THAYER, Circuit Judge. This is an appeal from an order awarding an injunction which restrained the appellants from using ore roasting furnaces made in accordance with the specification of letters patent No. 691,112, issued to Joseph P. Cappeau on January 14, 1902. This order of injunction appears to have been made on a motion which was filed in a proceeding that had been begun against the Lanyon Zinc Company and others to punish them for an alleged violation of an order of injunction previously obtained, which enjoined them from infringing claim I of letters patent No. 471,264, issued to Horace F. Brown, one of the appellees. In view of the manner in which the injunction was obtained, certain questions of procedure are discussed in the briefs. On the oral argument, however, it was agreed by counsel that all questions of procedure should be waived, and that the point to be determined on appeal was whether an ore roasting furnace made in conformity with the specification of the Cappeau patent, such as the appellant is now using, infringes the first claim of the Brown patent, which is owned by the appellees.

The Brown patent has been before this court for construction on several occasions. Thus in Metallic Extraction Co. v. Brown, 43 C. C. A. 568, 104 Fed. 345, the patent was upheld, and it was decided that an ore roasting furnace made in accordance with the specification of letters patent No. 532,013, issued to Alfred Ropp on January 1, 1895, infringed the first claim of the Brown patent; the same ruling was made in Lanyon Zinc Co. v. Brown et al., 53 C. C. A. 354, 115 Fed. 150; and the ruling was repeated in Lanyon Zinc Co. v. Brown, 56 C. C. A. 448, 119 Fed. 918. The first claim of the Brown patent, that has been upheld in the cases last cited, is as follows:

"In an ore roasting furnace having means for stirring and advancing the ore, a supplemental chamber at the side of the main roasting chamber, and cut off from said main chamber by a wall or partition, and carriers in said supplemental chambers connected with the stirrers, but removed from the direct action of the heat, fumes, and dust, substantially as herein described."

Figures 1 and 2, which appear on the adjoining page, disclose the method of constructing the Cappeau furnace. Referring to these figures-particularly figure 1-it will be seen that the body of the furnace is supported by pillars or iron posts set firmly in the ground; the space underneath the hearth being left open and uninclosed to permit the free circulation of air from all sides. The floor of the hearth has a longitudinal slot through which a perpendicular arm or rod extends, which rod or arm, at its lower end, is attached to a carrier that moves on a track underneath the hearth. To the upper end of this rod a crossbar is attached, from which the rabble arms depend that serve to stir the ore within the furnace as the carrier moves along the track. At the ends of the furnace are swinging gates, which are opened by the stirrer mechanism, and are closed by their own weight as soon as the stirrers have passed.

The appellants contend that the Brown patent describes and claims a "supplemental chamber cut off from the main chamber," that a supplemental chamber is one of the essential features of the invention covered by that patent, and that it is not found in the Cappeau furnace which they are using. We entertain no doubt that, as claimed by the appel

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lants, a supplemental chamber for the housing of the rabble operating mechanism constitutes an essential feature of the Brown furnace. It was that novel method of constructing a furnace which entitled him to a patent. The language of the Brown specification, and particularly the language of the first claim, leaves no room for doubt on that point. Brown described the disastrous effect of the heat and fumes within the

furnace upon the mechanism which had previously been employed to stir the ore within the oven and gradually move it to the end where it was to be discharged. He also described a means whereby the difficulty theretofore encountered could be overcome and had been overcome; the means described being the construction of a supplemental chamber cut off from the main roasting chamber wherein the rabble operating mechanism could be placed, thereby removing it from the direct action of heat; and the means thus described he specifically claimed in his first claim, thereby making the supplemental chamber the principal feature of his furnace. In the case of Metallic Extraction Co. v. Brown, supra, this court concluded, after a careful scrutiny of his specification, that Brown did not intend to make the location of the supplemental chamber a material element of his claim, although he had described it as located at the side of the main roasting chamber. We accordingly held in that case that the use of the Ropp furnace, which had a well-defined supplemental chamber underneath the hearth for housing the rabble operating

mechanism and protecting it from the heat, was an infringement of claim one of the Brown patent.

The question to be determined on the present appeal, therefore, is whether the open and uninclosed space underneath the Cappeau furnace can be held to be a supplemental chamber, within the fair intent and meaning of those words as employed in the Brown patent. We are of opinion that this question must be answered in the negative. The space in question satisfies none of the definitions usually given of a chamber. It is not a "room" or "an apartment" or "a cavity" or a "closed space" of any sort. It is entirely uninclosed. In ordinary. speech, no one would think of describing the open space underneath the Cappeau furnace, where the track is laid on which runs the carriage that operates the rabble arms, as a supplemental chamber, although the words in question were aptly applied by Brown to describe the inclosed space in his furnace where the rabble operating mechanism is located.

It is an elementary rule that a patentee may claim the whole or a part of what he has invented. He is entitled to limit his claims to any extent that may seem desirable, but, having done so, his right to protection is also limited, since the claim actually made by the patentee is the .measure of his right to relief. McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800; Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278, 24 L. Ed. 344; White v. Dunbar, 119 U. S. 47, 51,7 Sup. Ct. 72, 30 L. Ed. 303. It may be that Brown, being the first to place the rabble operating mechanism of a furnace outside of the oven, might have formulated his claims in such a manner as would have covered the method of construction described in the Cappeau patent, but he has not done so. He saw fit to place his rabble operating mechanism not in an open and uninclosed space adjacent to the oven, but in a supplemental chamber, and claimed the chamber as an element of his combination. Having done so, he is not entitled to relief against one who does not employ a chamber in which to locate his mechanism for operating the rabble arms. The first claim of the Brown patent is entitled to a fair and reasonable interpretation, but we cannot indulge in a liberality of construction which ignores the ordinary meaning of words and phrases, as we must do if we hold that an open and uninclosed space is a chamber.

The decree of the lower court awarding an injunction restraining the appellants from using the Cappeau furnace, and holding the use of that furnace to be in violation of the existing injunction, is reversed, and the cause is remanded with directions to dissolve the injunction which was granted.

MORTON TRUST CO. et al. v. AMERICAN CAR & FOUNDRY CO.

(Circuit Court of Appeals, Third Circuit. May 13, 1904.)

No. 18.

1. PATENTS-SUIT FOR INFRINGEMENT-PLEADING.

Where a bill charges infringement of a patent generally, in accordance with the approved practice, it may be construed to charge infringement of all the claims; and, unless under very exceptional circumstances, the complainant cannot be required to amend by specifying the claims with respect to which infringement is claimed and the parts of defendant's structure which are claimed to infringe.

Appeal from the Circuit Court of the United States for the District of New Jersey.

For opinion below, see 121 Fed. 132.

John R. Bennett, for appellants.

Paul Bakewell, for appellee.

Before ACHESON, DALLAS, and GRAY, Circuit Judges.

ACHESON, Circuit Judge. This is an appeal from a decree in equity dismissing the bill of complaint upon the ground that the plaintiffs had failed to comply with an order of the court requiring them within 30 days to "specify the particular parts of the defendants' car or car construction that are relied upon as infringements of the patent in suit, and the several claims which they are alleged to infringe." The suit was for the infringement of letters patent No. 584,709, for an "improvement in metallic cars," granted to Charles T. Schoen. In the introductory part of the specification are these statements:

"This invention relates, stated generally, to the construction of a railway car, and, stated specifically, to the construction of a pressed steel hopperbottom car. The invention comprises a number of details of construction, such as the under frame and its sills, the draft-gear, the body-bolster, the bottom, the doors for the bottom, the supports for the bottom, the sides and ends, the stakes and corner-posts, and other parts and combinations of parts, as hereinafter more particularly set forth and claimed."

Then follows a detailed description of the invention. The claims are 28 in number.

The bill is in the usual form, and contains the usual allegations in an infringement suit, and the usual prayers for relief. Infringement by the defendant company is charged thus:

"And so it is, may it please your honors, that the said defendant, as your orators are informed and believe, and therefore aver, well knowing the premises, and without the license of your orators, against their will and in violation of their rights, and to their very great damage and irreparable injury, has manufactured, sold, and used metallic cars, and sold such cars to others to use, substantially as set forth in the said letters patent No. 584,709, and claimed in the claims thereof, and that it has threatened and intends to continue to so manufacture, sell, and use, and sell to others to use, metallic cars embodying

¶ 1. Pleading in patent infringement suits, see note to Caldwell v. Powell, 19 C. C. A. 595.

See Patents, vol. 38, Cent. Dig. § 511.

the invention and method of the claims of the said letters patent No. 584,709 within the United States, all of which is in violation and infringement of the said letters patent No. 584,709, and of the claims thereof, and your orators' rights in the premises."

The averment of infringement was clearly sufficient, according to the approved practice in patent causes. 3 Robinson on Patents, p. 430, § 1106; Thatcher Heating Co. v. Carbon Stove Co., 4 Ban. & A. 68. The defendant, however, presented to the court a petition concluding with the following motion:

"Defendant moves your honors to make an order in this cause requiring the complainants, within a time to be appointed by this court, to amend their bill of complaint in order to specify in and by the same the particular claim or claims of said Schoen patent, No. 584,709, of June 15, 1897, with respect to which complainants charge infringement by the defendant in this cause, and that, after complainants have so amended their bill of complaint, defendant have at least thirty days within which to file its answer or other pleading in this cause; and defendant prays for such other and further order in the premises as to this court may seem meet, and which may be in accordance with the principles of equity and good conscience."

Thereupon the court made the order above mentioned. It will be observed that in its order the court went beyond the defendant's specific prayer, for it not only required the plaintiffs to specify the several claims which they alleged the defendant infringed, but also "the particular parts of the defendants' car or car construction that are relied upon as infringements of the patent in suit."

In some rare instances where the cases seem to have been exceptional, the plaintiff in an infringement suit has been required to specify in limine the claims relied on, but there is no precedent in this circuit for such an order. Applications therefor were denied by the Circuit Court for the Eastern District of Pennsylvania in Johnson v. Columbia Phonograph Co. and Johnson v. National Graphophone Co., 106 Fed. 319. We are not convinced that in the present case there are any special reasons for a departure from the usual practice. Moreover, the charging clause of this bill recited above, we think, imports infringement of all the claims of the patent in suit. The invention of this patent covers a number of details of construction of the described railway car, and there might well be infringement of all the claims. As we have seen, however, the order made by the court below required the plaintiffs not only to specify the several claims alleged to be infringed, but also the particular parts of the defendant's car or car construction that are relied upon as infringements of the patent. In its scope the order goes beyond any precedent known to us. Compliance with the order would require definite knowledge of the defendant's car construction. does not appear, and we think it ought not to be presumed, that the plaintiffs have had such an opportunity to inspect all the parts of the defendant's car as would enable them to specify the extent and character of the defendant's infringement with the particularity enjoined by the order. On the other hand, there is no hardship that we can see in calling upon the defendant to answer the charge of infringement contained in this bill. The defendant has before it, or is entitled to have before it, the patent sued on, and upon an inspection of the patent can see whether its construction is the same as or different from that of the