1. A party who invents a new machine never used before and
procures letters patent therefor acquires a monopoly as against all
merely formal variations thereof, but if the advance towards the
thing desired is gradual and proceeds step by step, so that no one
can claim the complete thing, each inventor is entitled only to his
own specific form of device.
2. Double brakes, operating upon the two trucks of a railroad
car at the same time, by a single force through the medium of
connecting rods, had been publicly used before Thompson and
Bachelder invented the Tanner brake. Only the specific improvement
which they made could therefore be covered by the letters patent
for that brake. The latter were not infringed by the Stevens brake,
for which letters patent No. 8552 were issued Nov. 25, 1851, though
it was invented after the Tanner brake, inasmuch as it is another
and different specific form of brake. The parties are entitled to
the specific improvement they respectively invented, provided the
later does not include the earlier.
3. Though the double brakes used before the Tanner brake was
invented may have been much less perfect than it, and may have been
superseded by it and by other improved forms of brake, nevertheless
they were actually used, and to some good purpose. Their
construction and use, though with limited success, were sufficient
to contravene the pretension of Thompson and Bachelder that they
were the pioneers in this department of invention.
4. The original application for a patent made by Thompson and
Bachelder was filed in the Patent Office in June, 1847. Having been
rejected, it remained there unaltered until 1852, when it was
considerably amended, and letters patent No. 9109 were, July 6,
1852, granted thereon to Tanner, as assignee.
Held that no
material alterations introduced by such amendments could avail as
against parties who had introduced other brakes prior thereto.
5. The original application for letters patent (with its
accompanying drawings and model), filed by an inventor, should
possess great weight in showing what his invention really was,
especially where it remains unchanged for
a considerable period and is afterward amended so as to have a
broader scope. Amendments embracing any material variation from the
original
Page 97 U. S. 555
application -- anything new, not comprised in that -- cannot be
sustained on the original application and should not be allowed;
otherwise, great injustice might be done to others who may have
invented or used the same things in the meantime.
6. The law does not permit enlargements of an original
specification any more than it does where letters patent already
granted are reissued. It regards with jealousy and disfavor any
attempt to enlarge the scope of an application once filed or of
letters patent once granted, the effect of which would be to enable
the patentee to appropriate other inventions made prior to such
alteration or improvements which have gone into public use.
The facts are stated in the opinion of the Court.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
This suit was commenced in the circuit court in December, 1861,
by bill in equity filed by Thomas Sayles, the appellee, on letters
patent No. 9109, for an improvement in railroad car brakes, issued
on the sixth day of July, 1852, to Henry Tanner, as assignee of
Lafayette F. Thompson and Asahel G. Bachelder. The bill charged
that the Chicago and Northwestern Railway Company, from the 1st of
June, 1859, to the time of filing the bill, infringed, and was
still infringing, the said patent, of which the complainant had
become the owner, and prayed for an injunction and an account of
profits received by the defendant from the use of the invention
patented.
The defendant answered, setting up prior invention and use by
others of the improvement claimed and denying infringement.
After proofs taken, a decree was rendered for the complainant in
February, 1865, and a reference ordered. This decree was afterwards
opened, and the defendant was allowed to introduce newly discovered
evidence. A decree was again rendered for the complainant in July,
1871, and reference again ordered. The master reported profits
received by the defendant for the period of five years, from June
2, 1859, to June 2, 1864, to the
Page 97 U. S. 556
amount of $63,638.40, being $41,280 for saving in wages of
brakemen and $22,358.40 for saving in car wheels. A decree was
rendered for the whole amount in December, 1873, but on a further
rehearing in September, 1875, the item for saving on car wheels was
apparently thrown out, and the decree was reduced to the sum of
$47,725. From this decree the present appeal is taken. The counsel
for the appellee now concedes that, in the light of our decision in
Mowry v.
Whitney, 14 Wall. 620, the principle adopted by the
master was not correct, and consents that the decree be further
reduced to the sum of $24,768, with interest from the date of the
report.
The evidence in the case is very voluminous, especially in
reference to the question of priority of invention, and would be
well calculated to present questions of much embarrassment and
difficulty for our determination if we felt obliged to pass upon
the validity of the patent. But as we are satisfied that the
Stevens brake used by the defendant is not an infringement of the
plaintiff's patent, we are relieved from that unpleasant and
difficult duty, involving the weight of evidence given by witnesses
speaking to facts and occurrences long past, and often in direct
conflict with each other.
