DE LORIEA. tI. WHITNEY.
611
'fherefore, a special mandate is requested, which we will grant, as the circumstances are so peculiar. Smith v. Weeks, 3 C. C. A. 644, 53 Fed. 758. It must be expressly that we are not committed to any phases of the law which the new proofs, if taken, may raise, nor barred from applying to them the rule of Telegraph Co. ,:. Himmer, 19 Fed. 322, if it meets our approval and comes in point. Ordered: The petition for a rehearing is denied. The judgment already entered is amended to read as follows: "The decree of the circuit court is affirmed. This court reserves to the appellants liberty to file in the circuit court an application for leave to file a bill ()f review, or leave to adopt other appropriate methods, and to pro.eeed thereon as that court may determine, with reference to the matter of estoppel appearing in the opinion of this court passed down March 5, 1894; the appellees to recover costs of appeal." DE LORrEA et al. v. WHITNEY. (Circuit Court of Appeals, First Circuit June 22, 1894.) No.88.
1.
PATENTS-AcTIONS FOR INFRINGEMENT-DIRECTING VERDICT.
When, in an action at law, the essence of an alleged infringing machine is not in dispute, so that the question of infringement by it turns plainly on the construction of the patent alleged to be infringed, and such eonstruction is for the determination of the court, either on the face of the patent, or on its face in connection with facts of such nature that their . existence and effect cannot be reasonably dis:puted, the entire issue of infringement is :practically for the court In regard to these particulars, the same rules of construction apply as apply to other instruments. Royer v. Belting Co., 10 Sup. Ct. 833, 135 U.· S. 319, touching what issues are for the jury, explained. it had great commercial success, are limited in their application to ques-
t. 8.
SAME.
SAME-EVIDENCE-CONSTRUCTION OF PATENT.
The facts that a patented machine was the first successful one, and that
tions of utility or patentable invention, and have no pertinency incases turning on the construction of the patent. 4. SAME - LIMITATION OF CLAIMS HIDES. MACHINES FOR UNHAIRING AND SCOURING
The McDonald patent, No. 210,797, for a machine for nnhairing and scouring hides and skins, mmlt be limited to a machine containing two feed rolls lind a supporting roll and a scouring roll; is not entitled to a broad range of equivalents, but falls within v. Cordesman, 3 Sup. Ct. 230, 109 U. S. 408, and cases of that class; and is not infringed by a machine which contains three rolls, the lower acting as a combined feed roll and supporting roll.
In Error to the Circuit Court of the United States for the District of :Massachusetts. 'fhis was an action by Joseph F. De Loriea and Griffin Place, executors of James W. :McDonald, against Arthur E. Whitney, for damages for infringement of letters patent No. 210,797, issued December 10, 1878, for a machine for unhairing and scouring hides and skins. On trial in the circuit court the judge instructed the jury to find for defendant. Judgment for defendant was entered on the verdict. Plaintiffs brought error.
612
FE.DERAL REP9RTER,
vol. 63.
The ruling In the circuit court was as follows (COLT, Circuit . The eyidence being closed in this case, and the requests for rulings having been by the counsel upon both sides, lam prepared now to state the conclusions that I have reached with respect to the constniction of the McDonald patent in suit, which has an important bearing upon the case. I am of opinion that the McDonald in"Vention described in claims 1 and 2 or his patent of December 10, 1878,must be limited to a machine containing two feed r{lIlSi a supporting roll, and a scouring roll, and that a machine which contains three rollS, the lower roll acting as acoJIlbined feed roll and a supporting roll, is not !within the patent The specification· refers to the prior Roberts patent, of November 7, 1876, which was for a four-roll machine, and tb,e prior McDonald patent, which was also for a four-roll machine, and it dec],ares that the invention is for an improvementon the last·named device. The patentee, after referring to three other prior patents in his specUlcation, and pointing out why they do not contain his invention, describes what he says "constitutes the spirit of my invention" as follows: ''Two feed rolls for feeding a hide or skin to a scouring roll, 80 arranged in relation to each other and to the scouring roll that one of said rolls may be lifted from the other and held apart while a hide which has been l.mproperlyfed is drawn l)ackby the operator before it has passed the scouring roll to be properly fed to the said scouring roll." The spIrit of the McDonald invention,and the substantial improvement which he believed he bad accomplished by his lnventlion, was the separation of the two feed rolls, whereby a hide which had been improperly fed could be drawn back by the operator. He was dealing with a four-roll machine of the Roberts type. He had already patented one improvement on that type of machine. He now saw still another detect in the machine, and the way to remedy it.. The defect was that in both the Roberts machine and his prior machine the feed rolls could not be separated. Both these machines provided for the separation of the supporting roll and scouring roll by the movement of the treadle, but no means were provided for the separation of the feed rolls by the same movement. To