of the business of manufacturing matches, so that at the time of the argument and submission of the case, and at the time of its decision, neither said defendant nor its officers had any interest in the result of the suit, except as to costs, and as to an accounting of damages and profits by reason of past infringement by defendants prior to the date of the decree, which accounting, as the decree shows, was waived by complainant. It also appears that at the time of the argument and submission of the case, and for a long time prior thereto, the counsel for defendants had received little, if any, assistance, and no compensation from the defendants therein, and that he was greatly hampered in hi defense. And it further appears that the defense, as it concerned claim 4 of the Beecher patent, was principally made upon the issue of noninfringement, and upon the proper manner of construing and interpreting said claim, and that the question of its validity was not strenuously pressed by counsel for defendants therein; he being sure that the validity of that claim might be admitted, and yet the court would be obliged to find that there was no infringement of it by the machine there in suit. Whether these facts were known to counsel at the time or not, the fact that they existed would cause me to hesitate long in this case, where the validity of that claim is vigorously denied and contested, to issue a preliminary injunction based upon that decision.

Aside from that, however, after a careful consideration of the opinion in that case, in the light of the proofs here, and the very able and exhaustive_arguments of counsel, extending over a period of nearly six days, I find myself unable to concur in the reasoning therein in so far as it relates to claim 4 of the Beecher patent. It is not necessary or proper that I should here and now determine the question of the validity of that claim, and I do not wish to be understood as doing so. I only wish to say that I do not concur in the reasoning of the learned judge in that case thereon. Indeed, if I should follow his reasoning, in so far as it relates to that claim, to what I consider its logical conclusion, I should be led to the opinion that both Beecher and Kelly had been anticipated in the prior art. This being the case, I feel obliged to dispose of this application upon the proofs here as though that decision had not been rendered. Welsbach Light Co. v. Cosmopolitan Incandescent Light Company, 104 Fed. 83, 43 C. C. A. 418; Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 20 Sup. Ct. 708, 44 L. Ed. 856.

Thus considering it, the language of the court in the case of Standard Elevator Company v. Crane Elevator Company, 56 Fed. 718, 6 C. C. A. 100, at pages 719, 720, 56 Fed., and page 101, 6 C. C. A., expresses exactly my position:

"The object of the provisional remedy is preventive, largely, and it will not be granted if it is more likely to produce than to prevent irreparable mischief. If the controversy between the parties be substantial, and not, as to the alleged infringer, colorable, merely, courts of equity are not disposed to adjudicate upon the rights of the parties otherwise than according to the approved usages of chancery, when the defendant's rights might, by the issuance of a writ of injunction, be put in great jeopardy, and the complainant can be compensated in damages. Without passing any opinion upon the complainant's right or the defendant's infringement, it suffices to say that, upon the proofs in the

record, we cannot declare that the right or the infringement is so clear from doubt as to warrant the issuance of a preliminary injunction. The evidence as to the construction of claims and infringement, upon which the court below was called to pass, was largely and necessarily ex parte. There was no opportunity of probing the witnesses. Scientific expert evidence is not wholly reliable when not subjected to the searchlight of intelligent cross-examination. It would, we think, be most unsafe to determine this controversy without full and orderly proof. It would be most unwise to imperil, and presumably wholly ruin, the large capital and interests involved in the business of the appellants, by arresting the enterprise in advance of a final decree, when the damages which the appellee may sustain can be compensated in money. The financial ability of the appellants to so respond has not, in our judgment, been successfully attacked."

I have therefore been obliged to deny the motion for a preliminary injunction.

WESTINGHOUSE ELECTRIC & MFG. CO. v. WAGNER ELECTRIC

MFG. CO.

(Circuit Court, E. D. Missouri, E. D. February 13, 1904.)

No. 4,657.

1. PATENTS-INFRINGEMENT-ELECTRICAL CONVERTERS.

The Westinghouse patent, No. 366,362, claim 4, for an electric converter constructed with open spaces in its core, an inclosing case, and a nonconducting fluid or gas in said case, adapted to circulate through said spaces and about the converter for the purpose of cooling the same, construed, and held not infringed by a converter in which spaces were left between the coils and between them and the inclosing core for containing a cooling liquid, but which had no open spaces in its core.

2. SAME-CONSTRUCTION OF CLAIMS-ESTOPPEL.

Where a patentee and complainant, his assignee, had for a number of years placed a certain construction on a claim of his patent, with knowledge that during such time defendant was making and selling a device for a similar purpose, but which did not infringe the patent as so construed, complainant is estopped to claim a different construction for the purpose of charging defendant with infringement.

In Equity. Suit for infringement of letters patent No. 366,362, for an electrical converter granted to George Westinghouse, Jr., July 12, 1887. On final hearing.

Kerr, Page & Cooper, Bakewell & Cornwall, and B. F. Babbitt, for complainant.

Fowler & Bryson, for defendant.

ADAMS, District Judge. This is a suit based on the fourth claim of letters patent of the United States No. 366,362, granted to complainant's assignor July 12, 1887, for new and useful improvements in electric converters. The relief asked for is an injunction restraining the defendant from infringing the claim and an accounting. The patent has been in litigation before. On May 10, 1900, complainant instituted a suit on the same patent in the Circuit Court of the United States for the Northern District of New York against the Union Carbide Company (112 Fed. 417), which will hereafter be referred to as the "Carbide Case." The defendant in this case, being the manu

facturer of the device claimed to constitute an infringement in the Carbide Case, appeared, and conducted the defense, and it is conceded is bound by the decree therein rendered. Before final submission of that case complainant dismissed as to claims 1, 2, 3, and 5, submitting claim 4 only to the final judgment of the court. The defenses to that action were want of patentable invention and noninfringement. The trial court decided that claim 4 of the patent was valid, and that defendant had infringed the claim by manufacturing the device then before the court, and this decree was affirmed by the Circuit Court of Appeals for the Second Circuit. 117 Fed. 495, 55 C. C. A. 230. The present action is based on the same claim (4), and no controversy is now made except on the issue of infringement. Defendant contends that this present device is so different from the device involved in the Carbide Case that the judgment in that case is not res adjudicata of the present issue of infringement, and that in fact the defendant's device does not infringe claim 4. The only question for decision, therefore, is whether the defendant's device constitutes an infringement of claim 4 of the patent in suit. The invention of the patent relates, according to the specification, "to the construction of a class of apparatus employed for transforming alternating or intermittent electric currents of any required character into currents different therefrom in certain characteristics," and the object of the invention, according to the specification, is "to provide a simple and efficient converter which will not become overheated when employed for a long time in transforming currents of high electro-motive force, and which will be thoroughly ventilated." The claim in question is as follows:

"(4) The combination, substantially as described, of an electric converter constructed with open spaces in its core, an inclosing case, and a nonconducting fluid or gas in said case adapted to circulate through said spaces and about the converter."

Complainant claims that the converter, now commonly called a "transformer," manufactured by the defendant, infringes claim 4 in three particulars: First, because there is an open space between the coils themselves; second, because there is a rectangular opening inside of the core, through which the coils pass; and, third, because there are open spaces between the core and the coils. The question for determination is whether either of these three spaces or openings constitute "open spaces in its core" within the true meaning of claim 4 of the patent.

I have reached the conclusion that the defendant's transformer does not, by reason of either one or all of the above-mentioned features, have "open spaces in its core," within the true meaning of the patent in suit, for the following reasons:

First. The fact that there is a space between the two coils when inserted in the core is not an infringement of claim 4 for the most obvious reason that claim 4 calls for no such space, and for the quite equally obvious reason that claim 1, which is not now in controversy, does contain that element. From these two facts it is altogether probable that the patentee did not himself understand or intend that claim 4 should be construed as containing the element. After a careful reading of the opinion of the Court of Appeals in the Carbide Case, 117 Fed. 495, 55

C. C. A. 230 (which is conceded by counsel to be binding upon the defendant in this case), I find no reason for reading the element of "open space between the coils" into claim 4.

Second. The drawings and description of complainant's patent, as well as the model shown in evidence and used in argument, show a device in which the coils completely fill the opening in the surrounding core, and in which parallel open spaces a few inches apart appear in the substance of the core, extending throughout its body in such way as to permit the oil in which the transformer is submerged to freely circulate about the surrounding core and into the interior. A longitudinal section of this device is shown in Fig. 2 of the drawings of the patent, which is as follows:

These numerous parallel open spaces so shown in the drawings and rnodel, and any other open spaces, whether parallel or not, cutting through the body of the surrounding core and extending into the interior opening containing the coils, are, in my opinion, the "open spaces in its core" contemplated by claim 4. The purpose of these open spaces, as disclosed by the patent and the evidence of experts, is to permit the oil to so bathe the heat-producing surfaces of the transformer, and to so circulate throughout the parts of the transformer, as to preserve the insulation of the coils, and radiate the heat generated by the transformer's action. The use of oil or paraphine in a tank inclosing the transformer for the purposes just specified has been long known to the art, and is recognized by at least two patents prior in date to complainant's patent. Accordingly, the invention has for its main purpose only the physical means for effectually securing this circulation of oil. It deals with the core itself, and divides it up into groups of plates, each group separate from the other in such way as to make numerous parallel open spaces in the core leading from its outer surface on all its four sides into the interior opening made for the introduction of the coils. This interior opening, called in the patent "two rectangular openings,

e1 and e2, through which the wires pass," is not, in my opinion, "an open space in its core," within the meaning of claim 4. I adopt the views of Prof. Nipher with respect to this rectangular opening. He says: "The core is not the core of a transformer or converter until these rectangular openings are made through it." He says further: "These openings give character to the core." "It is not a core until they exist there." "The core is in fact given such a form that it surrounds the coil in a certain sense, and the space so surrounded by the core might be called a 'coil opening.'' The core of a transformer is the iron part of it. It must be so constructed as to permit the introduction of the coils of wire approximately through its center. The wire coil must be put in to make a transformer. I cannot understand how this space left in the inside of the iron for this purpose can be an open space in the core. It might be as well said that the space left on the outside of the iron, between it and the incasing tank, is an open space in the core. The defendant's device has a space between the coils, and has also this rectangular opening for the introduction of the coils into the core, but, for the reasons above expressed, these are not "open spaces in its core," within the meaning of the patent in suit.

Third. The defendant's device also has certain open spaces between the core and the coils, as shown in its model in evidence. The complainant's device has no such spaces. Complainant's core hugs the coils closely, and thereby secures greater efficiency of action. But it is contended that these spaces between the core and coils are the mechanical equivalent of the spaces in the core already considered. I cannot agree to this view of the case. They are physically two different things. One (the complainant's) has the spaces cutting the core throughout its whole substance, thus permitting the oil to percolate copiously into all heat-producing surfaces. The other (defendant's) has its spaces inside the core between its inner surface and the outer surface of the coils, thereby releasing the grasp of the core upon the coils, and decreasing the efficiency of its transforming action. If the patent in suit were a broad and valid patent for a circulatory system throughout the heat-producing parts of a transformer, the two devices might be the mechanical equivalent; but it is not such a patent. It is distinctly a patent for a machine involving physical elements, and I cannot bring myself to think the spaces of the defendant's device between the core and the coils are the same as the open spaces in the core of complainant's device, or the mechanical equivalent thereof. They may perform the same function, but they do it by means of different physical elements, and the defendant's device is constructed at the expense of efficiency, which the complainant's device avoids.

The problem for years before the grant of complainant's patent was to devise efficient means for cooling the heat-producing surfaces of the transformer, and for protecting the insulation of the coils. The complainant invented the physical means shown in claim 4. The defendant. adopted the totally different physical means shown in its model. In view of the foregoing, I cannot construe the opinion in the Carbide Case as giving the complainant the monopoly of all means by which the external and internal surfaces of the heat-producing parts of a converter can be cooled. This view would preclude the use of any and every