At the time when the complainant alleges that Thompson and
Bachelder completed the invention for which the letters patent on
which the suit is brought were granted, namely, in 1846 and 1847,
double trucks under railroad cars had come into general use in the
country, and it was a desideratum to have a brake, or system of
brakes, which could be operated from either end of the car upon the
wheels of both trucks, and a number of inventors were in the field
contriving and testing their various devices. Like almost all other
inventions, that of double brakes came when, in the progress of
mechanical improvement, it was needed and being sought by many
minds, it is not wonderful that it was developed in different and
independent forms, all original and yet all bearing a somewhat
general resemblance to each other. In such cases, if one inventor
precedes all the rest and strikes out something which includes and
underlies all that they produce, he acquires a monopoly and
subjects them to tribute. But if the advance towards the thing
desired is gradual and proceeds step by step,
Page 97 U. S. 557
so that no one can claim the complete whole, then each is
entitled only to the specific form of device which he produces, and
every other inventor is entitled to his own specific form, so long
as it differs from those of his competitors and does not include
theirs. These general principles are so obvious that they need no
argument or illustration to support them. We think they are
specially applicable to the case before us.
The patent sued on was granted on the sixth day of July, 1852.
It was not the first patent granted for double car brakes. A patent
for such a brake had been granted to one Charles B. Turner on the
14th of November, 1848; another to Nehemiah Hodge, Oct. 2, 1849;
and a third to Francis A. Stevens, Nov. 25, 1851; and double acting
brakes had been constructed by other persons before any of these
patents were issued. The patent granted to Tanner antedates the
other patents referred to by reason of its being issued upon an
application for a patent made by Thompson and Bachelder on the 29th
of June, 1847. It is alleged by the complainant that Thompson and
Bachelder completed their invention as early as the fall of 1846,
and made a model of it in January, 1847, a copy of which is put in
the case. The application filed by them in the Patent Office in
June, 1847, is the first authentic evidence of a public character
of what their invention was. A copy of this application and of the
drawings and model by which it was accompanied have been exhibited
in evidence, and necessarily constitute an important feature of the
case. Being regarded as defective and insufficient by the Patent
Office, no patent was granted at the time, and the application lay
dormant and without alteration for the space of five years, when,
being purchased by Tanner, and being considerably modified and
changed, the letters patent now in question were issued to him as
assignee of Thompson and Bachelder. It is obvious that the original
exhibit of the invention made by them, and remaining so long in the
Patent Office unchanged, should possess great weight as to what
their invention really was and what they claimed it to be.
Of course their object was to connect the brakes of the two
trucks together in such a manner as to make them operate together
by the application of force at either end of the car. This force
they proposed to apply either by hand at the windlass
Page 97 U. S. 558
on the platform or by the bumpers when the train was slowed and
the cars came together. The latter seems to have been their
favorite plan, and to effect it was one of the principal objects of
their improvement.
The system of brakes attached to each truck was not materially
changed by them. An upright lever in the center of the truck was so
connected with the brakes on both pair of wheels as to draw them
tightly to the wheels when its upper extremity was forced inward
towards the center of the car. To this upper extremity of the lever
the external force was applied when the brakes were to be put on.
The inner end of the bumper being attached thereto, produced the
desired effect when the bumper was pushed in by the adjoining car.
The same effect was produced by winding up the windlass by hand, by
means of a chain and pulley working from a point inside of the
lever -- that is, nearer to the center of the car.
The next point was to communicate this movement of the brakes in
one truck to those of the other by some device that would cause the
upper extremity of the lever in the latter to be drawn inward,
towards the center of the car, at the same time that the lever on
the first truck was forced inward; a simple rod connecting them
together would not do this, but it would have the contrary effect.
The upper extremities of the two levers must be so connected that,
upon the application of force, they would approach each other, each
being forced inwardly towards the center of the car. To effect
this, Thompson and Bachelder proposed a device constructed
substantially as follows: under the center of the car body they
attached thereto, by a pivot, a vibrating horizontal lever,
situated midway between the trucks, and arranged crosswise of the
car. To the outer ends of this lever were attached connecting rods,
one of which extended to and connected with the truck lever on one
of the trucks and the other extended to and connected with the
truck lever on the other truck. By this arrangement, when one of
the truck levers was forced inward towards the center of the car,
it would push back the connecting rod attached to it and cause the
vibrating lever to revolve on its pivot and thus draw the other
connecting rod towards the center from the other direction and
force the truck lever on the other truck
Page 97 U. S. 559
inward at the same time. Thus, when the windlass was wound up at
either end of the car, it had the effect of operating the brakes on
both trucks by pushing one connecting rod at the same time that it
worked the truck lever, and simultaneously pulling the other
connecting rod. The bumpers produced the same effect by having
gains cut into their sides for receiving the upper arms of the
truck levers and thereby forcing them inward when driven inward
themselves. A long iron rod extended the whole length of the car,
which was provided with a device for forcing the truck levers out
of the gains in the bumpers when it was desired to ease the
brakes.
