now seems simple enough. But it is contended that as Aze and Gilfillan were merely improvers, and defendant's seat can be differentiated from complainant's, the charge of infringement cannot be sustained. Cimiotti Unhairing Co. v. American Fur R. Co., 198 U. S. 399, 414, 25 Sup. Ct. 697, 49 L. Ed. 1100; Kokomo Fence Machine Co. v. Kitselman, 189 U. S. 8, 23 Sup. Ct. 521, 47 L. Ed. 689.

It is settled law in patent cases that:

"When an inventor seeking a broad claim which is rejected, in which rejection he acquiesces, substitutes therefor a narrower claim, he cannot be heard to insist that the construction of the claim allowed shall cover that which has been previously rejected." Computing Scale Co. of America v. Automatic Scale Co. (Supreme Court of U. S., Feb. 25, 1907, not yet officially reported) 27 Sup. Ct. 307, 51 L. Ed. -; Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U. S. 38-40, 14 Sup. Ct. 28, 37 L. Ed. 989; Hubbell v. United States, 179 U. S. 77-80, 21 Sup. Ct. 24, 45 L. Ed. 95, and cases there cited.

Still "the patentee is entitled to a fair construction of the terms of his claim as actually granted." Hubbell v. United States, supra. It is a matter of course, in view of the authorities cited, that in order to infringe the defendant must have and use a car seat having a pair of arms at each end thereof, or an equivalent, and these pairs of arms must be pivoted to the back in substantially the manner described, or an equivalent manner, and also to the frame of the seat. I do not understand that these cases hold that, where an inventor substitutes and accepts a narrower claim than the one first presented, that having been rejected, he is confined to that precise form allowed and bars himself from the benefits of the doctrine of equivalents, unless he has used language which does confine him to the precise form described. He may limit himself in the use of equivalents, of course. He is not entitled "to any considerable range of equivalents, but is practically limited to the means shown by the inventor" (Computing Scale Co. of America v. Automatic Scale Co., supra); but no one can take his invention bodily and escape the charge of infringement by using it in a different form merely, or in connection with some other thing which in no sense modifies or is modified or affected by it. If that can be done, then every inventor whose invention is new and resides wholly in some one element of his claim loses all right to the doctrine of equivalents, if he makes the claim for that element too broad to begin with, and is required to make it narrower to accord with his actual invention, and does make it narrower to express his real invention. And in such case, if that be true, an infringer may take it, the element containing his invention, bodily and combine it in a claim with other old and equivalent elements, all together working or operating in the same way as the inventor's combination to produce the same result sought and obtained by the true inventor. The greater should include the less, and, while Aze and Gilfillan cannot claim the seat with only one pair of arms, they may claim the seat with two pairs of arms, any two pairs of arms that embody and use their true invention. If there has been no amendment or narrowing of the claim in respect to its very essence, the "pith and marrow" of the invention disclosed in the claim, if there was no issue as to that, and the amendments were made in reference to an incidental

matter, something that would perfect the claim or device and make it more useful or operative, then there is no restriction of limitation on the rights of the patentee as respects equivalents for some part of his device when made in accordance with his patent. Reece Co. v. Globe Co., 61 Fed. 958, 10 C. C. A. 194; United States Co. v. Sturtevant Co., 125 Fed. 384, 60 C. C. A. 244; Winans v. Denmead, 15 How. (U. S.) 330, 14 L. Ed. 717. The law is to protect meritorious patentees and promote justice.

We return, therefore, to the question whether or not the defendant's seat is so differentiated from complainant's that it must be held the charge of infringement is not sustained. Defendant has not dispensed with a pair of arms at either end of the seat. It has substituted another pair at one end, and at the other end uses an exact duplicate of the complainant's pair of arms, including the pivoting to both frame and back, and has, in so doing, appropriated the invention of Aze and Gilfillan, now the property of complainant. It connects these two pairs of arms in the same way complainant does, and so that they operate synchronously. It by no new or patentable device, but by an old socket attached to the frame, dispenses with the necessity of absolutely pivoting the short arm of the substituted pair to the end of the frame of the seat, as when this short arm sets into the socket, as it necessarily must, being carried to it by the action and movement of the first pair of arms, pivoted as are complainant's, it performs all the functions, the very function, of the second arm in complainant's pair attached to and used at that end of the seat. Pivoted to the end of the back at its upper end, and seated in the socket at the other, this short arm is a complete substitute for the second arm of the pair at that end and its full equivalent. The long and short arm forming this substituted pair are each pivoted to the end of the back, but not by two pivots arranged in a line at right angles with the plane of the back, but by one pivot in a line at right angles with the plane of the back, and, of course, in a line drawn at any angle with the plane of the back. The substituted pair of arms performs every function required or demanded by the Patent Office of the second pair of arms when it insisted on a pair of arms at each end of the seat. The Patent Office so held and declared subsequently in the following language:

"In claim 1 it is evident that if one link (arm) of Aze is left off the back will operate the same as if it is on, although it might not operate so smoothly."

The occasion of this will be stated later. The Patent Office did not demand that the second pair of arms should be pivoted in any particular manner. The demand was:

"Arms at each side (end) of the back should also be included. Claim 6 [of which I have given the history, and which became claim 3 in the patent as finally granted], when amended to include a pair of arms at each side (end) of the back, may be allowed."

As to claims 5, 7, 9, and 10, "these claims should each set forth the arms at each side of the back." So of the other claims. No importance whatever was attached to the mode or manner of pivoting the second pair of arms to the back or frame, and nothing was said

on that subject. Certainly they must move in unison with the others, and be attached to the seat; but their function was to support the back, steady it, and hold it when in position, merely, not to carry it over and prevent it from falling down, etc., and give the proper inclination to the back of the seat, as all that is effectively done by the first pair of arms properly pivoted in accordance with the patent, and which pair of arms is used by the defendant. There is no patentable difference in the modes of using or in the use or in the application between complainant's pair of arms and defendant's substituted pair of arms. Busell Trimmer Co. v. Stevens, 137 U. S. 423, 11 Sup. Ct. 150, 34 L. Ed. 719.

There is another and a familiar rule of law, perfectly just and applicable here, which is: "That which would anticipate, if earlier, will infringe, if later." Clearly, if the defendant had patented the alleged infringing car seat, and the complainant had then made and used the Wheeler seat, he would infringe. He could not escape by saying: "For the same purpose, and to attain the same result, I use two pairs of your arms each pivoted according to the very essence of your patent, each containing the very gist of your invention, instead of one pair, and therefore I do not infringe your patent."

The defendant claims that its seat is constructed in accordance with the patent to Samuel M. Curwen, issued March 7, 1905, No. 784,383, for car seat, and that, as the structure there shown was held to show patentable novelty, it is proof that the Patent Office found a patentable difference in the two structures, and therefore they are sufficiently differentiated. The fallacy of this is easily seen and demonstrated. The claims of the Curwen patent, 11 in number, do not, nor does either one of them, mention the mode or manner of pivoting the arms, or "links," as Curwen calls these arms, to either the back or the frame of the seat. That question is not involved in the claims of the Curwen patent. Had Curwen pivoted his links to the seat back by pivots arranged in a line substantially at right angles with the plane of the back, or to the back in that manner and to the frame in the manner described, and claimed that manner of pivoting, etc., his claim would have been promptly rejected as anticipated by the Aze and Gilfillan patent in suit. Claim 1 of Curwen reads:

"(1) In a car seat or similar device, a walk over back with a single link at one end and a plurality of links at the other end and means for causing said links to move in unison when the back is reversed."

His third claim reads:

"(3) In a car seat or similar device, a walk over back with a single link at one end and a plurality of links at its other end, said single link being fixed to a shaft, a crank fixed to said shaft, a link connected with said crank, and means connecting said link and the plurality of links so that the link secured to the back will act in unison when it is reversed."

But more, Curwen appealed from the rejection of certain of his original claims, and on appeal the examiner submitted the following: "The references of record show that car seats have been provided with a plurality of links at each end as shown in Rochester and Aze et al. The references also show that car seats have been provided with a single link at each end. See Norcross and Barney. Rochester and Aze et al. show a car

seat provided with a plurality of links at each end and means for shifting the seat when the back is reversed. Norcross shows a car seat with a single link at each end and means for shifting the seat when the back is reversed. In view of the above references, it is the opinion of the examiner that applicant's invention does not lie in the number of links used at each end of the seat, that the number used is purely a matter of judgment; but after having determined on the number of links to be used, applicant's invention lies in his novel means for producing an operative structure. In view of the prior art, applicant's novel means resides broadly in the subject-matter covered by claim 1, viz., a means for moving these links in unison. Claim 7 is believed to be met by Aze et al. and Barney; Aze showing a plurality of links at one end and Barney a single link at one end. Claim 8 differs from claim 7 in the addition of stops to limit the movement of the links. Barney shows stops, 3, and Aze shows stops, r. Claim 9, taken in connection with claim 7, Aze et al. and Norcross both show means for tilting the seat cushion when the back is reversed. Claim 12, Aze, shows a plurality of links at one end; Norcross shows a single link at one end; Aze shows stops, r, and means for tilting the seat when the back is reversed."

Note the statement:

"In view of the prior art applicant's novel means resides broadly in the subject-matter covered by claim 1, viz., a means for moving these links in unison."

On appeal this was approved. Therefore the defendant can claim no warrant in the Curwen patent for using or appropriating the complainant's invention. The patentable invention disclosed in the Aze and Gilfillan patent relates to one thing, and the patentable invention disclosed in Curwen relates to an entirely different thing. It will be specially noted that claim 1 of the Curwen patent, as allowed (at first rejected on Aze and Gilfillan, No. 491,761, February 14, 1893, the patent in suit), provides as one element "means for causing said links (arms) to move in unison when the back is reversed." Here the Patent Office held the entire Curwen invention to reside. The pivoting at right angles to the plane of the back has nothing directly to do with these means and is not mentioned as a part of them. In regard to the other element of claim 1, "a single link at one end and a plurality of links at the other end," the Patent Office said, December 3, 1903:

"Claims 1, 6, 7, 8, 9, 10, 11, and 12 are rejected on the following patents: Aze and Gilfillan, 491,761, February 14, 1893; Rochester, 595,415, December 14, 1897: Koehler, 679,081, July 23, 1901; Norcross, 610,719, September 13, 1898— car seats. These claims do not patentably differ from these references. In claim 1 it is evident that if one link of Aze is left off, the back will operate the same as if it is on, although it might not operate so smoothly. Then, again, it is old to have double links at both ends and also single links at both ends, and there is no invention in merely using the combination of the two kinds. All links move in unison, otherwise the seat would not be operative. The same remarks hold for claim 6, to which stops have been added. All seats have stops for limiting the movement."

The seat used by the defendant is plainly and distinctly differentiated from the Wheeler seat covered by the patent in suit in respect to the subject-matter of the invention disclosed by each, as such patentable invention of each relates to a distinct subject-matter, the one to the mode and manner of pivoting the arms to the back of the seat, the other to the means for connecting the pair of arms at one end of the seat to the arm or arms at the other end so as to cause them to work 152 F.-30

46

in unison; but with this the mode and manner of pivoting the arms to the seat have nothing whatever to do, and are not mentioned in the claims. Hence the infringing device of the defendant's seat which does not embody the invention of the Curwen patent, but which does embody the invention of complainant's patent, cannot possibly be differentiated from complainant's device covered by his patent and alleged to be infringed. The case is not within the principle of Kokomo F. M. Co. v. Kitselman, supra, or Cimiotti U. Co. v. Am. Fur Ref. Co., supra. I do not think you can differentiate by substituting an exact equivalent in a nonessential of the claim or an essential which does not go to the gist of the claim, so as to escape infringement. This would be using shadow as substance. The mechanical movement used by Aze and Gilfillan may be old, but they have applied it in a new and novel manner, in a new place to meet a novel exigency. This court therefore holds and decides:

1. That the claims in issue of the Aze and Gilfillan patent disclose patentable novelty in the respects named, and were not anticipated, and are valid.

2. That Aze and Gilfillan were the first and only inventors, and that Cushing was not the inventor.

3. That while the car seat used by defendant has means for connecting the arms at the two ends of the seat, which means show patentable novelty and are protected by the Curwen patent, same are not used by complainant, and have nothing to do with the invention of Aze and Gilfillan.

4. That, while the complainant is limited by the terms of its patent to a seat having a pair of arms at each end of the seat, it is not so limited that one who uses its pair of arms pivoted to the back and frame, in the mode and manner required by its patent at one end of the seat, does not infringe when it uses a full equivalent for the second pair of arms at the other end; such equivalent consisting of a pair of arms performing every function of complainant's arms.

5. That defendant's seat in its patentable novelty and patentable device can be and is differentiated from complainant's seat and its patentable device; but in its infringing devices it is not so differentiated, and cannot be, and defendant uses and appropriates the patentable and patented device of complainant's patent.

6. That the cars used by the defendant appropriate and use the patentable and patented device of complainant's patent, Aze and Gilfillan, and therefore defendant infringes each of the claims in issue. There will be a decree for the complainant for an injunction and an accounting.

WESTINGHOUSE ELECTRIC & MFG. CO. v. NATIONAL ELECTRIC CO. (Circuit Court, E. D. Wisconsin. February 20, 1905.)

PATENTS INFRINGEMENT-ELECTRIC MOTORS.

The Tesla patents, Nos. 381,968, 381.969, 382,280, and 382,281, for elec tric motors, construed, and held infringed.