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Ross WINANS, PLAINTIFF IN ERROR, v. ADAM

December 1, 1853

ROSS WINANS, PLAINTIFF IN ERROR,
v.
ADAM, EDWARD, AND TALBOT DENMEAD.



THIS case was brought up by writ of error from the Circuit Court of the United States for the District of Maryland.

It was an action brought by Ross Winans for the infringement of a patent-right. The jury, under the instruction of the District Judge, the late Judge Glenn, then sitting alone, found a verdict for the defendants; and the plaintiff brought the case to this court by a writ of error.

The nature of the case is set forth in the explanatory statement prefixed to the argument of the counsel for the plaintiff in error.

It was argued by Mr. Latrobe, for the plaintiff in error, and by Mr. Campbell, for the defendant in error.

Statement and points of plaintiff in error.

On the 26th June, 1847, Ross Winans, the plaintiff in error, obtained letters-patent of the United States, for a new and useful improvement in cars for transportation of coal, &c.

The occasion for the invention thus patented, and the principle of it, are well set forth in the specification, thus,––

'The transportation of coal, and all other heavy articles in lumps, has been attended with great injury to the cars, requiring the bodies to be constructed with great strength, to resist the outward pressure on the sides, as well as the vertical pressure on the bottom, due, not only to the weight of the mass, but the mobility of the lumps amongst each other, tending 'to pack,' as it is technically termed. Experience has shown, that cars on the old mode of construction cannot be made to carry a load greater than their own weight; but, by my improvement, I am enable to make cars of greater durability than those heretofore made, which will transport double their weight of coal.

'The principle of my invention, by which I am enabled to obtain this important end, consists in making the body, or a portion thereof, conical, by which the area of the bottom is reduced, and the load exerts an equal strain on all parts, and which does not tend to change the form, but to exert an equal strain in the direction of the circle; at the same time this form presents the important advantage, by the reduced size of the lower part thereof, to extend down within the truck and between the axles, thereby lowering the centre of gravity of the load.'

The specification then gives a detailed description of the mode of constructing the cars in question, and proceeds thus:––

'What I claim as my invention, and desire to secure by letters-patent is, making the body of a car for the transportation of coal, &c., in the form of a frustum of a cone, substantially as herein described, whereby the force exerted by the weight of the load presses equally in all directions, and does not tend to change the form thereof, so that every part resists its equal proportion, and by which also the lower part is so reduced as to pass down within the truck frame, and between the axles, to lower the centre of gravity of the load, without diminishing the capacity of the car as described.'

And the specification concludes with a claim for a portion of the construction, not important in this connection.

From the testimony it appears that cars, constructed by the plaintiff, in accordance with the specification, while they weighed but 5.750 lbs. each, carried 18.550 lbs. of coal–making the weight of the load, in proportion to the weight of the car, as 3.3 to 1–that the thickness of the sheet iron used in the construction of the bodies was but 3.32ds of an inch, and that the dimensions of the band around the top were 1/4 of an inch by 2 inches; and it is further shown, in illustration of the importance of the invention, that the plaintiff had constructed a model car, which, weighing but 2 1/2 tons, carried, nevertheless, 9 1/2 tons of coal 'in perfect safety and satisfactorily from Cumberland to Baltimore.' The proportion of the weight of the car, in this instance, to the weight of coal carried in it, was as 1 to 4 nearly. It appears further, from the testimony, generally, that the cars referred to were used in the transportation of coal from the mines near Cumberland to Baltomore.

It then appears that the defendants, 'in view for a call for cars from the mining roads near Cumberland,' in 1849, '50, required their draftsman, Cochrane, to get up a car that would suit their purposes; that he went to the Reading road, and 'finding nothing there, returned to Baltimore, and went to the plaintiff's shops, where he saw a car nearly finished, which he examined and measured.' That it first occurred to him to make a square car, but that, as this would interfere with the wheels, he made an octagonal one.

Another witness proves, that the iron used in the car, thus built by the defendants, was of the same thickness as that used by the plaintiff, to wit, 3.32ds of an inch, while the band around the top was of the same thickness,–to wit, 1/4 of an inch, and 1 1/2 inches in width.

It thus appears that a patent was granted, in 1847, to Ross Winans for a car for carrying coal, whose merits may be summed up thus;–that it carried more coal in proportion to its own weight than any car previously in use, and that the load instead of distorting it, preserved it in shape, acting as a framing.

These eminent advantages, which increased the available power of the locomotive engine, looking to revenue on coal as a freight, from 50 to 100 per cent. were to be attributed to the peculiar shape of the car body, consisting of a frustum of a cone, which permitted the use of iron, as thin as has been described, lessening, in proportion, the weight of the car, or the weight, the transportation of which by the locomotive gave no return in revenue; and it appears that, in view of obtaining the best results from his invention, the plaintiff, in 1849, '50, at the instance of the witness Pratt, perfected a model car for certain mining roads near Cumberland;–that this model car was examined and measured by the defendant's draftsman, to aid him in getting up coal cars for other mining companies in 1849 and 1850; and, subsequently, cars of the same weight of material in the bodies, which differed from the plaintiff's in this only, that while the latter were cylindrical and conical, the others were octagonal and pyramidal,–were built by the defendants, to the number of 24.

Believing that the cars thus built by the defendants were built in palpable violation of his patent, the plaintiff brought the present suit.

It will be seen, by examining the record, that the main question before the jury was, whether the cars, so built by the defendants, were substantially the same in principle and mode of operation with the car described and claimed by the plaintiff in his specification, and experts were examined on both sides on this point.

On the part of the defendants it was contended, that the cars of the defendants were octagonal in shape, while the plaintiff's were cylindrical.

On the part of the plaintiff it was insisted, that this was immaterial, provided the octagonal car obtained the same useful results, through the operation of the same principles in its construction; and it was suggested that, if the original construction of the body in right lines saved the infringement, an hundred-sided polygon would be without the patent; and also that, in point of fact, even the conical car was oftener a polygon than a true curve, owing to the character of the material from which it was built; and that if, by accident, it came from the shops a true theoretical cone, a day or two's use made a polygon of it; and that the immediate tendency of the load of coal, when put into an octagon car, was to bulge out its size and convert it into a conical one. All of which was urged for the purpose of showing that the question was necessarily a question as to whether the change of form was colorable or substantial–a question of fact, which it belonged to the jury to determine.

It is not necessary, in this statement, and in view of the questions arising on this appeal, to go into evidence in regard to the merely colorable difference of construction in detail. All the witnesses, on both sides, proved that the advantages which Winans proposed to obtain were substantially obtained in the defendant's cars–the plaintiff's witnesses swearing to the fact directly, and the defendant's witnesses admitting it on cross-examination; and the only testimony quoted now is that of the defendant's own and leading witness.

'That the advantage of a reduced bottom of the car thus obtained, whether the car was conical or octagonal; that the strengthening of the bottom, due to the adoption of the conical form, was the same when the octagonal form was adopted or the circular; that the circular form was the best to resist the pressure, as, for instance, in a steam boiler, and an octagonal one better than the square form; that the octagonal car was not better than the conical car; that for practical purposes, one was as good as the other; that a polygon of many sides would be equivalent to a circle; that the octagon car, practically, was as good as the conical one; and that, substantially, witness saw no difference between the two.'

The testimony must indeed be all one way, where the plaintiff is willing to rest his case on the defendant's own showing.

In the view of the plaintiff below, there were two questions; the first for the court, being the construction of the patent; the second for the jury, being the substantial, or only colorable difference between the cars in principle and mode of operation.

The plaintiff prayed the Circuit Court (his Honor, the late Judge Glenn, sitting alone) accordingly.

In framing the prayer for the court's construction of the specification, the language of the specification was adopted, in describing the object of the invention; and the court were asked to say to the jury 'that what they had to look at was not simply whether, in form and circumstances, which may be more or less immaterial, that which had been done by the defendant varied from the specification of the plaintiff's patent, but to see whether, in substance and effect, the defendants, having the same object in view as that set forth in the plaintiff's specification, had, since the date thereof, constructed cars which, substantially, on the same principle and on the same mode of operation, accomplished the same result.' And to give more certainty to the prayer, the plaintiff added the instruction as prayed for by him, 'that to entitle the plaintiff to a verdict, it was not necessary that the body of the defendants' cars should be conical, in the exact definition of the term, provided the jury should believe that the form adopted by the defendants accomplished the same result, substantially, with that in view of the plaintiff, and upon substantially the same principle and in the same mode of operation.'

The language of the first part of the prayer, here quoted, was taken verbatim, nearly, from the charge of Sir N. C. Tindal to the jury in the case of Walton v. Potter and Horsfall, Webster's Pat. Cases, 587.

This was a case where the plaintiff's patent was for the substitution of sheets of India rubber for leather for the insertion of the teeth, in the manufacture of cards for carding wool; and the infringement lay in the use of cloth saturated with a solution of India rubber for the same purpose; and the court, after determining the construction of the specification, gave substantially the same instruction that the plaintiff prayed for here. It is in this case that C. J. Tindal says, 'That if a man has, by dint of his own genius and discovery, after a patent has been obtained, been able to give the public, without reference to the former one, or borrowing from the former one, a new and superior mode of arriving at the same end, there can be no objection to his taking out a patent for that purpose. But he has no right whatever to take, if I may so say, a leaf out of his neighbor's book, &c.'

It would be hard indeed to find a case where the court's decision, applied to the facts in this cause, more completely negatived the right, set up by the defendants, to build the cars which they did build; for here, the taking of the leaf out of the book is not left to inference, but day and date are given for the act.

To the same point is the case Huddart v. Grimshaw, also cited in the court below. Webster's Patent Cases, 95.

Here a patent had been obtained for making rope, a part of the process being the passage of the strands, while being twisted, through a tube; and it appeared that they had formerly passed through a hole in a plate. If the tube and the plate were the same, substantially, the difference being colorable only, then the patent was void, otherwise it was good; and the question was left to the jury, who found for the plaintiff.

To the same point is the case of Russell v. Cowley & Dixon, Webster's Patent Cases, 463.

This was the case of a patent for welding iron tubes, by drawing them, at a welding heat, through a conical hole. The infringement was the passing them between rollers; and the question of colorable or substantial difference, was referred to the jury.

So in the case of Morgan v. Seaward, Webster's Patent Cases, 170, which was upon Gallaway's patent for paddle wheels of steam-vessels, and where the question of infringement having arisen, the Court, Alderson, B., told the jury 'that the question would be, simply, whether the defendant's machine was only colorably different; that is, whether it differed merely in the substitution of mechanical equivalents for the contrivances which were resorted to by the patentee.' And after referring to points of construction, the court continues, 'Therefore, the two machines were alike in principle; one man was the first inventor of the principle, and the other has adopted it; and though he may have carried it into effect by substituting one mechanical equivalent for another, still you (the jury) are to look to the substance, and not the mere form, and if it is in substance an infringement, you ought to find so.'

So, too, in the case of Crossley v. Beverly, growing out of Clegg's patent for a gas meter; and referred to by Alderson, B., in the case of Jupe v. Pratt and others, Webster's Patent Cases, 144, as follows: 'There never was a more instructive case than that. I remember very well the argument put by the Lord Chief Baron, who led on that case, and succeeded. There never were two things to the eye more different than the plaintiff's invention, and what the defendant had done in contravention of his patent-right. The plaintiff's invention was different in form; different in construction; it agreed with it only in one thing, and that was, by moving in the water. A certain point was made to open either before or after, so as to shut up another, and the gas was made to pass through this opening; passing through it, it was made to revolve it; the scientific men, all of them, said, 'the moment a practical, scientific man has got that principle in his head, he can multiply, without end, the forms in which that principle can be made to operate.'

As in the case under discussion; the moment a practical, scientific man is furnished with the idea of giving to the car a shape which will, by dispensing with the framing ordinarily used, enable him to make it lighter in proportion to its load, than it has ever been made before, he can multiply without end the forms in which this principle can be made to operate. He can make the car a polygon of an hundred sides, of twenty sides, or of eight sides. He can vary the angle of the cone, or pyramid, through which the coal is discharged, ad infinitum. He can make the opening at the bottom larger or smaller to please his fancy. He can avail himself or not of the advantage of lowering the car, in position, so as to lower the centre of gravity. Still the question must always be, whether, whatever the shape he adopts, he is not availing himself of the principle first suggested by the partentee; a question which, in a court of law, is at all times a question not for the court, but the jury; after the former shall have given to the specification that construction which is to govern the latter in determining whether the infringement complained of falls, substantially, in principle and mode of operation, within the plaintiff's patent.

The authorities here cited, and which were relied on in the court below, are held to sustain the prayer of the plaintiff; that, having pronounced upon the construction of the specification, the ...


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