DUNLAP v. WILLBRANDT SURGICAL MFG. CO et al., 151 F. 223

HOOK, Circuit Judge. • This is an appeal from a ’decree rendered upon final hearing dismissing the complainant’s bill. Th¿ suit was brought by Dunlap against the manufacturing company and Willbrandt, its president and manager, for an injunction and an accounting ■bécause of an alleged'infringement of letters patent No. 483,435 issued September 27, 1892, to Dunlap, for new and useful improvements in atomizers, and of letters patent No. 620,895, issued to him on March 14, 1899, for new and useful improvements in atomizers and vaporizers and apparatus pertaining to the same.

There was also embodied in the bill a charge of unfair competition as distinguished from the alleged infringement of the patents. 1. As to the first patent in suit: The controversy, so far as concerns this patent, is confined to the second claim thereof, which is as follows: ■ ■ “

(2) In an atomizer, the two-part spraying-tpbe having a side opening in the lower member and a hollow coupling connecting the two parts, said coupling having a side opening to register with the side opening in the tube, substantially as described.” The defense is noninfringement. The device of complainant belongs to that class of-atomizers in which the spray or vapor is produced within a closed bottle or • other receptacle, and is then forced out or withdrawn for inhalation, or application.

The upper end of the tube, .which is designed to be inserted in the bottle containing the liquid to be vaporized, is screwed into the lid or covering of the bottle, and the lower end is immersed in the liquid, but does not quite touch the bottom. Air under pressure is forced into the tube at its upper end and proceeds downward through the passage therein, through a continuing passage in the coupling, and thence out through the side openings in . the coupling and the lower tube. The exit of the air is above the level of the liquid at the bottom of the bottle.

The lower end or nipple of the coupling is beveled on one side, and the space between the beveled surface and the inner surface of the lower tube forms an extension, so to speak, of the passage in the lower tube, upward to the opening in the side thereof.

The downward and lateral rush of the air across the opening formed by the beveling of the coupling creates a partial 'vacuum and causes the liquid to rise in the lower passage, and it is then blown forcibly outward through the side opening in the tube and against the side of the bottle, so transforming it into spray or vapor. ’The structures handled by defendants which are alleged.to contain infringing features are known as the “Eureka Nebulizer”.and the “Multiple Comminuter.” The latter may be dismissed from special consideration in this connection because we are of the opinion that it contains no infringing device if none can be found in the nebulizer.

There is such similarity that it will be sufficient, for this branch of the case, 'to confine our consideration to the tube of the eureka nebulizer.' This tube is composed of but two pieces which are connected by means of a screw joint. It has no separable coupling, and in this respect differs from the tube of complainant. The atomizing part of the "structure, .■the part where the openings’in .the áir and. liquid passages - come together, is in the lower member of the tube and not in a coupling. The atomizing device is wholly complete in the lower memb'er of the tube.

The upper member, which is detachable, performs no function in the atomizing; its office being merely to conduct the air to the lower por-r tion of the tube. . The complainant was by-no means a pioneer in the art to which his patent relates. Devices for atomizing liquids were well known years before he entered the field, and they involved the use of tubes for, the conduct of air under pressure to a contact with liquids for the atomizing process. There are three patents preceding that of complainant which exhibit atomizing tubes not greatly dissimilar from that of the defendants.

The Dighthill patent, No. 365,265, June 21, 1887; shows an atomizer or nebulizer in which the air and liquid tubes are integral and constitute substantially a single straight stem. The vertical air passage at its lower end takes an abrupt turn to the horizontal, and terminates with an opening in' the side of the tube clo-se to the upper exit of the liquid passage.

In the Shurtleff patent, No. 379,611, March 20, 1888, there is also an atomizing tube in a single piece which differs in shape, but the operation of which is like that of Dighthill, In the Semple patent, No. 290,486, December 18, 1883, for improvements in inhalers, an air and a liquid tube are shown, and whether they should be fastened together or remain separate is expressed to be a matter of preference. Its operation is similar to that of Dighthill and Shurtleff.