McDonald's mind the separation of the supporting roll and scouring roll was old with Roberts and himself, while the separation of the feed rolls was a new conception originating with him; and he considered this an important improvement on the prior. machin.es, because by this means the operator was enabled to withdraw the hide when improperly fed. This was the principal contribution to the art which McD.onald believed he had made by the patent in suit. This is clearly shown by the file wrapper and contents, which was not before the court in either of the two prior cases where this patent was under consideration. In the original application the first" claim of the patent was as follows: "In machines for, unhairing and scouring skins and hides, the feed roll, D, in combination with the treadle, F, and SUitable connecting mechanism, whereby tile 1'Qllsmay be separated' and held apart, substantially as described, and for the llttrposes set forth." The examiner held that this claim was anticipated by patent, of October 10, 1871; the Roberts patent, of November 7, 1876; ,the Larrabee patent, of July 24, 1877. He also said: "It is proper to add that it is common, in leather-working machines, to provIde vertical adto rolls or cylinders by means of levers and their intennediate devices." To this the applicant replied, October 22, 1878, through his authorized attorney, T. W. Olarke, that the Coogan patent did not describe feeding rolls which could operate to feed a hide; that, while Roberts describes a pressure rql1which can be moved with respect to the scouring roll, the adjustment is not applied to the feed roll, and no adjustment Is shown for the purpose of holding one roll from another in order thatiUl improperly fed skin may be Withdrawn for the purpose of again properly 'presenting it to the feeding rolls; that the Lan'abee machine shows but one feed roll; that the drum described the Larrabee patent as a work-supporting cylindeI has a movement in relation to the scouring roll, but none in relation to the feed roll; that the movement in relation to the scouring roll, is for the purpose of feeding the pressure of the roll upon the hide; and that there is no provision by Which the hide can be
in
DE LORIEA V. WHITNEY.
613
withdrawn after It has once commenced to feed. The first claim was therefore withdrawn, and the following substituted: "(1) In machines for unhairing and scouring skins and hides, in which two feed rolls are employed in feeding the hide or skin to the scouring roll, D, provided with a vertical movement in relation to the feed roll, D', by means of the treadle, F, and suitable connecting mechanism with said feed roll, D, whereby the said rolls may be separated and beld apart, sUbstantially as described, and for the pUI1)Oses set forth." Mr. Clarke further says in this same communication: "The applicant is that it is common, in leather-working machines, to provide vertical adjust· ments to rolls or cylinders by means of levers and their intermediate connections; but he is not aware that these adjustments have been made in machines for unhairing, working out, and scouring skins and hides for the pur· pose of enabling a workman to withdraw a skin or hide that has become wrinkled or folded upon itself in the feeding, so that by supporting the feed roll, and by moving the supporting roll from the scouring roll, the skin may be drawn back by the operative, and again fed, without the necessity of feeding the same through the machine, slopping the machine, removing it from the pile on the other side to again feed it to the feed rolls, which it is necessary to do with the machines now in use." That is, the principal idea that lay in McDonald's mind was to have the two feed rolls separate in a four-roll machine, and you will obsenTe that in these communications with the patent office that idea is pressed upon the examiner as the leading and principal improvement in his patent. In the prior Roberts machine there existed only the separation of the work roll and the supporting roll. In the prior McDonald patent that same feature is found. Now, McDonald said it is necessary to separate the feed rolls in order that the operator may be able to withdraw a hide which is improperly presented; to remedy, in other words, the defect of permitting the hide to pass entirell' through the machine, fall upon the other side, and then to be taken up and presented to the rrachine again. The applicant, through Mr. Clarke, still further follows up and enforces this view of his patent in· his dealings or correspondence with the patent office. Under date of October 28, 1878, the examiner, in reply to the last communication from the appliClj.nt's attorney, uses this language: "It is not unusual to provide two feed rolls in a leather-working machine, and the employment of levers and springs as means fOl' adjustment has been shown to be old," At that date, therefore, the amended claim-the first claim of the applicationstood rejected. To that communication from the examiner, Mr. Clarke replies, under date of November 14, 1878, in part, as follows: "In presenting a hide or skin to feeding rolls, the same is liable to become folded upon itself, if not properly fed; and, if a hide is so fed that it shall be presented in a folded or wrinkled state to the unhairing or scouring roll, it, of course, will be Imperfectly dehalred or scoured. In all the inventions heretofore employed for unhairing and