strip firmly secured to the outside of the tread portion, which stay strip is nonstretchable in a direction transversely of the tire, but is capable of stretching in a direction longitudinally of the tire."

It will thus be seen that MacDonnell's real disclosure was of a stay strip transversely nonstretchable and longitudinally stretchable and that these disclosed and described elements were carried into his claims. But his specification did not stop, as indeed it could not, with the mere announcement of a principle, for, as said in U. S. v. Bliss Co., 224 Fed. 325, 139 C. C. A. 633:

"A principle is not the subject of a patent except through the instrumentalities by which the principle is carried out."

* * *

In pursuance, therefore, of the statutory requirement that his specification shall contain a written description of his discovery "and of the manner and process of making, constructing, and using it, in such full, clear, * * and exact terms as to enable any person skilled in the art * * * to make * * and use the same" (Comp. St. 1913, § 9432), MacDonnell showed two stay strips which embodied his invention. While stating that his invention was "not limited to the construction herein illustrated," it will be noted that the two stay strips disclosed are alleged to have the two features of nonstretching transversely and stretching longitudinally, which was all the patent disclosed and which were claimed elements. It will also be noted that the means by which nonstretching of the stay strip transversely is effected is specifically set forth in the specification. In that regard MacDonnell says:

*

"The rubber tire has applied and firmly secured thereto a backing or stay strip 5 which has special characteristics as hereinafter described. * The stay strip 5 is so made that it is incapable of stretching transversely of the tire, but is capable of stretching in a direction longitudinally of the tire. Since the stay strip cannot stretch in a direction transversely of the tire, it will be readily apparent that when the tire is inflated, as shown in Fig. 2, the rubber forming the thickened tread portion of the tire will be put under considerable compression due to the fact that the outer face of the rubber is not permitted to expand because of the presence of the stay strip."

He then proceeds to show in detail how such transversely nonstretchable stay strips can be made in the bias form, viz.:

"The stay strip, having the capacity of stretching longitudinally while being incapable of stretching transversely, may be made in a variety of ways. One way of thus making the stay strip is to cut it on the bias; that is, to so form the stay strip that the warp and weft threads extend diagonally across the width of the strip, as seen in Figs. 3 and 4. Where this construction is employed, the stay strip is capable of stretching longitudinally as required to accommodate the increasing circumferential length of the tire as it is inflated, and such longitudinal stretching results in tending to draw the edges 8 of the stay strip together, as will be obvious. This tendency not only counteracts any tendency of the strip to stretch transversely, and thus makes the stay strip inelastic transversely, but also tends to actually decrease the width of the stay strip and thus augments the compression under which the rubber forming the tread portion 4 is placed."

And he then shows the use of the slit form, viz.:

"In Figs. 5 and 6 I have shown another embodiment of my invention, wherein the stay strip is provided with slits through its central portion to permit of the necessary longitudinal stretching of the portion which overlies the tread

of the tire. In this case the warp threads extend longitudinally of the stay strip and the weft threads extend transversely thereof, but the slits 20 formed in the stay strip permit the necessary elongation thereof at the tread portion of the tire."

In conclusion he sums up his whole disclosure as follows:

"From the above it will be seen that my invention comprehends the use of a stay strip for securing the desired compression of the tread portion of the tire, which stay strip is incapable of stretching transversely, but which is capable of stretching longitudinally to permit of the natural inflation of the tire."

From the above it will be seen that MacDonnell's disclosure was of a transversely nonstretchable stay strip and that this feature was made a claim element. Such being the case, it necessarily follows that any tire whose stay strip is stretchable, and which, when in use, is extended, is at variance with his disclosure and does not infringe his claim. The proofs and demonstrations in court make it clear that the defendant's stay strip does, when inflated, stretch transversely a material distance. It follows, therefore, that defendant's stay strip does not embody the very feature which MacDonnell disclosed and claimed.

The decree below must therefore be reversed, and the bill dismissed, on the ground of noninfringement.

(231 Fed. 744)

ELEVATOR SUPPLY & REPAIR CO. v. NEW & BEAVER ARCADE CO.

et al.

(Circuit Court of Appeals, Second Circuit. February 15, 1916.)

No. 139.

1. PATENTS 328-VALIDITY AND INFRINGEMENT-ELEVATOR SIGNALING APPARATUS.

The Payne patent, No. 1,108,782, for electric signaling device for elevators, covers only improvements on the prior art, and the claims must be strictly limited to the devices described and shown. Claim 3, as so limited, held not infringed.

2. PATENTS

328-INFRINGEMENT-ELEVATOR SIGNALING APPARATUS. The Andren patent, No. 1,109,950, for an elevator signaling apparatus, held not infringed.

Appeal from the District Court of the United States, for the Southern District of New York.

Suit in equity by the Elevator Supply & Repair Company against the New & Beaver Arcade Company and Franz A. Boedtcher. Decree for defendants, and complainant appeals. Affirmed.

On appeal from a decree dismissing the bill alleging the infringement of the Payne and Andren patents, owned by the complainant. No opinion was delivered in the court below.

Newell & Neal, of New York City (Emerson R. Newell, of New York City, of counsel) for appellant.

James H. Griffin, of New York City, for appellees.

Before LACOMBE, COXE, and WARD, Circuit Judges.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

COXE, Circuit Judge. The Payne and Andren patents in controversy are owned by the complainant. They relate to signal apparatus for elevators. The alleged infringing devices were installed by the defendant Boedtcher in the elevator system in the New & Beaver Arcade Building, New York. Claim 3 of the Payne patent and claims 1, 3, 4, 5, 10, 12, 14, 15, 18 and 19 of the Andren patent are involved.

[1] The Payne patent No. 1,108,782 relates to the same subject-matter covered by the earlier patents granted to McLean and to Payne himself. It is at best only an improvement over what is disclosed in the prior patents. McLean has a single door switch with two circuits. passing through it; Payne has dispensed with one of these circuits and utilizes a single circuit for controlling the up and down restoring magnets which was the method employed by many of the prior art commutator systems. The patent in suit embodies only minor changes over the prior patent to Payne No. 756,275, viz., the manually operated door switches which were old and are shown in the McLean patent No. 728.409.

The Payne patent contains 43 claims, but one only-claim 3-is involved; it is as follows:

"3. In an elevator signaling apparatus in combination, a car, electricallyoperated signaling means, means for operating the same comprising an up and a down passenger's-button at a floor and mechanism corresponding to and set by each button, an electrically-controlled restoring means for each passenger's-button-set mechanism, a single normally open switch controllable by the car-operator, and a circuit-shifting switch serving to connect said single normally-open switch with said restoring means alternately."

We have here a combination containing the following elements: 1. A car;

2. Electrically-operated signaling means;

3. Means for operating the same comprising an up and a down passenger's-button at a floor;

4. Mechanism corresponding to and set by each button;

5. An electrically-controlled restoring means for each passenger'sbutton-set mechanism;

6. A single normally open switch controllable by the car operator; 7. A circuit-shifting switch serving to connect said single normallyopen switch with said restoring means alternately.

It is not pretended that this combination produced any broadly new results or in any way revolutionized the art. The patentee distinctly says that his object is "to improve upon constructions heretofore used, and particularly to improve upon the construction set forth in my prior patent."

In other words, the patent is intended to cover the improvements which the patentee contends he has contributed to an art which was occupied by many skillful and ingenious electricians. So far as the patent in suit is concerned, Payne cannot be considered as a pioneer, but only an improver upon existing structures and methods. Claim 3, if sustained, must be limited, in view of the prior patents to Payne and McLean, to the structures having the elements enumerated above. There is no room for the application of the doctrine of equivalents.

One of the features of the plaintiff's system is "a maintaining circuit" which the defendant does not use; neither does it use the "single normally open switch"; it employs two switches. It does not employ the Payne maintaining circuit or the fourth or seventh element of the combination, as stated above.

[2] But little need be said regarding the Andren patent. During the trial the counsel for the complainant frankly stated as follows:

"We are perfectly free to admit that prior art patents, prior to Payne and Andren has commutators; commutator apparatus to set and restore signals. That is old. We all know that.

"The Court: That is a selective apparatus?

"Mr. Newell: Yes, sir; selective for setting and selective for restoring."

The first claim is as follows:

"In an elevator car signaling apparatus, the combination of a signaling device, means for automatically and selectively restoring the signal, and a centrifugal governor operated by the car and controlling said restoring means."

It is unnecessary to recite them all. All of these claims have as an element, in somewhat differing language, automatic means for selectively restoring the signals. Claim 14 has an element, "a switch controllable by the operator of the car," which the defendant does not have. We think the court properly construed the words "governed by the stopping of the car," etc., as not applicable to the defendant's sys

tem.

We are of the opinion that these causes were correctly decided and that the decrees should be affirmed.

(231 Fed. 835)

MEMPHIS TELEPHONE CO. v. CUMBERLAND TELEPHONE & TELEGRAPH CO.

(Circuit Court of Appeals, Sixth Circuit. March 17, 1916.)

No. 2681.

1. TELEGRAPHS AND TELEPHONES 16 TELEPHONE COMPANIES-EXCHANGE OF BUSINESS WITH OTHER COMPANIES.

In the absence of any statute or contract requiring connection to be maintained between the lines of two telephone companies at a common point, it is within the right of either company to sever such a connection. [Ed. Note.-For other cases, see Telegraphs and Telephones, Cent. Dig. § 10; Dec. Dig. 16.]

2. TELEGRAPHS AND TELEPHONES 69-EXEMPLARY DAMAGES-ACTS DONE THROUGH MISTAKE.

That a division superintendent of defendant telephone company, in carrying out orders from its general manager to sever the connection between one of its lines and a line of plaintiff, by mistake made the severance beyond the point of connection, removing several hundred feet of wire from plaintiff's line and retaining two of its instruments, in the belief that they were the property of defendant, affords no ground for recovery from defendant of punitive damages.

[Ed. Note.

For other cases, see Telegraphs and Telephones, Cent. Dig. 71; Dec. Dig. ~69.]

3. WORDS AND PHRASES "TRUTH."

There are three conceptions as to what constitutes "truth": Agreement of thought and reality; eventual verification; and consistency of thought with itself.

In Error to the District Court of the United States for the Western District of Tennessee; John E. McCall, Judge.

Action at law by the Memphis Telephone Company against the Cumberland Telephone & Telegraph Company. From the judgment, plaintiff brings error. Affirmed.

J. W. Canada, of Memphis, Tenn., for plaintiff in error.

W. L. Granbery, of Nashville, Tenn., Hunt Chipley, of Atlanta, Ga., and Wright, Miles, Waring & Walker, of Memphis, Tenn., for defendant in error.

Before WARRINGTON and KNAPPEN, Circuit Judges, and COCHRAN, District Judge.

COCHRAN, District Judge. This writ presents for decision a single question, and that is whether the lower court erred in refusing to submit to the jury the issue in the case as to plaintiff's right to recover punitive damages. The action was in tort. The plaintiff sought to recover $25,000 therefor, of which $650 was on account of compensatory damages, and the remainder punitive. The defendant confessed the tort and tendered $225 as the actual damages sustained. The plaintiff admitted that this sum covered those damages, and the court instructed the jury to find for plaintiff in that amount. It refused to submit the question as to punitive damages, and this is the sole error complained of. We begin the consideration of this question with a

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