PETERS V. HANGER.

(Circuit Court of Appeals, Fourth Circuit. February 2, 1904.)

No. 503.

1. PATENTS-ACTION FOR INFRINGEMENT-LIMITATION.

Where plaintiff in an action at law to recover damages and profits for infringement of a patent, in order to bring himself within the terms of Rev. St. § 4921, amended by Act March 3, 1897, c. 391, § 6, 29 Stat. 692 (U. S. Comp. St. 1901, p. 3395), which gives the right of action, but provides that there shall be no recovery for any infringement committed more than six years before the commencement of the suit or action, alleges that the infringements complained of were committed within six years, it is not necessary that defendant should plead the statute, to entitle him to avail himself of plaintiff's failure to prove such allegation, but he may do so under the general issue.

In Error to the Circuit Court of the United States for the Eastern District of Virginia.

H. M. Smith, Jr., and W. H. Singleton (Chas. E. Riordon, on the brief), for plaintiff in error.

Ernest Wilkinson, for defendant in error.

Before GOFF and SIMONTON, Circuit Judges, and MCDOWELL, District Judge.

SIMONTON, Circuit Judge. This case comes up on writ of error to the Circuit Court of the United States for the Eastern District of Virginia. The plaintiff, James E. Hanger, brought an action in the court below for damages and profits against A. L. Peters because of the infringement of his patent rights. He sustained his action under section 4921 of the Revised Statutes of the United States, amended by act of March 3, 1897, c. 391, § 6, 29 Stat. 692 [U. S. Comp. St. 1901, P. 3395]. This section, giving jurisdiction of suits for the infringement of patent rights, concludes:

"But in any suit or action brought for the infringement of any patent, there shall be no recovery of profits or damages for any infringement committed more than six years before the filing of the bill of complaint, or the issuing of the writ in such suit or action."

The plaintiff below, recognizing this, in stating his cause of action, alleged that the infringements complained of occurred since 11th October, 1896, and 3d October, 1902. The defendant pleaded the general issue. The cause coming on for trial before the court and jury, at the conclusion of the testimony the defendant below requested the court to instruct the jury that, as to claims 1 and 2 of the Hanger patent, inasmuch as no act of infringement had been proven during six years preceding the date of the filing of this suit, they must find for the defendant. This was refused, and the refusal is made a ground of exception. The jury having found for the plaintiff below, a writ of error was allowed, and the case is here on several assignments of error. The third of these goes to such refusal of the court.

1. Pleading in infringement suits, see note to Caldwell v. Powell, 19 C. C. A. 595.

The case had occupied some time. A large amount of testimony had been taken. Notes of testimony were had by a stenographer, but had not yet been reduced to ordinary writing. So, when this motion was addressed to the court below, it did not enjoy the advantage which this court has of seeing and considering the whole testimony. It seemed to be a very improbable thing to omit testimony as important as that alluded to in this exception. Indeed, as was stated at the bar, the judge supposed that it was in the atmosphere. We have carefully examined the evidence which is in the record, and have failed to discover any evidence showing the date that any infringement of the patent was made by the defendant below, if, indeed, any infringement was proved. There is much to create a surmise, but nothing to show any act within six years before the suit was brought. Can this avail the defendant below? He pleaded, the general issue, and did not plead the statute.

We are of opinion that the plea of the statute was not necessary in this case. It may be true that in a law case, although in the statement of his complaint the plaintiff may show by dates that his cause of action did not accrue within six years, or the statutory period, whatever that may be, still the defendant cannot avail himself of that, either by demurrer or in any other way, except by the plea of the statute. 13 Enc. Pl. & Pr. 184, 200. The reason is obvious. If the statute be pleaded, the other party may reply, showing that he comes within some exception of the statute. Otherwise he will be precluded. But when the statute prescribes a condition for the suit, and the plaintiff' states that he has fulfilled the condition, this reason does not apply. Under the established rule of pleading, the probata and allegata must agree. A plaintiff must prove the material allegations of his complaint. Requiring him to do so, he can lose nothing of any right he may have, and can set forth a reason for his exception from the statute. In a note to 13 Enc. Pl. & Pr. p. 200, it is stated:

"Though the rule is that a defendant at law must plead the statute of limitations, and cannot raise the defense by demurrer, yet where a cause of action which did not exist at common law is given by statute, and the bringing of the suit within a certain period is made an essential element of the right to sue, and there is no saving or qualification, objection may be taken by demurrer. Such a statute is not strictly a statute of limitations, and the right to sue must be accepted in all respects as the statute gives it;" quoting as the principal case Lambert v. Ensign Mfg. Co., 42 W. Va. 813, 26 S. E. 431; Jackson v. Hull, 21 W. Va. 601; and a number of other cases from many states in the Union,

In Nat. Bk. v. Carpenter, 101 U. S. 567, 25 L. Ed. 815, a demurrer was sustained to a bill in equity on similar ground.

We are of opinion that, when this motion was made by the defendant below, the court erred in not recognizing its force. The plaintiff had failed to prove a material element in his case.

It is ordered that the judgment of the Circuit Court be reversed, and that the case be remanded to that court, with instructions to grant a new trial. Reversed.

WESTINGHOUSE MACH. CO. v. PRESS PUB. CO.
(Circuit Court, W. D. Pennsylvania. February 11, 1904.)

1. PATENTS-INFRINGEMENT.

No. 19.

Infringement of a device for regulating the quantities of air and gas respectively admitted to the mixing chamber of a gas engine is not avoided by so changing the mechanism that the quantity of air admitted remains the same while the quantity of gas is variable.

2. SAME

DEVICE FOR REGULATING OPERATION OF GAS ENGINES.

The Westinghouse and Ruud patent, No. 583,585, for a device for controlling and regulating the operation of gas engines, which may be adjusted at will to admit different proportions of air and gas to the mixing chamber, and also by means of a governor automatically regulates the quantity of the mixture fed to the engine, was not anticipated and is valid as to claims 12 and 18, but claim 2 was anticipated by the Foulis English patent No. 180 of 1881. Claims 12 and 18 also held infringed.

3. SAME RIGHT TO INJUNCTION-THREATENED INFRINGEMENT.

Defendant bought an infringing machine, which it commenced using after suit brought, but with such alterations that it did not infringe. It denied the validity of the patent, however, and throughout the suit asserted its right to use the machine in the manner its construction contemplated, and could have put it in shape for such use in a short time and with little expense. Held, that complainant was entitled to an injunction notwithstanding the fact that there had been no actual infringement.

In Equity. Suit for infringement of letters patent No. 583,585, for means for controlling and regulating gas engines, granted to George Westinghouse, Jr., and Edwin Ruud, June 1, 1897. On final hearing.

J. Snowden Bell and Bakewell & Byrnes, for complainant.

Way, Walker & Morris and Whitaker & Prevost, for respondent.

BUFFINGTON, District Judge. This is a bill in equity brought by the Westinghouse Machine Company against the Press Publishing Company charging infringement of claims 2, 12, and 18 of patent No. 583,585, granted June 1, 1897, for "means for controlling and regulating operation of gas engines," to George Westinghouse, Jr., and Edwin Ruud, and by them assigned to the complainant. The defenses are noninfringement and invalidity of the patent.

There are two important factors in gas engine practice. One is a question of quality or the mixture of proper proportions of air and gas; the other, of the quantity of such mixture fed to the engine. Proper relative proportions of gas and air are the essentials to obtaining quality, and on quality depends proper explosive results and economy of operation. The other is the feeding of such a proper quantity of such quality and no more as shall meet power operative requirements. The conditions affecting these essentials of quality and quantity are variable, and therefore necessitate the use of adjustable controlling factors. Thus, as affecting quality, different gases vary in kind, as natural, artificial, or producer gases. Natural gases differ from each other, and, while received from a single source of supply, will vary from time to time. Temperature, pressure, and other factors also affect quality. These factors all require a different proportionate adjustment

of gas with air in order to obtain the quality of mixture essential to maximum efficiency. The demands for such proportionate changes are so instant that they should be made while the engine is running, and the variations of power requirement is so rapid that an automatic means for increasing or decreasing the fuel supply is required. Such a unitary adjustable mechanism is shown in the patent in suit. Briefly stated, the mechanism is such that it controls the respective quantity of gas and air admitted through separate ports by horizontally rotating independently of each other two sections of a valve, and thereby narrowing the width of such air and gas port openings. This rotating action affects the relative proportions of air and gas, since each valve section is independent of the other, and so permits individual sectional rotary movement. Both these valve sections are adjusted to a vertical conjoint synchronous movement, which vertically narrows both the air and gas openings at the same time, and so increases or decreases the quantity fed to the engine without affecting the quality of the mixture. This vertical movement of the valve is effected by a governor of the ordinary type, so adjusted that as the speed of the engine increases the quantity fed is diminished, and vice versa. The device is well described by one of respondent's witnesses, who says:

"The controlling and regulating device of the patent in suit affords means whereby the separate and independent supply of the constituents of the mixture that is, the air and gas-may be so controlled and regulated that any desired proportion of these constituents may be established to form a desired character of explosive mixture, and thereafter the quantity of the constituents may be controlled or regulated according to the load upon the engine, without varying the established proportions of the constituents. The first of these controlling adjustments is regulated by hand; the second, by a governor performing in this connection the usual office of a governor."

The engine of the defendant was built by a manufacturing company. Without entering into details of construction, it suffices to say that the quality of the mixture is controlled by horizontally hand-rotated valve openings which serve to admit air and gas in proportionate quantities. The mechanism differs from complainant's in that the air inlets are not changed, and through them a fixed quantity of air is always admitted. Proportionate results are obtained by changing the gas inlets alone. Governing the quantity of mixture while leaving the proportions unchanged is secured by a vertically moving valve actuated by a governor, which throttles or unthrottles, to secure speed uniformity, under varying speed conditions, in the same way as complainant's device. This is tersely stated in respondent's brief, which says:

"From an examination of this drawing, it will be seen that the air enters the upper part of the valve casing, and passes through the annular openings or grooves in the upper part of the valve, and thence upward into the mixing chamber above the valve. The gas enters the lower part of the valve casing separately from the air, and, passing through the registering gas ports of the casing and valve, enters the central tube of the valve, and passes up through the same into the mixing chamber above the valve, where it mixes with the air. It will also be seen that by turning the valve around within its casing the gas ports in the lower part of the valve and casing can be brought more or less into registration, and vary the size of the resulting gas inlet openings, while the said rotary movement of the valve has no effect whatever upon the air inlets, since the air apertures in the valve extend entirely around the valve in the form of annular slots. It is also apparent that the vertical movement

of the valve within the casing, under the influence of the governor, will throttle both the gas and the air separately."

The mere fact that respondent's device makes the air a fixed unit, and adjusts proportions through the gas opening, does not differentiate it from the complainant's, where, if necessary, both air and gas openings may be adjusted to secure proper proportions. A patented device that obtained relative motion between two parts by motion of both is not evaded by fixing one part and moving the other only. Tondeur v. Stewart (C. C.) 28 Fed. 561. To us it is apparent that, in substance and in operation, the two devices are the same; their different parts cooperate in substantially the same way as do complainant's, and unite to produce the same result.

Was this device anticipated in the prior art? As the nearest alleged approach is the English patent to Foulis, No. 180 of 1881, we confine ourselves to a discussion of its effect. That patent shows a valve adapted (if combined with proper controlling mechanism) to provide the quality and regulate the quantity of air-gas mixture supplied to a gas engine. Thus one of complainant's experts says it shows "a valve for controlling the air and gas supply, which is adapted to be adjusted in one direction to vary the proportions of the air and gas and in another direction to vary the quantity only of the air and gas." The other describes it as containing "air and gas passages, and a valve mechanism adapted to be adjusted in one direction to vary the proportions of air and gas, and movable in another direction to vary the quantity of the air and gases passing through it." But while a valve substantially such as complainant uses in combination is shown by Foulis, in that it is capable of hand rotary movement to affect quality and vertical movement to affect quantity, yet when it comes to the control of the vertical movement, which in the complainant's device is through a co-acting automatic governor, which curtails or increases the fuel supply in answer to the varying demands of the engine, and so secures uniformity of speed under varying loads, we find such controlling appliance is not disclosed in the Foulis device or any such combination shown. It is true in this patent Foulis sought both to provide quality and regulate quantity, and he so expressed himself as we shall see; but it seems to us from a study of his patent he sought to do so by two different appliances, and not by a unitary co-acting structure such as complainant uses. As to his method of obtaining quality, viz., a proper proportionate mixture, he says in his provisional specification:

"The object is so to construct the valve attached to the air and gas mixing apparatus described in the aforesaid specification, No. 2,422, A. D. 1880, so that the air and gas orifices always maintain a constant ratio of and to each other. This is effected by making the valve casing or cylinder with a piston therein, which piston, as it rises or falls, opens or closes the air and gas ports in this way in a given proportion."

In his specification he states:

"In order that the air and gas orifices of the valve attached to the air and gas mixing apparatus, described in the aforesaid specification of my patent, No. 2,422, A. D. 1880, shall always maintain a constant ratio of and to each other, the valve casing or cylinder is provided with a piston, which piston, as it rises or falls, opens or closes the air and gas ports in this way in a given