BOSTON WOVEN HOSE & RUBBER CO. v. PENNSYLVANIA RUBBER CO.

(Circuit Court of Appeals, First Circuit. July 15, 1908.)

No. 755.

1. PATENTS (§ 157*)-CONSTRUCTION OF CLAIMS-PAPER PATENTS.

The rule applied that in a suit for infringement of a patent for an alleged invention of which no practical use has ever been made, the patent is not entitled to the same breadth of construction which might be warranted by its proved usefulness.

[Ed. Note. For other cases, see Patents, Dec. Dig. § 157.*]

2. PATENTS (§ 328*)-INFRINGEMENT-WHEEL TIRES.

The Schrader patent, No. 466,577, for improvements in wheel tires, claim 2, construed, and held not infringed.

[Ed. Note. For other cases, see Patents, Dec. Dig. § 328.*]

Appeal from the Circuit Court of the United States for the District of Massachusetts.

For opinion below, see 156 Fed. 787.

Frederick P. Fish and W. Orison Underwood (Johnson, Clapp & Underwood, on the brief),. for appellant.

Bayard H. Christy (George H. Christy, on the brief), for appellee. Before PUTNAM and LOWELL, Circuit Judges, and ALDRICH, District Judge.

PUTNAM, Circuit Judge. This is a bill alleging infringement of letters patent No. 466,577, issued on January 5, 1892, on an application filed on December 30, 1890. The second claim only is in issue, as follows:

"2. The combination of the U-shaped tire, the felly, an inflated tube confined by said tire, and an internal clamping device, between which and the felly the U-shaped tire is secured, substantially as set forth."

The Circuit Court dismissed the bill, and the complainant appealed

to us.

First of all, it is to be observed that, although the letters patent issued more than 14 years before the filing of this bill, no practical use was ever made of the alleged invention covered by the claim now in issue. Consequently the patent lacks that support coming from public acquiescence which is often of great value, not only in giving support to an alleged invention, but also in justifying a breadth of construction of the patent itself, so that the complainant is subject to the scrutiny and the limitations of the class observed on in our opinion in United States Hog Hoisting Machine Co. v. North Packing & Provision Co. (C. C. A.) 158 Fed. 818, and in the cases there cited, and in Deering v. Harvester Works, 155 U. S. 286, 295, 15 Sup. Ct. 118, 39 L. Ed. 153. Aside from that, however, we are unable to give the claim in issue such a construction as would embrace within it the respondent's device.

*For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

The claim before us names six elements: (1) The U-shaped tire; (2) the felly; (3) an inflated tube; (4) the inflated tube confined by the tire; (5) the internal clamping device; and (6) the location of the clamping device in such manner that the U-shaped tire is secured between it and the felly. Two additional elements are involved in the words "substantially as set forth." The first of these is the fact that the clamping device makes a complete circle, longitudinally with the tire, wholly around the wheel, and the second is that, on a transverse line, the clamping device is crowned, or, as described in the specification, convexed. All the parts are seen in the drawing, Fig. 5, as follows:

Very likely, however, it may be that this crowning is not an essential element, but only a preferable one, and therefore we will make no further observation in regard to it. There has been much discussion with reference to the question whether, in the contemplation of the inventor, the U-shaped tire means a hard rubber tire-that is, one permanently shaped or whether it means, or may be replaced by, a flexible tire, or outside shell for the tire. The specification describes a modification showing such a flexible covering, or "strip," in the place of what is called therein "the formed tire." Inasmuch, however, as we are concerned only with the second claim, we do not perceive that we are interested in this modified method of construction. It seems to have no bearing whatever, except that it strengthens the conclusion, which we otherwise reach, that for holding together the parts of his mechanism the patentee relies on the clamping device, and not on any inherent holding ability of the horseshoe ends of the U-shaped tire.

The case, however, comes down to the first element, which we have described as covered by the words "substantially as set forth." It is shown by the specification that, in order to hold the parts firmly together, the clamping device, or the plate, as it is sometimes called, must be continuous around the entire circumference of the wheel, and so arranged that the ends can be drawn together, thus rigidly fastening the tire to the felly. This is a positive element in the complainant's device which is lacking in that of the respondent, so that it is impossible to charge infringement.

