Parts of the original application for patent No. 587,442, as shown by the file wrapper and contents, are as follows:

"This method, known as the 'series-multiple' method of regulation, with its inherent advantages, has been proposed heretofore, and its characteristics have been perfectly understood theoretically; but to our knowledge no one has succeeded in carrying it into practice in a satisfactory manner. The principal difficulty in the way of making a satisfactory application of this method appears to have been that it is impossible to make the change of connection from series to multiple and vice versa while the current was still passing through the motors without forming such arcs at the contact points as would speedily disintegrate them and render the apparatus unreliable and subject to rapid depreciation. For overcoming this difficulty a number of plans have been suggested. For instance, it has been proposed that at the moment of mak ing the change the circuit should be interrupted either entirely or by the interposition of a considerable resistance, so that there should be no current passing while the change was being made, and, in consequence, no arcs at the contact points.

"This method [the method of the patent] in general consists in regulating the power and speed of mechanism driven by two electric motors by placing the two motors in series for slow speed and changing them to multiple connection for higher speed by first short-circuiting one motor while its field magnet is still energized, and then disconnecting one terminal of such motor and reconnecting it to the corresponding terminal of the other motor, whereby the two motors may be in multiple with each other. We accomplish this without the use of external means, such as a circuit breaker or resistance to interrupt or substantially reduce the current while the change is being made.

"Referring to Figs. 1 to 9, it will appear that in the first position, with the motors out of action, there would be two breaks in the circuit, one between the trolley T, and resistance R, and the other between the armatures, Aa, of the motor A, and the field, Bf, of the motor B. In the second step, Fig. 2, the latter break will be closed, there remaining only the break between the trolley and resistance. In the second step the two combinations shown in Figs. 2 and 3 will be produced, the two breaks in the circuit being closed in succession, and the motors being left in series with each other and the resistance. In the third step the resistance is short-circuited and the motors are in series, as shown in Fig. 4. At the fourth step the two combinations shown in Figs. 5 and 6 are produced. At the fifth step the combinations shown in Figs. 7 and 8 are produced; and, lastly, at the sixth step the combination shown in Fig. 9 is effected

"These different figures show the combinations made at each step in the regulation. Thus, referring again to the figures, in Fig. 18 the circuit is open at two points; in Fig. 19 the circuit is open between 1 and 2, and closed between 9 and 10; in Fig. 20 the circuit is as follows: From trolley T, to plates 1 and 2. to resistance R, to field Af, to armature Aa, to blow-out magnet, to plates 9 and 10, to field Bf, to armature Ba, to ground G, giving the combination indicated in Fig. 3. In Fig. 21 the circuit is from the trolley T, to plates 1 and 2, to plates 4 and 3, to field Af, to armature Aa. to blow-out magnet, to plates 9 and 10, to field Bf, to armature Ba, to ground G, giving the combination indicated in Fig. 4. In Fig. 22 the circuit is from the trolley T, to plates 1 and 2, to resistance R, to the field Af. to the armature Aa, to blow-out magnet, to plates 5 and 6. to field Bf, to armature Ba, to ground G, giving the combination shown in Fig. 6 with the motor, A, short-circuited by a connection through plates 9 and 10 to ground G. In Fig. 23 the circuit is from the trolley T, to plates 1 and 2, to plates 4 and 3, to field Af, to armature Aa, to blow-out magnet, to plates 5 and 6, to ground G, giving the combination shown in Fig. 7. In Fig. 24 the circuit is from trolley T. to plates 1 and 2, where it divides, one branch going by plates 4 and 3 to field Af, to armature Aa, to blow-out magnet, to plates 5 and 6, to ground G. while the other branch goes by plates 8 and 7 to field Bf, to armature Ba, and to ground G, giving the combination shown in Fig. 8. In Fig. 25 the circuit is from trolley T, to plates 1 and 2,

then dividing and one branch going by plates 4 and 3 to field Af, to armature Aa, to blow-out magnet, to plates 5 and 6, to ground G, with a subbranch going from plate 4 to plates 8 and 7, to plates 11 and 12, to armature Aa, and thence to ground as before, establishing thus a shunt around the field magnet Af, containing resistance Y. The other branch goes from plate 4 to plates 8 and 7, to field Bf, to armature Ba, and to ground at G, with a subbranch from plate 7 to plates 11 and 13, and by a resistance Y to armature Ba, to ground G, thus shunting the field Bf. This gives the last combination indicated in Fig. 9.

