"Claim 1 is somewhat inaccurate, as the cutter is expressly held out of contact with the cylinder. The claim does not formulate the complete operative device, and by no means distinguishes from Rosenthal, of record. "The following revision is respectfully suggested:" Then follow his suggestions about forming the claims. We need only to say that he advises forms for claims 1 and 2, in both of which the cutting roller is described as being "of much smaller diameter" than the other roller. He then proceeds to say: "It is suggested that claim 3 be revised to read like suggested claim 1, excepting that before the words 'and means' there be inserted these words, 'said bar being provided with collars having a diameter equal to the greatest diameter of said bar.'' And concludes by saying: "It is thought that counsel for applicant will upon comparison of the original with the suggested claims see that the examiner has endeavored to preserve the intent of each, and has striven merely to relieve the claims of matter appropriate to, and already stated in the description, and to omit from them unnecessary limiting elements. "In order to avoid confusion in view of former amendments the claims should be entirely rewritten." The claims were all rewritten, and in every one of them the cutting bar was described as being "of much smaller diameter" than the other roller. We will now take up the subject we postponed when we met these references at the former place. We have been at pains to develop the facts upon which the question arises, whether claim 3 is limited in respect to the diameter of the cutting roller when compared with the diameter of the other roller so as to exclude a form of cutting roller of equal or larger diameter than that of the other roller. At the hearing we were much impressed by what appeared to be a concession of the patentee to a requirement of the examiner, for we assumed that the references made by the examiner in support of his objection concerned the subject here in controversy. But it now appears that this was not the matter which the examiner had in mind, and that there was no concession on the part of the patentee unless it was made by adopting the form of claim suggested by the examiner. It is of the essence of the rule whereby the inventor is estopped from claiming to the full of his invention as disclosed by his specifications and claims in consequence of his concessions to meet the requirements of the Patent Office and so obtain his patent, that the requirements which were conceded by him should concern the matter upon which the estoppel is raised. The estoppel must rest upon a definite basis. If the examiner discloses his objection, we can see what it is, and know the consequence of a concession to it. If he does not do this, and contents himself with a reference, we look to the matter referred to, to ascertain his meaning. Either in the one way or the other the examiner must point out what his objection means. If his objection is not put upon the ground whereon the patentee is alleged to be estopped, it is obvious that the concession made to meet it would be a concession only of an entirely irrelevant matter. Mr. Justice Shiras, in delivering 179 F.-20 179 FEDERAL REPORTER, the opinion of the Third Circuit Court of Appeals in Hillbone v. Hale, etc., Mfg. Co., 69 Fed. 958, 960, 16 C. C. A. 569, 571, said: "It may well be that a patentee cannot be permitted to hold under his patent anything that he has clearly renounced and excluded from his inventions during the prosecution of his application. But surely it has never been held that mere changes of phraseology to suit the views of the examiner, and to distinguish the claims made from those contained in prior applications, to which reference has been made, can be held to defeat the patent, when granted. What is forbidden is the attempt, after a patent has been procured, surrendering or disavowing substantial claims or devices, to recover such renounced and abandoned claims by demanding a broad construction of those allowed." A more definite and concrete statement of the principle was made by Judge Sanborn in delivering the opinion of the Eighth Circuit Court of Appeals in the case of J. L. Owens Co. v. Twin City Separator Co., 168 Fed. 259, 93 C. C. A. 561, where he said: "If a patentee acquiesces in the rejection of his claim on reference, he may be estopped to maintain that an amended claim covers the combinations shown in those references, or that it has the breadth of the rejected claim, but he is not estopped from claiming and securing by the amended claim every improvement and combination which he has invented and which was not disclosed by those references." We think this is a perfectly correct statement of the law, and would be equally so of a case where the objection is stated by the examiner without references and the objection is seen to have been leveled at another matter than that involved in the alleged estoppel. It is hardly to be believed that the examiner himself intended to cut off all other forms than such as should comply literally with the words of the claim. He had already pointed out to the applicants' attorney, as a ground for supporting another objection to words employed in describing the plates on the cutting roller as having "corners" and "projections," that they were mechanical equivalents, and that one of the words was