The specification puts this in such a positive manner that we cannot waive it for the benefit of any rule whatsoever with regard to equivalents. It first says:

"I preferably convex the plate transversely, so as to stiffen the same when tension is applied, as it will be understood that this band [meaning the clamping device] extends completely around the wheel, and the two ends are secured together, thus making a rigid fastening for the tire."

The specification continues that the band may be made in sections; but even in this connection it intensifies by implication what we have.

already referred to, in that it says that the sections "can be provided with a like number of securing and tightening devices." It proceeds at considerable length to describe the mechanism by which the two ends of the band, as it is called in this part of the specification, may be conveniently and firmly drawn together longitudinally, so as to make sure "the rigid fastening for the tire" to which we have already referred. Indeed, of the specification 45 lines relate to the explanation of the fact that the clamping device is a band extending longitudinally entirely around the wheel, with its ends drawn together by the mechanism described, so that, by tightening, the tire shall be rigidly secured to the felly.

It is true that, after all this, the specification suggests that the tire may be inflated by simply forcing air under pressure into the space between the band and the tire; that is, between the clamping device and the tire. It is understood, however, that this has never been successfully accomplished and is an impracticable suggestion; but it is enough for our purposes that nothing of this character is involved in claim 2.

In lieu of this continuous clamping device, the respondent relies on such a construction of the U-shaped tire that, in connection with the inflation to which it may be subjected in the respondent's method of construction, it holds itself in place without the continuous band. It is true that at certain intervals, following each other around the respondent's wheel, he has staybolts, or lugs, extending transversely from one of the horseshoe ends of the U-shaped tire to the other, which re-enforce the tendency of the tire to maintain itself in position. It cannot be doubted that, under some conditions with reference to an invention of the character involved here, the field of equivalents would be so broad that these staybolts might be held to infringe; but, under the circumstances which we have explained, we are compelled to agree with the conclusion reached by the Circuit Court.

The decree of the Circuit Court is affirmed, and the appellee recovers its costs of appeal.

In re SIEGEL.

(District Court, E. D. New York. October 16, 1908.)

BANKRUPTCY (§ 175*) — PROPERTY PASSING TO TRUSTEE
BANKRUPT.

A pretended sale of goods by a bankrupt a few days prior to his bankruptcy held fraudulent and void, and to convey no title as against creditors, but merely a device to apparently transfer the title while the ownership of the goods in fact remained in the bankrupt.

[Ed. Note. For other cases, see Bankruptcy, Cent. Dig. §§ 247, 248; Dec. Dig. 175.*]

In Bankruptcy.

•For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

Cohen Bros., for trustee.

Louis Lichtenberg, for claimant.
Henry J. Bloch, for bankrupt.

CHATFIELD, District Judge. About the 10th of September, 1907, some 201 pairs of shoes were taken to the apartment of one David Palles, a workman for Abraham Siegel. The testimony shows that Siegel himself had carried these shoes to Palles' apartment. On the 23d day of September, 1907, an involuntary petition in bankruptcy was filed against Siegel, who was adjudicated on the 10th day of October, 1907; but on October 5th of that year a city marshal seized the shoes in Palles' apartment by authority of a writ of replevin obtained by one Nadler, who claimed the goods by reason of a purchase made September 10, 1907, for $311.30. This purchase was on the same day on which the goods were taken to Palles' apartment, and the testimony shows that Siegel and Nadler were negotiating with reference to the opening of a new place of business, which the bankrupt and Nadler both claimed belonged to Nadler, but which the evidence plainly indicated was in reality the property of Siegel, for whom Nadler was a dummy. The receiver in bankruptcy demanded the shoes on motion, and the question as to whether the receiver was entitled to possession of the shoes was sent to a referee, as special commissioner.

The commissioner reported that a claim to the shoes made by Palles and his wife, the people with whom the shoes had been stored, was not substantiated; this claim having been based upon an alleged loan. The commissioner's report on this point should be confirmed. The circumstances of the alleged loan are not such as to satisfy the court that, if the money was advanced, it gave Mrs. Palles anything further than a claim against the bankrupt estate.

