United Tunnel Improvement Co. v. Interborough Rapid Transit Co.

PER CURIAM. In the opinion of the District Judge will be found a full statement of the specifications and an enumeration of the claims relied upon; repetition of them is unnecessary. We fully concur with Judge Hand in the reasoning by which he reached the conclusion that defendants have not infringed the patents as he has construed them and would not find it necessary to add anything were it not for the circumstance that he has given to the senior patent a broader construction than we think it is entitled to. Whatever may have been in Reno’s mind and whatever he may have said in some contemporaneous document, wc find it impossible to persuade ourselves, with all the help that his counsel’s brief affords, that his patent discloses a structure in which the segments of the shell [570] rings, which are removed for the purpose of building the concrete girder, which is to underrun the entire length of the tunnel, are to be replaced after the girder is built. Possibly it may be held to indicate that: If we number the successive shell rings 1, 2, 3, 4, 5, 6, 7, 8, etc., 1, 3, 5, 7, etc., have their lower segments removed, their place being taken by the concrete girder, while 2, 4, 6, 8, etc., remain undisturbed. But that seems a very strained construction and we should doubt whether such a tunnel would be practicable in operation; certainly none such has ever been built so far as this record shows. We find nothing in the patent to warrant the conclusion that the tunnel, when completed, consists of a shell, wholly of iron or steel, which rests on a concrete base. On the contrary, the patentee at lines 96 etc., p. 2, states that the concrete which forms the girder “replaces those segments” which were removed to build it; and again at line 98, etc., p. 1, he says that the rings, when bolted together on their sides, form (not the whole shell) but “the main part of the shell of the tunnel.” The only support for the contention that the removed segments of the tunnel rinps are to be replaced after the concrete girder sets is said to be in the drawings. Judge Hand thought that such a structure was shown in figure 1, but we do not so understand it. Turning to the drawings, there are shown at the bottom of Fig. 1 segmental plates (the three lower plates, one 13, a very short one) of a ring, but they are no part of the ring nearest to the spectator; they belong to the ring next beyond, showing plates, which have not yet been removed. This is manifest from the specifications, which state that Fig. 1 represents a cross-section on the line a-a of Fig. 3. On that line a-a, the bottom segment (13) of the ring that line intersects has been removed, so that the segment 13 shown in Fig. 1 must belong to some other ring. Fig. 2 does not show that restored segmental plates 13 and 14 have been removed and all it indicates is the method of building up the concrete; it indicates nothing as to what the tunnel will be when completed. This figure also indicates a cross-section on the line a-a. All that there’is to base the contention on is the single heavy line in Fig. 3 at the lower end of the longitudinal section of the left-hand ring. We know of no authority which will warrant a court, from so small a portion of a patent drawing, to insert into the claims a material element, not suggested or described anywhere in the specifications or claims. In addition to the passages already quoted from the specifications, the following excerpt will indicate how carefully the patentee avoided expressing the idea of replacing removed segmental [571] plates, which it is now contended he had in mind and intended to cover by his patent: “When the shield lias been advanced a sufficient distance from the bulkhead, about fifty (50) feet, one or two of the narrow segments 13 and the adjacent segments 14 are removed, as shown in Mgs. 3 and 5, and the earth beneath the tunnel is removed to form a trench for the concrete girder. This french is iireferably excavated in three separate sections, as indicated in Mg. 2. First, the outer sections are formed by driving the wooden sheeting (indicated by muñerais 9 and 10 in Figs. 1 and 2) forward for a length sufficient to allow the placing of a length of tension rods 7. The two side (rendios are then filled with concrete in the same manner, the drainpipe 8 being formed by packing the concrete around suitable wooden moulds, as is well understood. After tho three sections of the trench have been filled with concrete up to the circular rings, forming the shell of the tunnel, the lower segments 13 and 14 are removed from the alternative rings, the anchor bolts 15 are inserted in position, and the concrete is built up to the required level to support the track stringers or cross-ties for the rails. After the concrete has set the remaining lower segments may be removed and the spaces which will be occupied with concrete as before. “By removing at one time only the alternative segments and allowing the concrete which replaces those segments to set before the remaining segments are removed all tendency of the shell to collapse by reason of their removal is avoided.” On all other branches of the cause we fully concur with Judge Hand. Decree affirmed, with costs.