STOCKHAM et al. v. DUNCAN; DUNCAN v. STOCKHAM et al., 226 F. 740

KOHLSAAT, Circuit Judge (after stating the facts as above). The patent in suit is for a coal washer consisting-of various means in combination for washing coal and separating it from impurities. In the process, tanks are used, the last of which in the order of use in the process is termed tank B, the function of which is to purify the water — a so-called settling tank, wherein the water is practically at rest, whereby the coal dust held in solution, being heavier than water, sinks to the bottom, leaving the water pure enough for-re-use.

This water is then pumped back to the tank B and again' put into the washing process. Tank D, which immediately precedes tank B in the washing device, receives the washed coal and whatever of impurities accompany it to that point, and retains substantially all thereof except the particles held in solution. The two tanks are separated by a partition somewhat less in height than the other walls of tank D, by reason whereof the top of the water in tank D overflows in a thin and wide stream into tank B.

Thus it will be seen that the only function of tank B is to cleanse the water for re-use and deliver it to the pump for return to the tank B. Complainants, in the proceedings before the master, undertook to show damages sustained by reason of defendants’ installation of several coal washers other than that of the Lumaghi plant, being the device named as the infringing washer in the original bill, the names of which need not here be enumerated. This they might properly do. Murray v. Orr & Lockett Hardware Co., 153 Fed. 369, 82 C. C. A. 445, decided by this court.

On the hearing it developed conclusively that no one of said other devices contained the tank B. • In each of them the tank corresponding to the tank D was made to do the work of both tanks, so far as it was done. Thus one element of the combination of the patent was wanting, unless a plain and well-known equivalent was substituted.

The evidence disclosed that in some cases the defendants’ substitute for tank D was constructed with larger dimensions than in the patent, so that the inpour of water into the front end of said tank was some distance from the pump outlet, giving the coal dust in the water in said tank some opportunity to settle, while in other instances there was little, if any, difference in the size of the tank D of the patent and that of the devices omitting tank B.

Complainants insist that defendants’ tank is the equivalent of their two tanks, D and B, since by its alleged increased volume of- water it secures the measurable purification of the water for re-use; but the evidence fails to show that defendants’ tank is larger than complainants’, or that defendants’ tank is an equivalent for complainants’ tanks D end B. Moreover, it is to be observed that in the Stewart patent no dimensions o£ tank D or B, either absolute or relative, are specified or claimed.

It appears from tlie record that defendants’ washer fails to produce as good results as complainants’, and in substance only utilizes complainants’ patent washer up to and including tank D. Thus we are driven to the conclusion that the so-called other devices lacked one element of the combination of the patent in suit, and one that complainants and the patentee make essential to their device.

This omission was fatal to complainants’ claim of infringement as to these coal washers. “Our law requires fclie patentee to specify particularly wliat he claims to be new, and if he claims a combination of certain elements or parts we cannot decree that any one of these elements is immaterial. The patentee makes thou* all material by the restricted form of his claim. We can only decide whether any part omitted by an alleged infringer is supplied by some other device or instrumentality which is its equivalent.” Water Meter Co. v. Desper, 101 U. S. 1132-330, 25 L. Ed. 1024.

The rule has been uniformly enforced by the Supreme Court. In Rowell v. Lindsay, 113 U. S. 102, 5 Sup. Ct. 510, 28 L. Ed. 906, it is said: "There can be no infringement unless the combination is infringed. * * * But this rule is subject to the qualification that a combination may be in-iTiwgod when some of the elements are employed and for the others mechanical equivalents are used which were known to be such at the time when the patent was granted.” In Eames v. Godfrey, 1 Wall. 79, 17 L.

Ed. 547, the court held that where a person uses all the elements of a combination patent but one, anti for that one substitutes another mechanical structure, substantially difierent iti its construction and operation, but serving the same purpose, he does not infringe. To the same effect is Gould v. Rees, 15 Wall. 194, 21 L. Ed. 39. That two machines produce the same effect will not justify the assertion that they are substantially the same. Burr v. Duryee, 1 Wall. 572, 17 L. Ed. 650. To the same effect are Vance v. Campbell, 1 Black, 428, 17 L. Ed. 168; Gill v. Wells, 22 Wall. 26, 22 L.

Ed. 699; Robinson on Patents, § 922. In Gill v. Wells, supra, the court says: “By an equivalent in such a case it is meant that the ingredient substituted for the one withdrawn perforins the same function as the other, and that it was well known at the date of the patent securing the invention as a proper substitute for the one omitted in the patented combination.” As above stated, the washers omitting tank B do not accomplish the same result as does the patent. We are therefore of, the opinion that the niaf.ter and the District Court properly held those washers to be noninfringing.

With regard to- the damages to be assessed in the matter of the Lumaglii plaul, the record shows that complainants’ witness Schaefer, one of the owners of the Stewart patent, had, on the hearing before the master, testified that, taking the entire volume of the business of manufacturing under the patent, there was realized a profit of about $1,250 per jig, or the lump sum of $5,000 for the four jigs of the Rumaghi plant.

We are of the opinion that .the profits which would have been realized by complainants upon the construction of the Rumaghi coal-washing plant, bu.t for the infringement, would have been the sum of $5,000, and that the evidence shows that such damages were incapable of apportionment. Westinghouse Co. v. Wagner, 225 U. S. 604, 32 Sup. Ct. 691, 56 L. Ed. 1222, 41 L. R. A. (N. S.) 653; Dowagiac Manufacturing Co. v. Minnesota Moline Plow Co. et al., 235 U. S. 641, 35 Sup. Ct. 221, 59 L. Ed. 398, decided by the Supreme Court January 11, 1915.

Defendants, however, insist that infringement had not arisen at the date of the building of the Rumaghi plant.. As to this point it seems that while defendant took the contract to erect this plant with the intention of leaving off tank B, the owners were demanding a Stewart device, and that, before payment was made, defendants were required to and did add tank B. The District Court found that defendants should be charged with infringement as of the time when the contract was entered upon for the purposes of arriving at said damages.

This we deem the correct position to be taken with regard to this item of damages. Defendants further contend that there is nothing in the record to justify the judgment against the individual defendants. The objection, if good, comes too late. The original decree and the order remanding the cause both run against all of the defendants. However, upon the record, we discover no reason why, under the circumstance's of this case, such a decree was not properly entered. The objection is not deemed well taken. We find no reversible error in the judgment of the District Court.

The decree of the District Court is therefore affirmed as to both appeals.