DE LORIEA et al. v. WHITNEY, 63 F. 611

PUTNAM, Circuit 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 all in, and counsel 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. 1 am of opinion that the McDonald invention, described in claims 1 and 2 of his patent of December 10, 1878, must he limited to a machine containing two feed rolls, a supporting roll, and a scouring roll, and that a machine wliieh contains three rolls—the lower roll acting as a combined feed roll and a supporting 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 a,s 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 ■ machine, and there can be no reasonable question of fact that, upon one construction of the plaintiffs’ patent, defendant’s machine infringed it, and upon another that it did not.

And if, therefore, the construction of plaintiffs’ patent 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 of such nature that their existence and effect could not be reasonably disputed, it follows that the entire issue of infringement was practically for the court, however it might have been with issues of novelty and patentability, or other issues which might have been 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 essential distinction between patents for inventions and other instruments. Primarily, the construction of all of them is for the court; and yet all such, even obligations under seal, and, under some circumstances, solemn records of judicial tribunals, have relation to disputed facts, which must be determined by the jury before the construction can be finally settled. In such instances the issue is often spoken of as one of mixed law and fact.

Yet, the doubtful facts being determined, the construction remains for the court, though the form where verdicts are general and not special may have a different appearance. Where the facts are not in dispute, or, if in dispute, are so clearly proven and of so clear effect that they come within the rules for directing verdicts, the construction of the instrument remains throughout practically for the court, even though under the form of directing the jury what determination to make. This was the precise condition of this case in the circuit court.

It is quite probable that, if the question of infringement could have been determined in favor of plaintiffs, other issues would have followed, which must have gone to the jury. Such issues have been discussed before us, 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 McDonald’s application through the patent office was clearly and fully explained by the learned judge in the circuit court; but we need not refer to it, except briefly.

The first claim, as originally offered, 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 the rolls may be separated and held apart, substantially as described, and for the purposes set forth.” There was also, originally, a second claim, as follows: “In machines for scouring and unhairing and working hides and skins, the combination of the supporting roll, G, with the treadle, F, and suitable connecting mechanism, whereby the same may be moved and held from the scouring roll, substantially as and for the purposes set forth.” These were 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 roll,—in 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. Xeitlier is the effect of this amendment; complicated by Hie proposition now made, that.

McDonald was the first to construct a machine in which the rolls were dosed 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 equivalents. This particular of Ms machine appeared in his first and second claims as first drawn, so that;, if this was a feature of novelty or a function of Ms invention, these claims, as thus drawn, should have been allowed; and it follows that Ms disclaimer by amendment covers this feature or function also.

Xow, with reference to the adjustment of the rolls, the record shows clearly the construction, operation, and principle of the alleged infringing machine, and in this connection there can be no dispute nor obscurity. Plaintiffs’ declaration contains a continuando, 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 aireadle and lever mechanism, by which all (be 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 feed roll, so That it has two feeding points.

The upper feed roll and the lower roll, working together, do nothing- but feed the hide along, precisely the same as the upper feed roll and tile lower feed roll feed it along' in the McDonald, and they have no other function. 'The lower feed or pressure and the work rolls in the Whitney 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 surface 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: “Pressure 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.” It thus appears that in the operation of the alleged infringing machine only one roll is adjusted or moved.

The proceedings in the patent office disclaim, as old, the use of a treadle and levers by which a single roll can be operated and adjusted; and McDonald’s invention was thus admittedly limited to the more complicated system of levers and 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 been accomplished by McDonald involved invention, within the requirements of the patent laws, or whether he was anticipated, except so 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 case 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 assumed 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 include all the elements does not infringe.

There may be 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. Manufacturing Co., 151 U. S. 207, 14 Sup. Ct. 310. But there is no reasonable basis for maintaining, either as a matter of law or fact, that the case is outside of the rule applied to ordinary combinations in Meter Co. v. Desper, 101 U. S. 332; Fay v.

Cordesman, 109 U. S. 408, 420, 421, 3 Sup. Ct. 236; Knapp v. Morss, 150 U. S. 221, 228, 229, 14 Sup. Ct. 81; and Dunham v. Manufacturing Co. 154 U. S. 103, 14 Sup. Ct. 986. The appellants rely on Royer v. Belting Co., 135 U. S. 319,10 Sup. Ct. 833, laying' down the mile 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 (hose questions are not to go to the jury when, if a verdict should he 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 invention, in whatever form it could reasonably be stated by the plaintiffs, was excepted from the practical application of the rale touching mere combinations stated in (be 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 Larra bee 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 specifically, 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 issue's. 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. 10 C. C. A. 194.