ELECTRIC PROTECTION CO. v. AMERICAN BANK PROTECTION CO.; AMERICAN BANK PROTECTION CO. v. ELECTRIC PROTECTION CO. et al., 184 F. 916

REED, District Judge. The first of these cases is an appeal by .the Electric Protection Company, a Minnesota corporation, from an interlocutory decree granting an injunction and an order for an accounting in a suit of the American Bank Protection Company, also a Minnesota corporation, against it and certain of its stockholders and directors for an alleged infringement of claims 18 and 20 of reissued letters patent No. 11,626, to Clyde Coleman and others August 17, 1897, and claims 1, 2, 3, 7, 8, and 10 of patent No. 708,496, issued to Robinson & Green September 2, 1902.

The second is an appeal by the complainant, the American Bank Protection Company, from so much of the decree as dismissed the bill as to the individual defendants, stockholders and directors of the Electric Protection Company, and three of the patents sued upon, viz., Nos. 626,670, 771,749, and 880,020. The appeal of the defendant the Electric Protection Company may be first considered. Its defenses are invalidity of the patents and noninfringement. The reissued letters patent No. 11,626 is for certain improvements in electrical burglar alarms, the original patent for which was issued November 10, 1896.

Briefly stated the alleged invention is for improvements in an electrical alarm system whereby bank vaults and similar structures are surrounded and protected by electrical conductors and devices which, in combination with a time mechanism, are intended to give alarm if attempt is made to enter the vault or protected structure at other than predetermined hours, or to injure or cripple the system at any time so as to render it inoperative. The claims involved in this appeal are: “18.

The combination with a structure or district inclosed and surrounded by electrical conductors, of an electric protective circuit or circuits including said conductors, an alarm device controlled thereby at a distance from the protected structure and time mechanism inclosed within the electrical barrier at the protected district for throwing off the alarm to permit access to the guarded structure, substantially as described.” “20.

The combination with a structure to be guarded and a housing, of an electrical alarm system having its parts so disposed as to protect both the structure to be guarded and the housing and cause an alarm to be sounded if either of them is entered, the alarm proper being arranged within the protected housing, and all other parts of the system that may be manipulated or injured • so as to cripple the system being arranged within either the structure to be guarded or the protected housing, and time mechanism inclosed within the guarded structure for throwing off the alarm to permit access to the guarded structure, substantially as described.” The invention secured by these and other claims of the patent includes within the combination, time mechanisms for controlling the opening and closing of the main and alarm circuits at predetermined hours.

The prior patents in evidence disclose that safes, vaults, and other structures were protected by electric alarm systems long prior to the application for this patent; also that clocks or other time mechanisms for automatical^ permitting the opening and closing of the doors of the protected structures at fixed hours, without causing an alarm, are a distinct feature of a number of such patents.

The Walters patent of May, 1873, No. 138,965, discloses an electrical device in combination with clock mechanism for giving an alarm when the electrical circuit is broken; also a device operated by a time piece that prevents an alarm being given after a certain hour, thus preventing an alarm when the house or other protected structure is rightly open for use. The specifications also disclose that the system may be used in connection with safes, bank vaults and other similar structures.

The Yeakle & Steuart patent, No. 370,439 (1887), is for an electric alarm system, which includes a time mechanism * for automatically opening and closing the electrical alarm -circuits at predetermined hours. The patents to Pierce, No. 287,775 (1883) and No. 322,317 (1885), are for improvements in electric time locks, whereby the doors of safes or like structures may be automatically locked and the safe or other protected structure closed against entry until a fixed time.

The specifications and drawings show the clock mechanism to be placed upon the inner side of the safe door and beyond the reach of manipulation while the door is closed. The Stern patent, No. 315,108 (1886), is for an electric burglar alarm in which the premises or structure to he guarded or protected is in electrical connection by means of insulated braided wires with an alarm station-separate and distinct from the protected premises in which an alarm will be immediately sounded at the alarm station if the connecting wires are broken or cut.

The Smith patent, No. 251,071 (1881), is for an electric alarm system to prevent cabinets or other places where money or other valuables are kept from being burglarized without sounding an alarm. The Shivler patent, No. 197,416 (1887), is for improvements in electric burglar alarms for protecting safes, vaults, and like structures, and includes clockwork and mechanism driven by such clockwork for automatically opening and closing the alarm circuit at predetermined times.

The Holmes patent, No. 63,158 (1867), is for eiectro-magnetic circuit breaking clocks, whereby the electrical circuits may be opened or closed at predetermined times. Other patents disclose similar devices. Mr. Coleman is conclusively presumed to have known of all of these prior patents at the time of his alleged invention and when he applied for a patent therefor. Mast-Foos & Co. v. Stover Manfg. Co., 177 U. S. 485, 493, 494, 20 Sup. Ct. 708, 44 L. Ed. 856.

They clearly show the use of electric alarms for the protection of bank safes, vaults, and similar structures with time mechanisms in combination therewith for automatically operating the system and opening and closing the alarm circuit whereby an alarm may or may not be sounded during predetermined hours, or periods of time. It may he that Mr. Coleman’s invention, other than as shown in claims 18 and 20 of this patent, differs substantially from those of the prior patents. If so, he has presumably secured his invention therefor by such other claims, which are not involved in this appeal.

The feature of claims 18 and 20, which distinguishes each from tlie other claims, is the location of the time mechanism “within the electrical barrier at the protected district” which, under the specifications, means the “guarded housing” at the alarm station, or “within the guarded structure” itself. Claim 2 of the patent includes, “suitable time mechanism” for operating a switch common to the main and alarm circuits hut does not limit the location of such mechanism to any particular place within the system.

Claims 5, 6, and 16 also include time mechanism for operating a switch common to the main and alarm circuits and each limits the location o f such time mechanism “within the guarded structure.” These claims are not involved in this appeal, and no opinion need be, or is, expressed as to their validity.

The exact location of the time mechanism within his system is apparently not regarded by Coleman as an essential element of Ms invention, for, in the specification referring to the switch which operates the alarm and main electrical circuits, he says: “It may be operated manually, but I prefer to operate it automatically by means of some suitable mechanism.” To this end he shows a time piece so arranged with the electrical mechanism that it will break and re-establish the main and alarm circuits at a predetermined time, and says: “It would not be desirable to place within the guarded housing the clock or other mechanism for automatically operating the switch, for the reason that it would be inconvenient to get at it to wind it; for this reason I prefer to place the time mechanism within the guarded structure and to connect it with the switch operating mechanism by means of wires with the wires of the main circuit” It is entirely plain that the clock or other time mechanism could be connected by- wires with the main circuit wires if it is conveniently located at any place within the system, and its location in any particular system is a matter of convenience only to be determined in constructing the particular system.

Claim 3 of the Yeakle & Steuart patent is as follows: “In an electric burglar-alarm, a local battery circuit used for the lacing, or an equivalent of the lacing, of a place to be guarded, in which is included a circuit breaker connected with and operated by a time mechanism which, acts to break the local circuit automatically at predetermined intervals, in. combination with a time mechanism and a main line by the devices in the local battery circuit.” The attention of Mr.

Carter, complainant’s expert, was called to this claim and he was asked if it did not suggest that the clock mechanism is to be placed within the guarded structure.

He answered: “I would not be able to conclude from this claim alone whether the cloek mechanism was intended to be included within the guarded structure or not, but from an examination of the drawings of the patent, I think the patentee leaves it open to place the clock mechanism within the guarded structure if desired.” It would of course be desirable that the time mechanism which controls the opening and closing of the alarm circuits should be protected from unauthorized interference as well as any other part of the system.

This would readily suggest itself to any one skilled, or unskilled for that matter, in the art of constructing these systems, and is in fact suggested inferentially at "least by the claim of the Yeakle & Steuart patent above quoted. The location of the clock or other, time mechanism within the vault or guarded structure does not, therefore, in our opinion, arise to the dignity of invention, and claims 18 and 20 of this patent which so locate the same are void.

The Circuit Court sustained claims 1, 2, 3, 7, 8, and 10 of the Robinson & Green patent No. 708,496, and held that they were infringed by the corporate defendant. This patent is for improvements in burglar-alarms and relates particularly to an alarm-gong to be placed outside of the safe or vault to be protected, in combination with a shield inclosing the same, which if removed, or attempted to be, from its position, will cause an alarm to.be sounded. Figure 2 of the drawings illustrates the system, and is as follows: The claims involved in this appeal are: “1.

The combination in a burglar-alarm, with a suitable gong located out-. side of the vault, safe or other receptacle or apartment to he protected, of a shield inclosing said gong and means for closing an electric circuit that causes said gong to be sounded upon the moving of said shield, substantially as described. “2. The combination in a burglar-alarm, with a suitable gong, of a shield inclosing said gong, a tube supporting said shield and means connected with said tube for closing an electric circuit upon the moving of said shield, substantially as described. “3.

The combination with the wall of the vault, safe or other receptacle, of an alarm-gong located on the outside thereof, a shield inclosing said gong, a tube supporting said shield and extending through said wall and means connected with said tube for closing an electric circuit upon the movement of said shield and tube, substantially as described.” “7.

The combination in a burglar-alarm, with a suitable gong located outside of the vault, safe or other receptacle or apartment to be protected, of a shield inclosing said gong, an electric circuit in which said gong is located and means for causing said gong to be operated through said circuit upon the moving of said shield, substantially as described. “8.

The combination, with the wall of the vault, safe or other receptacle, of a suitable gong or alarm located on the outside of said wall, an electric circuit in which said gong is located, a shield inclosing said gong and means for closing said electric circuit, and thereby operating the said gong or alarm', upon the moving of said shield, substantially as described.” “10.

The combination with a vault, safe or other receptacle of a-suitable gong or alarm located outside of said receptacle, a shield inclosing said gong and means located within said vault, safe or receptacle for operating said gong upon the moving of said shield.” Each of these claims is for a combination, but claims 1, 2, 7, and 10 do not include the wall of the vault as a part thereof. Claims 3 and 8 each includes such wall. Under claims 1, 2, 7, and 10 the location of the gong and its protecting shield might as well be upon the wall of the building in which the vault is located as upon the wall of the vault.

Each of the claims contains the words, “substantially as described,” and the drawings and specifications show that the gong, 4, and its protecting shield, 5, are to be placed upon the outer wall, 1, of the vault. A fair

interpretation of the claims, in connection with the drawings and specifications, requires that they be so located. The drawings also show that the shield is held in position by the tube, 8, set into the lug, 7, upon its inner or concave surface, extending thence through an insulated sleeve or bushing, 2, in an opening in the wall to the interior of the vault, and that the means for sounding the gong, if attempt be made to remove the shield, are located within the vault.

The patent comes late in the art, is for specified improvements that show a slight advance, if any, over the prior patents, in particular those to Duncan & Rowell, No. 109,193 (1870), and No. 129,913 (1872); to Haseltine, British patent, No. 3,108 (1871); to Freed, No. 626,684 (1899) and No. 667,123 (1901), and perhaps others. The invention, conceding it to be such, is therefore within a narrow compass, and its range of equivalents should be correspondingly limited. Boyd v. Janesville Hay Tool Co., 158 U. S. 260, 15 Sup. Ct. 837, 39 L. Ed. 973; Knapp v. Morss, 150 U. S. 221-228, 14 Sup. Ct. 81, 37 L.

Ed. 1059; National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693-710, 45 C. C. A. 544. When an invention is a primary one, and the inventor a pioneer in the art to which it relates, he is justly entitled to a wide range of equivalents; but when it is for a slight improvement upon prior efforts which have met with more or less success, its range of equivalents should be correspondingly limited; and when the patent is for described means or mechanism to accomplish a specified improvement, it will be limited to the particular mean's described in the specification, or their clear mechanical equivalents.

Union Match Co. v. Diamond Match Co., 162 Fed. 148-155, 89 C. C. A. 172. In patents for a combination, if the patentee specifies any element as entering into the combination, either directly by the language of the claim or by such a reference to the descriptive part of the specification as carries such element into •the claim, he makes such element material to the combination and the court cannot declare it to be immaterial. Fay v. Cordesman, 109 U. S. 408-420, 3 Sup. Ct. 236, 27 L. Ed. 979.

Each of the claims 1, 2, 3, 7, and 8 of this patent should therefore be read in connection with the drawings and specifications, and as so read each limits the means for actuating the gong to a position within the interior of the vault; and claim 10 by its terms expressly so limits such means. The question remains, Docs tlie defendant infringe either of these claims?

To sustain the charge of infringement the infringing device must be substantially identical with the one alleged to be infringed in (1) the result attained; (2) the means of attaining that result; and (3) the manner in which its different parts operate and co-operate to produce that result. If the devices are substantially different in either of these respects the charge of infringement is not sustained. Machine Co. v. Murphy, 97 U. S. 120, 24 L. Ed. 935; Eames v. Godfrey, 1 Wall. 78, 17 L. Ed. 547; National Hollow B. B. Co. v. Interchangeable B. B. Co., 106 Fed. 693, 45 C. C.

A. 544; Adams Electric Railway Co. v. Rindell Ry. Co., 77 Red. 432, 23 C. C. A. 223. In determining the question of infringement of a patent for a combination, it is therefore necessary to look at the mode of operation or the way the device works, as well as at the result and the means hv which that result is attained. Machine Co. v. Murphy, above.

As the end in view is to he accomplished by the union of all of the parts arranged and combined together in the manner described, the use of any two of these parts only, or of two combined with a third, which is substantially different in form or in the manner of its arrangement with the others, is, therefore, not the thing patented. It is not the same combination if it substantially differs from it in any of its parts. Eames v. Godfrey, 1 Wall. 78, 79, 17 L. Ed. 547.

The specifications and Figure 2 of the drawings of the patent show that the tube, 8, which supports the shield, 5, upon the outer wall of the vault, is insulated by the sleeve or bushing, 2, through which it extends to the interior of the vault where the means for actuating the gong are located, and there arranged to contact with the end of the tube and sound the alarm if the shield and connecting tube be disturbed. In this combination tlie insulating sleeve or bushing, 2, and plate, 3, are essential elements.

In the defendant's system the gong and all the means for actuating the same are located upon the outer wall of the vault, and are protected only by the shields which cover them, tlie whole being mounted upon a baseboard attached to the exterior of the wall, where they may be much more easily interfered with or crippled than if located within the vault. It omits entirely the insulating sleeve of the patent, and substitutes nothing therefor; in fact such a sleeve is not an essential element of its system, for it locates tlie battery and all other means for actuating tlie gong upon the outer wall of the vault.

True the defendant shows a hollow metallic tube in some of its physical exhibits, extending through the walls of the vault, and through which it passes an iron rod by means of which the shields and baseboard are supported upon the exterior of the wall; hut this hollow tube is not insulated, and is not therefore the equivalent of the insulating sleeve or bushing of the patent in suit, is not designed to, and does not in fact operate as such.

The insulating device of the defendant is a collar or ring upon that portion of the iron rod exterior to the wall and under the protection of the shields; but the method of insulating that rod and of contacting the flat spring with it are entirely different from the methods of insulating the tube, 8, and! actuating the alarm bell or gong as shown in the patent in suit and does not infringe the same. The conclusion, therefore, is that the defendant does not infringe either of the claims 1, 2, 3, 7, 8, or 10 of the patent in suit.

The complainant’s appeal challenges the correctness of the decree dismissing the bill as to the individual defendants, stockholders and directors of the corporate defendant, and as to patents Nos. 626,670, 771,749, and 880,020. A motion is made by the defendants to dismiss this appeal upon the ground that the decree from which it is taken is interlocutory only and not final. In Ex parte Enameling Co., 201 U. S. 156, 26 Sup. Ct. 404, 50 L.

Ed. 707, it is held by the Supreme Cou'rt that where in a suit for the infringement of several claims of a single patent, the bill is sustained as to some of the claims and an interlocutory injunction is granted and an accounting ordered as to them, but is dismissed as to the others, that such decree is interlocutory only, and no appeal lies from that part of the decree which dismisses the bill as to such other claims until after the final decree.

This decision in principle covers the case of a suit for the infringement of different patents for the same or kindred inventions, which may be joined in one suit, and when in such a suit the bill is sustained as to some of the patents but dismissed as to others by an interlocutory decree, no appeal lies from that part of the decree which dismisses the bill as to some of the patents until after the final decree.

As to the individual defendants, the rule is that, where defendants are jointly sued with others, and the bill is dismissed as to some but is retained as to others for a final decree and accounting, the decree is not final and no appeal lies from the part dismissing the bill as to some of the defendants so jointly charged. Hohorst v. Hamburg American Packet Co., 148 U. S. 262, 13 Sup. Ct. 590, 37 L. Ed. 443; Standley v. Roberts, 59 Fed. 836-839, 8 C. C. A. 305.

The bill in this case fairly construed charges the individual defendants and the corporate defendant jointly with the infringement of all of the patents in suit. The conclusion, therefore, is that the complainant’s appeal should be dismissed as to the three patents above mentioned, and the individual defendants.

The decree of the Circuit Court is therefore reversed in No. 3,349, the appeal of the Electric Protection Company, and the cause remanded to that court, with directions to dismiss the bill as to claims 18 and 20 of the reissued patent No. 11,626, and claims 1, 2, 3, 7, 8, and 10 of the Robinson & Green patent No. 708,496. In No. 3,370, the appeal of the American Bank Protection Company is dismissed. It is ordered accordingly.