Other patents appear in the record indicating the stage of the art, but none of the structures described are sufficiently similar to those here involved to require description. In view of the state of the prior art the complainant is not entitled to a broad construction of his claim. He came into a field already explored, took a single-piece atomizing tube and divided it into three adjustable parts for convenience in cleansing, and incidentally arranged the discharge openings in conformity therewith. He specified five distinct elements in his structure:

(1) The upper tube member; (2) the lower tube member; (3) the hollow coupling; (4) the side opening in the hollow coupling registering with' (5) the side opening in the lower member. It is altogether clear that complainant made the separability of his structure into three parts, the dominant feature of his claim.

His reason for doing so is thus clearly expressed in his specification : “The object of my invention is to produce a simple atomizer which is durable and. comparatively inexpensive, which may be easily operated so that a patient may get the full benefit of the spray, which .is not liable to corrode, which may be easily taken apart or put together, and which, in consequence of its easy separableness, may be conveniently used for producing balsamic sprays, as solutions containing balsam are apt to clog spraying-tubes, and my invention provides for easy cleaning.” None of these declared objects are subserved by the arrangement of the discharge openings within the tube.

In the defendants’ device two of the complainant’s elements are lacking, namely, the hollow coupling and the side opening in the hollow coupling registering with a similar opening in the lower tube member. The complainant calls his device a “two-part spraying tube with a hollow coupling,” but it is really composed of three. The third is the coupling .itself, and it is indispensable to’the physical union of tlie other two and to the operation of-the device as a whole.

Moreover, from the standpoint of the patent, the division of the tube into three separable parts is not a mere unnecessary detail of construction that may be dispensed with by the complainant. It is put forward as an important and emphasized feature, and is called for by the declared purpose of his structure.

He says that solutions containing balsam are apt to clog the tubes, and that on account of its separableness “my invention, provides for easy cleaning.” Of course* there are cases in which, in determining whether a subsequent device infringes, it is unimportant whether it is made in two pieces instead of three, or whether a member is mechanically attached to the remainder of the structure or is made integral with it. Examples of such cases are Clough v. Barker, 106 U. S. 166, 1 Sup. Ct. 188, 27 L. Ed. 134; Standard Caster & Wheel Co. v. Caster Socket Co., 51 C. C. A. 109, 113 Fed. 162; Mabie v.

Haskell, 2 Cliff. 507, Fed. Cas. No. 8,653. They are, however, inapplicable to a case in which the very divisibility into parts or in which the particular method of attachment constitutes the law of the structure or is declared or appears to be of the essence of the supposed invention. This distinction is made apparent by the Castor Socket Case, supra, in which there was a patent for an improved socket for receiving the shank" of a furniture caster. The socket was divided longitudinally into two equal parts which in use were put together and driven into a prepared opening in a furniture leg.

The inner side-of one of these halves was provided with an integral-tongue .or spring which, pressed against the castershank, and thus prevented the caster from falling out of its own weight when the furniture was raised from the floor. It was held that this patent was anticipated by an older one in which the socket was divided into halves, each containing a tongue or spring “riveted on the inside.” It is apparent that it was immaterial for the purpose of the structure whether the spring was riveted to or made integral with one of the other parts. The same distinction appears in the Shoe East case. Mabie v.

Haskell, supra. The peculiarity of the shape of the shoe last was the characteristic feature of the invention, and not whether it was divisible into two or into three sections. The invention consisted of the elevation of the toe and the drawing in of the upper part of the last at the back above the heel; the result being that in a shoe formed on such a last the heel of the wearer would not move up and down and the leather of the upper would fit without wrinkling.

The patented last was made in ■three sections, while that of the infringer was made in two, but the claim of the' patentee was not for a combination consisting of a number of elements.- Whether the last was made in two or in three sections was immaterial in securing the object of the patentee. ■ The complainant here, invoking the doctrine of equivalents, claims that the defendants’ tube composed of two members without a separable coupling is mechanically the same as his. • It is- no doubt true that the mere joinder' of two elements into one integral part or the separation of one

part into two may be an infringement if the change in the structure accomplishes the same results in substantially the same way; but we are of the opinion.that this rule does not help the complainant. The 'Complainant took an old device, a single atomizer tube, and divided it into three parts so that the clogging from the use of the balsamic solutions could be expeditiously remedied. If this called for the exercise of the inventive faculty, the scope of the invention is very narrow and the complainant’s rights in respect of protection from equivalent structures are correspondingly limited.

