric or
side-rocking movement within and upon continually changing lines
across the center of said chamber, to effect its division at two or
more points on its sides into receiving and discharging spaces,
cc, which communicate with the inlet and outlet, as a
motor having a piston of substantially such construction and
movement within a cylinder chamber having such construction is
shown and described in the English patent of Elijah Galloway,
December 14, 1846 (No. 11,485), but what I do claim are said
elements in combination with additional elements, as hereinafter
specified, thereby limiting my claims to the novel features
embraced in my meter."
In all of the eight claims of the original patent except claim
1, a piston revolving about its center was an element in the
combination claimed, and it is a feature in each one of claims 3,
4, 5, and 6 of the reissue. The theory upon which the disclaimer
was inserted appears to have been that claim 1 of the original
patent did not specify a piston revolving about its center, and
therefore was sufficiently broad to include the arrangement in the
Galloway patented engine of 1846. But it does not seem doubtful
that such a piston was a necessary element of claim 1 of the
original patent, and that it forms an element of every new claim of
the reissue. The only piston described in the specification of the
original patent, and therefore the only one which could have been
referred to in claim 1 of the original patent, is one having the
side-rocking and rotating movement which constitutes the compound
motion described in the original specification, which motion is due
to the fact that the piston has one or several less projections
than the cylinder has recesses. The defendant's meter does not have
such a piston, and therefore does not infringe any of the claims of
the reissue.
The forms of the two Galloway engines are essentially different,
and necessitate a different construction and arrangement
Page 149 U. S. 56
of the cooperating devices to adapt them to efficient service as
water meters. As said by the circuit court in its opinion:
"The inventions of Nash and Tilden commence upon different
lines, and result in a combination having a different mode of
operation. The time and order of controlling the valves differ in
each, and require a different arrangement of the valve ports with
reference to the valves which open and close them. In Nash's meter,
the ports for both entrance and discharge of water are in the ends
or sides of the piston, while in Tilden's, the ports are not in the
piston, but in the ends or heads of the cylinder case, and are so
located that the contact of the piston with the cylinder divides
each recess into one filling and one discharging passage. In the
former, the ends of the cylinder act as the valves; in the latter,
the piston itself acts as the valves. In Nash's meter, the rotary
and side-rocking or compound movement of the piston opens some and
closes others of the ports in succession in such a manner as to
equalize the pressure of the water at right angles to the direction
of the movements of the piston. In Tilden's meter, it is an
essential feature that there shall be not merely water pressure
which moves the piston about the cylinder chamber, but additional
side pressure, which, in Nash's meter, must be avoided, and it is
only because it has a pressure of water not found in Nash's meter
that it is operative at all. "
Page 149 U. S. 57
In the Nash reissue, it is required that the piston patented
should have an
"eccentric or side-rocking motion across the center of a
cylinder chamber, to effect its division at two or more points into
receiving and discharging spaces."
But the defendant's piston has no such motion, and the cylinder
chamber of its meter is not divided by the piston "at two or more
points, into receiving and discharging spaces," in the sense of the
Nash reissue.
In the Nash reissue, it is required that
"with this eccentric or side-rocking action, the piston also
revolves round its own center, . . . for, as the piston rocks from
one bearing point to another directly across the center of the
cylinder, it is at the same time revolved."
But the defendant's piston has no motion of revolution about its
own center.
In the Nash reissue, it is required that
"in the rotation of the piston around its own center, one or
more projecting bearing points of the piston will pass into
corresponding recesses at one point of the cylinder, and in contact
with and over one or more projecting bearing points of the cylinder
at a different point, thereby always maintaining a direct contact
of the piston and cylinder at two or more dividing points within
the continually changing cylinder spaces."
But in the defendant's meter, the bearing points of the piston
are always in their own special recesses in the case, and are never
in contact with, and never pass over, any of the projecting bearing
points of the cylinder, and there never is a direct contact of the
piston and cylinder at two or more dividing points, within the
meaning of the Nash reissue.
In the Nash reissue, it is required that the valves should
be
"arranged so that the cylinder spaces on one side of the piston
as it revolves have free inlet for the water through one set of the
valve ports, while the spaces on the other side of the piston have
free outlets for the water through the other ports of the
valve."
But in the defendant's meter, the division between the inlet and
outlet ports is not made by the piston, and all the displacement of
the water is effected in the individual chambers of the cylinder,
and no two chambers are ever connected while measuring water.
In the Nash reissue, it is required that the valves should so
open and close the ports in succession
"as to keep the line of pressure of the water as nearly as
possible at right angles to the direction of the eccentric or
side-rocking and rotary movements of the piston, and thereby avoid
any undue lateral pressure of the water upon the piston."
But in the defendant's meter, the motion of the piston is of an
entirely different character. The "lateral pressure of the water
upon the piston," which the Nash structure is designed to avoid, is
an essential feature of the operation, and without it the piston of
the defendant's meter would not be kept up against the side of the
case, and no water could be measured.
