(263 F.)

or buffing block of the art, and has so broken it and shaped its lines as to embody the defendant's two elements of central buffing block and differential angle wedge blocks.

As we examine the two devices, it appears that in avoiding the precise number of elements in the invention, the defendant has combined in one element of its device two elements of the invention. True, in the defendant's device there are no separate differential angle wedge blocks, but these blocks are there nevertheless, not as separate blocks, but as parts of other blocks, where, though inseparable, they hold the place, have the shape, and perform the function of the separate differential angle wedge blocks of the invention.

While the novelty of the invention of the patent resides in its splitwedge spreading action, effecting increased friction and speedy release of the gear parts, the merit of the invention is not limited to the advantage of these dual characteristics. It extends to the mechanical and commercial consideration, that, in meeting the constantly increasing strains of modern traffic, which now range from 100,000 pounds to 250,000 pounds resistance, the defendant has by the use of the invention raised the rated capacity of its old "D type" gear from a maximum of 200,000 pounds to a rated maximum capacity of 250,000 pounds in its new "N type" gear.

We are of opinion that the buffing block mechanism of the defendant's device is within the range of equivalents to which the invention of the patent, measured by the advance which it has made in the art, is entitled, and that, in consequence, it infringes the patent. Paper Bag Case, 210 U. S. 405, 415, 28 Sup. Ct. 748, 52 L. Ed. 1122.

The part of the decree below which held not infringed the claims of Letters Patent No. 732,521 in suit is affirmed, and the part which held the claims of Letters Patent No. 1,180,979 in suit not infringed is reversed, with costs of appeal, including cost of procuring and printing the record, to be borne equally by the appellant and appellee.

VANDENBURGH v. ELECTRIC WELDING CO.*

(Circuit Court of Appeals, Third Circuit. February 19, 1920. Rehearing Denied March 29, 1920.)

No. 2479.

1. PATENTS 328-PATENT FOR REINFORCING BAR LIMITED AND NOT INFRINGED.

Claim 3 of the Vandenburgh reissue patent, No. 14,182, for a reinforcing bar for use in concrete work, held limited by the prior art to a bar with kerfs or cuts, in which the attached coil is placed and a tongue or spur, overlapping the kerf and holding the coil in place; and, as so limited, not infringed.

2. PATENTS 328-REISSUE PATENT FOR REINFORCING BAR HELD INVALID AS NOT WARRANTED BY ORIGINAL PATENT.

Claims 1 and 2 of the Vandenburgh reissue patent, No. 14,182, for reinforcing bars for use in concrete work, held invalid, as not warranted by the original patent.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes *Certiorari denied 252 U. S. 40 Sup. Ct. 587, 64 L. Ed.

-

Appeal from the District Court of the United States for the Western District of Pennsylvania; Charles P. Orr, Judge.

Suit by George E. Vandenburgh against the Electric Welding Company. From a decree dismissing the bill, plaintiff appeals. Affirmed. Carlos P. Griffin, of San Francisco, Cal., for appellant. Frederick W. Winter, of Pittsburgh, Pa., for appellee.

Before BUFFINGTON and WOOLLEY, Circuit Judges, and MORRIS, District Judge.

BUFFINGTON, Circuit Judge. On January 22, 1907, there was issued to George E. Vandenburgh patent No. 841,741, for a reinforcing bar. On August 15, 1916, a reissue of said patent was granted, No. 14,182. This reissue made no change from the original, either in the specification, in the figures, or in claim 3, here in issue; but claims 1 and 2, here in issue, are new. Vandenburgh having charged the Electric Welding Company with infringing said three claims of the reissue, and the court below having, on final hearing, held the claims invalid and dismissed the bill, Vandenburgh took this appeal.

[1] After argument and due consideration, we are of opinion the court below made no error in dismissing the bill. The grounds of our conclusion we now record:

The combination device, which Vandenburgh disclosed in his specification, was a particular type of attachment of coils and reinforcing bars in concrete work. Both coils of wire and reinforcing bars to which such coils were attached were prior devices in use in that art. Taking these two familiar devices of coil and bar, Vandenburgh disclosed a new way of attaching the coil and bar for use in the concrete reinforcing art, to wit, by the use of kerf or cut in the side of the bar in which the coil was placed, and a tongue or spur overlapping the kerf, which spur, when bent down, served to hold the coil in place. This seating of the bar in the kerf cut and keeping it in place by the overlapping spur or tongue, Vandenburgh set forth in his specification as follows:

“As a preferred means of securing the coils to the bar I have shown a series of kerfs 8 in one face of the bar inclined away from the center of the bar toward the opposite ends thereof, and the coils are seated within these kerfs and held therein by means of the integral spurs 9, which are forced down ward upon the coils when inserted and permanently retain them in position" -and embodied in his third claim as follows:

"A reinforcing bar provided upon one end with a series of kerfs, each hav ing an integral overlapping spur, and a coll disposed in said kerfs; each convolution thereof being retained beneath one of said spurs."

