MANTON-GAULIN MFG. CO. v. WRIGHT-ZIEGLER CO. et al., 271 F. 391

BINGHAM, Circuit Judge. The plaintiff is the owner of United States letters patent No. 756,953, issued April 12, 1904, to Auguste Gaulin, and complains of its infringement by the Wright-Ziegler Company, because of its selling a homogenizing machine made by the Union Steam Pump Company, which intervened as a defendant.

The patent is for an— “improved apparatus for intimately mixing milk and otlier liquids more or less resembling it by means of tbe action produced by tlie passage of liquids more or less heterogeneous under considerable pressure through very small orifices.” The claim in issue is No. 7 and reads as follows: “In a machine of the class described, an element having a re-entrant conical surface, a complementary conical element to fit the same, and means to force milk between them, substantially as described.” The defenses are invalidity, noninfringement, and res judicata.

The patent has been twice passed upon- in the District Court for Connecticut (Manton-Gaulin Mfg. Co. v. Dairy Machinery Co., 203 Fed. 516; Manton-Gaulin Mfg. Co. v. Dairy Machinery & C. Co., Inc., 238 Fed. 210); once in the District Court for the Eastern District of Michigan, and by the Circuit Court of Appeals for the Second Circuit (Manton-Goulin Mfg. Co. v. Dairy Machinery & C. Co., 247 Fed. 317, 159 C. C. A. 411). Claim 2 was in issue in those cases and reads as follows: “

(2) In a machine of the class described, co-operating elements having squeezing surfaces, means to yieldingly hold the elements in contact, ana means to force the milk between the surfaces, substantially as described.” In all the cases the validity of the patent and of the claim then in issue was upheld. It will therefore be assumed for the" purposes of this case that the approved apparatus shown in the specification discloses inventive thought and is a proper subject for a patent. The question then is whether the claim in issue is valid, and, if valid, whether ,it is' infringed by the defendants’ device.

The.plaintiff contends that, although a re-entrant conical valve is old, the combination is new and the claim valid, even though it does not state whether the surfaces of the conical valve, when in operation, yield one to the otlier, rendering the orifice of the valve variable, or whether the surfaces are rigidly fixed, rendering the orifice invariable, and that the plaintiff is' at liberty, for the purpose of making the combination workable, to employ such means as may be disclosed in the specification for holding and adjusting the surfaces, or any suitable means that is common and well known in the art.

The defendants say, if the claim is valid, its language must be interpreted to mean that the conical surfaces are yielding and thus afford a variable orifice; that if the surfaces are nonyielding, so that the orifice, when the device is in operation, is fixed or invariable, as the plaintiff says the claim should be interpreted, the claim would not be based upon the invention which Gaulin conceived, but upon a device the principle of which he disclaimed in his specification. In our opinion the defendant’s contention must be sustained.

The specification discloses in no uncertain manner that the novel and essential feature in Gaulin’s homogenizing device is that the adjustable surfaces, whether in the shape of a cone or otherwise, are yielding surfaces pressed elastically one against the other, and that it is because of the elastic or yielding adjustment of these surfaces between which the liquid is forqed that he is enabled to reduce the size of the fatty globules in the liquid to the degree desired and accomplish the inter-mixture of the parts composing it.

In his specification he states that'— “The passage oí the liquid alone through invariable orifices, however fine they may bo, only gives an incomplete incorporation.” And after setting forth the constructional arrangements entering into his specific device he says: “But although these constructional arrangements above described are advantageous for the regular and perfect operation of the device, I reserve the right to modify them as circumstances may require, as long as the device remains in its essential characteristics oí my invention—that is to say, the employment of surfaces for mixing pressed elastically one against the other, whatsoever he their forms or dimensions, and whatsoever their actuation with regard to the other parts.

I may even suppress, in case it be required, any eapillary portion with fixed channels.” Believing, as we do, that the specification shows that the gist of Gaulin’s invention was the variable orifice due to the yielding surfaces, we are of the opinion that, if the claim must be read as calling for fixed surfaces necessitating an invariable orifice, it is not valid as it is not based upon the invention disclosed in the specification.

If the combination of claim 7 is novel, and could be said to include a conical valve with fixed surfaces necessitating an invariable orifice, and the patentee had disclosed the elements composing this combination in his specification, he properly could have claimed it. But as he did not disclose a conical valve with nonyielding surfaces as a part of his device, but disclaimed it, he is not entitled to a claim based upon such a structure. Hide-ite Leather Co. v. Fiber Products Co., 226 Fed. 34, 36, 37, 141 C. C. A. 142; Northrop v. Draper Co., 239 Fed. 719, 723, 724, 152 C. C. A. 553.

We are of the opinion, however, that the claim is valid; that, read in the light of the specification, the language of the claim, where the conical surfaces are spoken of and are required to fit one with another, and between which the milk is to be “forced, substantially as described,” means that the milk is to be forced between surfaces which fit closely one to the other and permit the liquid to be forced through because of their yielding quality.

As thus construed, the defendants do not infringe the claim, for the conical surfaces of the defendants’ device are not yielding, but fixed, and the orifice is invariable. This result renders it unnecessary to consider the other questions presented by the assignments of error. The decree of the court below should' be affirmed, not because claim 7 is invalid, as there held, but for the reason that it is not infringed. The decree of the District Court is affirmed, with costs in this court to the appellee.