scouring, no proviS'ion has been made for withdrawing the hide or skin from between the feeding rolls before it is operated upon by the scouring roll; and consequently every hide or skin that was not fed in a perfectly fiat condition, so that no wrinkles or folds could occur therein, had to pass entirely through the machine, imperfectly scoured or unhaired, and required to be again passed through the machine, in a perfectly fiat condition, in order to perfectly free it from hair, or work it. ThUS, in imperfectly nnhairing and scouring one hide, there was consumed time enough for perfectly scouring two hides. If, however, the hide could have been withdrawn before it reached the scouring roll, by separating and holding apart the feed roll, the time would have been saved. Mr. McDonald has discovered that it is possible to save this time, and he effects it in a way which seems very simple after he had accomplished it, but nevertheless was entirely unknown and unpracticed· before he conceived it; that idea being the separation of the feed rolls. The conception of the separation of the working roU and the scouring roll was old. He accomplishes it by so supporting and actuating one of the feed rolls that it can not only be lifted by the movement of the lever, but it can be beld apart sufficiently long to withdrawn the hide if improperly presented. Mr. McDonald was as well aware that rolls had been given movements or adju.stments in relation to other rolls, in certain classes of machines, as he was that the feeding roUs of an unhairing machine had never been organized to accomplish
,614
FEDERAL REPORTER,
.the;result thll.theacCQ-nplishes. His invention CQllslsts, :Mtin moving one :J»ll,tI:QUl 'another"i-for the same is veryQ1d/ not only In 'leather-working macaines, butina rgreat variety of devices.where it is' desirable to increase or ,lessentllespacebetween rolls,-but it"ldo.esCQnslst in movil\g one roll for another at a certain time for a certainpuxpose, and in a certain machine; and :there is as' IIl:UCh inv,ention in moving" iii 1'OU,at a certain time for a certain isindisCQveriIl':tl1at one roll may be separated from given the other fOJi'lthepUl"P0ses of any desirable and new adjustment. Mr. MeDonald'sinvenf}on does not depend u;ponthe means for separating the rolls aloue, but:it f,wt4er dependsllp<ln the time when said separation is to be employed; and M:l.'oiMcDonald,· so far as the references ,show, is the first man who has arrallgeditwo, feed rolls so' that:one of them may be lifted and held at a certain time to. accomplish a certain speeifiedresult." The letter then considel1s more in detail the three references to which the patent office ,referred the applicant in the first communication which was made to him., ',' ,'rho' letter further says, "I am so firm in my conviction that neither of,the·thre;e:references cited meet the !nventionof Mr: McDonald that I will incorlKtl$te the following amendment in the specification." He then Ineorporate into the specification the amendment which remains now as a ,part of the patent. That amendment points out and describes the Coogan machine, the Roberts machine, and the Larrabee machine, and then ,follows, this language: "But neither the boarding, pebbling, and glossing machine of Ooogan, with Its rolls revolving in the same direction to calTY the endQf a. folded sheet of leather. in an' opposite direction, nor the de·vice in the RQberts machine for pressing a hide against a pressure roll, nor the me<:hanisUlsllow.n III the :EIarringtonpatent for pressing abide against a knife cylillderwithout changing its relative position to the other feed roll, CQnstitute the spirit. of my inV'entlon; and neither of the three patents show or describe two feed rolls f()r feeding a skin to a scouring roll, so arranged in rel,atlon to each other and to thescoul'ing roll that one of said rolls may be lifted from the other and held apart while a hide which has been improperly fed IlldJ,'Rwn baek by the operator before it has passed the scouring ,roll, to be prOplilrly fed to the said scouring roll, which constitutes the spirit of my i n v e n t i o n . " . . Then follows an amended first claim in the following language, to be substituted for the)l4!t amended first claim, which was rej.ected. "In a machine for unhairing, scouring, and working out skins and hides, in which two feed rolls are employed in feeding .the hide or sltill to the scouring roll, the combination with said, sCQwing roll of the feed roll, one of which Is provided with a vertical movellWnt in relation to the other by any suitable means whereby the said rolls may ,be separated and held apart· when desirable, for the purposes stated." That further amended first claim was rejected in a communication from the examiner dated November 19,1878. In a further CQmmunlcationfrom the examiner, daW<l,Novem'ber 27, 1878, we find the follQwlng language: "The last amendment and argument has been carefully CQnsidered, It has been shown by pertinent references that allombinatlon of coacting rolls and a lever-adjusting mechanism is not novel. In fact it .is' common, in most leather and hide working machines, to proylde adjustment ,with relation to each other, where feed rolllil·!U'e employed. bef()re carefUl examination. It Is obvious in this case that the novelty, so far as the lever mechanism Is Involved, consists in the pecul;i.ar ·arrangement 'of such mechanism, whereby, from a single movement of the