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lents is applied, and also in determining to what extent, if any, limitations should be placed upon the mere wording of a claim. McCormick v. Talcott, 20 How. 402, 405, 15 L. Ed. 930; Machine Co. v. Lancaster, 129 U. S. 263, 274, 9 Sup. Ct. 299, 32 L. Ed. 715; Miller v. Manufacturing Co., 151 U. S. 186, 187, 14 Sup. Ct. 310, 38 L. Ed. 121; National Hollow Brake Beam Co. v. Interchangeable Brake Beam Co., 45 C. C. A. 544, 561, 106 Fed. 693; Railway Co. v. Godehard, 19 U. S. App. 360, 400, 8 C. C. A. 265, 59 Fed. 776; McClain v Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800; Walk. Pat. (3d Ed.) § 184.

Moreover, it is a well-known fact that proceedings taken in the patent office, while an application for a patent is under consideration, sometimes have much effect in determining the scope which shall be given to the claims of a patent. Sutter v. Robinson, 119 U. S. 530, 7 Sup. Ct. 376, 30 L. Ed. 492; Sargent v. Lock Co., 114 U. S. 63, 5 Sup. Ct. 1021, 29 L. Ed. 67; Brill v. Car Co., 33 C. C. A. 213, 9o Fed. 666. While it is true, therefore, that it is the function of the court to construe patents as well as all other written instruments, yet it cannot be gainsaid that many facts dehors the patent, of which the court cannot take judicial notice, may with great propriety be proven to enable it to reach a right conclusion. In the construction of any contract a court is generally entitled to be advised, by testimony, of the situation and the relation of the parties thereto when it was executed, to enable it to decide with more certainty what was the real purpose and intent of the agreement. It is sometimes said that a court should aim to place itself, as nearly as possible, in the situation which the parties to an agreement occupied when it was entered into, and, if this is so as respects the construction of ordinary written instruments, with much greater truth may it be said that, in construing the claims of a patent which deals with mechanical devices with which courts are often unfamiliar, they ought to be very sure, not only that they have a clear comprehension of the language and meaning of the claims and the operation of the patented device, but that they are well advised of the state of the particular art at the time the patent was granted. Evidence which throws any light on this subject ought not to be excluded when the scope to be given to the claims of a patent is the subject for consideration, except in those cases, which may sometimes arise, where the device is very simple and easily comprehended, and the art to which it relates is well understood, so that the introduction of evidence of the kind above indicated would be a work of supererogation. In most cases, therefore, the question whether patents interfere or contain interfering claims is a mixed question of law and fact, because the parties have the right to introduce testimony to enable the court to correctly determine what mechanical device or contrivance is in fact comprehended by the claims, and what are the legal rights thereby granted.

Turning to the Marshall and Wands patents, it will be observed that there is a marked similarity in the mechanical structures described in the two patents. Each is a car bolster consisting fundamentally of a truss. Each has a compression member, a tension member, and it support intermediate the ends of the compression member, in the

Marshall patent termed a "support" and a "king post," and in the Wands patent a "strut.” In each structure the tension member bends around the ends of the compression member so as to receive the thrust of the compression member and relieve the bolts, by which they are held together, of the shearing force that would otherwise be exerted. It is true that in Wands' patent head blocks are provided, against which the ends of the compression member abut, and around which the ends of the tension member are bent before they are bolted to the compression member; but it will be observed that, with the improvement added by Bauer to the Marshall structure as at first conceived, "strengthening pieces," so termed (vide Fig. 2), were placed on each end of the compression member so as to overlap them, against the shoulders of which the ends of the compression member likewise abut, and around which the ends of the tension member are bent, and then bolted to the compression member. It requires but a glance to see that there is a marked resemblance between these structures. Indeed, the resemblance is such as to excite grave doubts, on a superficial examination, whether the alleged conflicting claims are consistent and each valid. The lower court held that claim i of Wands' patent does not conflict with claims i and 2 of the Marshall patent, because Marshall expressly limits himself to a flat tension member, which passes, as it nears the ends of the compression member, between the flanges of the latter member, which is made of channel iron, while Wands does not thus limit his claim. But, if we look carefully at Wands' specification and drawings, it will be seen that his head block has, on the underside, a depression or channel along which the tension member passes, and that this groove or channel holds the tension member in place precisely as the flanges of the compression member hold it in the Marshall structure. Now, it may well be that the state of the art to which this patent appertains, when fully developed, will prove to be such that Wands must be limited to the precise construction indicated in his specifications and drawings, notwithstanding the broad language of his claim, especially as his claim contains the words “substantially as described.” And in that event the further inquiry would be pertinent, whether the two combinations claimed and patented, the one by Marshall and the other by Wands, are not substantially the same. It is manifest that Wands, in constructing his car bolster, has merely cut off a section of the compression member and inverted it, and termed it a head block, making a channel for the tension member on the bottom of the head block, instead of utilizing the flanges of the compression member for such a channel.

In his comparison of claim 3 of the Bauer patent with claim 9 of the Wands patent, the learned trial judge was forced to conclude that by the use of the head block Wands attained the same result which Bauer attained by his “strengthening piece," and that conclusion is inevitable, since the object of both patentees appears to have been to prevent the end of the compression member from splitting or giving way under an excessive load, and at the same time to lessen somewhat the convexity of the tension member where it is bent to engage the ends of the compression member. The lower court was of the

opinion, however, that the means employed by Wands to attain the desired result were essentially different from those employed by Bauer, and in that respect it called attention to the fact that Bauer placed his "strengthening piece,” which is wider than the web of the compression member and extends over the flanges, on the top thereof, and also constructed it with a shoulder overlapping the end of the compression member to receive its thrust, while in Wands' device the compression member rests on the top of the head block and abuts against its shoulder. Attention is also called to the fact that the compression member rests on three vertical ribs in the head block instead of upon a solid block (vide Fig. 4). This constitutes the sole difference in the nieans employed to attain the same object. It will be observed, however, that claim 9 of Wands' patent does not specify a head block having three vertical ribs, and if the head block was made solid it would respond to the language of the claim as well as if made with ribs. Counsel for the appellees further lay some stress on the fact that claim 9 of Wands' patent makes no mention of a “middie support" to the bolster, such as Bauer specifies in his third claim, but as the bolster, to which Wands likewise refers, is fundamentally a truss, it would seem that a "middle support” for the truss, which he terms a "strut," ought to be implied. The result is that if Wands' head block, in view of the state of the art and the functions which it performs, be regarded as the mechanical equivalent of Bauer's “strengthening piece," the two claims now under consideration cover substantially the same combination, and hence interfere.

We would not be understood, however, as expressing a definite opinion upon the question whether the claims of the patents in question do in fact interfere. That is a question which does not arise, necessarily, on this appeal, because the case passed off on a demurrer to the bill which expressly alleged interference. Its contention in this court is that by sustaining the demurrer and denying its right to introduce evidence as respects the state of the art and other facts which it deemed material to a correct construction of the claims of the patents the trial court erred. For reasons which have been suffi ciently indicated by what has already been said, we feel constrained to concur in that view. The case, in our judgment, does not belong to the class of cases where, notwithstanding an express allegation that certain claims of patents interfere, a trial court can say, on an inspection of the patents, that it is impossible to sustain the allegation by any evidence which can be adduced, and unless such was the case the demurrer should have been overruled. The averment that certain claims of Wands' patent cover substantially the same inventions previously patented to Marshall and Bauer was a statement of an ultimate conclusion of fact, such as is permissible in good pleading, and in the present instance the complainant was entitled to substantiate the charge, if it could, by other evidence besides the patents of which it made profert.

The decree below, dismissing the bill of complaint, is accordingly reversed, and the cause is remanded to the circuit court, with directions to overrule the demurrer to the bill.

53 C.C.A.-12

(116 Fed. 458.)

MUNICIPAL TRUST CO., Limited, v. JOHNSON CITY.

(Circuit Court of Appeals, Sixth Circuit. June 3, 1902.)

No. 1,082.

1. RAILROADS–MUNICIPAL SUBSCRIPTION TO STOCK_VALIDITY OF BONDS.

A railroad company was organized under the general statutes of Tennessee to build a railroad between a point on the eastern boundary and one on the northern boundary of the state, and having the same name as a consolidated company, existing under the laws of South Carolina and North Carolina, authorized to build and operate a road through those states and to a point on the Ohio river. The two companies were consolidated, as permitted by the laws of Tennessee, and the consolidation was ratified by the stockholders of each, which under the statute of Tennessee gave the consolidated company power to do "all acts and things which the said companies so consolidating, or either of them, might have done previous to such consolidation." After such ratification an application was made in the name of the company, in which it was described as being "chartered under the laws of the state of Tennessee," asking a city in that state to subscribe to its capital stock as authorized by Shannon's Ann. Code Tenn. $8 1558–1573, which conferred such authority only in case of companies incorporated under the general laws of the state. The subscription was made as authorized by a vote of the citizens, the road constructed, and bonds issued and delivered to the company in payment of the subscription. The incorporators of the Tennessee company resided in such city, which was named in its charter as a point on its projected road, and its articles of incorporation were there registered in the office of the county clerk. The stock holders' meetings at which the consolidation was effected were also both held there. Held, in an action to enforce the collection of coupons from the bonds, that under such evidence it could not be declared by the court as conclusively proven that the town, in the issuance of the bonds, was dealing with the foreign corporation, rather than with the domestic or consolidated company, and that the bonds were therefore unauthorized and void, although the application to the city was signed by one as general manager, who, previous to the consolidation, had been the general

manager of the foreign corporation. 2. SAME-EFFECT OF RECITALS IN BONDS-TENNESSEE STATUTE.

Shannon's Ann. Code Tenn. $ 1558 et seq., which authorizes cities and towns to subscribe to the stock of a domestic railroad company under certain conditions, and to issue bonds in payment therefor, provides (section 1562) that, upon the presentation of an application for such subscription to the mayor, he shall convene the board of mayor and aldermen, or other governing body, and that, "should a majority of the board of mayor and aldermen, or other governing or representative body, of such-city or town, be of the opinion that an election should be held in the same to determine whether or not such city or town should make the subscription, it shall so order." Held, that such statute vested in the board of mayor and aldermen the power and duty to determine whether a railroad company making application for such a subscription was a domestic corporation, to whose stock a subscription might lawfully be made; that where it acted, and called an election, and pursuant to the vote thereat issued the bonds to the company on a compliance with the required conditions, which bonds recited their issuance under such statute, and that "in issuing the same all of the provisions and requirements of each of said statutes have been strictly fulfilled and complied with," the municipality was precluded by such recitals from denying that the company was a domestic corporation, in a suit by a bona fide holder of such bonds, where a domestic corporation of the name existed and its articles of incorporation were of record, in the county where the bonds were issued.

3. SAME.

Under a statute limiting the amount of railroad bonds which may be issued by a city to a certain per cent. of its "taxable property,” the assessment rolls for the year preceding that in which bonds are issued are not conclusive upon the value of the taxable property of the city at the time of their issuance, and a recital in the bonds, by the officers vested with the duty of determining the question, that the statute has been fully complied with, is conclusive upon the city, in favor of a bona fide holder, that they do not exceed in amount the statutory limit. In Error to the Circuit Court of the United States for the Eastern District of Tennessee.

This is a suit brought in the court below to recover the contents of certain coupons for interest belonging to bonds issued by the mayor and alder-men of Johnson City, a municipality of Tennessee, and bearing date May 1, 1890. The bonds were executed and delivered to the Charleston, Cincinnati & Chicago Railroad Company in payment of a subscription by the city for the stock of the railroad company at par, under the authority of a statute of Tennessee found in Shannon's Ann. Code, $8 1558–1573, inclusive, of which the following are all that need be quoted:

"Sec. 1558. Any county, incorporated city, or town may become a stockholder in any railroad company incorporated under the general laws of this state, to an amount not exceeding, in the aggregate, one-tenth of its taxable property, by complying with the requirements of the following sections of this chapter:

"Sec. 1560. Before any county shall make any subscription under the provisions of said sections, the president, or other authorized officer or agent of the railroad company, shall submit to the chairman or judge of the county court, as the case may be, of the county an application in the name of the company, setting forth the proposed termini of its railroad, the amount of the subscription asked for, the time within which its road will be constructed through the county, and that the application is made under said sections, and the same shall be accompanied by a plan or map, certified by the chief engineer of [the] company, showing the general direction and line of its railroad in the county. And, before any incorporated city or town shall make any subscription under these provisions, such application must be submitted to its mayor or chief executive officer, showing the proposed termini of its railroad, accompanied with the declaration, on the part of the company, that it will locate and construct its railroad within one mile of such incorporated city or town, within such time as shall be fixed in the application.

“Sec. 1562. And in like manner (that is, referring to section 1561, relating to counties), upon the presentation of the application to the mayor or other chief executive officer of any incorporated city or town, accompanied with a declaration on the part of the company that its line of railroad shall be located and constructed within one mile of such city or town, as provided in section 1560, then it is made the duty of such mayor or chief executive officer to convene the board of mayor and aldermen, or other governing or representative body of such city or town, and submit such application for its consideration; and should a majority of the board of mayor and aldermen, or other governing or representative body of such city or town, be of the opinion that an election should be held in the same to determine whether or not such city or town should make the subscription, it shall so order.

“Sec. 1563. The county court, or board of mayor and aldermen, or other governing body, as the case may be, shall spread upon its records the application and accompanying plan or map or declaration, as the case may be, and the amount to be voted upon by the people, and shall have full power to order such elections according to the laws regulating elections in this state.

"Sec. 1569. Such subscription of any county or incorporated city or town shall not become due and payable unless said railroad company shall have constructed and put in operation within the time fixed in the application, and substantially in the direction and on the line as shown in said plan or map,

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