APPEAL from the District Court of the United States for the Eastern Division of the Northern District of Illinois; Arthur L. Sanborn, judge.

Suit in equity by Matthew Howard Reed against the Cropp Concrete Machinery Company and Andrew J. Cropp. Decree for defendants, and complainant appeals. Reversed.

(For opinion below, see 218 Fed. Rep., 643.)

STATEMENT OF THE CASE.

Appeal from decree dismissing for want of equity bill to restrain alleged infringement of certain claims of United States Patent No. 981,111 to Reed. Appellant, Reed, and his company, the Standard Scale & Supply Company, were in the business of making and selling scales and gas-engines, but not concrete-mixers. Appellee Cropp was engaged in devising and constructing concrete-mixing machines, and had used some of the Reed engines, which were adapted to furnish power for such machines. Late in 1907 Reed met Cropp at the Chicago cement show, and was evidently impressed with Cropp's ideas of concrete machinery, although Cropp then had no patents. Shortly afterward they arranged an agreement for Cropp to make his mixers and sell them through Reed's company. Cropp began building machines, and under date of March 2, 1908, entered into a written contract with the company whereby it was to have the sole and exclusive right in the United States and elsewhere to sell

the concrete mixing machines devised and manufactured by or under the supervision of second party

(Cropp) for one year, and as much longer as they could agree; Cropp to receive a stipulated price for each machine. The Reed engine was to be used, and Cropp was to protect the company against actions for infringement.

The following May 7th they entered into another contract, superseding the first. By it the company on certain conditions assumed certain of Cropp's financial obligations, and Cropp conveyed to the company mixing-machines and parts thereof as enumerated, and thereafter the company was to manufacture and sell the "Cropp mixing machine" and to have—

the sole and exclusive right for the manufacture and sale of said concretemixing machines in the United States

and all foreign countries, and the company

will provide for the manufacture of the Cropp mixers, furnishing all necessary material and labor,

and Cropp agreed to superintend the manufacture and construction of the mixers and assist in their sale, and was to receive from the

company $50 for each mixer sold up to 50, and $40 for each one in excess of 50. Cropp agreed as before to protect the company against actions for infringement in the use of his (Cropp's) "machine or "devices." The term of the contract was until January 1, 1909, and as much longer as the parties could agree. The evidence is indefinite and uncertain as to what machines were constructed during the existence of the contractual relation. But it seems that at the time the second contract was made at least one machine had been completed, which embodied substantially the claims which are the subject-matter of this litigation, except claims 1, 2, and 11.

August 8, 1908, Cropp filed in the Patent Office his application for improvements in concrete-mixing machines. His patent, No. 947,196, was granted January 18, 1910; its general scope appears from his claims 9 and 15, which are typical of those that bear on this controversy, and read as follows:

9. The rotary mixing receptacle having at its receiving end a charging device consisting of a centrally apertured disk secured to the receptacle, and a series of blades extending at their outer ends from the disk inwardly and diagonally with respect to the receptacle for a short distance from the disk for the purpose of directing the material into the receptacle, said blades having their portions adjacent to the disk of substantially the same width as said disk' from the opening therein to its periphery and their inner portions widened.

15. In a mixer, in combination, a revoluble drum having an apertured disk at its receiving end, means within the drum to agitate and mix the material, a continuous series of circularly arranged charging pockets located at one end of the drum within its cylindrical wall and closed at their outer ends and having their outer portions of substantially the same width as the said disk from the opening therein to its periphery and their inner portions widened, and means to introduce material to the inlets of the pockets.

On September 28, 1908, Reed filed his application for the patent here in issue. In both applications, as well as in some of the claims of both the patents as granted, there is shown an inner head whose periphery contacts with that of the drum and which has openings near the outer edge for the materials to pass through. Each likewise shows claims for improvements in the discharging end of the drum, not here in issue. Various claims of Reed's patent describe a series of charging-blades extending diagonally inwardly from the flange of the drum at the receiving end, the blades overlapping at their inner ends. It appears that August 14, 1908, between the filing dates of Cropp and Reed, Sanborn filed application for a patent for improvements on such mixers, having, like the other two, for one of its objects the introducing of material into the drum at one end near its periphery "enabling a low charging chute to be employed" and describing a series of diagonally and inwardly projecting blades and pockets not far different from the other two.

On suggestion from the Patent Office, Cropp and Reed incorporated in their applications Sanborn's claim 5, and thereupon interference was declared thereon; such claim being as follows:

In a mixer, in combination, a revoluble drum, means therein to agitate and mix the material, a continuous series of circularly arranged charging pockets located at one end of the drum within its cylindrical wall and closed at their outer ends, the open inlets of the pockets being turned toward the axis of the drum, a circular head having its periphery contacting with the tops of the pocket walls and set in from the adjacent end of the drum, and means to introduce material to the inlets of the pockets outside of said head.