He is protected only against those structures that embody the very device he describes and those that are mere colorable evasions. National Hollow Brake-Beam Co. v. Interchangeable, etc., Co., 45 C. C. A. 544, 106 Fed. 693. The complainant’s claim that his patent covers atomizer tubes made in two parts without any connecting hollow coupling is admissible only by according to it a brpad and comprehensive construction such as it would be entitled to were it a pioneer in the art to which it relates.

With equal reason his patent might be extended a step further and be held to include tubes made in a single unseparable piece. Indeed, the complainant testified in the closing of his case that, giving his patent a broad

interpretation to which in his judgment it was entitled, a single-piece tube containing the air and liquid passages and discharge openings like those of defendants’ structure would embody the second claim of his patent. And he said in respect of his own patent that the question of separate or integral construction of the hollow coupling was a matter of variation in details of mechanical construction. The arrangement of the air and liquid passages and of the discharge openings was then for the first time put to the front as an important element of the invention.

This is a belated conception of the claim of the patent. The only suggestion of it in the claim or in the specifications is the statement that the coupling has a side opening which registers with a side opening in the lower tube, but in no other way was it foreshadowed that a claim was made for a registering of the discharge openings within the walls of the tube, and in no way whatever was it suggested that a claim was made for any particular arrangement of the air and liquid passages.

When complainant'first testified as an expert in his own behalf, and was closely cross-examined as to the various structures, including his own, their parts, similarities, differences, functions, and results, he did not refer to these features as having a special significance. It was afterwards said, however, and is now urged, that the interior arrangement of his tube is particularly important and is valuable, in that it requires less force of air to bring the solution up the lower tube to the point where it is atomized than was the case with the older structures.

A patentee is entitled to every function his device will perform, though he was ignorant of it when he procured his patent. But he secures no patent on the function, and a discovery of a new one in a patented device does not operate to enlarge or broaden the letter of his claim. It is the claim which measures the rights of the patentee, and that which is not claimed is, so far as the particular patent is concerned, dedicated to the public.

There is nothing in the patent here which entitles the complainant to any novel or particular arrangement of the air and liquid passages; and, if it can be said that the claim covers a new arrangement of the discharge openings as distinguished from the air and liquid passages, it must be answered that. it-was expressly claimed in connection with a hollow coupling which he made indispensable and which is not found in the defendants’ structure, and that the very narrow character of the complainant’s advance ‘over the prior art does not authorize the broad construction for which he contends. 2.

The second patent in suit: The charge is that the defendants have infringed claims 2, 3, and 8. The defenses are invalidity and non-infringement in respect of claims 2 and 3, and noninfringement in respect of claim 8. The claims are as follows: “

(2) In an atomizer or vaporizing apparatus the combination of an atomizing device; a chamber or receptacle for the storage of the atomized vapor; a tube or nozzle leading therefrom ; means for controlling the passage from said chamber so that the vapor can be stored and delivered under pressure for rapid or extensive use, as specified. “

(3) In a .vaporizer or atomizer apparatus the combination of a suitable atomizer; a chamber for storing the atomized vapor under pressure; a valved outlet constructed to open and close in rapid succession to control the discharge therefrom for the purpose specified.” “

(8) In an atomizer or vaporizer the combination with an atomizing or vaporizing device of a receiver provided with an outlet, a valve for closing the outlet of the receiver having a suitable stem, the valve-stem being provided with a head at its outer end and with a collar or shoulder a short distance therefrom, and an adjustable stop, through which the portion of the valve-stem between the head and shoulder or collar works, substantially as described.” The subject-matter of the patent as exhibited in the claims above set forth is an apparatus designed for the treatment of diseases of the ear, nose, throat, and lungs by means of vaporized medicaments under pressure administered in either a continuous or intermittent current.

The claims in question relate to certain features of a structure which may be briefly described as follows: A number of medicine flasks or bottles are supported on an air supply tube, each flask or bottle being provided with an atomizer tube communicating with the air supply pipe; the passages connecting the air supply pipe with the atomizer tubes being controlled by valves. All of the flasks or bottles are in open communication with a central receiver by means of tubes; the receiver being provided with an outlet leading to a discharge tube which is controlled by a valve.

