Flower v. City of Detroit/Opinion of the Court

This is a suit in equity, brought in the circuit court of the United States for the Eastern district of Michigan, by James * Flower, Thomas Flower, and George Flower, against the city of Detroit, the fire commission of the city of Detroit, Benjamin Vernon, president thereof, and the board of water commissioners of the of the city of Detroit, for the infringement of reissued letters patent No. 6,990, granted March 14, 1876, on an application filed February 17, 1876, to Thomas R. Bailey, Jr., for an 'improvement in hydrants;' the original patent, No. 75,344, having been granted to said Bailey, March 10, 1868. Among the defenses set up in the answer, it was alleged that new matter, not constituting any substantial part of the alleged invention upon which the original patent was granted, was introduced into the specification of the reissue, and that the reissue is not for the same invention as the original patent, and is void. The specifications and claims of the original and of the reissue are here placed side by side in paral el columns, the parts in each which are not found in the other being in italic:

ORIGINAL.

'To all whom it may concern:

'Be it known that I, T. R. Bailey, Jr., of Lockport, in the     county of Niagara and state of New York, have invented a new      and improved hydrant fire-plug; and I do hereby declare that      the following is a full, clear, and exact description      thereof, which will enable those skilled in the art to make      and use the same, reference being had to the accompanying      drawings, forming part of this specification.

'This invention relates to a new and improved method of constructing fire-plugs or     hydrants; and the invention consists in operating a cylinder      valve in a suitable case, and in the arrangement and      combination of parts connected therewith, as hereinafter      described.

'Figure 1 represents a longitudinal central section of the     hydrant, showing the parts of which it is composed, and the      manner of their arrangement. Fig. 2 is a cross-section of     Fig. 1 through the line, x, x.

'Similar letters of reference indicate corresponding parts.

'A represents the hydrant tube, from which the water is     discharged. B is the horizontal section which is connected     with the 'water-main' and which forms the valve-chamber.

'C is a loose casing around the hydrant tube for protecting     the tube from dirt, etc. D is the cylinder valve which has      its seat at its lower end, on elastic or leather packing,      secured in a groove, as seen in the drawing at a. E is a rod,     having a screwthread on its upper end, by which the valve IS      OPERATED. F IS A SLEEVE-NUT, which engages with the screw on     the rod, raising and lowering it as the nut is turned. This     nut is turned by a wrench on the head, G.

'The sleeve-nut is secured in the cap of the hydrant by a     collar, and packing under the hollow cylinder stuffing-box,      H, as seen in the drawing. J is a yoke, which is attached to     the rod, E, by a set-screw, and which is sequred in the tube,      A, and prevented from turning, as it moves up and down, by      projecting lugs, as seen in Fig. 2; and it will be seen that      the arrangement is such that the rod and valve may be raised      and lowered without being rotated. This secures a uniform and     perfect bearing of the valve on its seat, the packing, a,      remaining undisturbed.

'Provision is made for the discharge of the waste water by an     orifice beneath the valve, D, marked 'f,' which orifice is      opened and closed by a valve marked 'g,' as seen in the      drawing, h is a wing on the top of this valve.

'As the cylinder valve, D, descends, the angular flange, i,     on its inside strikes the wing, h, and raises the valve as      seen

in the drawing; thus allowing any water which may remain in     the hydrant to escape through the orifice, f, and aperature,      k. It will be thus seen that no water will be left in the      hydrant to freeze in cold weather.

'The tube, A, is secured to the horizontal section, B, by a     ring-nut, m, which contains recesses for packing-rings around      the valve, as seen at n, n. Packing around the valve is      secured by another ring-nut, o, and also under the end of the      tube, A, as seen in the drawing.

'P represents the discharge pipe, with a screw for the     attachment of the hose, and a cap-piece for covering the pipe      when the hydrant is not in use.

'Having thus described my invention, I claim as new, and  desire to secure by letters patent--

'(1) A hydrant or water plug, constructed substantially as     shown and described; that is to say, with the parts A and B      connected together, as shown, and with a cylinder valve and      a waste-water valve connected and operated in combination,      substantially as herein specified.

'(2) The arrangemento f the parts, A, B, valve, D, case, C,     and stuffing-box, H, as lierein described, for the purpose      specified.'

REISSUE.

'To all whom it may concern: 'Be it known that I, T. R. Bailey, Jr., of Lockport, in the     county of Niagara and state of New York, have invented a new      and improved hydrant fire-plug; and I do hereby declare the      following to be a full, clear, and exact description thereof,      which will enable others skilled in the art to which my      invention relates to make and use the same, reference being      had to the accompanying drawing, which forms a part of this      specification.

'This invention relates to improvements in the construction     of fire-plugs or hydrants.

'In the drawing, figure 1 represents a longitudinal central     section of a hydrant, according to my invention;

'Fig. 2, a cross-section of the same through lines, x, x, of     Fig. 1.

'My invention consists in the following parts and     combinations, as hereinafter specified and claimed, wherein.

'A represents the hydrant tube, from which water is     discharged. B is the horizontal section which is connected     with the water-main, and which may form the valve-chamber.

'C is a loose movable casing around the hydrant tube. D is     the cylinder valve, having its seat at its lower end, upon      suitable elastic packing, secured in a groove, as shown at a. E is a rod, having a screw-thread on its upper end, by which     the valve is operated. F is a sleeve-nut engaged with

the screw-nut on the rod, E, lifting and lowering said rod as     the nut is turned one way or another. This nut is turned by a     wrench or crank, or other suitable device, on the head, G.

'The sleeve-nut is screwed in the cap of the hydrant by a     collar, and packing under the hollow cylinder stuffing-box,      H. J is a yoke, which is attached to the rod, E, by a      setscrew, or its equivalent, and it is screwed in the tube,      A, and prevented from turning, as it moves up and down, by      projecting lugs, as shown in detail at Fig. 2. It will be      noticed that the arrangement is such that the rod and valve      may be raised and lowered without being rotated; thus      securing a uniform and perfect bearing of the valve on its      seat, the packing, a, remaining undisturbed.

'Provision is made for the discharge of the waste water by an     orifice, f, beneath the valve, D, which orifice is opened and      closed by a valve, g. A wing, h, is provided upon the top of     this valve.

'As the cylinder valve, D, descends, the angular flange, i,     on its inside, striking the wing, h, raises the valve, as      shown in

the drawing, and allows any water which may remain in the     hydrant to escape down through the orifice, f, and aperature,      K; thus preventing any retention of water, above the freezing      level.

'The tube, A', is secured to the horizontal section, B, by a     ring-nut, m, which contains recesses for packing-rings around      the valve, as shown at n. Packing about the valve is also     secured by another ring-nut, o, and also under the end of the      tube, A, as shown in the drawings.

'P represents the discharge pipe, with a screw for the     attachment of the hose, and a cap-piece for covering the pipe      when the hydrant is not in use.

'''It will be observed that the casing, C, loosely rests upon     the main, B, or upon a branch projecting upward from the      same. This casing extends upward, enveloping the main portion     of the water-pipe, A, at least that portion which is      subterranean. Said casing extends upwards, and fits loosely     about the plug or hydrant at the portion'' A'. Above the upper     terminus of the casing, C, is provided the bead, a, upon the

''hydrant proper. Sufficient space is left between the bead, a,     and the upper terminus of the casing, C, to permit o      sufficient up and down play of the said casing, C, for the      purpose which will hereafter more fully appear. This distance     between the bead and casing may be adjusted to any desired      distance, thus lengthening or shortening it, by means of its      screw attachment at its base''.

'''The main function of the casing, C, is to prevent     derangement of parts during cold weather by the ground      alternately freezing and thawing around the hydrant or plug. This process of freezing causes the surrounding earth, by its     expansion, to lift or upheave, and thus be liable to derange      the hydrant or plug. This upheaval or movement is received by     the casing, C, which, by its capability of sliding loosely up      and down, will accommodate the upheaval of the earth above      mentioned, without any liability to derange the plug or      hydrant. This is the chief function of the casing, C,     although it likewise serves the purpose of protection to the      water-pipe, A''.

'What I claim is--

'(1) In combination with a hydrant or fire-plug, a  detached and surrounding casing, C, said casing adapted   to have an independent up and down motion sufficient to   receive the entire movement imparted by the upheaval of   the surrounding earth by freezing, without derangement   or disturbance of the hydrant or plug proper,   substantially as shown.

'(2) In combination with a hydrant or fire-plug, pipe, A, the     supply pipe, B, and cylinder valve and waste-valve, connected      and operated substantially as herein shown and described.

'(3) The combination of the hydrant or fire-plug pipe, A,     supply pipe, B, valve, D, casing, C, and stuffing-box, H,      substantially as and for the purpose shown.'

The drawings of the original and of the reissue are also here placed side by side:

The material difference between the descriptive parts of the two specifications is that, in the reissue, it is stated that the casing, C, is movable, and that sufficient space is left between the bead, a, upon the hydrant proper, and the upper terminus of the casing, C, to permit of sufficient up and down play of the casing, C, to allow it to slide loosely up and down, to accommodate the upward and downward movement of the earth during the process of freezing and thawing, without any

liability to derange the plug or hydrant. The casing could not thus slide loosely up and down unless sufficient space were left between the bead, a, and the upper terminus of the casing. No suggestion of such arrangement is found in the specification of the original patent, and the drawing of that patent shows no space between the upper terminus of the casing and the bead or flange ahove it. it. This is new matter introduced into the specification of the reissue, contrary to the express inhibition of section 4916 of the Revised Statutes. Claim 1 of the reissue is for an invention not indicated or suggested in the original patent, namely, the independent up and down motion of the casing. In addition to this, the drawing of the original patent shows a close contact between the top of the casing and the bead or flange above it, so as absolutely to forbid any such independent up and down motion of the casing as is covered by the first claim of the reissue, while the drawing, Fig. 1, of the reissue, shows a sufficient space between the top of the casing and the bead or flange above it to admit of such independent up and down motion. Issue having been joined, proofs were taken on both sides, and the circuit court entered a decree dismissing the bill, from which the plaintiffs have appealed. Its opinion accompanies the record, and is reported in 22 Fed. Rep. 292. It held that the reissued patent was in valid, as matter of law, upon a comparison of the original with the reissue. We concur in this view.

It is sought to sustain the validity of the reissue by attempting to show that the model filed in the patent-office with the original applicato n exhibited the invention covered by the first claim of the reissue. It is doubtful whether that fact is satisfactorily established. But, irrespective of this, the case falls directly within the recent decision of this court in Parker & Whipple Co. v. Clock Co., 123 U.S. 87, ante, 38. It was held in that case that what was suggested in the original specification, drawings, or patent-office model is not to be considered as a part of the invention intended to have been covered by the original patent, unless it can be seen from a comparison of the two patents that the invention which the original patent was intended to cover embraced the things thus suggested or indicated in the original specification, drawings, or patent-office model, and unless the original specification indicated that those things were embraced in the invention intended to have been secured by the original patent. See, also, Hoskin v. Fisher, 125 U.S. 217, ante, 834. In the present case it cannot be seen from a comparison of the two patents that the original specification indicated that what is covered by the first claim of the reissue was intended to have been secured by the original. In the present case, also, the reissue was not applied for until nearly eight years after the original patent was granted, and the reissue was taken with the manifest intention of covering, by an enlarged claim, structures which in the mean time had gone into extensive public use, and which were not covered by any claim of the original patent. Infringement is alleged only of claims 1 and 3 of the reissue. As to the casing, C, of the third claim, it cannot, any more than the casing, C, of the first claim, be held to cover a casing which has the independent up and down motion referred to. Such casing must be construed to be the casing exhibited in the drawing annexed to the original patent; that is, one in which the up and down play is restricted by the overlapping bead or flange. On any other construction' claim 3 is an unlawful expansion, in regard to the casing, of what is found in the original patent. In addition to this, if the casing of claim 3 is only a casing which has no end-play, it is anticipated by what is shown in letters patent No. 19,206, granted to Race and Mathews, January 26, 1858, which patent was the subject of the decision of this court in Mathews v. Machine Co., 105 U.S. 54. The decree of the circuit court is affirmed.