sufficient, because, he said, "it is a well-settled principle in patent law that a claim for a mechanical device covers all obvious mechanical equivalents," and, quoting from Reid v. Roebuck, a decision of the Patent Office, "As an inventor is always entitled to equivalents, their introduction in a claim is an unnecessary intrusion.' seems probable that in suggesting these claims he took his cue from It the drawing which showed the cutting roller as much smaller in diameter than the other roller. There is nothing to justify the belief that either the examiner or the applicant intended that the patent should be restricted to the forms described in the claim and have no range of equivalents. It was not a limitation which inhered in the invention, and it would expose his patent to such mere subterfuge as increasing the size of an element without any change in the mode of operation. But coming to the legal effect of these proceedings, we think the same result follows. The inventor on making his application is, as we pointed out in dealing with the patent of 1897, where the invention relates to machinery, bound to indicate his preferred form in which he would use it. He may amend his claims to promote that object, so long as he keeps within the bounds of his invention. His preferred form was to use a cutting roller having a much smaller di ameter than the other. His drawings showed such a form. He could have no objection to claiming his invention in that form, and he accordingly accepted the suggestion of the examiner. The examiner saw that this was the inventor's preferred form and recommended him to claim his invention in that form. We see nothing in these circumstances which would work a limitation any more than if he had originally so described his cutting roller. Suppose he had done so, and his invention as disclosed by his specifications did not require this relative size of rollers, and there was nothing in the character of the invention itself which required such a peculiarity; can it be that, by claiming it in his preferred form, he would lose the benefit of it when employed in equivalent forms? To so hold would be to deny a longsettled rule of law. Referring again to the case of Winans v. Denmead, the claim distinctly called for the form of the frustum of a cone, and this was emphasized by reciting the advantages of that form, and the court, if it had accepted the doctrine here contended for, must have held that the patentee was limited to that form, for it was the one specifically described in the claim. That case has always been recognized as authority for the doctrine it inculcates and has been cited and relied on in numerous cases. We do not doubt that where the thing described in a claim has been declared by the inventor to be the only one, or has treated it as the only one appropriate to represent his invention, or the character of the associated elements is such as necessarily to require that particular form, in all such cases the patentee will be bound by his description. But where there are no such considerations, and there is simply and only a description of one form of a thing which would perform the same office in other forms, the court will apply the general rule above stated and accord him his monopoly in all equivalent forms. In such a case the general rule prevails and there is no ground for treating the case as exceptional. The distinction and the reason for it were stated by Mr. Justice Miller in Werner v. King, 96 U. S. 218, at page 230, 24 L. Ed. 613. We think the third claim of this patent is also valid, and that it comprehends the defendants' machine. The question of infringement is too clear to warrant further discussion. In addition to the case of Winans v. Denmead, we may venture to cite several of our own decisions where the infringement was much more obscure than in the case before us: King Ax Co. v. Hubbard, 97 Fed. 795, 38 C. C. A. 423; Bundy Mfg. Co. v. Detroit Time Reg. Co., 94 Fed. 524, 36 C. C. A. 375; McSherry Mfg. Co. v. Dowagiac Mfg. Co., 101 Fed. 716, 41 C. C. A. 627; Dowagiac Mfg. Co. v. Superior Drill Co., 115 Fed. 886, 53 C. C. A. 36. Several minor points are made in defense. One is that the bill is multifarious in that it alleges infringement of two patents differing in their characteristics. This defense was not made by the answer nor made in or considered by the court. The only difference in the two patents consists in the fact that the invention of the patent of 1901 improved one of the elements of the combination of the earlier patent. The infringement was of both patents, by the same machine, and by the same parties. We think there could be no valid objection to the joinder of the patents in one suit, and that it was warranted by the precedents. Walker on Patents, § 417, and cases cited. Another point made is that it is not sufficiently proven that the defendant Wallace L. Baker participated in the infringement complained of, and that the bill of complaint as to him should be dismissed. We cannot discover that any objection was made by the defendants in the court below on this score. Still, if there is nothing at all in the record tending to show that this defendant was responsible for the infringement, the bill should be dismissed as to him. The evidence upon this point was scanty, and, if our decision rested alone upon that we should have much difficulty. But the answer hardly raises this issue. It puts the ground of defense in the allegation that the machine "which they (the defendants) may have used" was in accordance with rights secured by them under a patent to George A. Stevens, and in paragraph 8 they make the contention that the patent (of 1901) was restricted by the patentee pending his application in the Patent Office "to a machine wherein there is a revoluble feeding cylinder, and a parallel revoluble cutter-bar of much smaller diameter than the cylinder; all pursuant to the requirements of the Commissioner of Patents, and that said claims are so confined and limited that Vrooman, or his assigns cannot now seek for or obtain a construction thereof sufficiently broad to cover any constructions used by these defendants, or either of them." And, in paragraph 13, there is an implication from a negative pregnant that they in fact used the machine complained of though denying that it had the rollers of the complainants' patents. And this was the theory of the controversy as it was waged in the Circuit Court. We think the objection is not well taken on the appeal. It seems probable that the parties being engaged in the larger contest paid little attention to minor issues, which the complainants as well as the defendants overlooked. If more proof of the liability of Baker was required, it would have been competent for the complainants to have obtained leave to introduce further proof on this point. And in practice it is customary to grant it in the circumstances supposed. Then it is contended that in the patent of 1897 there was no joint invention. The patent was for a combination, and while the evidence would justify a conclusion that one of the Vroomans only first perceived the crude form of the elements, and saw that by their adaptation and composition they might be made to accomplish a useful result, yet it only shows that one of the inventors, looking through a glass darkly, saw something of the elements which were finally composed and adapted to their places for their proper work. It would constantly be happening in the case of joint inventions that the illuminating idea was seen by one before it was seen by the other. But between that and the issuing of the patent there is in many instances a long stretch of time devoted to experiments and the consideration of the form or forms in which it may best be used. The law contemplates this and gives time for it. Without going into a detail of the evidence upon this point, we shall content ourselves with the statement that it falls far short of disproving, what the law presumes from the granting of the patent, that it was a joint invention. The result is that the decree of the Circuit Court must be reversed, with costs, and with directions to enter a decree for the plaintiffs granting an injunction, and an order of reference, if one be asked, for the ascertainment of profits and damages, and a further decree therefor if any are found. BROWN et al. v. LANYON ZINC CO. (Circuit Court of Appeals, Eighth Circuit. May 3, 1910.) (Syllabus by the Court.) 1. APPEAL AND ERROR (§ 1097*)-SECOND APPEAL-LAW OF THE CASE. Propositions of law once considered and decided by an appellate court in a given case are not open to reconsideration in that court upon a second appeal in the same case, and this although the first appeal was from an interlocutory decree. [Ed. Note. For other cases, see Appeal and Error, Cent. Dig. § 4358; Dec. Dig. § 1097.*] 2 APPEAL AND ERROR (§ 1022*)—FINDINGS OF MASTER CONCURRED IN BY TRIAL COURT-REVIEW. Findings of a master concurred in by the trial court are regarded as presumptively correct, and must be permitted to stand, unless some obvious error has intervened in the application of the law or some serious or important mistake has been made in the consideration of the evidence. [Ed. Note. For other cases, see Appeal and Error, Cent. Dig. § 4015; Dec. Dig. 1022.*] 8. PATENTS (§ 318*)-INFRINGEMENT-PROFITS RECOVERABLE WHEN INVENTION IS MERE IMPROVEMENT. In an accounting for profits received by an infringer, where the infringement is not of an entire machine but only of an improved feature thereof, the recovery must be restricted to such portion of the profits derived from the entire machine as arose from the patented feature. [Ed. Note. For other cases, see Patents, Cent. Dig. § 572; Dec. Dig. § 318.*] 4 PATENTS (8 318*)-INFRINGEMENT ASCERTAINMENT OF PROFITS-STANDARD OF COMPARISON. In ascertaining or measuring the profits recoverable upon an accounting for an infringement, the true standard of comparison is that device or appliance which was open to the defendant, and, next to the plaintiff's invention, could have been most advantageously used in the place of that invention at the time of the infringement. [Ed. Note. For other cases, see Patents, Cent. Dig. § 570; Dec. Dig. § 318.* Accounting by infringer for profits, see note to Brickill v. Mayor, etc., of City of New York, 50 C. C. A. 8.] Sanborn, Circuit Judge, dissenting. Appeal from the Circuit Court of the United States for the District of Kansas. Suit by Horace F. Brown and others against the Lanyon Zinc Company. Decree for defendant, and plaintiffs appeal. Affirmed. Douglas Dyrenforth (William B. Davies and Lysander Hill, on the brief), for appellants. John H. Atwood (C. E. Benton, on the brief), for appellee. *For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes |