Van Auken v. Monash-Younker Co.

SANBORN, District Judge (after stating the facts as above). Four questions .are raised: Anticipation, construction, infringement, and the character of the Canfield and Van Auken patent, and whether infringed. The difficulties have been much relieved by the great variety of clear cuts, diagrams, illustrations, and the various models. The points will be considered in this order. 1. Anticipation of the Van Auken valve. There are many patents in the prior art which show one or more of the elements of the Van Auken device. Those elements are a float chamber, a float, a liquid discharge outlet opened and closed by the movement of the float, a conduit from the radiator to the float chamber, a liquid seal in the conduit, and an air discharge passage from the float chamber connecting" with the main outlet pipe from the valves. All of these elements are found in the jprior art, and the following are the forms most relied on to show anticipation: The English patent to Vickerman, No. 941, of 1860, contains all the above elements, operating in a different way. There is a float, a float chamber, a liquid discharge governed by the float, a conduit from radiator to float chamber, a liquid seal, and an air discharge passage. But the seal is not in the conduit, not forming until the water in the float chamber rises nearly to the flotation line; nor does the air discharge open or lead into the return, but into the open air. Both steam and air set free by condensation may pass into the float chamber until the seal is formed, and again as soon as it is broken, thus destroying differential pressure. A like result follows from the operation of the air escape valve, which closes as soon as the steam pressure in the float chamber exceeds the pressure of the atmosphere. Whatever effect this device may have in limiting the Van Auken device, it is clearly no anticipation, designed to work on a different principle. The Wade patent of 1900, No. 659,776, application made October 16, 1899, not being pleaded as an anticipation, is subsequent to the Van Auken patent because His invention dates from November 17, 1896. The two-year period referred to in the statute of March 3, 1897, prior to the application filed, does not therefore apply. Barnes [146] Automatic Sprinkler Co. v. Walworth Mfg. Co., 60 Fed. 605, 9 C. C. A. 154, 18 U. S. App. 538, Woods, C. J. [1] The Donnelly British patent of 1900, No. 11,741, although applied for June 28, 1900, several years after Van Auken’s invention, might be an anticipation, because properly pleaded in the answer. This patent, however, is for a pressure motor valve, the water discharge being controlled by a diaphragm acting as a pressure motor, and not by the float. The principle of operation is different. The British patent of Kussel, of 1900, No. 12,605. is also part of the prior art for the same reason applying to the Donnelly device. Every element of the Van Auken invention except one is found in Russel; that exception being the liquid seal. The conduit is also quite different. The air of condensation is not forced through the water, nor is there a differential pressure between radiator and valve, since steam is freely 'admitted to the float chamber, and is only prevented from escaping through the air outlet by the small size of the latter. Another alleged anticipation is the United States patent to Paul, applied for April 16, 1901, issued June 12, 1906, numbered 823,074. This device operates in much the same manner as the Donnelly pressure motor valve, but, not being pleaded in the answer, and being actually later than Van Auken, could not be an anticipation. Ford’s invention, No. 673,250, of 1901, is not explained by defendant’s expert witness. It provides ample means for discharging the water of condensation, but none for the air. Although it has a conduit much like Van Auken, it is difficult to see how it could be operative without any air discharge. The Ryan patent of 1876, United States, No. 172,586, is not set up in the answer, but is part of the prior art, though not explained by defendant’s expert. It is principally designed as a steam engine trap, but was also adapted for use in heating dwellings. The claims are greatly specialized. No air passage is specified, shown or claimed, though it is possible there was one. No use of the device is shown by the evidence. Royle’s British patent of 1890, No. 17,841, is pleaded, and contains the elements of the Van Auken device in much the same manner as Vickerman. It also operates in a somewhat different way from Van Auken. The Connor patent of 1877, No. 195,984, has a float, but no liquid seal. The device operates in an entirely different way from Van Auken. Coffee’s invention, No. 302,622, of 1884, is not pleaded. It apparently has in some form all the elements of Van Auken, but the drawings are inconsistent with the description and claims, and it is impossible to tell whether there is any air outlet connecting with the return pipe, or whether steam can enter the float. Canfield and Van Auken’s patent is not an anticipation of Van Auken, no.t being pleaded as such, ñor properly so pleadable. . Other patents of the prior art appear in evidence, but those referred to come the nearest to being anticipations. It is apparent that none [147] of them, whether pleaded or not, is such an anticipation as to avoid the Van Auken patent. They do, however, narrow it, and take away much from the broad character of its claims. There is another reason why it is undoubtedly valid, disclosed by claim 5, and by all the claims except the first four. In these the conduit is described as opening into the float chamber above the flotation line. This feature in connection with the formation of a water seal in the pocket under the weir, although found in the Pord patent, makes the Van Auken invention new as a combination. Defendant does not, in its device, make use of this feature, which is found in Van Auken’s present commercial form, and is claimed by defendant to be a necessary part of the Van Auken combination. I think the Van Auken patent is valid in all its claims, but that the broad claims in suit are much narrowed by the prior art. 2. Construction of the Van Auken patent. The question of infringement largely depends upon what construction is to be given to the Van Auken claims, upon how broadly or how narrowly they ought to he interpreted, in view not only of the prior art, but the description and drawings. If construed anywhere near as liberally as the claims in suit on their face require, infringement is clear; if narrowly, it is avoided. It is quite apparent that Van Auken was not a mere improver, like one who finds an operative and successful combination device in every day use, and who, by adding a new element, or dispensing with an old one, invents a new and patentable combination, and improves upon the earlier form, for no fully successful device preceded him. None of the prior art structures was in general or even very successful use. Many of them were too large for offices or dwellings. Some, like Wade and Russel, were of proper size, but not on the market, though one or two had been fairly successful. There was no valve being sold which would separate the air and water of condensation from the steam. Van Auken was more efficient than any earlier one. In a form different from the four claims in suit, and from all the claims in both of complainants’ patents, it has been very successful; and in the hands of licensees it has been quite successful in forms substantially agreeing with the first four Van Auken claims, without the overflow conduit feature of the fifth claim. It is also established by the evidence that Van Auken was the first to clearly understand that the small amount of mixed air will pass through a water seal, while steam will not. Van Auken was thus much more than an improver in a field already developed. The art had not yet reached a fully successful stage. He brought it to its full development by taking the last step. Boegen, who patented defendant’s valve, was an improver in a fully developed field, and his claims are simply highly specialized descriptions of his device. The elements of the Van Auken invention are all in the prior art, in some form, but it required a considerable degree of invention to bring' them out of a state of uselessness by the first clear apprehension of the problem, and finding a successful solution. While not a pioneer in any broad way, Van Auken is entitled to the credit of making a considerable advance, and his invention should have a reasonably liberal construction. [148] To what extent-the four claims in'the first suit should be further narrowed by the specification and drawings presents a second question of construction. Each of the four claims prescribes “a conduit adapted to provide communication between a radiator and said float chamber,” while the others, not in suit, limit the scope of the broader claims by providing .that the conduit shall open or discharge above the flotation line. The specifications and drawings, however, describe only the last form, a conduit opening above flotation. Must the broad claims, therefore, be limited by the description and drawings, substantially as limited by the nonlitigated claims? Complainants’ expert testifies, answering a question as to how broad a field was intended to be covered by the word conduit, that it must be the peculiarly shaped conduit shown-in the specifications and drawings; that is, a conduit opening into the float chamber above the flotation line. Under the rule of Merrill v. Yeomans, 94 U. S. 568, 24 L. Ed. 235, and decisions following that case, it is clear that this limited construction must be applied to the four broad claims. The inventor carefully describes this peculiar conduit, and fully shows its advantages, without mentioning any other,' except by inference in employing different claims. In the Canfield and Van Auken patent a simpler form of conduit is claimed, so it is plain that the precise description of the Van Auken specification was intentional; Canfield and Van Auken having first applied for their patent. The four claims in suit are thus amended by the description and drawings so as to include only a conduit discharging above the flotation line. 3. Infringement. With the conduit limited as suggested, it seems clear that defendant does not infringe, since its conduit discharges directly into the float chamber at the bottom, far below the line of flotation, and on a somewhat different principle. While the liquid seal in both devices is formed in the inlet as soon as the condensed water reaches the bottom of the depending weir, yet the more permanent seal of Van Auken is maintained in the conduit from the inlet pipe to the top of the conduit, and that of the defendant is maintained in the float chamber itself. This difference accounts for suit being brought only on the four claims, and not on those covering the element of higher outlet. Reading this element into the broad claims, as it seems necessary to do, infringement is avoided. • A like result follows in respect to the water discharge. Van Auken empties the float chamber as soon as the water gets high enough to buoy up the float, while defendant keeps the water constantly at a point just below the flotation line. Van Auken discharges only the water of condensation by the rising of the float, while defendant discharges water, flotage, and air by a like operation. The working of the device is in this respect sufficiently different from Van Auken’s, and on a sufficiently different principle, to avoid infringement, even if the claims as to the conduit are to be given a broad construction, instead of the narrowed one here adopted. Defendant’s water outlet is entirely new, and accomplishes a somewhat improved result. On both grounds, and without considering the air discharge so far as air escapes through the float, infringement is not shown. [149] [2] 4. The Canfield and Van Auken patent. I think it is clear from the proofs that there was no joint invention of the broader elements of this patent, for the same reason that they were all disclosed by Van Auken to Canfield prior to the joint application. This patent may be sustained as a specific improvement of the earlier invention, but as such is not infringed. Even if valid as to the broad claim of a water discharge governed by the float, infringement would be avoided by the different operation of defendant’s liquid discharge, as already explained. There should be a decree in each case dismissing the bill, with costs. Footnotes [*] For other eases see same topic & § number in Dec. & Am. Digs. 1907 to date, & Rep’r Indexes