lever, the feed :rolls are separated, and the supporting roll is adjusted relative to the liICQurlng roll." That is, the examlner says, in substance: "M;r. McDonald, you:can have no patent for the separation of tile · two feedroUs by the lever mechanism, because that feature Is old; but you may have a patent for the: combination of that feature with the other feature of the separation of the work roll from the supporting roll, both sets of rolls being separated by a single movement of the lever. You admit that the separation,,ofthe :work roll and the supp<lrting roll is old, We hold against your that the separation of the two feed rolls by a movement of the lever is old. but you may have a claim for the combination of those two ·elements operated by single movement of the lever." But: the applicant still remained unsatisfied. He still presses upon the pat-
a
DE LORIEA
v.
WHITNEY.
615
ent office that the spirit of his invention is the opening of the two feed rolls combined with a work roll, in an unhairing machine, by lever mechanism; and in a communication from Mr. Clarke, dated November 23, 1878, we find the following comments: "Office letter of Nov. 19, in relation to the abovenamed application, is at hand, and contents noted. From its contents, I perceive that the examiner does not fully comprehend the nature of the applicant's invention. I therefore desire once again to call his attention to the matter, and I will make such a comparison between the invention of Mr. McDonald and the cited references as will show that the subject-matter of the claim, as it was intended to word it, is not found in any of the references cited, and that such adjustment can only be of use in an unhairing machine, and that none of the references cited as analogous machines describe, or in any way show or hint at, any such combination. The claim also is erased, and a more specific one inserted in lieu thereof, to more clearly express Mr. McDonald's invention." You will observe that these changes in the claim represent an effort on the part of the applicant to make more specific what his invention is, and that it relates to the feed rolls alone, the capacity of separation, with a work roll in an unhairing machine. This first claim now assumes this form: "In a machine for unhairing, scouring, and working out skins and hides, which contain.s a pair of feed rolls to feed the skin to the scouring roll, and a scouring roll to work the same, the combination with the scouring roll of a pair of feed rolls, one of which is provided with suitable means of adjustment to and from the other feed roll, without changing the relations of the feed apparatus to the scouring roll, substantially as described." This certainly does not claim anything set forth and shown in either of the references, and is not itself shown in either of the mechanisms referred to. The boarding machine of Coogan has only two rollers, not three, and therefore is lacking in one element, and a very important one, of the combination. Both his rollers are working rollers, while only one of the applicant's three is, in the same sense, a working roller. The Hoberts machine, patent Nu 184,175, has, again, only two rolls in the described combination; or, if you add to the combination containing the adjustable roll, the feed rolls, it is a combination of four rolls, two of which are working rolls, and adjustable to and from each other, the other two of which are feed rolls, and are not adjustable to and from each other. In our case there are but two rolls, and the feed rolls contain the adjustability, and not the working rolls. In the Harrington machine, we come upon the machine which has three rolls, one of which has a working roll, as in our case. The other two are feed rolls, and one of the feed rolls is movable, and swings upon the axis of the other to and from the scouring roll, thus acting as a working roll or pressure roll, as in the case of the Roberts machine. But this machine does not embody the combination of feed rolls adjustable to various gauges, with a scouring roll set with relation to the feed rolls at an unvariable gauge, but it embodies the combination of a scouring roll set at a variable gauge with one of the feed rolls; that is, the scouring roll is set at a variable gauge with one of the feed rolls in the Larrabee of Harrington deviee. 1.'he feed roll may be moved towards the scouring roll. It is not the time when the adjustment of the roll takes place that is important. It is the act that the machine is performing, and the error that it falls into, that has led to this improvement; and it is clear that if such an error should be committed by the Harrington machine as the one we are providing against,-that error being the wrong presentation of the hide, and the capacity to withdrllw it by the workman,-it could not be corrected in the same way. It could not be corrected in the same way in the Larrabee or Harrington machine, because, according to the applicant's interpretation of that machine, the feed rolls had no motion with respect to each other. But it is also true that the Roberts machine presents 110 method analogous to this for cot'recting a similar error in the working machine; and inasmuch as the Coogan machine eannot do the work which this machine proposes to do, and has no scouring roll whatever, and no feed rolls, but simply a pair of kneading rolls or dragging rolls, it is useless to consider that reference any further. 'rhen follows this significant language: "It is therefore obvious that the combination which the applicant claims, embodying the peculiar featmes of a pair
