Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; John P. Barnes, Judge.
Before SPARKS and TREANOR, Circuit Judges, and LINDLEY, District Judge.
Plaintiff questions the propriety of a decree of the District Court finding invalid claims 10 and 13 of patent No. 1,537,050, and claim 9 of patent No. 1,537,051, both granted on May 5, 1925.*fn1 Each relates to improvements in railway car construction.
Campbell, the patentee, after some six earlier attempts along the same line, applied for and obtained the patents; the claims thereof, with which we are concerned, being substantially the same. In patent No. 1,537,050 he carried forward his efforts to build a useful hopper car of maximum capacity within the dimensional limits necessitated by operating conditions of railroads. He provided that the sides of the car should be applied to inside stakes, whereas common practice in the past had been to place the stakes on the outside. Yet he admitted that it was old in the art to provide inside stakes. By placing the side wall plates on the outside, he secured increased width of the interior without increasing that of the exterior. At the top he bent the side wall plates inwardly for attachment to the top rail which in turn was tilted or inclined in order that maximum capacity might be obtained in loading the car.
His side wall plate was "one integral piece of metal, offset or deflected inwardly adjacent the ladder rungs in order to provide a recessed panel within which the ladder rungs may be placed without projecting beyond the side of the car." By bending the side walls outwardly from near the top and the ends inwardly, he obtained increased width and consequent capacity, with room for safety appliances within the end recesses, without change in exterior dimensions.It was old to depress the side wall at the end of the car, but to utilize an integral side wall in so doing was new.
In patent No. 1,537,051 he disclosed the same conception; namely, to provide a car with an interior maximum width possible under given road clearances. His side wall he inclined upwardly and inwardly at the top and secured to the vertical flange on the top rail. He sloped it outwardly from a point about half way between the corner post and the bolster and then continued it in a straight line to a similar point at the other end of the car where it was again tapered similarly inwardly. Thus, by placing his stakes on the inside and the walls outside of them and extending the side walls outwardly from near the top to the bottom of the car and inwardly from a point midway between the bolster and the corner post at the end of the car, he achieved his purpose of larger capacity without increasing the dimensions of the car or changing its mechanical structure. Plaintiff also asserts novelty in the specific manner of attachment and riveting. But plaintiff admits that the combination, if amounting to invention over the then existing art, must be limited to the narrow and specific construction set forth in Campbell's patents. The District Court believed that there was no precise anticipation but that the teachings of the art were such as to negative invention and that Campbell, with the art before him, exercised only mechanical skill in adapting its teachings to his specific combination.
The Patent Office considered many citations, all of which have been reproduced in this record, and granted the patents over such references. Plaintiff has met with commercial success, asserting that Campbell's car has been adapted in some years to the extent of 100 per cent. of cars of such class purchased by railroads. But this claim is disputed, for the reason, as defendant says, it is based upon Campbell's conclusion as to whether the cars purchased were within the scope of his patents. Undoubtedly, however, the combination has been successful and largely useful. So plaintiff urges, in support of its contention of invention, the presumption of validity which attaches to all patents, reinforced and confirmed, as it says, by the distinction from voluminous prior art by the Patent Office and the later success of the car.
In the prior art we find that in the American Engineer and Railroad Journal for August, 1902, it was said that an ingenious method of increasing the cubical capacity without adding materially to the width had been shown by certain drawings of "Pittsburgh" coal cars. "At the brake end," the article stated, "the side planks are cut off at the first stake and set in sufficient distance to accommodate the hand holds, without projecting beyond the outer faces of the rest of the siding. * * * In this way the width of the car is made six inches greater all along except at the brake end." These cars were made of wood. Thereafter, steel cars came largely into use.
In 1911, Streib, in patent No. 1,777,829, said that his invention had for its object the building of a car, which for a given capacity "will have the maximum width within the clearance limits allowed and yet permit the application of safety appliances such as side ladders and hand holds * * * without reducing the width of the car throughout the entire length of its body and consequent reduction of cubic capacity." His design was embodied in steel cars made for the Woodward Iron Company, in which, between the bolster and the end of the car, the side wall was offset inwardly by the width of a Z-bar stake to provide space for the ladder. True, Streib's depressed end, providing space for the ladder, occupies twice the space actually necessary to accommodate the ladder; but surely it was not invention to reduce the area by one-half. A casual observer of Streib's car would see immediately that he had utilized twice as much space for the ladder as necessary.
Shortly thereafter the Virginian Railroad purchased similar cars, the side walls of which were sloped inwardly near the top to permit the angle bar top rail to be outside and thus make the cars "self-clearing" in dumping. Obviously, if the angle bar top rail was on the inside it would obstruct coal in dumping the load. In 1920 the C. & O. Railroad Company purchased cars similar to the Virginian cars, except in details not deemed important. Instead of using a Z-bar stake for making the offset the end-most side plate was bent to a Z-form at its inner edge and sloped at the top to fit the adjoining side sheet.
In April, 1921, Pilcher applied for patent No. 1,433,096 in which he disclosed a design for high capacity, wide bodied hopper cars in which he inclined the sides inwardly from the bolster to the end of the car, thus affording clearance space for the ladder. During the same year the Norfolk & Western built such a car.
Campbell on August 31, 1922, filed his application for patent No. 1,474,814, in which he used inside stakes, admitting that they had been used before, but claiming that he achieved a greater "capacity when the load is heaped * * * as compared with previous constructions even when inside stakes have been employed." Applications for the two patents in suit followed on April 4, 1923, and May 24, 1923, respectively.
Thus we find in the prior art that inside stakes were old; that various cars had been built with offsets which inevitably increased capacity; that, though in some or all of them the side pieces were not integral, they were made in two sections and were so united as in the end to be ...