Brickill". The Mayor, &c., of the City of New York.

WILLIAM A. BRICKILL AND OTHERS

vs.

THE MAYOR, &c., OF THE CITY OF NEW YORK.

The letters patent, No. 81, 132, granted to William A. Brickill, August 18th, 1868, for an improvement in feed-water heaters for steam fire-engines, are valid.

The claim of the patent, namely, "The combination with a steam fire-engine, of a heating apparatus, constructed substantially as described, for the purposes fully set forth," is not a claim to the combination of a heating apparatus generally with a steam fire-engine, but is a claim to the combination of one constructed substantially as described, and the construction described is of what was new with Brickill.

The patented apparatus having been attached by Brickill to engines belonging to the Fire Department of the defendant, before the patent was applied for, the defendant did not thereby, under § 7 of the Act of March 3d, 1839, (5 U. S. Stat. at Large, 353,) acquire the right to practise the invention without liability, but acquired only the right to use the particular apparatus so constructed.

(Before WHEELER, J., Southern District of New York, July 2d, 1880.)

WHEELER, J. This suit involves the construction and validity of letters patent No. 81,132, dated August 18th, 1868, granted to William A. Brickill, for an improvement in feedwater heaters for steam fire-engines. The novelty and patentability of the invention, and infringement of the patent by the defendant, are denied, and a license by operation of law, to practise the invention, is claimed.

The specification describes a heating apparatus, for heating water circulating through coils of pipe, to be connected, by two readily detachable tubes, with the boiler of a steam fire-engine, and also with a tank, so that, when the engine is not on duty, the hot water will circulate through the boiler and keep the engine ready for immediate use, and through

VOL. XVIII.-18

Brickill v. The Mayor, &c., of the City of New York.

the tank, keeping the heating apparatus in order when the engine is away. The claim is for "the combination with a steam fire-engine, of a heating apparatus, constructed substantially as described, for the purposes fully set forth." There were, before Brickill's invention, contrivances for heating water in coils of pipe connected by tubes with the boiler of a steam fire-engine, so the water would circulate through the boiler and aid in preparing the engine for immediate use, sometimes detachable when the engine was wanted, and sometimes going with the engine; but none of them were very effective. Those not detachable could not be effectively heated at all; and, if those which were detachable were heated sufficiently to keep the water in the boiler hot when the engine was there, the heat, not having water to counteract it, would injure the apparatus when the engine was gone. Brickill overcame these difficulties and, upon the evidence, he appears to have been the first to do this.

It is argued, for the defendants, that the patent is for the combination of a heating apparatus, generally, with a steam fire-engine, and that these prior devices show the combination for which the patent was granted, whatever Brickill may have invented, and that the invention described in the patent was anticipated. The claim is for the combination of a heating apparatus constructed substantially as described, and the construction described is of what was new with Brickill, so that this view cannot prevail.

He made the invention while in the employ of the Fire Department of the city of New York, and attached the apparatus to two engines, which were those numbered 12 and 26, himself, and it appears to have gone into extensive use in that Fire Department and to have been of great utility in obtaining speedy control of fires. To make it required more than mere mechanical skill or workmanship applied to what was in existence or known before. The principles of it were to be wrought out, and devices to be constructed and applied to meet the necessary requirements. The accomplishment of the result involved the exercise of inventive faculties to a con

Brickill v. The Mayor, &c., of the City of New York.

siderable degree, which, concurring with the utility, clearly makes the invention patentable.

The patent was granted under the Acts of July 4th, 1836, (5 U. S. Stat. at Large, 117,) and March 3d, 1839, (Id., 353,) and the constructions attached to engines Nos. 12 and 26 were made and attached before the application for a patent. It is strenuously argued, that, under section 7 of the latter Act, which provides that every person and corporation may use, and vend to others to be used, any specific machine, manufacture or composition of matter which they have purchased or constructed prior to the application for a patent, as construed in McClurg v. Kingsland, (1 How., 202,) the defendant has not only the right to use those constructions, but also the full right to practise the invention without liability. The patent in that case was for a method of casting iron rollers, so as to throw the dross into the centre, instead of leaving it on the surface, and the real question before the Court was, whether that statute, using the words "specific machine, manufacture, or composition of matter" only, should be applied to a patent for that process. In some parts of the reasoning language broad enough to cover all patents was used, in coming to the conclusion that the statute should not be limited, in its application, to those patents only which were for some specific thing, and that it should apply to the invention itself where there was no such thing. It has been said, that, in order to understand this language, it must be considered with reference to the very case before the Court. (Pierson v. Eagle Screw Co., 3 Story, 408.) The right to use the thing patented is secured against an extension of the patent, to assignees and grantees, by section 18 of the Act of July 4th, 1836, (5 U. S. Stat. at Large, 124.) This language is quite as broad as that of the Act of 1839, and still, since the decision in McClurg v. Kingsland, it has been held to cover particular constructions, and not the right to practise the invention. The language of the Act of 1839 does not seem capable of being extended beyond the use of particular things bought or made, in cases of patents for substantive

Brickill v. The Mayor, &c., of the City of New York.

things; and it is not probable that McClurg v. Kingsland would be followed beyond cases of its class, upon the same statute. (Wilson v. Rousseau, 4 How., 646.) But in the Act of July 8th, 1870, (16 U. S. Stat. at Large, 203, § 37; Rev. Stat., U. S., § 4899,) the right of a person constructing a patentable article, or purchasing it, before the application for a patent, is limited to the right to use, or vend for use, the specific thing. This may be considered as a legislative construction of the former Acts; but, if not, Congress has full power over the subject of patents, unless it be as to the right to take away property secured by existing patents, and this Act of 1870 may properly govern the right of recovery in actions brought since its passage. This was expressly held as to the Act of 1836, in McClurg v. Kingsland. So, in any view which can be taken of this case, it does not seem that the defendant bas the right to this invention any further than to the extent of machines constructed prior to the application for the patent.

It is urged that an infringement by the Fire Department of the city is not an infringement by the defendant, because that Department was, under the law, a corporation of itself, over which the officers of the city had no control. It is understood, however, as was said in Allen v. The Mayor, (17 Blatchf.C.C. R., 350,) that the Fire Department was a mere agency of the city, having no funds of its own, and making no profit for itself, apart from those of the city. If there are any gains and profits in the hands of any party to be accounted for, under these circumstances, on account of an infringement, they must be in the general treasury of the city, and the city itself must be liable to account for them.

It is further argued, that the case does not show any infringement by the Fire Department, even by using the patented invention. The answer does not really deny, but rather admits, what would amount to an infringement. If that were not so, the proofs fairly show infringement to some extent; to what extent, if to any, before the bringing of the bill,' is

The Colon.

not now material. The extent is a matter to be settled in the

accounting.

Let there be the usual decree for an injunction and an account, with costs.

James A. Hudson, for the plaintiffs,

Frederic H. Betts, for the defendants.

THE COLON.

S., the owner of the steamship A., filed a libel in rem, in the District Court, against the steamship C., and her cargo, claiming $150,000 for salvage services rendered by the A. to the C. The C. and her cargo were arrested and released on a stipulation for value in $150,000. The master, officers and crew of the A. were made co-libellants. The District Court awarded $10,000 as salvage to the owners of the A. and her master and crew, giving $4,375 to the master and crew, and $750 additional to the master, and $4,375 to the libellant, as owner of the A., and $500 to him for materials and extra coal used. The claimant paid the $5,125 awarded to the master and crew, and also $2,200 28 awarded in the suit to co-libellants for damage to cargo by detention, and their costs. The libellant appealed to this Court, claiming, in his petition of appeal, that he should have $25,000, and costs, besides $1,856 65 compensation for actual loss and damage, and exclusive of any award to the master and crew of the A. He did not appeal from the ratio of distribution of the $9,500 Held, that the amount awarded was sufficient.

The District Court refused costs to the libellant because of exorbitant and unfounded claims which he made and expense and trouble to which he wantonly subjected the claimant. This Court awarded to him the same amount as was awarded by the District Court, without the costs of that Court, and awarded to the claimant his costs in this Court.

(Before BLATCHFORD, J., Southern District of New York, July 9th, 1880.)

THIS was a suit in rem, in Admiralty, brought in the District Court, for salvage, by the Atlas Steamship Company, Limited, against the Steamship Colon. That Court awarded.