6.16
FEDERAL, BEPOllTER,
of, adjustable¢pping rolls in combination with a working roll, towards whIch rpllsare not adjustable" (tJ:!.ll-tbeing the peculiar feature of the L/lJ'rabeemachine),,"and with of the gripping rolls performs the function of r<>ll" (thatis, neither of the feed rolls, according to the Ilpirit of the McDonald patent, performs the function of a pressure roll), "has not been anticipated, so far as any reference yet given has shown. And It mUSt also be obvious that the claim, as now presented, indlcates"-what? ,IFairly, the peculiarity of this invention, and is not broader than the invention en<ls the correspondence with the patent ofiice. itself." ,What followed? The applicant accepted the position taken by the patent office, and the' patent was issued as we ,now find it. The patent ofiice said, in substance, to McDonald: ','You cannot have a claim for what you consider as the spirit Invention, namely, two feed rolls so arranged with reference to eacb other and to a scouring 1'\>11 that one of said feed rolls may be lifted from the other and held apart while ,a hide which has been improperly fed is ckawn back by the operator before it has passed the scouring roll; but you, D1aY have a ,claim for t):lis feature, which is old, in combination with an· other feature which you admit Is old. In other w()rds, you may have a claim tor or combination whereby, from a single movement'ofilie lever, the feed ,rolls are separated, and the supporting roll Is ad· justed to the scouring roll." This position was accepted by McDonald, and tIl,e pateJ,lt ",as issued. I think the proceedings in the patent ofiice, and the language of the specifica· tion, shoW that McDonald never contemplated, as included within his inven· tion, a feed roll which performed the double function of a feed and pressure roll. Indeed, 'when he has referred to such a roll in the Larrabee machine, he denies that his feed roll has any such double function. He says, in substance, that hiS feed rolls do not perform the fu:nction of a pressure roll, and that his feed roll is not adjustable towards the scouring roll. It was natural for blm to say this, for this was the type of the three-roll machines as represented by Larrabee, Weed, and and he was dealing with a four-roll machine of the Roberts ,class. I think it may be fairly said that McDo:nald has disclaimed the use in his machine of a single feed roll which has the additional function of a pressure roll. If, however, we assume that no such llmItation exists, we are met with a further dlffl.culty, assuming that the patent Is :not thus limited , It the first tW(\ claims In the, patent are to be interpreted without regard to what took place in the patent office, or to.'the recital in the specification of the patent to which I have referred, we must then examine the scope of those elalms. The first claim covers broadly the combination with feed rolls and a supporting roll of a lever and intermediate mechanism. whereby, by a single movement of the lever, the feed rolls are separated, and the supporting roll adjusted to the scouring roll; and the second claim is for the feed rvlls which can be separated, and a scouring roll and a supporting roll which can be separated, the tntermediate mechanism not being specifically made a part of this claim. These claims, as I interpret them, include only the four rolls, and the moons for separating them by a single movement of the lever. Now, if we say that thf1se claims are not limited to the use of four rolls, but that they covel' a machine with three rolls, in which the lower feed roll acts both as a feed and pressure roll, then we are met by the Weed patent, where by a sin.gle movement of the lever the lower feed, roll Is separated from the upper feed roll and the work roll. This patent appears to have escaped the attention of the patent office. Whether Weed used the same or a dllferent kind of work roll makes no difference, provided that the essential thing was present in his machine, of separating all the rolls by a single movement of the lever or treadle. Nor does the fact that the act of pressing the foot on the treadle in the Weed machine brings the rolls together, while the same act in the McDonald machine releases the rolls, seem to be regarded by McDonald as a part of his invention. I was at first inclined to attach importance to this distinction, but upon refiection,· supplemented by the evidence, I am satisfied J was mistaken. The circumstance that the rolls are held together by spring pressure in the McDonald machine is not an element in these claims. The words "substantially as described" do not enlarge the terms of a claim beyond what is mentioned or referred to in the claim as the elements of the combiwv
tion. If, therefore, these claims of the McDonald patent are to receive the broad construction which their language justifies, they are by Weed. In the old equity case of McDonald v. Whitney, 24 Fed. 600, the-'veed patent was not before the court. It being admitted in the present case that the defendant's machine is constructed with three rolls, the lower feed roll both as a feed and pressure roll, I must direct a verdict for the defendant, on the ground that there is no evidence to go to the jury to support the charge of infringement.
.
DE LORIEA V. WHITNEY ·
617
James Milton Hall, for plaintiffs in error. Joshua H. Millett and Ralph W. Foster, for defendant in error. Before PUTNAM, Oircuit Judge, and NELSON and WEBB, District Judges. PUTNAM, Oircuit Judge. When this case was before this court on a prior occasion, the exceptions were not framed to bring before us the issue which is now raised as to the construction of the plaintiffs' patent, but only the proper manner of submitting to the jury certain other issues, which, it was not disputed, were proper to be submitted to it in some form. We are now asked to consider the question raised by the following extract from the record: "After the evidence was allin, and couno;el had submitted requests for rulings, the presiding judge directed the jury to return a verdict for the defendant on the ground that there was no evidence to go to the jury to support the charge of infringement, and ruled as follows: The evidence being closed in this case, and the requests for rulings having been presented by the counsel upon both sides, I am prepared now to state the conclusions that I have reached with respect to the construction of the McDonald patent in suit, which has an important bearing upon the case. I am of opinion that the McDonald invention, described in claims 1 and 2 of his patent of December 10, 1878, must be limited to a machine containing two feed rolls, a supporting roll, and a scouring roll, and that a machine which contains three rolls-the lower roU acting as a combined feed roll and a sup-porting roll-is not within the patent."
What follows this need not be recited at this point, as it only gives the explanation by the presiding judge of the reasons governing his conclusion. As it does not appear that the defendant below asked that a verdict should be directed for him for any particular reason specified by him, or that he in any way limited himself, it follows that if the conclusion of the circuit court was right the reasons which led to that conclusion afford plaintiffs below no ground of question in this court. In the extract we have made from the record the issue is first put as one of infringement, but subsequently it is stated ;lS one of construction of the plaintiffs' patent. Either way of stating it may be said to be correct. When the essence of an alleged infringing machine is not in dispute, so that the question of infringement by it turns so plainly on the true construction of the patent alleged to be infringed that, such construction being ascertained or not in dispute, a verdict in one direction ought to be set aside as against the weight of evidence, then, under the rule as now understood, the court ought to direct a verdict in the other direction; and under such circumstances the issue of infringement is essentially the same as that of the construction of the patent in suit. In the case at bar there was no dispute as to the essence of defendant's
618 machine, and thel'ecanbe,no,teasonable question of fact that, uPOI! otleconstrqction of the patent, defendant's machine in'ringed it, ahd upon another that it did not. And if, therefore, the constructi<m of plaintiffs' plltent was .for the determination of the court, either on the face of the patent, or on the face of the patent in connection only. with. facts 9f' auch :aature that their existence and effect could not be reasonably disputed, it follows that the entire issue of infringement wast practically for the court, however it might have been with isme80f novelty and patentability, or other issues which might have, 1;)een raised if the issue of infringement could properly have' been submitted to the jury, or determined for the plaintiffs. So far as concerns what is for the court and What for the jury, there is no essepttal distinction between patents for inventions and other Primarily, the construction of all of them is for the court; alia yet all such, under seal, and, under some circumsfa#ces" solemn·, of judicial tribunals, have reiation to which.. J1l.ustbe determined bythe jury before the can be finally settled. In such Instances the is,sue is often spoken of as one of mixed law and fact. Yet, the d<mbtful deterIl1ined, remains for t!Ie <iourt, though fprm where, verdIcts are general and not speCIal ,may have a·different appearance. Where the facts are not in dispute, or, are s? and.of SO" clear effect they come 'WIthm, the rules fO,r ,du;ectmg verdIcts, the constructIOn of the instrument remains thro:ughout practically for the court, even though under the form of directing the jury what determination to roake. 'This was -the precise, condition of this case in the circuit court. 11 is, quite probable,tliat, if the question of infringement could have been determined in favor of plaintiffs, other issues would have followed,whichmul;thave gone to the jury. Such issues have been disCussed before TIl!; but, if the issue of infringement was correctly determined in connection with the construction of the patent in SUit, we have no occasion to refer to others, except to remark that it was not necessary to send the case to the jury on account of contingencies which might have made these important, but did not. Holding these rules in view, the case becomes very simple. The progress of MeDonald's application through the patent office was clearly and fully explained byihelearned judge in the circuit court; but we need not refer to it, except briefly. The first claim, as originally offered, was as follows: "In macbines for unbairing and scouring' skins and bides, the feed roll, D, in combination with the treadle, F, and suitable connecting mechanism, wbereby the rolls may 'be ,separated and beld apart, substantially as described, and for the purposes ,set,forth."
There was'also, originally,
a $econd claim, as follows:
"In macbines for scouring and unbairing and wOlking bides and skins, the combination of the supporting roll, G, with the treadle, F, and suitable connecting mecbanism, whereby the' same may be moved and beld from the scouring roll, substantially as and for the purposes set forth,"
619
These w'ere' each rejected as having been anticipated by prior patents, and for the additional reason, given by the examiner, that "it is common, in leather-working machines, to provide vertical adjustment to rolls or cylinders by means of levers and their intermediate devices." McDonald acquiesced in the position of the examiner; and the final result was the first claim as it now stands, covering a combination which, according to its letter, contains, as elements, two feed rolls, a pressure roll, and a working all, four distinct rolls, arranged in two sets, with levers for opening each set simultaneously. The second claim was originally drawn as the third claim, and was in essence the same as the first claim now is, and has always so remained. The proceedings therefore involve a clear and unquestionable disclaimer, by amendment, of a combination which adjusts merely one feed roll or one pressure roll with reference to another roll, even under all the limitations of the rule touching this. form of disclaimer fully stated by this court in Reece Button-Hole Mach. Co. v. Globe Button-Hole Mach. Co., 61 Fed. 958. 1 Neither is the effect of this amendment complicated by the proposition now made, that McDonald was the first to construct a machine in which the rolls were closed when the machine was in its normal condition, and that this was a distinguishing feature of his combination, to be protected by the doctrine of This particular of his machine appeared in his first and second claims as first drawn, so that, if this was a feature of novelty or a function of his invention, these claims, as thus drawn, should have been allowed; and it followS that his disClaimer by amendment covers this feature or function also. Now, with reference to the adjustment of the rolls, the record principle of the shows clearly the construction, operation, alleged infringing machine, and in this connection there can be no dispute nor obscurity. Plaintiffs' deClaration contains a ando, covering the period from the 5th day of August, ,1885, to the date of the writ, and we have no concern with the somewhat different machines built by the defendant between 1881 and 1885. The defendant's machines involved in this suit are clearly described in the record as having three rolls,held together by spring pressure and a treadle and lever mechanism, by which all the rolls are simultaneously separated by a single movement of the lever. It appears by the record that this machine has the feature, apparently common to all three-roll machines, by which one roll serves the purpose of both a feed roll and a pressure roll; and the separation in the defendant's machine in controversy, the record says, is brought about by this feed and pressure roll moving away from the upper feed roll and the work or scouring roll. In another place in the record the operation in this particular is described in the following language: "The Whitney machine has an upper feed roll and a lOWer teed roll, so that it has two feeding poInts. The upper feed roll and the lower roll, Ing together, do nothing but feed the hide along, precisely the same as the · 10 C. C. A. 194.