"It will thus be seen that in the various combinations that we have brought about by the successive connections established by the switch, we have first placed the motors in series for slow speed as in Fig. 4, and then short-circuited one motor as in Fig. 6, then disconnected the inner terminal of the short-circuited motor as shown in Fig. 7, and finally reconnected the said terminal to the corresponding terminal of the other motor, as in Fig. 8, so that the two have gradually been shifted from series to multiple connection. In addition we have modified the action of the two motors while in their respective connections by means of resistance R, when they were in series, and by shunting their field magnets when in multiple and thereby secured additional rates of speed. By this plan we only use a resistance when the current is at a minimum, the motors being in series, but when a greater amount of current is required by the motors in multiple, we do not use a resistance, but rely upon a change in their field magnet strength to attain the last degree of regulation thereby avoiding loss in resistance. It must also be noted that the combinations shown in Figs. 5 and 6 are effected almost simultaneously, the object of reinstating the resistance being to have to take the place for a short period of the short-circuited motor, and preserve the other motor from being injured by a sudden excess of current, and it is not intended and does not in effect act to cause a material decrease of the current, so that the change of connections shall take place while the circuit is substantially opened.

"1. The method of regulating the power and speed of mechanism driven by two electric motors, which consists in placing the two motors in series for slow speed, and changing them in multiple connection for higher speed by first shortcircuiting one motor while its field magnet is still energized, and then disconnecting one terminal of that motor and connecting it to the corresponding terminal of the other motor.

"10. The method of regulating the power and speed of mechanism driven by two electric motors which consists in placing the motors in series connection and then changing them to multiple connection while their field magnets are still energized and without interrupting or reducing the current by external means."

L. F. H. Betts, for appellant.
Glenn S. Noble, for appellee.

Before GROSSCUP, BAKER, and SEAMAN, Circuit Judges.

BAKER, Circuit Judge (after stating the facts as above). In General Electric Co. v. Garrett Coal Co., 146 Fed. 66, 76 C. C. Á. 528, the claims here in suit were held valid and infringed by the device used by the Garrett Coal Company and manufactured by appellee. Some additional prior patents, without explanation or discussion by experts, have been put into the present record. Our examination of them leads us to conclude that the best possible exhibition of the prior art was made in the Garrett Coal Company record, which constitutes the substantial part of the record in this case. On the issues of patentable novelty and infringement, we deem it unnecessary to do more than

express our concurrence in the views of the Circuit Court of Appeals for the Third Circuit.

In a supplemental bill herein, filed after the final decree was entered in the Garrett Coal Co. Case, appellant alleged that appellee "defended that suit on behalf of the Garrett Coal Company, paid the expenses thereof, and was in fact the real defendant therein; the Garrett Coal Company being simply the nominal defendant." Appellee denied the charge. While the proofs show that appellee paid an attorney who appeared for the Garrett Coal Company and defended the suit, and that, at the conclusion of the litigation, appellee paid a part or possibly all of the court costs, there is no proof that the attorney was not under the exclusive direction and control of the Garrett Coal Company, or that appellee had any standing except as an interested and sympathetic nonparticipant.

The question that has been most strenuously contested here has to do with the scope of the original application. The invention, so far as it is covered by the claims in suit, consists in the means and method of changing from series to multiple by shunting one of the motors, while protecting the other by resistance in series with it, and then breaking the circuit of the shunted motor and arranging it in parallel with the other. The claims in suit were not filed with the original application. They were submitted later by the applicants through their attorney. As these claims were not supported by a new verification, appellee insists that the Patent Office had no warrant in law to allow them, because "the invention claimed is substantially different from any indicated, suggested, or described in the original application." The applications were substantially alike. Excerpts, quoted in the statement, include the portions of the application for the method patent on which the respective arguments of the parties are based. The drawings in the original applications (copied in 146 Fed., at page 68, and in 76 C. C. A., at page 530) indicate that, in changing from series to multiple, when one motor is shunted, the other is protected by resistance in series with it. In describing the step by step changes the applicants said: "At the fourth step the two combinations shown in Figs. 5 and 6 are produced." And these figures point to the characteristic feature of the claims in suit. Referring to the circuits at different stages, applicants make it clear that in Fig. 22 one motor is shunted and the other is protected from the full current by means of an external resistance. In the concluding paragraph they said:

"The object of reinstating the resistance" (during the steps shown in Figs. 5 and 6) is to have the resistance "take the place for a short period of the short-circuited (shunted) motor and preserve the other motor from being injured by a sudden excess of current."

Against these statements, relied on by appellant, appellee lays stress on the applicants' declaration,

"We accomplish this (change from series to multiple by our step by step method) without the use of external means such as a circuit breaker or resistance to interrupt or substantially reduce the current while the change is being made."

In the face of the disclosures in the drawings, in the specific account of the successive steps to be taken, in the detailed description of the course of the circuits, and in the stated reason for using resistance

while shunting the one motor, appellee insists that in the above quotation the applicants asserted that they accomplished their new result without the use of resistance. If a period is to be placed after "resistance," appellee could as well claim that the applicants expressly disclaimed the use of a "circuit breaker." To us it seems that the applicants, instead of stultifying themselves by saying at one place that they did not use resistance and in another that they did and why they did, were broadly distinguishing their method from those of the prior art. One of the earlier methods was to employ enough resistance "so that there should be no current passing while the change was being made." Applicants said in effect that in their method they do not employ resistance in order to interrupt or reduce the current while the change is being made, but do employ it only for the purpose of protecting the unshunted motor. The original claims, as appellee points out, did not call for the use of resistance, and original claim 10 covered the change from series to multiple "without interrupting or reducing the current by external means." Original claims 1 and 10 indicate to us that the applicants believed themselves entitled broadly to a monopoly of the method of changing from series to multiple by shunting one of the motors, then breaking the circuit of the shunted motor, and then arranging it in parallel with the other motor, irrespective of whether the unshunted motor was protected by external resistance or not; and, since the drawings and specification pointed out clearly the desirability of external resistance for the unshunted motor while the change was being made, we think it was competent for the applicants through their attorney to file the narrower claims in suit without an accompanying affidavit. Hobbs v. Beach, 180 U. S. 383, 21 Sup. Ct. 409, 45 L. Ed. 586.

Appellee refers to a record of an interference between the applicants and one Lamme. The issue was with respect to the subject-matter of the applicants' original claim 1. Appellee cites the testimony given by the applicants in that proceeding as indicating that the use of resistance in protecting the unshunted motor was no part of their invention. Original claim 1 by its terms was not restricted to the use of external resistance for the protection of the unshunted motor while the other was in shunt. The testimony was directed to the issue. The applicants did not testify (and we are not referred to any question that was propounded to them on the subject) that their verified original application was untrue. Passing the question of competency, we find nothing ir their testimony that conflicts with our construction of their application The decree is reversed, with the direction to enter a decree in appel lant's favor for an injunction and an accounting.

COLUMBIA CHEMICAL CO. v. DUFF.

(Circuit Court of Appeals, Third Circuit. February 19, 1909.)

No. 50.

PATENTS (§ 218*)-LICENSES-ROYALTIES-RIGHTS AND LIABILITIES OF PARTIES. Plaintiff contracted to furnish defendant with plans and specifications for building four patented gas producers, with a warranty that in addiFor other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

tion to the gas they should produce as a by-product 70 pounds of sulphate of ammonia per ton of coal consumed, provided such coal contained not less than 1.3 per cent. of nitrogen. Defendant agreed to build the machines and to pay a license fee for their use if they fulfilled the warranty. Having refused to make such payment, plaintiff sued therefor, alleging fulfillment of the warranty, which defendant denied, and that issue was the only one tried. Held, that it was error for the court to instruct the jury that if defendant used coal containing less than the required per cent. of nitrogen it waived the warranty of 70 pounds of sulphate of ammonia per ton, and plaintiff could recover if a proportionate amount was produced, since the requirement as to the percentage of nitrogen was one for plaintiff's benefit, which he alone could waive or could insist on, and that if he consented to the use of inferior coal, as he admittedly did, the waiver was his and not defendant's, and did not relieve him from the warranty.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 330; Dec. Dig. § 218.*]

In Error to the Circuit Court of the United States for the Western District of Pennsylvania.

George B. Gordon, William Watson Smith, Ralph Longenecker, and Allen T. C. Gordon, for plaintiff in error.

Alexander Gilfillan, Edwin W. Smith, and Reed, Smith, Shaw & Beal, for defendant in error.

Before GRAY and BUFFINGTON, Circuit Judges, and ARCHBALD, District Judge.

BUFFINGTON, Circuit Judge. In the court below, Edward J. Duff, hereafter styled "plaintiff," brought an action of assumpsit against the Columbia Chemical Company, hereafter styled "defendant,” to recover $15,500, license fees alleged to be due him under a contract between them dated November 28, 1903. On the trial, plaintiff recovered that sum with interest, and, judgment having been entered in his favor on the verdict, defendant sued out a writ of error.

In considering the case, we must bear in mind that this action is not brought to recover the purchase price of machinery which a plaintiff has built and which a defendant retains and refuses to pay for, but is brought to recover license fees for use of a patented device which this defendant built at its own cost and on which it agreed to pay license fees in case it fulfilled certain guaranteed requirements. The plaintiff resided in England, and was anxious to demonstrate in America the capacity of a gas-producer device patented by him. The defendant, a chemical company, was a large user of gas, and was desirous of installing a plant which could produce, from bituminous coal, gas and certain quantities of sulphate of ammonia as a by-product. To secure these objects the contract was entered into, which, so far as here applicable, stipulated that plaintiff

"supply, free of charge, all plans and details necessary for the erection of the plant for the utilization of the said patents and any improvements thereof, and will give full explanation thereof."

On its part the defendant stipulated:

"Fifth. That during the residues of the terms of the said letters patent mentioned, and any extension thereof respectively the licensees will pay to the grantor the following royalties, viz.: A sum of four thousand two hunFor other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes