NORTH AMERICAN CHEMICAL CO. v. KENO SUPPLY CO. (two cases); KENO SUPPLY CO. v. NORTH AMERICAN CHEMICAL CO., 227 F. 63

PUTNAM, Circuit Judge. This case depends upon alleged infringement of tln-ee patents for invention. The first is No. 832,002, application filed on August 28, 1905_, and-patent issued on September 25, -1906, to Andrew Thoma.

This is for the filler, and is entitled “Shoe-Filler Package, and Process for Making the Same,” and is spoken of in the District Court as being for the “product.” The next patent was issued to the same Axidrew Thoma on December 16, 1905, on an application filed on August 28, 1905, entitled to be for “the art of filling shoes,” and is spoken of as for the “process.” The third patent was issued to William B. Arnold on December 26, 1905, on an application filed on August 28, 1905, and is entitled as for “shoe-filling apparatus,” and said to be “the machine or machinery,” and is also said to cover the apparatus.

All three are supposed to relate to the same art. The opinion of the learned judge of the District Court in the.se cases was passed down on February 6, 1915. It sustained the bill so far as patent No. 832,002 was concerned, and entered thereon an interlocutory decree for an accounting and an injunction. On. tHe other patents, namely, 808,224 and 808,227, being one for the process, and the other for the machine or machinery, the hill was ordered to be dismissed, with costs. Both parties appealed to this court.

The learned judge of the District Court gave the case a very thorough and elaborate consideration, and passed down a correspondingly thorough and elaborate opinion. So far as patents Nos. 808,224 and 808,227 are concerned, this court agrees with that opinion, and the facts stated and the reasoning of the court are so full that it is the work of supererogation to go over the matter in detail, or do- more than accept its conclusions in reference thereto, and so far as those two patents are concerned we accept that opinion as the opinion of this court, and reaffirm the judgment entered by him without further detail.

With reference to patent No. 832,002 our views are not entirely harmonious with those of the District Court, and therefore we state them to some extent. There had been a great deal of shifting with reference to the claims in that patent, with many amendments of a substantial character. It all came down finally, so far as we are concerned, into the following claims, Nos. 1, 2, 3, 4, 6, 7, 8, 9, 10, and 14: “1.

A shoe bottom filler, consisting of a base united with a binder into a permanently tenacious, quick-setting, permanently elastic mass, capable o£ being molded Into a thin pliable layer filling the shoe bottom. “2. A shoe bottom filler, consisting of a normally unchangeable, permanently elastic, quick-setting mass, composed of a base capable of yielding in all directions to pressure, united with a permanently sticky component. “8.

A shoe bottom filler, consisting of a normally unchangeable, permanently elastic, quick-setting mass, composed of a base capable of yielding in all directions to pressure, united with a permanently sticky component having a low melting point. “4. A shoe bottom filler, consisting- of a normally unchangeable, permanently elastic, quick-setting mass, composed of a base capable of yielding in all directions to pressure, united with a permanently sticky component having a low melting point and serving to render said mass waterproof.” “6.

A shoe bottom filler, consisting of a resilient base united with a viscous binder into a permanently tenacious, quick-setting, permanently elastic, and water repel)ant mass, capable of being molded into a thin, pliable layer, filling the shoe bottom. “7. A slice bottom filler consisting of a normally unchangeable, permanently elastic, quick-setting mass, composed of finely comminuted filler materia), having each granule thinly coated with a permanently sticky binder, capable of being rendered highly fluid by moderate heat. “8.

A shoe bottom filler, consisting of a filler body in a fragmentary condition, thoroughly mixed with a hinder into a permanently tenacious, quick-setting, permanently elastic, and inoldable mass of a nonshifting consistency when cold. “9. A shoe bottom filler, consisting of a permanently plastic, quick-setting, waterproof mass adherent to leather, and composed of finely comminuted filler material whose granules are thinly coated with a tenacious, .tough binder, which is rendered temporarily highly fluid by moderate heat. “10.

A shoe bottom filler, consisting of filler material in a fragmentary condition, and a binder which is permanently elastic, quick-setting, and permanently sticky; said fragmentary filler material and binder being thoroughly mixed together in the presence of heat for use in filling the shoe.” “14.

A shoe bottom filler, consisting of comminuted filler material, held compactly together by a permanently flexible, viscous binder, in a permanently elastic mass of a consistency suitable for filling in the cavity between the inner sole and th.e out sole of a shoe; said mass having a low melting point and being compressible and resilient when cold.” This patent was finally left with claims numbered 1 to 37; but the case was accepted by the District Court as standing on tire claims which we have copied.

The other claims were accepted by it as not essential to this litigation, probably because they were not in their terms 'infringed, as they were more specific, in that they described somewhat particularly various articles which went into the combinations, as, for example, five part's of gutta peixha, and three parts of resin, and two parts of paraffin oil were enumerated as “binders,” while comminuted cork was given as the filling; but we have nothing to do with this as the case stands before us.

It now rests entirely on the claims which we have quoted, and which contain m practical express enumeration of tire various substances which enter into- the product, or of the quantities of these substances, or of any of them. It will be seen that, in the claims so said to be in issue, there is an entire absence of all such specific proportions or elements, and that everything is left standing upon its qualities as described in them, with nothing whatever to enable any one ordinarily skilled in the art to determine the proportions or qualities required, except by experiment.

Therefore, so far as these claims are’ concerned, the case is subject to the rule fully determined by many decisions of the Supreme Court, and given in Walker on Patents (4th Ed.) § 178, as follows: “The statutory requirements, relevant to particularity in the descriptions and claims of letters patent, are conditions precedent to the authority of the Commissioner of Patents to issue such documents; and, if such a document is issued, the description or claims in which do not conform to these requirements, then that document is void.” In this patent the patentee seems to be confused between the “process” and the “product,” and he confused the title of the patent accordingly.

All that is left now is the “product”; but it is a “product” whose usefulness depends upon the proportions of the various elements contained in it. Therefore, they need the same particular and plain statement as they would if they related to “process.” ■ The reason of this rule is convincing, and in the eyes of the law the rule is a simple one; but its application in practice is sometimes very difficult, as shown in Wood v. Underhill, 5 How. 1, 5, 12 L. Ed. 23, which was a case of the “composition of matter,” or “product,” where the two courts differed.

In the case at bar, which with reference to the claims which absolutely lack any statement of any specific proportions, it is plain that the application of this rule is difficult, because the specification deals at great length with numerous elements necessary to be taken into consideration before it can be determined that the generic expressions in these claims which we have copied are capable of any certain application, or any application except one involving experiments by persons who are only ordinarily qualified in the art, or the use of the spirit of invention.

We have already said that the case rests entirely on the claims. To speak accurately, we should say that the case rests on the claims according to the language which they have used, and that the claims in the language in which they are expressed cannot lawfully be applied by drawing on the specification. The claims, of course, in a patent, are frequently explained, and must necessarily be explained, by reference to the specification; but claims which are lacking in definiteness, or clearness, in the way to which Mr. Walker refers, cannot be thus made good.

The claims must stand as good or bad by a determination based on the ordinary rules of

interpretation. The court below seems to have gone outside of the claims for the purpose of finding an

interpretation for them, and seems to have accepted the invention intended to be covered, not merely by reading the claims under the ordinary rules of

interpretation, but by supplying that in which the claims are absolutely lacking — precision and definiteness. Nevertheless .we have carefully examined the positions of the' respondent, and we do' not find that the claims were asserted to be. defective or void by reason of the propositions to which we have referred ; so that, notwithstanding what we have said in reference thereto, we do not feel justified here in assuming to be wiser than the parties, or assuming to' declare claims void for reasons not asserted.

Consequently we have been compelled to draw out from the opinion of the court below for what reason it held this patent valid.

This seems to come down to■ the proposition contained in the opinion as follows, referring therein to the inventor, namely: “In view of the fact that he appears to have devised and disclosed an improvement of value, I do not regard the character of his claims in suit as sufficient ground for holding them invalid; but I cannot give them a construction broader than that adopted above.” This apparently refers to the following paragraph in the opinion of the court, namely: “No decision can be sound in which it is held or recognized that the product of a described process, whether it be called a manufacture or a composition of matter, can properly be claimed in terms like these so as to cover every product in which the same terms are capable of application.

If there are any circumstances in which such claims for a product could be held valid to their full extent, I am unable to believe that they can be so treated in a. case like this, where the invention is at the most of an improved filler, and not of one wholly different in kind from any that preceded it.” The effect of all this seems to be that the District Court held that it could not sustain the patent to the full extent of the language of the claims which we have cited, but found that the patent contained something narrower in its practical effect than what is called for by the language of the claims as read without restriction.

In other words, the opinion seems to have gone through the whole state of the art and the circumstances explained in the specification, and gathered from the whole what it found to be new. Therefore, while we make out that, after all, the language of these claims may be insufficient, within the rule which we have cited from Mr.

Walker, yet, in view of the fact that neither the court below nor the respondent stands on propositions of that character, we feel that it is going beyond the province of this court to assert such a proposition, which plainly involve serious difficulties. ' We apprehend, however, the difficulty arising from the fact of sustaining the patent on a narrower reading than the natural reading of the claims in controversy, and that under the circumstances the invention, as we are sustaining it, is a narrow one, while the claims themselves are perhaps broad.

It is therefore necessary for us to caution the profession and the public that the patent is always to be read and interpreted in the manner in which the learned judge of the District Court interpreted it, and not with a mere reference to some possible

interpretation which may be put on the claims. The decree of the District Court is affirmed, and neither party recovers any costs of appeal. BINGHAM, Circuit Judge, concurs in the result. otb,er cases see same topic & KBY-NUMBEIt in all Key-Numbered Digests & Indexes