Where a decree to which he is privy has established the right of
a manufacturer to sell an article, there is force in the argument
that such right should be recognized in another suit against his
customer and defended by him.
Kessler v. Eldred,
206 U. S. 285.
Devices used in connection with team railway cars are not
patentable
Page 215 U. S. 528
as new inventions when applied to street railway cars, even
though a long time may have elapsed between their first use and
their application to streetcars.
Where the claim is very narrow, as in this case, there is little
room for the doctrine of equivalents.
30 App.D.C. 255 affirmed.
The facts are stated in the opinion.
MR. JUSTICE HOLMES delivered the opinion of the Court.
This is a bill in equity to restrain the infringement of a
patent. The suit is brought against a party that is alleged to have
used the patented device, but it is defended by the Peckham
Manufacturing Company, the vendor, which is a successor by purchase
to the Peckham Motor Truck & Wheel Company. The principal claim
now relied upon was declared void in
North Jersey St Ry. Co. v.
Brill, 134 F. 580, reversing the decision of the circuit
court, 124 F. 778, 125 F. 526, a suit brought by the same
plaintiff, and said to have been defended by the Peckham Motor
& Truck Company. (On the authority of that case, a preliminary
injunction against the present defendant was refused in 135 F.
784.) If the first Peckham Company was privy to the decree
declaring the patent void, there would be great force in the
argument that that decree established, as against the plaintiff,
the right of the Peckham Manufacturing Company to make and sell the
patented article, and that the right ought to be recognized in a
suit against its customer, defended by it.
Kessler v.
Eldred, 206 U. S. 285,
206 U. S.
288-289.
Page 215 U. S. 529
It is unnecessary to decide that question, because the formal
proofs are wanting; but, on the obvious facts, we should be
unwilling to come to a different conclusion from that reached in
the earlier litigation and again in the present suit unless it was
impossible to avoid the result. With these preliminaries, we
proceed to the merits of the case.
The present form of car used on the electric street railways is
a long car, resting by pivots upon two four-wheeled trucks. The
plaintiff makes a truck of this sort and has a parent and a
divisional patent for "Improvements in Car Trucks for Motor
Propulsion and the Like," dated June 27, 1899, and numbered
respectively 627,898 and 627, 900. The arrangement in actual use
may be described as follows, nearly in the plaintiff's words: the
side frames are connected near the middle by two parallel metal
crosspieces or transoms, having space enough between them to allow
another parallel piece, called the bolster, to move vertically,
occupying the space between with but slight play. The car body
rests on a pivot in the middle of the bolster. The ends of the
bolster rest on the top of semi-elliptic springs parallel to and
below the sides of the truck. The ends of the springs, in their
turn, rest on two spring links hanging from the sides of the truck,
near the axles. More specifically, they are supported on the bottom
of metal bands or stirrups which surround and hang by their tops on
spiral springs each of which is attached underneath to a metal bolt
running up through its middle and connected at the top with the
frame of the truck by a ball-and-socket joint. That is to say, the
pin passes up through the frame, in which is a conoidal aperture to
give it play in all directions, and the head of the pin is
hemispherical, seated in a like recess in the frame.
The claims relied upon are the following: In number 627,898, the
parent patent,
"13. The combination in a car truck of the side frames, the
semi-elliptic springs movably and resiliently suspended from the
side frames, and a bolster secured to said springs, substantially
as described. "
Page 215 U. S. 530
"81. The combination in a car truck of the side frames, the
semi-elliptic springs, a cross-bolster resting on the semi-elliptic
springs, links, and springs combined with said links, said links
deriving their support from the side frames, and connecting the
ends of the semi-elliptic springs with the side frames,
substantially as described."
In 627,900, the divisional patent,
"13. In a car truck, the combination with the side frames of the
links comprising bolts pivoted between their ends, said links being
pivotally suspended from the side frames, longitudinally disposed
semi-elliptic springs secured to the lower end of said bolts, a
cross-bolster resting on said springs, and further springs included
in the link suspension of said semi-elliptic springs, substantially
as described."
"14. In a car truck, the combination with the side frames of the
cross-bolster suspended below the side frames by semi-elliptic
springs and pivotal links, said links comprising a plurality of
sections pivotally secured together, and further springs combined
with said links to elastically suspend said semi-elliptic springs
from the side frames, substantially as described."
"15. In a car truck, the combination with the side frames of the
cross-bolster suspended below the side frames by semi-elliptic
springs and articulated and pivotal links, said links comprising a
plurality of sections pivotally secured together, and spiral
springs about and combined with said links to elastically suspend
said semi-elliptic springs from the side frames, substantially as
described."