620
upper feed roll and the lower feed roll feed it along in the McDonald, and they
havo no other funetion. The lower feed or pressure and the work rolls in the Whl1;ney are also feeders. The rubber or lower roll acts as a feed roll upon the surface next to the upper feed roll. It acts as a feed roll also upon the next to the work roll. At that last-mentioned point it also acts as a pressure.roll to make this roll work; that is, unhair the hide,"
Again, on page .20: .It thus appears that in the operation, ot the alleged infringing machine only one rQll is adjusted or mQved. The proceedings in the patent office disclaim, as old, the use of atreadle and levers by which a single roll can be operated and adjusted; and McD,onald's invention was thus admittedly limited to .the more complicated system of lev!:.rsand connections required to operate simultaneously, easily, and for practical purposes, two rolls, .each of them embraced in different sets of rolls in the same machine. Whether, in any event, anything .claimed by plaintiffs to have by McDonald involved invention, within the rebeen quirements of the patent laws, or whether he was anticipated, exceptso far as admitted by the proceedings in the patent office, or whether the general principles of the defendant's machine are the same, or its mercantile qualities depend on the same general features, as the plaintiffs', we do- not determine. If the c,ase turned on any of these issues, the law might have compelled the court below to ask the aid of a jury touching it; but, as the case in fact stands, they can all be aBsumed to be as maintained by plaintiffs, or passed by entirely, because' the case is disposed of before their consideration is reached. We refer to them again only to make sure that it is not misunderstood that we are dealing only with the face of the patent, and with undisputable facts of the character which we have. described. To return, therefore, to our last proposition, we add· that each of the two claims of plaintiffs' patent under consideration,harmonize with that .proposition by the use in this particular of clear and positive expressions. Each of them, in terms, includes two full sets of rolls as elements in the combination. The rule, prima facie, is that, while the use of equivalents for an element in a combination is not lawful, yet a combination which does not includeall the elements does not infringe. There maybe exceptions where the nature of the invention is of such a primary or broad character that it is plain some of the elements named are unessential; in other words,where the invention is so broad that the range of equivalents. will be correspondingly ,broad, under the liberal construction which the courts give to such inventions. Miller v. ManufacturingOo., ;t51U. S. 207, 14 Sup. Ot. 310. But there is no reasonable basis for maintaining, either as a matter of law or fact, that is op.tside of the rule applied to ordinary combinations in M;eter 00. v. Desper, 101 U.S. 832; Fay'v. Oordesman, 109 U. S. 408, -420, 421,3 Sup. Ot. 236; Knapp v. Morss, 150 U. S. 221, 228, 229, 14 Sup. Ot. 81; and Dunham v. Manufacturing 00. 154 U. S. 103, 14 Sup. Ct. 986. on the.treadle in the Whitney machine throwS the lower roll out in a lateral direction, and releases it from the work roll, and also from the feed roll above, and it releases the hide from two points,"
FRENCH 'V. KRELING.
621
The rely on Royer v. Belting Co., 135 U. S. 319, 10 Sup" Ct. 833, laying down the rule that the question of what is a primary or pioneer patent, and also the question of the differences between the patented machine and the alleged infringing machine, are for the jury; but even in this case the court (page 325, 135 U. S., and page 833, 10 Sup. Ct.) recognizes the exception that these questions are not to go to the jury when, if a verdict should be found on them for the plaintiff, it would be proper for the court to set it aside. That in the present case any finding of a jury that McDonald's in· vention, in whatever form it could reasonably be stated by the plaintiffs, was excepted from the practical application of the rule touching mere combinations stated in the cases cited, could not be accepted by the court, and that there are no facts in the case which, on any reasonable theory, could state the mechanical principles of McDonald's machine and of the alleged infringing. machine, so far as they are now involved, other than as we have stated them, are plain propositions. The reference to the Larrabee patent in McDonald's specifications, on which the appellants rely, instead of weighing against our propositions, adds to them. It is referred to, with other patents, for the purpose of stating that neither of them "show or describe two feed rolls for feeding a hide or skin to .the scouring roll," etc. In the absence of qualifying matter, the fair interpretation of this expression is the literal one. The appellants rely on the fact that the patented machine was the first successful one, and on the fact that it had great commercial success. The decisions touching the effect of these propositions are so numerous and modern that they need not be referred to cifically, but they limit the application of them to doubtful cases turning on questions of utility or patentable invention. They have no- pertinency to cases which turn on the construction of the patent. We think no well-authenticated case can be found where they have been admitted with reference to such issues. On the whole the majority of the court are satisfied with the conclusion of the circuit court. The decree of the circuit court is affirmed.
FRENCH v. KRELING et aL (Circuit Court, N. D. California. August 13, 1894.)
UNPUBLISHED OPERA-UNAUTHORIZED PRODUCTION-ACCOUNTING FOR PROFITS.
One who produces an opera without authority from the author must account to him f()l the profits, where such opera has never been circulated or pubUshed, though copies had been printed for the private convenience of performers, In learning their parts.
Bill for an accounting by T. H. French against Joseph Kreling and others. There was a decree for plaintiff, as prayed. Joseph D. Redding, for complainant.