On Rehearing.
Duell, Warfield & Duell, of New York City, for plaintiff.
Kenyon & Kenyon, of New York City (Walter C. Noyes, Wm. Houston Kenyon, and Richard Eyre, all.of New York City, of counsel), for defendant.
HAZEL, District Judge.Considering this case in connection with various matters argued on the rehearing, I think that I failed in my original opinion to sufficiently differentiate the Thompson patent in suit from the prior Turbayne patent, No. 760,714, the Bliss patents, Nos. 799,516 and 799,520, and Bliss Bulletin No. 20, and therefore, for the sake of clarity, I am filing this supplementary opinion, without, however, changing the conclusion heretofore reached that the claims in controversy are valid and infringed by the defendant.
We are not here concerned with a patent performing a function never before performed, but with an improvement in a car-lighting system relating specifically to a method qf charging storage batteries in connection with generators driven by car axles with a view of making this operation more simple and efficient. To accomplish this the patentee provided sensitive means for making the generator inoperative upon the instant the battery is fully charged, and for permitting the generator to resume its work regardless of the speed of the train; such means consisting of the combination and arrangement of elements set forth in the specification and claims. In prior car-lighting systems, as shown in the Greveling patent (Safety Car Heating & Lighting Co. v. United States Light & Heating Co., 222 Fed. 310, affirmed 223 Fed. 1023, 138 C. C. A. 651), it was demonstrated that, to secure better and more economic results and to effectively avoid injury from overcharging the battery, means were necessary (automatically operated) for materially decreasing the generator output without affecting the battery, which should continue to supply current to the lamps. As the lamps, when lighted, do not require as much current as is required to keep the battery charged, a rapid or gradual reduction of the current output is necessary to prevent overcharging. The patentee in his improvement arranged the generator in shunt and provided: (1) A carbon pile resistance, to maintain a normal output, and made the same responsive to changing conditions of operation; (2) a current coil, to control the carbon pile in series to obtain a constancy of charge to the battery; (3) a voltage coil, to decrease the charging current; and (4) a cut-out, to regulate the battery when it alone supplies current to the lamps. There are many intricate details of operation and co-operation, as indicated by the quotation from the specification contained in the original opinion; but the merit of the invention resides in the adaptation of means by which a variable balance of current flow was maintained.
*441I have been much concerned about the proper interpretation of claim 4, which defendant insists is anticipated by the Turbayne patent heretofore mentioned, and which in the original opinion was held not anticipatory, as it disclosed a differential current winding and its practicability was considered doubtful. 1 should have stated that the main distinction is that claim 4 calls for separate movable cores respectively coacting with the current and voltage coils and functioning to compress the carbon pile resistance, and includes a voltage coil connected across the charging circuit and a voltage coil that is normally ineffective, while the Turbayne patent is without such elements or their equivalents. Although in a sense the separable movable cores of Thompson with voltage and current windings correspond to a single core with different windings, the latter nevertheless is unable 1o function in the same way as the former, or to efficiently protect the battery. It is important that the voltage coil should be normally ineffective until the predetermined time when it supersedes the current coil to control the generator. Professor Clifford clearly testified that there was a real point to the effect of separate cores, even though they put the winding 36 of the Thompson patent upon a single plunger with windings J¡1 and 50, saying:
“All tlie time when the battery is being charged by a constant current, current regulation being secured by these current coils on that plunger, all that from 86 is exactly as if it did not exist because it is not in circuit. It does not do it until the contact 27 (relay) comes on the contact 30. In other words, that contact not being operated by 26 until the battery is at danger point; that is, just exactly as if they were out of the system entirely. In other words, there is no voltage regulation until the battery is at full charge. It is merely current regulation.”
“We find that [in Thompson] there are not only separate cores, but in effect separately movable cores, because in the first part of its cycle 36 is nonexistent, and in the second part of its cycles J/í and SO are nonexistent so far as their regulating effect is concerned.”
Turbayne’s arrangement of the current coils and voltage coil F 2 around a single core functioned to affect the core and the step by step resistance as soon as the voltage was on the battery because of the combined action of the two current coils, one in series with the lamps and the other acting in opposition thereto. Such arrangement I think was incapable of producing the stop charge effect aimed at by ilie patentee or of producing a normally ineffective voltage coil. It is true claim 4 does not specify a normally ineffective voltage coil or a relay to make it effective, but the claim must be construed to cover the actual invention; that is, as if such features had been specified therein, since they are substantially described in the specification. Fowler & Wolfe Mfg. Co. v. McCrum-Howell Co., 215 Fed. 905, 132 C. C. A. 143.
It is further urged that claim 13, which does not include a carbon pile, is anticipated by the Creveliug patent. Although Creveling broadly indicates means for protecting the battery from overcharge, I am quite convinced that his means for controlling the rheostat resistance in series with the voltage field of the regulator were different from complainant’s, in that he specified no current coil acting upon a resist*442anee medium to maintain a constant current and no voltage coil coming into action at a predetermined time. Coil 31 of his patent does not correspond to the normally ineffective yoltage coil of the Thompson patent,-and therefore the Creveling patent neither anticipates nor limits claim 13 in suit.
The Bliss patents, Nos. 799,516 and 799,520, are claimed to anticipate claims 9, 10, and 11 in controversy. Such claims, though not specifying as an element a voltage coil acting upon a carbon pile to protect the battery from overcharge, nevertheless include the feature of completing a shunt about the current coil when the voltage of the generator falls below that of the battery. The Bliss patents, as heretofore pointed out, are descriptive of a bucker system of train lighting; but defendant claims they are not limited to that, and, indeed, in patent No. 799,520 it is stated that a carbon pile may be substituted for the bucker, or that other suitable means may be used for regulating the flow. I nevertheless think that such patents are not anticipatory, as even with the carbon pile arrangement they were incapable of achieving the result of the invention in suit, owing to the fact that the resistances were positioned in parallel, and were not usable for efficient field regulation of the generator in a car-lighting system. It makes no difference that it was possible for them to use a carbon pile in lieu of the bucker by completing a shunt about the current coil when the voltage was decreased below the battery and thus to operate somewhat similarly to the patent in suit, for it is believed that the simplicity of co-operation attained by Thompson would.not have followed. In such a situation the defendant cannot avoid infringement by merely proving that part of the entire invention is contained in one prior patent and part in another. Parks v. Booth, 102 U. S. 96, 26 L. Ed. 54; Bates v. Coe, 98 U. S. 31, 25 L. Ed. 68. And also I am still of the opinion that it was not an obvious thing for a skilled engineer to change a system for train lighting in which the generator was located in the baggage, car or locomotive into a practicable system for separate car lighting in which the generator is driven by the car axle.
Bliss Bulletin No. 20 was not discussed in the original opinion, but it was not overlooked. It was believed that, as claims 9, 10, and 11 included as an essential element a variable resistance medium with the current coil in shunt for regulating its action — a feature not found in the Bulletin — it was not an important reference. Besides, the Bulletin specified a rheostat regulator coacting with vibrating contacts which operate'by cutting in and out of the circuit. Such a contrivance could not evenly regulate the', current and was based upon an essentially different element from the patent in suit.
Nor áre claims 4 and 13 invalid because of anything contained in ’ Jepson patent, No. 981,198/ which describes regulation of the current to the battery by a booster device to assist the generator voltage in performing its function. In that patent coils 33 and 50 together controlled the resistance of the carbon pile and maintained the voltage of the generator constant. Certainly the carbon pile was not controlled,' as in the Thompson patent, by a current coil until the voltage of the battery neared full charge, when the voltage operates to supersede *443the current coil to decrease the output of the generator. Hence Jepson failed to accomplish the object of claims 4 and 13.
Claim 12 of the Thompson patent does not specify the relay or voltmeter (26‘ and Sip) connected to the voltage coil 36, but specifies “means adapted upon said battery reaching a certain state of change to render said second voltage coil effective in reducing the pressure upon said variable resistance medium”; while claim 13 specifies “means adapted upon the voltage of said battery attaining a certain value to render said voltage coil effective in controlling said generator current.” The specification clearly shows what the means were to which the said claims refer, but they are not limited to such relay device or instrumentalities for accomplishing the desired results. While the patent was for an improvement, it nevertheless brought into the art a new and novel combination or arrangement of elements, separately old, but which achieved a new and useful result in car-lighting systems, and therefore the claims are entitled to a fair range of equivalents. A construction of such scope should be accorded them as to include a car-lighting system embodying a combination of the elements in suit which achieves substantially the same results.
Claim 4 is in my opinion infringed by the defendant company, for in its car-lighting system it uses in combination a generator, a storage battery, a carbon pile or variable resistance medium arranged in the field circuit of the generator, which operates to vary the aggregate resistance upon compressing the disks, a current coil serially connected, a voltage coil connected across the charging circuit, which under normal conditions is inert or uninfluenced, but which becomes effective when the accumulator is nearly fully charged; the voltage or energy passing through the voltage coil at such time being of sufficient potentiality to raise the separate movable cores, which are connected so as either to compress or to attract the carbon pile resistance. Defendant also embodies in its apparatus the elements of claim 9 (typical of claims 10 and 11), which includes the current coil and the specified means co-acting with it to increase the resistance when the carbon pile is attracted, and “means adapted automatically to complete a shunt about said coil upon the voltage of said generator falling below that of said battery.” By a lever mechanism operating upon the carbon pile there was secured a regulation of the movements of the core, and by opening the circuit and closing the shunt the battery was permitted to supply current to the lamps as in complainant’s apparatus.
There was much discussion as to whether claims 12 and 13 were infringed, as concedediy the defendant does not use a polarizing relay mechanism in its apparatus, nor an energizing coil functioning like coil 36 of the Thompson invention. It is, however, proven that to accomplish the same result defendant utilizes the magnetic pull or conductivity of the voltage coil to balance weights on the lever, thus securing the inertia of the core until the storage battery is substantially charged, when the strength of the voltage coil raises one' core and releases the other, which then rests upon its stop. The series coil then becomes ineffective, leaving the control of the generator voltage to the voltage coil, as in complainant’s patent. The question of whether *444the defendant’s embodiment comprises the means of the said claims-in suit is not free from difficulty. But as a normally ineffective voltage coil for voltage regulation is used, and is arranged to become effective to supersede the series coil in supplying constant voltage regulation in lieu of constant current regulation, thus protecting the battery from overcharge, the claims are believed to be infringed by the defendant. They are not, as contended, for a mere result, and the defendant by its employment and arrangement of instrumentalities utilizes the principle upon which the Thompson invention is based. Surely defendant had an object for apportioning and attaching weights to the dash pot, and for adjusting the lever mechanism and winding the coil in a certain way, which object no doubt was to secure inertia of the .voltage coil up to a certain degree of battery charge and then to render it effective.
. Claim 13 is not anticipated by Dick patent, No. 682,978; my reason for such conclusion being stated in the original opinion. Other matters argued at the rehearing are also deemed by me to have been sufficiently covered in the original opinion.
As the defendant’s system embodies the elements of the Thompson system in suit, operates in substantially the same way, and produces the same result, a decree for complainant may enter; but, on the assumption that defendant will wish to appeal, counsel are advised that a supersedeas will be allowed.