9. EQUITY-OBJECTION TO JURISDICTION.

The objection that plaintiff's remedy is at law should be taken by demurrer if the want of jurisdiction appears upon the face of the bill; if not, it should be set up by plea or answer, and called to the attention of the court at the earliest opportunity. The objection comes too late if made at a hearing upon the merits.

In Equity.

This was a bill to recover damages for the infringement of letters patent No. 222,895, issued to William D. Gray, December 23, 1879, for "an improvement in roller grinding-mills;" patent No. 289,518, issued to Daniel E. Dowling, December 4, 1883, for a "feed mechanism for roller-mills;" and patent No. 274,508, issued to D. W. Marmon, March 27, 1883, for a "roller-mill." The invention covered by the Gray patent was stated in the preamble to consist "in a peculiar construction and arrangement of devices for adjusting the rolls vertically as well as horizontally, whereby any unevenness in the wear of the rolls, or in their journals or bearings, may be compensated for, and the grinding or crushing surfaces kept exactly in line," and also "in the special devices for separating the rolls when not in action, and in other details." The Dowling patent was essentially for an agitator centrally located within the hopper of the roller-mill, above the grinding-rolls, "and provided with teeth or fingers arranged to reciprocate immediately above the surface of the feed-roll, and lengthwise thereof. To loosen and disintegrate the material and distribute it in a free condition upon the surface of the feed-roll, in such manner that its delivery from the hopper is effected in a thin continuous sheet, which is delivered from the surface of the feed-roll directly to the surface of the grinding-rolls thereunder." The Marmon patent related to a counter-shaft parallel with the roll-shafts, and simultaneously adjustable at each end, so as to tighten or loosen the belts at both ends of the machine at one operation.

* * *

The defendant, by his answer and proofs, made the following defenses: (1) That the Gray patent is so circumscribed by reason of the limitations voluntarily made by the applicant or imposed by the commissioner of patents, and accepted as a condition precedent to the grant, that it does not cover defendant's machine, or any part thereof. (2) That the features of defendant's machine are found in many prior patents recited in the answer, and introduced in evidence. (3) That in view of the state of the art, as shown by prior patents and publications, the Gray patent is invalid for want of novelty. (4) That the plaintiff has never been engaged in the manufacture, sale, or use of the alleged inventions covered by its patents, denies that the same are of value, or that plaintiff is entitled to damages. The chief defenses to the Dowling and Marmon patents are want of invention, in view of the prior state of the art. Rodney Mason, for plaintiff.

Joseph G. Parkinson and Robert H. Parkinson, for defendant.

BROWN, J. The ancient system of reducing wheat to flour by grinding between revolving stones, which obtained from the earliest historical period, has, within the last 20 years, largely given place to the system

of crushing between rolls, which seems to have originated in Buda-Pesth, in the kingdom of Hungary. These roller-mills, which, soon after their invention, were introduced into this country, and have practically superceded in all large flouring-mills the old-fashioned method of grinding, consist generally of two or more pairs of rollers mounted in a strong frame, and, as a rule, lying in the same horizontal plane. One of these rolls is fixed, and mounted in a stationary bearing, but is susceptible, of course, of revolution. The other is mounted upon an adjustable bearing, which permits it to yield or give way in case any hard substance enters between them. While these rolls are not in actual contact when grinding, they are very nearly so, and their adjustment is a matter of extreme nicety. That the wheat may be ground, and not merely crushed, it is necessary that the rolls be corrugated upon their surfaces, and driven at differential speeds, so as to give them a rubbing or tearing, as well as a crushing action; and, when driven by belts it is customary to drive one roll in each pair by a belt at one end of the machine, and the other roll by a belt at the opposite end. A counter-shaft is run through the machine from end to end, beneath the rolls, and driven by a line-shaft or suitable motor, and provided with pulleys over which the belts at each end of the machine are thrown, thereby driving the rolls with which these belts connect. It is desirable that the axes of the rolls shall always be parallel with each other, and to accomplish this the bearings of the moveable roll are made independently adjustable, both vertically, to bring the two rolls of a pair axially into the same plane, and horizontally, so that their surfaces may be exactly parallel, or else they will grind unequally. This adjustment should be so arranged that it can be made with one hand, while the other is feeling the product of the mill as it issues from the rolls. The adjustment must be absolutely rigid, so that the work may be uniform; and yet the faces must never come in contact, since that would ruin their surfaces. Above the grinding rolls is arranged a hopper, at the bottom of which is a long narrow opening, parallel with and above the line of the two rolls. This opening is nearly closed by a feed-roller, which by its revolution is intended to carry the material in an even, regular stream to fall between the grinding-rolls. The Gray patent relates to the adjustment of the rolls, both to preserve their parallelism, their grinding distance, and the pressure of the movable against the fixed roll. The Dowling patent relates to the feeding of the material in the hopper to the rolls; and the Marmon patent to the adjustment of the counter-shaft to tighten or loosen the belts at each end of the machine simultaneously.