In the Nash reissue, it is required that when a separate valve
controlled by the piston is not employed, the valve is
Page 149 U. S. 58
"formed by inlet and outlet openings or ports in the ends of the
piston, communicating by means of passages in or through the piston
with the spaces of the cylinder."
But in the defendant's meter, no separate valve is employed, and
there are no ports in the ends of the piston, and no passages in or
through the piston, which communicate with the spaces of the
cylinder; the single passage in the center of the defendant's
piston is a portion of the discharge pipe, and it is required only
in order to accommodate the water discharged at the bottom of the
meter -- a double discharge, namely at the top and bottom of the
meter, being used for the purpose of balancing the piston.
In the Nash reissue, it is required that the piston and cylinder
should have
"bearing or contacting surfaces . . . formed by alternate
recesses,
aa',and projections,
bb', of such form
or configuration as to allow of the rotation of the piston not only
upon its own axis, but around and across the center of the
cylinder, and the space within the cylinder must be of such form
and sufficiently larger than the piston, H, to allow it to have
this compound motion."
But in the defendant's meter, the projections and recesses are
of such form as to prevent the rotation of the piston upon its own
axis and also to prevent its motion around and across the center of
the cylinder, and the space within the cylinder is not of such form
as, and not sufficiently larger than the piston, to allow the
latter to have that compound motion.
In the Nash reissue, it is stated that
"the object of this compound motion is to form bearing points or
lines of contact of the piston with the cylinder walls on opposite
sides thereof at the same time, as shown in Figs. 3 and 12, whereby
to divide the cylinder into receiving and discharging spaces."
But in the defendant's meter, no bearing points or lines of
contact of the piston with the cylinder walls on opposite sides
thereof at the same time are formed, and the receiving and
discharging spaces are differently situated, and are divided in an
entirely different way and on different lines.
In the Nash reissue, it is required that
"of whatever form these alternate recesses and projections, they
must be such
Page 149 U. S. 59
that while they are in contact upon one side of the cylinder
they must also at the same time have a contact at the opposite or a
different side of said cylinder, and in this way divide the
cylinder into spaces."
But in the defendant's meter, the projections and recesses are
of such form that such required mode of dividing the cylinder into
spaces by contacts on opposite or different sides of the cylinder
is impossible.
In the Nash reissue, it is stated that
"in this contact, it will be observed that upon one side of the
cylinder and piston such contact takes place between a recess and
projection, or intermediately between these points, while upon the
opposite side such contact is made by corresponding projections, as
shown in Figs. 3 and 12."
But in the defendant's meter, no such contact ever takes place,
and there is no contract upon opposite sides of the cylinder, and,
in each particular chamber, receiving and discharging spaces are
formed by that projection of the piston which is in that chamber
from the first and never leaves it.
In the Nash reissue, it is stated that
"the compound motion of the piston and the contacting dividing
points are due to the fact that the piston has one or more less
points of projection than the cylinder."
But in the defendant's meter, there are the same number of
projections on the piston and on the cylinder, and consequently no
compound motion of the piston is possible.
In the Nash reissue, it is stated that the function of either
form of valve described
"is to regulate the flow of water in and out of the spaces of
the cylinder in such manner as to produce the compound rotation and
cross movement of the piston."
But in the defendant's meter, the water is admitted and
discharged in such a way as to prevent any motion of the piston
except a sliding movement, which is neither a compound rotation nor
a cross-movement within the meaning of the Nash reissue.
In the Nash reissue, it is required that the valve and piston
should "cooperate to produce the results stated" --
viz.,
the compound motion of the piston and the proper control of the
flow of the water in and out of the spaces of the cylinder. But
in
Page 149 U. S. 60
the defendant's meter, the valves are adapted to the peculiar
motion of the defendant's piston and the peculiar separation of
discharging and receiving spaces, characteristic of that meter, and
not at all to any such structure as is required by the Nash
reissue.
In the Nash reissue, it is required that, to get the best
results,
"the valve should open and close its inlet and outlet ports in
succession, in such a manner as to keep the line of pressure as
nearly as possible at right angles to the direction of the motion
of the piston,"
and the specification explains:
"By the 'line of pressure' I mean a line connecting the points
of division which separate the inlet from the outlet spaces,
c, of the cylinder, as shown by the line,
z, in
Fig. 12, and by a 'line of motion' I mean a line which is tangent
to the path of the axis of the piston at any point of such path, as
shown by the arrow,
y, in said figure."
But such a requirement, interpreted by the definitions given, is
meaningless when applied to the defendant's meter.
In the Nash reissue, it is stated that "in the use of the meter
the inlet may become the outlet, and
vice versa." But in
the defendant's meter, the inlet must always be the inlet, and by
no possibility can it be made the outlet; and, while the Nash meter
may be run in either direction, the defendant's meter would be
inoperative if the inlet became the outlet, and
vice
versa.
It is clear to us that there is no infringement, and that the
decree of the circuit court must be
Affirmed.