"17. The combination in a car truck having an upper chord, of
the longitudinally disposed semi-elliptic springs, a transverse
bolster supported upon said springs, links depending from and
flexibly supported on said upper chord and passing through enlarged
apertures therein, said links being articulated between their ends,
the ends of the semi-elliptic springs being supported upon the
lower articulation of said links, substantially as described. "
Page 215 U. S. 531
The parent patent contains the following disclaimer:
"The location of the semi-elliptic springs outside of the wheel
gage on each side of the truck, together with the location of the
links for supporting the semi-elliptics closely adjacent to the
axle boxes, and the swinging of said springs from the truck frame
from such points, gives a better support for the car body than does
the usual link-hung bolster supported from the truck transoms
within the wheel gage. These general features of construction,
however, are embraced in an application filed by Samuel M. Curwen
and myself on the 3d of November, 1896, Serial No. 610,902, and
therefore I do not claim the same herein."
The answer denies the validity of the patents, setting up a
large number of earlier ones, and also denies infringement. There
was a trial in the Supreme Court of the District, upon which a
decree was rendered dismissing the bill. The decree was affirmed by
the court of appeals, 30 App.D.C. 255, and an appeal was taken to
this Court.
It is difficult to put one's finger with certainty upon what the
plaintiff claims. It certainly is not the total combination of a
successful truck. Mr. Bill, the inventor and the plaintiff's
assignor, is pictured as playing a large part in the development of
street railway trucks, but whether that be true or not, his share
in the invention of the truck that we have described, so far as the
present patent, at least, is concerned, must be, at best, but very
small. It is insisted, to be sure, that the case is not affected by
inventions for use with steam railroad cars, because of the
different requirements upon street roads. Cars for the latter use
must be low-hung to make getting in and out easy, must accommodate
the motors hung upon the axles, must be adapted to short curves,
and so forth. But these differences are not of universal effect;
indeed, this patent is not confined to streetcars. The suspension
of the car body upon a semi-elliptic spring hung from the side
frame of the truck by a jointed hanger, with most of the
characteristics of the present patent, as disclosed in a patent to
Thyng in 1845, was
Page 215 U. S. 532
obviously as available for street as for steam railways, and the
use of these features by Brill was not a patentable invention. The
use, on the modern long car, of two four-wheeled pivotal trucks
with a short wheel base and wheels of equal diameter, which support
the car body by a pivot on a bolster between the axles, resting on
semi-elliptic springs, was not peculiar to Brill. It was described
in a patent to Taylor, October 31, 1895, No. 507,855. Brill's
specification disclaims at the outset the general features of the
truck it describes. Indeed, it hardly is denied that every element
in the combination was well known in the construction of railway
cars.
We are not dealing with a new type of trucks, but with certain
features only. At the argument it was admitted that the plaintiff's
case must stand or fall on claim 13 of No. 627,898. In that claim,
the only possible element of novelty is the mode in which the
semi-elliptic springs are suspended from the side frames. In
practice, the links are elastic and the pins on which the whole
combination hangs have a universal ball-and-socket movement,
although the claim only says "movably and resiliently suspended . .
. substantially as described." Neither "movably" nor "resiliently"
indicates the ball-and-socket arrangement, but it is described in
the specification, and we give the plaintiff the benefit of the
doubt. We agree, however, with the circuit court of appeals that
the substitution of a ball-and-socket movement for the movement in
one direction of the Thyng link, coupled, as it was, with a slight
longitudinal play, required a minimum of invention. A link having
universal movement was patented by Beach in 1876. The plaintiff's
witness, Akarman, says that there always has been provision made
for lateral and longitudinal motion in every well constructed
truck. Spring links to support semi-elliptic springs were old; it
is unnecessary to recite the patents in which they appear. The
mention of "the usual link-hung bolster" in the disclaimer
indicates the indisputable fact. We also agree with the other court
that the disclaimer in favor of Brill and Curwen is a solemn
admission of the priority of the
Page 215 U. S. 533
devices claimed by them. It certainly covers the collocation of
the spring links and semi-elliptic springs. One of the claims of
Brill and Curwen is:
"12. The combination in a car truck of the side frames, the
equalizing-bars movably and resiliently suspended from the side
frames, and a bolster supported on said equalizing-bars,
substantially as described."
It is said that the Brill patent did not follow the Thyng
invention for more than fifty years. The answer is that for most of
that time it was not wanted. Very soon after the change in street
railway travel required it, it came.
If the plaintiff's claim could be sustained, which we cannot
admit, it would be confined to the specific form of link described.
There would be little room for the doctrine of equivalents. The
defendant's device does not use a ball and socket, but uses a rigid
link supported by a relatively unyielding spiral spring in the
frame of the truck, and does not infringe the very narrow claim
which is the most that, in any view, could be allowed.
Decree affirmed.
MR. JUSTICE McKENNA dissents.