LEATHER GRILLE & DRAPERY CO. v. CHRISTOPHERSON et al., 182 F. 817

VAN FREET, District Judge (after stating the facts as above). The appeal presents but one substantive question for consideration, and that is whether the device of patent 766,595 is an infringement of the appellant’s patent; the question being purely one of construction.

In the solution of that question no material aid is afforded by regarding the somewhat refined and purely superficial features of similarity pointed out by the complainant’s expert as existing between the devices of the two patents, and urged upon our attention in appellant’s brief, since in our judgment they do not inhere in the essence of either patent, and are therefore not controlling in their construction.

It is largely, if not wholly, immaterial, for instance, that both devices or processes involve, as a primary step or factor, the use of flexible strips or pieces of like material, or that both involve the use of slits, longitudinal or otherwise, in the prepared material, or that in both the use of the same or similar unions or connections is employed in uniting the different units of the ornamental structures produced ■ thereunder.

No novelty exists in either patent as to any one of these features; and they do not, either singly or together, affect in the slightest their construction.' The real inquipr is as to the controlling principle in each' patent by which the device or process described therein is accomplished, and whether that principle is the same in both.

Construing the claims of complainant’s patent in the light of its specifications and the accompanying illustration of its device, we think it at once apparent that the essential principle there found is the employment of tension in separating and opening out the slotted material for the desired purpose, and that without this element the device or process would entirely fail of its object. That this is clearly disclosed in .the patent and understood by the inventor is apparent.

It is thus stated in the specifications: “The feature of the construction is the opening out transversely of the flexible slotted or separable material, which is retained in its open and separated form by reason of the peculiar manner of connecting the sides transversely to the length of the slits or openings.” In claim 1 the essential language is: “Having the sides stretched transversely of the strip, and means independent of said strip for uniting the transverse sides formed by the slits.” In claim 3 the same language is found; and in claim 7 it is stated as: “Having their sides expanded transversely, and unions or connections by which the sides of said strips are connected and the forms or ornamentation shaped and determined.” It is thus made obvious that without the employment of lateral tension, as described, the process of appellant’s patent could not be accomplished; that, but for some artificial means for retaining the material at tension, no ornamental structure such1 as there described could be formed; and that, at once tension is removed, the entire structure, so far as its ornamental features are concerned, must collapse and the process fail.

As this is the life of the patent, minor details may be ignored. Turning to defendants’ patent, we find an entire absence of any such feature; but the employment of an essentially different method of construction. No tension is required or employed. As aptly stated in this regard by the learned judge in the court below : “No such principle inheres in the defendants’ device; in it there is no external or tensile strain. The sides of the slits are not attached to unions to give the structure form or to keep it expanded. Such expansion as obtains is due to torsion alone.

The space between each pair of unions is occupied by solid or uncut material. Theoretically, there is no stretching at all, and practically the only expansion is that due to the nature of the material used.

There is no stretching of a slit or opening in a direction transverse to its length, other than that due to the torsional strain.” As disclosed by the drawings and description in defendants’ patent, the opening out of the ornamental figures in the cut material is accomplished solely by a folding and twisting of the separated tongues or laps; a process which no more resembles that employed in the device of appellant’s patent than does the completed structure of the one resemble that of the other.

Indeed, the only real similarity between the two would seem to lie in the fact that both processes pertain to the same art, may be produced from the same material, and with like instruments. As to the question of estoppel urged against the defendant Chris-topherson and his codefendant, growing out of the assignment by the former of the patent in suit, the appellant was awarded by the rulings of the Circuit Court the full measure of protection afforded by that doctrine.

The court ruled that Christopherson by his assignment was to be regarded as representing that the patent was what it purported to be, was valid in accordance with its terms, that it was to be fairly construed, and that the prior art could not be invoked to limit its claims. This is the length to which the rule may be properly carried. Siemens-Halske Elect. Co. v. Duncan Elect. Mfg. Co. et al., 142 Fed. 157, 73 C. C. A. 375. It has never been held to estop an assignor from thereafter employing his genius in a new field of the same art, nor to deny him the fruits of such effort.

It does not preclude him from denying infringement, nor of invoking the prior art for the purpose of showing that no infringement in fact exists. As stated by Judge Eurton, for the Circuit Court of Appeals of the Sixth Circuit, in Noonan v. Chester Park Athletic Club Co., 99 Fed. 90, 39 C. C. A. 426: “But this estoppel, for manifest reasons, does not prevent him from denying infringement.

To determine such an issue, it is admissible to show the state of the art involved, that the court may see what the thing was which was assigned, and thus determine the primary or secondary character of the patent assigned, and the extent to which the doctrine of equivalents may be invoked against an infringer.

The court will not assume against an assignor, and in favor of his assignee, anything more than that the Invention presented a sufficient degree of utility and novelty to justify the issuance of the patent assigned, and will apply to the patent the same rule of construction, with this limitation, which would be applicable between the patentee and a stranger.” We take this to be a correct limitation of the rule. From these considerations we are satisfied that the Circuit Court was right in holding that there was no infringement; and accordingly its decree dismissing the bill should be affirmed. It is so ordered.