The commissioner further reported that Mr. Nadler had purchased the shoes in question, and that, therefore, the receiver was not entitled to them. The court then filed a memorandum to the effect that' the finding of the commissioner was apparently correct, in that the question sent to him as to whether the receiver was entitled to the shoes could only be answered in the way in which he had reported; but, inasmuch as a question of title was involved, opportunity would be given to the trustee to bring such action as he might be advised, or if all of the parties, including the trustee, who had then been appointed, should consent and request the court to pass upon the issues, upon the record then before the court, and thus avoid the expense of an additional suit, the matter would be held until one course or the other was indicated. The parties, including the claimants and the trustee, have now stipulated that the court shall determine the issue of title, and the evidence seems to show with sufficient clearness that no sale to Nadler occurred which would either be valid as against creditors or which would convey title. The entire transaction between Siegel and Nadler was such that Nadler must be held to have known that he was in effect acting as a dummy, and that Siegel was planning to set up the business in Nadler's name. Nadler was, therefore, a party to the fraud, and the whole transaction should be held null and void.

Judgment may be had in favor of the trustee as against all of the parties. The question of any lien of the marshal in the replevin proceedings for his fees and disbursements will be disposed of on the settlement of the order, when further information on that subject may be furnished.

SUNSET TELEPHONE & TELEGRAPH CO. v. CITY OF POMONA et al.

(Circuit Court, S. D. California, S. D. August 31, 1908.)
No. 1,209.

1. TELEGRAPHS AND TELEPHONES (§ 9*) — TELEPHONE COMPANIES-RIGHTS UNDER FEDERAL STATUTES.

A telephone company is not within Act July 24, 1866, c. 230, 14 Stat. 221 (Rev. St. §§ 5263-5268; U. S. Comp. St. 1901, pp. 3579-3581), granting to telegraph companies who accept its conditions the right to construct their lines over the public lands and post roads; nor can a company doing both a telegraph and telephone business claim its benefit as to the lines used in its telephone business. The fact that such lines may be used for the local delivery of interstate telegraphic messages does not make them an integral part of the telegraph lines, so as to bring them within the purview of the act.

[Ed. Note. For other cases, see Telegraphs and Telephones, Dec. Dig. § 9.*]

2. TELEGRAPHS AND TELEPHONES (§ 10*)-RIGHT TO USE STREETS.

Said act does not grant to telegraph companies the right to occupy with their poles and wires the streets of a city without the latter's consent. [Ed. Note. For other cases, see Telegraphs and Telephones, Cent. Dig. § 6; Dec. Dig. § 10.*

Rights of telegraph and telephone companies to use of streets, see note to Southern Bell Tel. & Tel. Co. v. City of Richmond, 44 C. C. A. 155.]

3. TELEGRAPHS AND TELEPHONES (§ 10*)-CONSTRUCTION OF STATUTE "HIGHWAYS."

In Civ. Code Cal. § 536, which as re-enacted March 20, 1905 (St. 1905, p. 491, c. 385). grants to both telegraph and telephone companies the right to construct their lines "along and upon any public road or highway," the word "highway" includes a street.

[Ed. Note. For other cases, see Telegraphs and Telephones, Cent. Dig. 6; Dec. Dig. § 10.*

For other definitions, see Words and Phrases, vol. 4, pp. 3291-3306; vol. 8, p. 7678.]

4. COURTS (366*) - FEDERAL COURTS-AUTHORITY OF DECISIONS OF STATE COURTS.

The rule that the construction of a state statute by the highest court of the state is conclusive on a federal court does not apply where a federal question is involved, as where a complainant contends that it acquired contract rights under such statute which are protected from impairment by the federal Constitution.

[Ed. Note.-For other cases, see Courts, Dec. Dig. § 366.*

Conclusiveness of judgment as between federal and state courts, see notes to Kansas City, Ft. S. & M. R. Co. v. Morgan, 21 C. C. A. 478, and Union & Planters' Bank v. City of Memphis, 49 C. C. A. 468.]

*For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

164 F.-36