Now, while a kerf or cut in the edge of a bar was a common mechanical expedient, no one had used it in concrete reinforcement until Vandenburgh disclosed his device. But, other than a combination. using a kerf, Vandenburgh disclosed nothing new in his specification. Finding his kerfed combination novel, regarding it as useful, and assuming for present purposes, as we will, that it embodied invention, there is no reason for regarding it as other than a narrow con

(263 F.)

tribution to the art of a specific type of coil and bar attachment. In the nine years between its grant and the filing of this bill, Vandenburgh's patent made no impress in the art, and we give the patentee the full measure of his disclosure and the protection of his claim by limiting his field of monopoly to a reinforcing bar with a kerf and an integral overlapping spur, as embodied in his third claim.

Thus limited, such claim is not infringed by the defendant's structure. It has coils, which, as we have seen, are old; it has a reinforcing bar, which is also old; and the two are attached, but the crux is: How are they attached? Are they attached by a kerf cut? Mere attachment of bar and coil were old, and Vandenburgh's advance consisted, not in bar and coil attachment generally, but in the kerf and spur attachment. This form of attachment being the gist of Vandenburgh's patent, it must be the test of defendant's infringement, or, in other words, does the defendant use the kerf and spur attachment of Vandenburgh's claim? In our judgment, it does not. The kerf of the claim is upon one end, which can only mean one edge of the reinforcing bar, which end or edge cut is the only form of bar and kerf cut disclosed by Vandenburgh, and his bar is a flat bar, and the kerfs are cut diagonally into the edge of such flat bar. On the other hand, the bar of the defendant's device consists of a channel bar and there is no cut of any kind in the end or edge of either of the channel sides. On the contrary, attachment in defendant's bar is made by using the back body of the central bar of the channel and stamping a tongue out of said solid central back portion, and then winding such tongue over the coil, which does not rest in the body of the bar but outside. of it.

It will thus be seen the defendant's coil is not restrained by the body of the bar, or by the sides of any cut in the body of the bar, but is restrained wholly by the tongue, which surrounds and holds the coil. In Vandenburgh's structure, the tongue or spur simply holds the coil in the kerf recess, and it is the cut sides of the kerf which hold the coil in place. If Vandenburgh's spur or tongue broke, the kerf sides would still have a coil-restraining function. But in defendant's device the sides of the cut in the body structure do not restrain or hold the coil; that is the function of the stamped cut, coil-encircling tongue. If defendant's tongue broke, there would be absolutely no coil and bar attachment or restraint, for the cut in the bar has no functional purpose whatever, save to create a tongue, and the attaching, functional agency of defendant's tongue would be the same if no cut in the reinforcing bar were made but the tongue was made by riveting it on the reinforcing bar. For these reasons we are clear defendant's structure does not infringe the third claim.

[2] Seeing, then, that the kerf and overlapping spur in combination constituted the real invention of Vandenburgh, and that he disclosed. no other form of attachment, it is quite evident he was not entitled to broad claims of the generic type, which he secured on the reissue in claims 1 and 2. Kerf and overlapping spurs are not embodied in these claims, and it is manifest that these claims, unrestricted by the limitation of kerf and spur, were only added 9 years after his patent 263 F.-7

was granted, to make infringers of those who used other forms of attachment than the kerf and overlapping spur, which alone Vandenburgh disclosed, and which were the sole warrant for the grant of his patent.

Such being the case, it is clear the court below was not in error in dismissing the bill.

INDIVIDUAL DRINKING CUP CO. v. PUBLIC SERVICE CUP

CORPORATION.

(Circuit Court of Appeals, Second Circuit. December 31, 1919.)

No. 148.

APPEAL AND ERROR 87(1⁄21⁄2), 882(3)-ASSIGNMENT IN INFRINGEMENT SUIT HELD NOT TO HAVE BROUGHT UP FOR REVIEW RULING ON MACHINES NOT CONSIDERED BY TRIAL COURT.

Assignment by defendant that court erred in not holding that his mnachines did not infringe did not present for review the question of infringement by a machine which plaintff unsuccessfully sought to bring in after interlocutory decree, since refusal to consider that machine was a matter of discretion, not appealable, and was based on defendant's objection. Appeal from the District Court of the United States for the Eastern District of New York.

On application for rehearing. Former opinion adhered to.

For former opinion, see 262 Fed. 410, C. C. A.. See, also, 226 Fed. 465; 234 Fed. 653; 237 Fed. 400.