Such, substantially, was Thompson and Bachelder's brake
according to the description thereof deposited and left by them in
the Patent Office. In the new application, filed in their name by
Tanner in 1852, the bumper arrangement was left out entirely, and,
as before stated, considerable modifications were introduced. The
connecting rods were attached to the vibrating lever nearer to its
pivot and two additional rods were applied to the outer ends of
this lever, extending respectively to the two windlasses at either
end of the car, being used for the purpose of working the lever,
and the parts were so arranged as to supply the power by drawing or
pulling both of the connecting rods, instead of pushing one and
pulling the other.
Now in 1847, when Thompson and Bachelder filed their application
for a patent, and in 1846, when it is said they completed their
invention, double brakes were already in existence, formed as
theirs was (though not in the same manner) by connecting together
the movements of the two systems of truck brakes, so that one
brakeman, at either end of a car, could apply the brakes to both
trucks at the same time.
Without noticing those inventions, the dates of which are
disputed, it is sufficient to refer to two instances in point, the
existence of which before 1846 cannot be seriously controverted. We
refer to those known as the Springfield brake and the Millholland
brake. These brakes may not have been, and were not, so perfect as
that of Thompson and Bachelder and others constructed at a later
period, but they were used, and used successfully -- sufficiently
so, at least, to have sustained patents for the inventions, had
patents been applied for.
Page 97 U. S. 560
The Springfield brake was made by one Harris in 1842 or 1843,
and placed on a long platform car for carrying freight crates on
the Western Railroad of Massachusetts. Each truck was provided with
two levers, one to each of the brakes, and these levers were
connected together by a rod which caused them both to be operated
at the same time by the windlass which was connected by a short
chain to the nearest one. A long rod connected one of the levers of
the other truck to the same windlass by means of another chain, so
that when the windlass was worked, it wound up both chains and
operated the brakes on both trucks simultaneously. A like
arrangement was connected with the windlass at the other end of the
car. Each windlass could thus be made to operate the brakes of both
trucks.
This brake was used, as we gather from the evidence, for a year
or two, until the car was broken up. It was undoubtedly attended
with some inconveniences in its operation, especially in going
around sharp curves, but this did not prevent it from being used,
and on a straight track or on a track having only slight curves it
operated very satisfactorily. In 1856 and 1857, when some
difficulty arose about the right to use another brake, the
employment of this Springfield brake was resumed for more than a
year on the passenger cars of the same railroad, with only the
slight and obvious modification of attaching the long connecting
rod to a lever in each of the trucks instead of attaching it to the
windlass at one end of the car and to a lever in the truck at the
other end.
It is useless to argue that this brake was an imperfect one or
that it worked far less satisfactorily than the Tanner or other
brakes. It did work, and under favorable circumstances worked as
well as the most improved form of brakes.
The same brake with only a single windlass was applied to
tenders (which require and admit of only one windlass) as early as
1841, and continued to be thus used to the time of this
litigation.
The Millholland brake approached much nearer in its mode of
operation to the Tanner brake than did the Springfield. According
to the testimony, it was placed on a passenger car of the Baltimore
and Susquehanna Railroad in or about the year
Page 97 U. S. 561
1843, and was continued in use for a considerable period -- one
witness says, a year or eighteen months. It was taken off because
the brakemen were opposed to it inasmuch as it had to be worked by
hand by means of a windlass, whilst they were used to brakes that
were operated by the foot. Whilst used, however, it worked with
entire success. It is thus described by the inventor, James
Millholland, in his testimony. He says:
"It broke upon all the eight wheels from either end of the car;
the brakes were operated by means of a drum placed under the car,
about the center; there were connections running from this drum to
the levers on each truck, and also from the drum to the windlasses
of the car."
He then describes the manner in which the connecting rods were
attached to the truck lever, and their mode of operation. It is
apparent from this description that the drum performed almost
precisely the same office which is performed by the vibrating lever
in the Tanner brake, operating, by means of the connecting rods,
upon the brakes in nearly the same manner.
In 1846, Millholland applied a double brake somewhat like the
last named to car tenders, using a rock shaft with an arm on it
instead of the drum as a means of connecting the brakes to the two
trucks. This brake was continued in use for many years.
The subsequent invention of double brakes of improved and better
forms superseded these early brakes, it is true, so that, excepting
the modified forms in which they were applied to tenders and
excepting the temporary resuscitation of the Springfield brake in
1856 and again in 1871, they went entirely out of use. But their
construction and use, though with limited success, are sufficient
to show that Thompson and Bachelder were not the pioneers in this
field of improvement and that they were not the originators of the
double brake, nor of the use of rods, chains, and similar
appliances for connecting the brake systems of two trucks under a
car. They invented a particular apparatus for doing the desired
work, and they can only claim their particular apparatus or that
which is substantially the same.
This brings us to the question whether the apparatus used by the
defendant, and known as the Stevens brake, for which letters patent
No. 8552 were issued to him Nov. 25, 1851, is substantially
Page 97 U. S. 562
the same as Thompson and Bachelder's, or whether it contains in
it any thing substantially the same.
Now the Stevens brake has no vibrating lever between the trucks,
as the Tanner brake has, for the purpose of reversing the motion
communicated from one truck system to the other and causing the
truck levers to move in opposite directions -- that is, towards
each other when the brakes are put on and away from each other when
the brakes are relieved. This is a marked feature in the Tanner
brake, and one on which stress is laid in the original application.
The parts particularly pointed out by Thompson and Bachelder as
their improvements, exclusive of those connected with the bumpers,
are only these three -- namely the vibrating lever, the two rods
connected therewith, and their connection with the truck levers.
They speak of their improvement as "an improvement upon the car
brake now in general use," expressly disclaiming its original
invention. This language is somewhat vague, but it sufficiently
indicates that they regarded their improvement as consisting in
their particular apparatus for effecting the desired result. The
claim of the patent as finally issued to Tanner is only for so
combining the brakes of the two trucks by means of the vibrating
lever, or its equivalent, or mechanism essentially as specified
(and no other is specified), as to enable the brakeman operating
the windlass at either end of the car to simultaneously apply the
brakes of both trucks.
Now the apparatus for effecting the same purpose in the Stevens
brake is essentially different from this. As before stated, it has
no central vibrating lever at all, and, as we think, no equivalent
of it. It connects the brakes of the two trucks by a single
straight rod, extending from the truck lever connected with the
outside brake of one truck to the lever connected with the outside
brake of the other truck. This outside lever in each truck is
connected, by a rod running across and under the axles of the
truck, with a similar lever attached to the inner brake of the same
truck, and that again is connected with the windlass by another rod
running back over the axles of the truck, thus establishing a
direct and continuous connection from one windlass to the other
between all the brakes in both trucks, so that when either windlass
is wound up (the
Page 97 U. S. 563
other being held by a ratchet), it winds up and tightens the
whole system of brakes on both trucks. In Stevens' arrangement, the
separate trucks have two levers, it is true -- one attached to each
brake -- and it is contended by the complainant's counsel that one
of these levers on each truck is equivalent to one-half of the
vibrating lever in the Tanner brake. But this supposed equivalency
is, in our judgment, too far-fetched and imaginary. The levers
referred to are no ways different, in form or mode of operation,
from ordinary brake levers, and the use of two levers on a truck
was not new, having been employed in much the same way in the
Springfield brake. They belong to the trucks to which they are
respectively attached, having no pivotal or fulcral connection with
the body of the car, as Tanner's vibrating lever has. In a word,
the construction and mode of operation of the Stevens brake are
altogether so different from that of Thompson and Bachelder's, or
Tanner's, that, considering the state of the art at the time when
the latter was produced and the necessary limits by which the
Tanner patent must be circumscribed, we think that the two are to
be regarded as independent inventions, each being limited and
confined to the particular contrivance which constitutes its
peculiarity.
Having come to this conclusion, it is unnecessary to consider
the other questions in the cause.
It will be observed that we have given particular attention to
the original application, drawings, and models filed in the Patent
Office by Thompson and Bachelder. We have deemed it proper to do
this because if the amended application and model, filed by Tanner
five years later, embodied any material addition to or variance
from the original -- anything new that was not comprised in that --
such addition or variance cannot be sustained on the original
application. The law does not permit such enlargements of an
original specification, which would interfere with other inventors
who have entered the field in the meantime, any more than it does
in the case of reissues of patents previously granted. Courts
should regard with jealousy and disfavor any attempts to enlarge
the scope of an application once filed, or of a patent once
granted, the effect of which would be to enable the patentee to
appropriate
Page 97 U. S. 564
other inventions made prior to such alteration or to appropriate
that which has in the meantime gone into public use.
The decree of the circuit court will be reversed and the cause
remanded with directions to enter a decree dismissing the bill of
complaint, and it is
So ordered.