The three claims differ principally in the description of the means of controlling the passage of the vapor through the discharge, tube. Methods for making and administering nebulized or vaporized medicaments under pressure and the ihterruption of the current so as to render it intermittent, thus producing what is properly called a “vapor massage,” did not originate with the complainant. His patent was issued March 14, 1899. The application therefor was filed April 22, 1897. In an

article by Dr. George F. Hawley, published at Chicago in the Journal of the American Medical Association of the issue of May 12, 1894, an apparatus for nebulizing nonvolatile medicaments and a method of administering the vapor by' the process of forced dilatation was described in detail. In the same year the

article was published in-pamphlet form for distribution. The apparatus which was described and-also illustrated consisted of a number of glass’bottles, one for' each kind 'of solution, adapted for use in connection with a compressed air receiver. A valve at the top of each bottle was provided with inlet and outlet ports capable of being opened or closed by turning a faucet. The inlet port of each bottle was connected with the compressed air receiver and also with an atomizing tube descending into the bottle.

By turning the faucet the compressed air passed into the bottle and down the tube, producing vapor in the manner we have already mentioned in connection with the first patent in suit. To the outlet port of each bottle was attached a flexible tube ending in a mouthpiece or nozzle. Through these tubes the vapor under pressure communicated through the bottle from the compressed air receiver was forced into the passages hnd cavities of the body to be treated by a process of dilatation.

The author also described in detail the process of vapor massage by changing the continuous current of vapor into one that was intermittent, and this was accomplished by the rapid manipulation of the passages of the body into which the vapor was introduced. .

This process he called “massage.” Thus he says: “Tlie undulations of tlie impacted nebula will render the mouth of the Eustachian tube more patent and act as a massage on the diseased tissues of the midlde ear, equalizing the circulation and tending to break up adhesion of the ossicles by causing them also to vibrate.” Again: “In my practice, however, in massaging the diseased, paralyzed, atrophied, or hypertrophied tissue and in dilating the Eustachian tubes, and in medicating and breaking up adhesions in the middle ear, the best results have been obtained by using a pressure of from 30 to 50 pounds.” Again: “But nebula, impacted from nonvolatile medicaments and administered by forced dilatation with gentle but rapid vibration, offers the only safe and efficient method for medicating and massaging the middle ear.” The assertion by the complainant that he discovered a novel method of treatment which may be termed “vapor massage” is in view of this

article which preceded his entry into the field certainly unfounded. The method is particularly described and the term “vapor massage” is plainly suggested by the language of the article; and it required no inventive faculty to discover that the desired intermittent effect of the current of vapor could also be produced either by compressing and releasing the discharge tube if it were sufficiently pliable, or by the manipulation of .a control faucet at the top of the storage bottle. If, in the apparatus which the author of the

article described, there had been a valve in the discharge pipe constructed to open and close rapidly, and to thus control the discharge of the vapor, it would have completely, anticipated the second and third claims of complainant’s patent. In the Emery patent, No. 196,206, October 16, 1877, the apparatus is adapted, among other things, to the treatment of weak or diseased lungs.

It shows a storage chamber for vapor or air, medicated or pure, under pressure, in connection with a separate receptacle for water,’ medicated liquid, gas, or any suitable substance or composition wherewith it is desired to saturate or charge the air in the chamber. , In this receptacle is a dependent tube through which the air is forced on its way to the storage chamber.

The outlet or discharge tube of the chamber is equipped with a cock or shut-off as a means of controlling the passage therefrom. 1 The apparatus set forth in the Kennedy patent, No. 422,802, March 4, 1890, is for medicating, compressing, and administering air into the respiratory organs. There is a combination of a compressed air reservoir connecting on one side with an air pump, and upon the other with a number of bottles in each of which is a dependent tube. The connecting pipes into and out of-the air reservoir are equipped with stopcocks.

Tibe connection with the bottles is so arranged that air under pressure is forced into them and down the tubes to a contact with the contents. In each bottle is an outlet port having immediate connection with a flexible discharge pipe, to the end of which is attached a nozzle for insertion in the mouth or nose of the patient. The stoppers of the bottles in which are located the inlet and outlet ports are equipped with valve plugs. The inlet ports are larger than the outlets to assist in the maintenance of the pressure.

In the specifications it is said that in practice the bottles “are designed for the reception of the medical agents with which the air' is intended to be medicated in the usual manner by vaporizing small portions thereof in passing through said agent.” We therefore have in the Emery patent all of the elements of claims 2 and 3 of complainant’s patent, excepting,-possibly, the atomizing device, and substantially all of them in the Kennedy patent—an atomizing device, a chamber for storage under pressure, a valved outlet, and a tube or nozzle leading therefrom.

It is true that there is no detailed description-of the atomizing tube in either of these patents, but none of any special structure is required by the second and third claims of complainant’s patent, and any device capable of atomizing would suffice. It will be noticed in this connection that Kennedy speaks of the vaporizing of small portions of the solution by the passage of air under pressure through his tube. In the Kennedy apparatus each bottle serves the double purpose of containing the atomizing device and constituting the storage chamber.

In this respect it is similar to the eureka nebulizer, which, notwithstanding such construction for the double purpose, the complainant contends infringes his patent. The Robertson patent, No. 549,822, November 12, 1895, discloses an apparatus “for atomizing, mixing, and administering liquid medicines,” which is precisely like that of complainant, excepting that an outlet valve is lacking. With the outlet valve of Emery or Kennedy for the purpose of controlling the discharge of the vapor we would have in all respects a structure built upon the lines of complainant’s.

There is in Robertson’s the same collection of bottles, each equipped with an atomizing tube of the eureka type, each connected with a tube conveying compressed air, a large central receiver bottle in which the vapors from the atomizing bottles are collected and mixed, and from which they escape by means of a discharge tube ending with a nipple for insertion into the mouth or nose. The Palmer patent, No. 386,025, July 10, 1888, is for an apparatus for- atomizing liquid by compressed air received from a reservoir.

It shows a globe with inlet and outlet tubes entering at the side, an atomizing device within the globe; the upper part of the globe constituting a storage chamber. The outlet pipe connects with a flexible hose ending in a tip. With the addition of an outlet valve this structure would answer to complainant’s claims 2 and 3. It seems clear from the foregoing that the complainant simply pursued a road previously opened and improved by others, and that he secured an old result by substantially the same means that had theretofore been employed.

There is another matter that deserves notice in connection with thesp claims. While the complainant’s application was pending in the Patent Office, claim 2 was rejected by the examiner because of anticipation by the Emery and Palmer patents.

The examiner said: “This patent [the Palmer] shows a receiving chamber above the atomizer, and there is no invention in providing the outlet from the receiver with regulating means as this feature is shown in the Emery, No. 196,206, October 16, 1877.” And claim 3 of the patent (it was claim 4 of the application) was also rejected on the same references, “because the cut-offs shown in Emery may be opened and closed in rapid succession.” After amendment by the applicant it was then held by the examiner that claim 2 was not changed in substance and stood rejected, and that the claim which is now numbered 3 in the patent was also rejected on the previous references.

The examiner added: “The references show that it is old to store vapor under pressure and to provide a valved outlet. The rapid operation of the discharge valve has reference to the manner of using the apparatus and not to its construction.” In this connection attention is directed to the action taken with reference to claim 17 of the application.

It was as follows: “In a vaporing [vaporizing] inhaler the combination of a vaporizer; a receiver or chamber for storing the vapor under pressure; a delivery pipe or tube; a tip for said pipe or tube adapted to insert into the nose or mouth; and a valve adapted to open and close the pipe in rapid succession to control the passage of vapor through the pipe for the purpose specified.” Upon rejecting this claim the examiner said: “Claim 17 is considered to present nothing patentable over the references in the case which show that it is old to store vapor under pressure, to provide delivery tubes with tips, and to have controlling valves, which may be operated more or less rapidly.” An appeal was taken by the complainant from the action of the primary examiner to the board of examiners in chief, with result that the rejection of claims 2 and 3 was reversed and the rejection of claim 17 was affirmed.

As to the latter the board said: “Claim 17 is anticipated by the Emery patent. The substitution of an old form of tip in that device requires no new construction. Every other element of the claim is found in such device.” Claim 17 was therefore canceled and does not now appear in the patent. The significance of all this is that, while claim 17 of the application was fihaliy disallowed on the ground of anticipation, it is precisely the same as claims 2 and 3 of the patent.

Counsel seek to avoid the significance of this inconsistency by claiming that, while claim 17 specified a -vaporizer as one of its elements, it did not have among them an atomizing tube to produce atomized vapor. In other words, he seeks to'fñáke a distinction between a vaporizer and an atomizer. This will 'not do. A vaporizer is expressed to be one of the elements of claim 17, while in claim 2 there is specified an “atomizing device” and in claim 3 “a suitable atomizer” appears.

In the production of vapor by bringing air under pressure into contact with the liquid, the terms “atomizer” and “vaporizer” are used interchangeably. In complainant’s first patent he refers to the product of his atomizer as a spray which may be inhaled by the patient.

In his second patent he uses the terms “atomizer” .and “Vaporizer” interchangeably, and he refers to the product of his device as a “spray of liquid or vapor.” He also calls his atomizer or 'spraying tube a “nebulizing tube.” In the other patents relating to the art the cloudlike product is indiscriminately referred to as “spray,” “vapor,” “fine atomized product,” and “familiar atomized condition.” Dr.

Hawley spoke of it in 1894 as “nebula.” In the specifications in the Palmer patent it is said: “Although we have used the term ‘atomizer,’ it will be understood that in ordinary practice, blowing in liberal quantities of warm dry air ready to absorb the vapor, the liquid is in the course of the treatment evaporated, and its vapor mingles with the air and is conveyed to the lungs through the inhaling tube in the form mainly of vapor.

The terms ‘atomizer’ and ‘vaporizer’ may be .used in this relation as equivalents.” The result of- this is that the presumption which attends the issue of a patent and of which the patentee is entitled to avail himself is in this case seriously impaired. Claim 8 of the second patent in suit is not infringed. The complaint in that respect is more on account of a superficial similarity of consruction that bears on the question of unfair competition than because of a supposed infringement.

It is conceded that the particular device in defendants’ -structure which looks like that embodied in claim 8 has no function whatever. 3. Embodied in complainant’s bill is also a charge of unfair competition, in that the defendants, by copying the form of his apparatus ■and by using certain phrases and catch words in advertising matter, were deceiving the public into the purchase of their instruments under the belief that they were purchasing those of the complainant.

The complainant possessed no trade-mark and no design patent securing ■to himself the exclusive right to the form or dress of his apparatus. ■And we fail, to discover in the record any evidence of fraudulent intent upon the part of the defendants to palm their goods off on the public as the goods of the complainant or as manufactured under his patents. ■The general resemblance was not such as to deceive the class of persons who would náturally be expected to be interested in or to purchase articles, of that character. Moreover, those of the complainant were per'mánently máí'kéd :ás issuing from “The Globe Mfg.

Co,, Battle Creek, Michigan, U. S. A.,” -while those of the defendants were- as indelibly marked “O. Q. Holman, Ha Grange, Ill.” The name “Globe” appeared upon the former and the name “Eureka” upon the latter. Thus far the defendants did not offend. See Singer Mfg. Co. v. June Mfg. Co., 163 U. S. 169, 16 Sup. Ct. 1002, 41 L. Ed. 118. The literature used by the defendants in advertising was equally distinguishable from that of the complainant, in fact, so much so as to relieve them from the slightest imputation of unfair dealing in that particular.

In this same connection the complainant complains of the use by the defendants of the terms “vapor massage” and “multi-nebulizer,” of which he says he was, the inventor and first user. But both of these terms are purely descriptive, the former of a method of massage described by Dr. Hawlejr in 1894 and the latter of any instrument composed of several atomizers, vaporizers, or nebulizers so arranged as to be used in common and in-concert.

Erom the mere circumstance of their use by the defendants we cannot infer a fraudulent intent to sell their goods as those of the complainant, especially since they have plainly and expressly indicated to the contrary by the brands permanently fixed upon the appliances they put forth and by the language of their advertising literature. The decree of the Circuit Court is affirmed.