THE GRAY PATENT.

We will proceed to consider the Gray patent, No. 222,895,-the first and most important in this case. As before stated, this patent relates to the means for adjusting the rolls both vertically and horizontally, the requisites of such adjustment being that it must be fixed and permanent, and at the same time be capable of yielding to a breaking strain, in case a hard substance enters between them, and at the same time of returning

to their original position without a readjustment. They must also be capable of a vertical adjustment, or an adjustment for "tramming," as it is called, so that in case of irregular wearing of the surfaces or bearing the axes may be brought exactly in line. Seven claims are made in the patent, the second, third, fourth, and fifth of which are alleged to be infringed. That part of the preamble which refers to devices for adjusting the rolls vertically as well as horizontally, relates to the subject-matter of the second and third claims, and that clause referring to the special devices for separating the rolls, relates to the subject-matter of the fourth and fifth claims.

An important question connected with this patent is the construction to be given to it in view of the limitations or restrictions imposed upon the original claims by the commissioner of patents. In his original specifications filed with his application, Gray stated his invention to consist "in devices for adjusting the rolls, vertically, as well as horizontally, whereby any unevenness in the wear of the rolls or their journals or bearings may be compensated for, and the grinding or crushing surface kept exactly in line," and also, "in the devices for separating the rolls when not in action." His claims correspond with his evident belief that he was the inventor, broadly, of devices for a roll adjustable both vertically and horizontally, and were as follows:

"(2) In combination with a stationary roll, an adjustable roll, mounted substantially in the manner described, whereby it may be adjusted both. vertically and horizontally.

"(3) In a roller grinding-mill, a roll mounted at its ends in arms or supports, arranged to be independently adjusted, both vertically and horizontally, substantially in the manner described.

"(4) In combination with the roll, C, the independent arms or supports, D, mounted upon eccentrics, substantially as shown, whereby either end of the roll may be adjusted vertically.

"(5) In combination with the stationary roll, B, and adjustable roll, C, means substantially such as described, for drawing the roll, C, to a fixed point."

His application, in such form, was refused by the comissioner of patents in a letter dated August 14, 1879, notifying Gray that "the invention alleged and claimed in this case is not generic in view of the English patent No. 3,328, of 1877, this being known as the 'Lake English Patent.'" Gray thereupon concluded to submit to this opinion of the commissioner, and immediately amended his application by two insertions in the preamble, so that, instead of reading "consists in devices for adjusting the rolls vertically as well as horizontally," it reads "consists in a peculiar construction and arrangement of devices for adjusting the rolls vertically as well as horizontally," and by inserting the word "special" before the words "device for separating the rolls when not in action." Pursuant to the same intimation of the patent-office, Gray also amended his claims to read as follows:

“(2) In a grinding-mill, the combination of a roll; an upright, swinging arm at each end of said roll; an eccentric, adjustable pivot located at the lower end of said arm; and devices, substantially such as shown, acting against the upper end of the arm.

"(3) The combination of a roll and upright, swinging arms, having their lower ends mounted on vertically adjustable pivots, the latter thus serving both to sustain and adjust the rolls.

"(4) In combination with the movable roller-bearing, the rod, G, adjustable stop-devices, to limit the inward movement of the bearing; an outside spring, urging the bearing inward, and adjusting devices, substantially such as shown, to regulate the tension of the spring.

"(5) In combination with the roller-bearing, the adjusting rod, provided at one end with a stop to limit the inward movement, a spring, and means for adjusting the latter, and provided at the other end with a stop and holding devices, substantially as shown and described.”

Now, if the plaintiff be limited to the literalism of these claims, and is denied the benefit of the ordinary doctrine of equivalents, as contended by the defendant, then it is clear the defendant does not infringe, since he has neither an eccentric adjustable pivot, nor a pivot located at the lower end of the swinging, sustaining arm, nor devices of any kind acting against the upper end of the arm. Authority for the proposition that plaintiff is limited to the exact language of his claims, where limitations and restrictions have been imposed upon the original claims by the patent-office, is claimed to be found in numerous decisions of the supreme court, to the effect that limitations introduced by the applicant are binding. upon him, even if his actual invention be larger than his claim; that claims accepted by the patentee cannot be enlarged, and, when a claim is restricted as to specific elements, all are regarded as material; that this is particularly true of limitations introduced after rejection; and to ascertain what these limits are the court is not confined to the face of the patent, but may take into consideration the proceedings in the patentoffice, in construing the meaning and scope of the claims, and for that purpose can go to the file-wrapper and contents of the original applicants. In the recent case of Rodebaugh v. Jackson, 37 Fed. Rep. 882, we had occasion to consider the most prominent of these cases, notably that of Sargent v. Lock Co., 114 U. S. 86, 5 Sup. Ct. Rep. 1021, in which it is broadly stated in the opinion of the court

"That in patents for combinations of mechanism, limitations and provisos, imposed by the inventor, especially such as were introduced into an application after it had been persistently rejected, must be strictly construed against the inventor and in favor of the public, and looked upon as in the nature of disclaimers.".

Upon an examination of the other cases upon the same subject, however, we came to the conclusion that nothing more was intended than that where, under the state of the art and the action of the patent-office, a patentee of a combination has modified and limited his claims, he shall be held strictly to his combination as he has described it. What shall be considered as an infringement must depend largely upon the state of the art as it existed at the time the patent was issued. It has always been the law that a patentee is limited by his claims, even though his invention be broader, and that, if he include a certain element in a combination, he is not at liberty to say that such element is immaterial. Vance v. Campbell, 1 Black, 427. At the same time it is equally true

that a combination patent covers, not only the elements named, but also such as may be substituted therefor, and are known as mechanical equivalents. Practically, all which the rejection of a claim by the patentoffice means is that, after the patentee has limited his claim, he shall not be permitted by construction to have the benefit of his claim as originally presented. Leggett v. Avery, 101 U. S. 256. But what shall be deemed a mechanical equivalent for his claim depends so largely upon the state of the art at the time his patent was issued that it is impossible to gather from the general language of the courts with respect to the construction of claims what should be the construction in any particular case. When we find a court using language which indicates that the patentee should be strictly limited to his claim, and to the restrictions and the provisos he has inserted therein, we shall generally find that the invention is only a trifling deviation from or improvement upon what has gone before. When, upon the other hand, the case shows the doctrine of mechanical equivalents to be vigorously asserted and liberally applied, it will usually appear that the patent is a pioneer, or a marked improvement upon any device which has previously existed. The prime object in construing a patent should be to preserve to the patentee his actual invention, if this can be done consistently with the language he has himself chosen. Occasionally it will happen that the patentee will, by inadvertence or mistake, claim less than he is entitled to, and the courts be powerless to help him, but their disposition is and should be to deal liberally with those who have made valuable contributions to the natural sciences. In this connection we fully coincide in the opinion of Judge SHIPMAN in Shellinger v. Gunther, 11 O. G. 831, that a strict construction should never be given to the claim where such construction would be a limitation upon the actual invention. Similar language is used by Judge SHEPLEY in the case of Estabrook v. Dunbar, 2 Ban. & A. 427, in which he says:

"The technical claims in a patent are to be construed with reference to the state of the art, so as to limit the patentee to, and to give him the full benefit of, the invention he has made. They are also to be construed in connection with the specification, so as to limit the patentee to, and give him the full benefit of, the invention he has described. The general terms, and sometimes special words, in the claims must receive such a construction as may enlarge or contract the scope of the claim, so as to uphold that invention, and only that invention, which the patentee has actually made and described, when such construction is not absolutely inconsistent with the language of the claim."

Indeed, the general principle is sustained by abundance of authority to the point that claims of patents should receive such interpretation as will enlarge or restrict them so as to cover the actual invention, when not absolutely inconsistent with the language used by the patentee. Winans v. Denmead, 15 How. 330; Van Marter v. Miller, 15 Blatchf. 562. If, upon the one hand, the state of the art shows the invention to have been a narrow one, a strict interpretation will be given the claims. Manufacturing Co. v. Ladd, 102 U. S. 408. And it is of no practical consequence whether such restrictions are imposed by the patent-office or not.