PER CURIAM. The defendant argues that, because it assigned as error to the final decree in the Brooklyn case that Judge Chatfield did not hold that the plaintiff's machines (in the plural) did not infringe, his decree on the mandate was right in dismissing the bill as to the defendant's free dispenser. In other words, the plural "machines" covered both the vender and the free dispenser. But the free dispenser was not before Judge Chatfield at all. The plaintiff sought to bring it in after interlocutory decree. The defendant objected and Judge Chatfield refused to consider it.

In the first place, this was a matter of discretion, not appealable, and, if it were, the free dispenser having been excluded on the defendant's objection, it could not appeal. What we said about it in the single opinion handed down in all three cases (250 Fed. 620, 162 C. C. A. 636) must be allocated, not to the Brooklyn suit, but to the New York suit against Errett in which the free dispenser was before the court; claims 34 and 41 being involved. Claims 52 and 53 were involved in the Brooklyn Case, and we held them invalid as to the vender, if construed as broadly as the plaintiff claimed. Subsequently the plaintiff in the Errett case moved for a rehearing upon claims 34, 41, 52, and 53, which motion we granted as to the free dispenser. This was an inadvertence as to claims 52 and 53, but the plaintiff was not misled, because in its brief claims 34 and 41 were discussed as to the free dispenser, and 52 and 53 as to the vender.

We remain of the opinion expressed in our former memorandum.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

(263 F.)

KEYSTONE TYPE FOUNDRY v. FASTPRESS CO.

(District Court, S. D. New York. March 18, 1919. On Rehearing on Cross-Bill for Patent Infringement, February 10, 1920.)

1. COURTS

96(1)—DISTRICT COURT DECISIONS AS TO PRIORITY OF LICENSES

OVER SUBSEQUENT ASSIGNMENT OF PATENT FOLLOWED.

The rule that a license from a patentee prevails over a subsequent assignment is so well established by decisions of the District Courts that, although not confirmed by any appellate court, it will be followed by a District Court until changed by an appellate court.

2. PATENTS 183-INVENTOR MAY ASSIGN RIGHTS PRIOR TO PATENT.

An inventor has property which he may assign prior to patent, at least when an application is pending and the patent is specifically described. 3. PATENTS211(2)—AGREEMENT WITH PLAINTIFF FOR EXCLUSIVE LICENSE TERMINATED PRIOR ΤΟ ASSIGNMENT UNDER WHICH DEFENDANT

HELD
CLAIMED.

Facts held to show that an agreement between plaintiff and an inventor, providing for a probationary period during which the invention was to be tested, after which plaintiff could elect to take an exclusive license for two years, had terminated prior to the assignment by the inventor under which defendant claimed.

4. PATENTS

212(2)——AGREEMENT TO CONVEY APPLICATIONS AND PATENT IS VALID AND SUPERIOR TO SUBSEQUENT AGREEMENT TO GIVE LICENSE.

An agreement to convey applications for a patent on an invention and the consequent patent is valid in equity, and takes precedence over a subsequent agreement to give an exclusive license, though it does not purport to make a present conveyance of the applications, and no applications have in fact been filed.

On Rehearing on Cross-Bill for Patent Infringement.

5. PATENTS 328-PATENT FOR PRINTING PRESS NOT INVALID FOR INOPERABILITY.

The Stonemetz patent, No. 1,188,507, for a printing press, held not invalid for inoperability.

6. PATENTS

INFRINGER.

312(1)—PRESUMPTION OF OPERABILITY MUST BE OVERCOME BY

On cross-bill for infringement of a patent, plaintiff in original bill has the burden of overcoming the presumption of operability.

7. PATENTS 47-INOPEKABILITY OF DISALLOWED CLAIMS DOES NOT DEFEAT PATENT, WHERE KNOWN ELEMENTS MAY BE SUBSTITUTED SO AS TO RENDER MACHINE OPERABLE.·

Where the claims on which a patent was granted were operable, but disallowed claims were inoperable, and not mechanically separable, and rendered the whole machine inoperable as disclosed, but known elements were available, which could be substituted by a skilled artisan for the disallowed elements, so as to make the machine operable, the patent is valid.

8. PATENTS 312 (1)—INFRINGER MUST SHOW NONEXISTENCE OF ELEMENTS WHICH MAY BE SUBSTITUTED FOR DISALLOWED INOPERABLE ELEMENTS.

An infringer, seeking to show that the disclosure is inoperable because of unpatented elements must show that there were no known elements which it was within the competence of a skilled artisan to substitute, so as to produce an operable machine in combination with the patented elements. In Equity. Suit by the Keystone Type Foundry against the Fastpress. Company. Bill dismissed, and injunction granted on the cross-bill.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes