and mailed on September 29, 1914, and that the defendant had retransferred to Robinson all the patents and applications which were the subject-matter of the contract. To this Robinson replied denying that the defendant had any right to renounce the contract as claimed in the amendment. We think we rightly interpreted this record as failing to show that any retransfer to Robinson had been effectively made. We are now told that, in the court below, it was agreed between counsel that the retransfer had been completed on September 29, 1914, that Robinson's brief in the court below was upon that theory, and that the decree framed by Robinson's counsel in the court below is upon the same theory, and, for that reason, awarded only that royalty which had accrued up to September 29.

Counsel for Robinson, responding to the application for rehearing, do not concede that the transfer was made and accepted; yet we are not sure that they deny it. It may be that when the reply denied the right of the company to "renounce" the contract it contemplated only the liability already accrued. If in fact the retransfer was accepted by Robinson, either expressly or as a necessary effect of what was said and done in the court below, and if the intent and effect of the retransfer were to deprive the company of its status as licensee under the main patent, it is obvious that there could be no recovery in this suit, except for the royalties which had then accrued; but the existence and all the effect of such retransfer and acceptance cannot be decided by us upon this record. These questions must be remitted to the court below for its decision, except as hereafter stated.

It is not now apparent to us how this retransfer can affect the right to recover the royalties then already accrued; but if there are reasons which lead to such a result, the court below will be at liberty to consider them and give them due effect. We have held that the company has the right to initiate proceedings looking toward a judicial determination that the patent was invalid; but for the reasons stated in the opinion it must be assumed that its obligation to pay royalties and be considered a licensee continued at least till September 29, 1914; and it cannot be heard to question the validity of the patent as against royalties arising before that date. If, therefore, it shall be found that the company then ceased to have the rights and carry the burdens of a licensee, there will be no occasion to litigate the validity of the patent. In the event that it is so found, the decree below will require no modifications, except those resulting from the conclusion that the accruing of royalty will begin January 6, 1913, and the recovery thereof will be upon condition that Robinson execute and deliver (instead of the exclusive license specified by the opinion) an assignment of the legal title to and the right to recover all profits and damages that accrued from any infringement of the reissued patent by others prior to September 29, 1914, and which assignment shall provide that one-half of the net sums collected thereunder shall be paid by the company to Robinson. The other conditions specified in the opinion to attach to the execution of the decree will be inappropriate.

The application for rehearing is denied; and, except as herein provided, the conclusions of the opinion remain unmodified.

AMERICAN STEEL FOUNDRIES et al. v. BETTENDORF AXLE CO. (District Court, S. D. Iowa, Davenport Division. February 17, 1917.)

1. PATENTS 328-VALIDITY AND INFRINGEMENT-CAR TRUCK.

The Bettendorf patent, No. 740,617, for a car truck, claim 5, if construed not to include as a part thereof the journal boxes, is void for prior publication in the specification and claims of prior patents. If construed to include the journal boxes, held not infringed.

2. PATENTS65-PATENTABILITY-DESCRIPTION IN "PRINTED PUBLICATION." A patent and the drawings therein, although the patent may be void, are "printed publications," within the meaning of the patent statute; and if they sufficiently describe the invention to enable a skilled mechanic to produce the structure, with its functions, without the exercise of the inventive faculty, such structure is not thereafter patentable.

[Ed. Note. For other definitions, see Words and Phrases, Printed Publication.]

In Equity. Suit by the American Steel Foundries and the J. S. Andrews Company against the Bettendorf Axle Company. Heard on cross-bill. Decree for cross-defendant.

C. C. Linthicum and Geo. L. Wilkinson, both of Chicago, Ill., and Wm. M. Chamberlin, of Davenport, Iowa, for complainant.

C. C. Bulkley, of Chicago, Ill., and Lane & Waterman, of Davenport, Iowa, for respondents.

WADE, District Judge. On January 25, 1896, James Seymour Hardie filed application for patent upon "a new and improved metallic car truck," upon which, with subsequent amendments, a patent issued October 6, 1896. On June 1, 1903, William Bettendorf made application for patent for "certain new and useful improvements in car trucks," upon which letters patent were issued October 6, 1903.

In Wolff Truck Frame Co. v. American Steel Foundries et al., 195 Fed. 940, 115 C. C. A. 628, the Circuit Court of Appeals (Seventh Circuit) held (January 2, 1912) the Hardie patent to be void for insufficiency of claim or specification covering the only patentable element in his construction, to wit, a bolster opening in the truck frame larger at the bottom than at the top, so as to admit the end of a bolster constructed with column guides, illustrated in the Schaffer bolster. On May 15, 1912, the Circuit Court of Appeals of the Eighth Circuit, in American Steel Foundries et al. v. Scullin Gallagher Iron & Steel Co., 197 Fed. 49, 116 C. C. A. 576, followed the aforesaid decision of the Circuit Court of Appeals of the Seventh Circuit and held the patent void.

It will be observed that the Hardie patent was issued October 6, 1896, and the Bettendorf patent October 6, 1903, seven years later. This action, charging infringement, was commenced by the American Steel Foundries and J. S. Andrews Company, assignees of the Hardie patent against the Bettendorf Axle Company, assignee of the Bettendorf patent, on April 6, 1909, some three years prior to the adjudications holding the Hardie patent void. The case was continued from time to time, evidently awaiting the adjudication of the Hardie patent.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

On April 22, 1913, about a year after the Hardie patent was held void, the defendant filed its cross-bill, charging the plaintiff with infringement of the Bettendorf patent. A reply was filed, alleging that the Bettendorf patent was void because of prior art patents and prior knowledge and use; also charging laches and denying infringement. The case came to trial upon the issues presented by the defendant's cross-bill and replication. Complainants (in view of the fact that the Hardie patent had been held invalid) offered no evidence, and upon the trial asked leave to dismiss their bill, ruling upon which was reserved. Inasmuch as this case proceeds upon the cross-bill and replication, it will aid in clearness of expression to designate the Bettendorf Company as "plaintiff" and the American Steel Foundries and J. S. Andrews Company as "defendants."

[1] The plaintiff (Bettendorf Company) charges defendants with infringement of claim 5 of the Bettendorf patent, which is as follows: "5. An integral metal side frame for car trucks, the lower portion having a bolster opening therein, which is wider than the upper portion thereof."

Defendants contend that this claim must be construed as limiting construction to an integral truck frame, which must include the journal boxes as part thereof, and, as so construed, it is admitted that the patent is valid, and it does not appear that the same, so construed, has been infringed. The plaintiff contends that claim 5 excludes the journal boxes, and if so (and if valid) there is no question but that it has been infringed.

Construing claim 5 of the Bettendorf patent as excluding the journal boxes, we are confronted with the contention of the defendant that more than two years before Bettendorf invented his side frame for car trucks, or applied for a patent therefor, the same was described in a printed publication in this country; reliance for this defense resting largely upon the patent to Hardie and a subsequent patent to Woods. That Hardie invented the identical thing afterwards patented by Bettendorf (construing claim 5 as excluding the journal boxes) cannot be questioned. In fact, it is admitted by counsel that, if Hardie had procured a valid patent upon his invention, it would have been an anticipation of Bettendorf.

It will be observed that what Hardie invented was a one-piece metal side frame for car trucks; but a one-piece metal side frame was not new in the art, and the patentable novelty devised by Hardie was an opening enlarged in the lower portion for insertion of the end of the bolster, having column guides, or lips, and contracted in the upper portion, so that after insertion the bolster could be lifted up, held in place by springs underneath, and permitted to operate in the contracted portion of the opening. As described in the opinion of the Court of Appeals of this Circuit in American Steel Foundries et al. v. Scullin Gallagher Iron & Steel Co., supra:

"The invention here involved consists in a combination truck having as an essential element a transverse opening in each truck arch or side frame in such a form as enables its use with all kinds of bolsters. This is the only structural novelty relied on. The new feature of this opening is found in the contracted upper portion, whereby a bolster constructed with column guides, integral or otherwise, upon its opposite sides, may be passed through

the enlarged portion of the opening in the side frame of the one-piece side frame, and then be raised into and maintained in contact with the sides of the contracted upper portion of the opening of the arch or side frame, so as to resist any substantial backward or forward movement of the bolster, and make a comparatively rigid connection between the two side frames."

That Hardie actually made this invention is clearly established by the photograph (Plaintiff's Exhibit R) of a wooden model made about 1896, and the printed description thereof upon the back of the photograph, which accurately describes the invention, its uses and functions, as follows:

"Car Truck-Patent Applied for.

"Truck to be made of steel, cast or pressed, and consists of the following members: Truck arch, oil box lock, spring seat, and spring seat block. The transverse openings in truck arches being so designed as to permit the free passage of truck bolster through opening, when it can be raised to position, the guide lips on bolster engaging flange on truck arch at front, and web of truck arch at back.

"Spring seat block is designed to take up play allowed for the free insertion of bolster spring, also to slightly compress spring. The oil box lock having one end reduced and rounded hooks in suitable opening in truck arch flange, being raised and bolted, firmly engages oil box.

"Only (12) bolts in entire truck, no vital part of truck dependent on a nut or bolt.

"Any or all parts of truck can be replaced by use of hammer, wrench and jacks, requires no special dies, presses, forms, forge, or boiler maker to rivet in case of distortion account of wreck.

"Patent for sale. Correspondence solicited.

"Respectfully,

J. S. Hardie, El Dorado, Kansas."

Hardie testified that he had sent copies of the photographs bearing this printed description to "various steel casting companies throughout the United States," about or prior to the time the patent was issued; and this is corroborated by the original letter written by Hardie to William G. Kelley, Simplex Railway Appliance Company, Chicago, dated December 1, 1896.

It is also contended that Hardie made a contract for manufacture upon royalty with the American Steel Foundries Company in 1897, and that small models were made as samples, and that two side frames, full size, were completed. The execution of the contract, the making of the models, or the two side frames, is not material to the question at present under consideration, which relates to the prior publication of a description of the invention.

The failure of Hardie to secure a valid patent was apparently through "his solicitor's failure to comprehend" the functional use of the "two-sized" opening as an element of his invention. The court, in Wolff Truck Frame Co. v. American Steel Foundries et al., supra, says:.

"Moreover, his story is most persuasive, almost pathetic. His car truck has been highly successful in the hands of his assignee, as evidenced by its enormous sales. The picture of the poor, but brilliant, inventor being cheated out of his valuable discovery by the misapprehension of his solicitors, is an appealing one, well calculated to influence any court."

The great importance of the "two-sized" opening for insertion of the bolster end is understood from an inspection of the illustration of

the Schaffer bolster in the above case. 195 Fed., shown at page 942, 115 C. C. A. 628. It will be observed that near the ends are rigidly fastened substantial metal guides or lips, which form a space in which the column guides of the side frame fit when in place and in operation. It is apparent that, if the opening in the frame were the same width throughout, the end of the bolster could not be inserted without removing the guides or lips. To enable the bolster to be inserted without removing the guides or lips, Hardie conceived the simple device of making the opening wide enough at the bottom to receive the bolster with the guides or lips attached, which could then be lifted up into the contracted space, where it is held by springs while in use.

The drawings filed with application for Hardie patent clearly presented this element. In claim 2, he describes:

"Truck arches rigidly connected with each other, each truck arch having a transverse opening, the upper portion of which is contracted; a truck bolster fitted in the upper portion of said openings, and springs seated in the openings, and below the truck bolster."

In claim 3 he describes:

"A truck having two truck arches, each formed with an opening, the upper portion of which is contracted, and the truck bolster having its ends respectively fitted within the upper portions of said openings, and means within the openings and below the truck bolster by which the truck bolster is held in place, substantially as described."

In drawings, Figure 1 clearly presents the "two-sized" opening with bolster in place, and springs beneath. His failure was to state, in claims or specifications, the function of this two-sized opening, and therefore the court held that, "within the loosest construction of the statute requiring full, clear, concise description," the patent was void.

The Bettendorf patent, in its claims and drawings, presents exactly the same construction shown in Hardie drawings, and in addition properly describes the use or function of the two-sized opening. The Hardie patent, even though void, was a publication, within the meaning of the statute. The drawings of the Hardie patent, aside from the claims. or specifications, were a publication.

"Apart from the undisputed testimony of the defendant's expert, the drawings alone must here be relied on; it hardly can be doubted, however, that they show the arched axle to be pivotally connected with and supported by the depending arms of the fifth wheel. Further, the bolt mentioned would seem to afford withdrawable means equally with that feature of Keene's patent; and we think it is clear that through these drawings the device mentioned was 'described' in a 'printed publication' within the meaning of the Patent Act. Section 4886, as amended by Act March 3, 1897, c. 391, 29 Stat. 692; Loom Co. v. Higgins, 105 U. S. 580, 594, 26 L. Ed. 1177; Saunders v. Allen, 60 Fed. 610, 613, 9 C. C. A. 157 (C. C. A. 2d Cir.)." Keene v. New Idea Spreader Co., 231 Fed. 708, 145 C. C. A. 594.

The question here is not whether the Hardie patent presented that "full, clear, concise description" which the statute requires, in order to make a valid patent, but it is a question as to whether or not the patent did in fact disclose the invention in such manner as to enable a person skilled in the art of truck making to fully understand just what Hardie invented.