Prior to the date fixed for filing preliminary statement, Cropp filed a disclaimer as to said claim, declaring he was not the first inventor thereof, and amended his application accordingly, whereupon his patent was granted. Thereafter Reed, by his attorney, also filed disclaimer of the claim, wherein it is recited that Sanborn had assigned to Reed his entire interest in the Sanborn application, and that Reed

hereby disclaims the subject-matter covered by said interfering claim, and requests said interference be dissolved and the claim allowed to Sanborn.

The Patent Office dismissed Reed's disclaimer on the ground, among others, that it was not executed by Reed, but by his attorney. Thereupon there was filed in the Patent Office a concession of priority of the invention involved by Sanborn to Reed, which concession being found by the Patent Office to be in accordance with the rules, the claim in interference was awarded to Reed, and the patent in issue to Reed was issued January 10, 1911, wherein the claim in interference became the first claim of his patent. December 31, 1912, patent to Sanborn was issued. The claims of the Reed and Cropp patents, barring Reed's claims 1 and 2 subsequently added, are substantially like those of their applications as of the time when Sanborn's claim 5 was suggested to them.

The relations between Cropp and Reed terminated at expiration of the contract. Cropp organized appellee Cropp Machinery Company, which proceeded to make Cropp mixers. The litigation between Reed and Cropp, and their respective companies, soon began, and has since been in active operation, although it does not appear that any considerable number of mixers have been made by either party. This action is based on an alleged infringement by Cropp and his company in making and selling two mixers to one Wahl, which it is claimed embody in their constructions claims 1, 2, 7, 11, 12, 13, 17, 18, 19, 20, and 21 of Reed's patent. The commercial Cropp machine, which also fairly shows the construction of the Wahl machines, as to which the infringement is charged, is shown by Fig. 1. Mr. Charles M. Clarke and Mr. Otto R. Barnett for the appellant. Mr. Glenn S. Noble for the appellees.

Before BAKER, MACK, and ALSCHULER, Circuit Judges.

ALSCHULER, Cir. J., (after stating the facts as above:)

It is not seriously contended that claim 1 of the patent does not read upon the Wahl structure. The distinctive feature of this claim, viz.

a circular head having its periphery contacting with the tops of the pocket walls and set in from the adjacent end of the drum,

is present in the disk or ring D. While the precise function of this inner contacting ring is not clearly shown by the evidence, it is apparent that it may serve the purpose of stiffening the blades and better holding them in relative position, as well as helping to form a sort of wall to keep the materials from flowing back into the charging end. In the many cuts of complainants' commercial machine shown in the catalogues in evidence, this inner ring or head is nowhere shown; but this would not warrant the use of it by another in violation of a valid patent therefor.

(1) The question of priority involved in the interference having been thus settled in Reed's favor, and patent including the claim in interference awarded to him, in this suit for infringement thereof against Cropp and his privies, there arises a strong presumption in favor of Reed's priority, which can be overcome only by evidence of a most convincing and satisfactory nature. (Smart v. Wright, 8th C. C. A., 227 Fed. Rep., 84; 141 C. C. A., 632; Computing Scale Co. v. Standard Computing Scale Co., 6th C. C. A., 195 Fed. Rep., 508; 115 C. C. A., 418; Hillard v. Remington Typewriter Co., 2d C. C. A., 186 Fed. Rep., 334; 108 C. C. A., 534; Novelty Glass Co. v. Brookfield, 6th C. C. A., 170 Fed. Rep., 946; 95 C. C. A., 516; Stonemetz, etc., Co. v. Brown, etc., Co., C. C., C. D., 1893, 478; 64 O. G., 1135; 57 Fed. Rep., 601; Kirk v. Du Bois, C. C., C. D., 1888, 297; 42 O. G., 196; 33 Fed. Rep., 252; Celluloid Mfg. Co. v. Chrolithion Collar and Cuff Co., C. C., C. D., 1885, 248'; 31 O. G., 319; 24 Fed. Rep., 275; Wire Book Sewing Machine Co. v. Stevenson, C. C., 11 Fed. Rep., 155.)

But Cropp does not undertake to impeach his disclaimer by maintaining that he was the first inventor of the combination having this inner contacting head. On the contrary, he insists, not only that he did not invent it, but also that Reed was not the first inventor. It is claimed that the filing by Reed of a disclaimer in favor of Sanborn of the claim in interference of itself sufficiently shows that Reed was not the inventor. The record discloses a disclaimer by Reed of the claim in interference, which disclaimer the Patent Office dismissed as being irregular. Thereafter, Sanborn filed a concession of priority of invention to Reed, as indeed the preliminary statements by Reed and Sanborn in the interference proceedings showed the invention to have

been first made by Reed. These things are proper to be considered in evidence with all the other evidence on the subject of whether Reed was in fact the first inventor. If Sanborn was the original inventor of this feature, then Reed was not, and he could not in such case prevail upon his claim 1. These matters were before the Patent Office, and the patent was granted to Reed. We cannot hold that by merely showing the disclaimer of Reed, which was filed and subsequently dismissed by the Patent Office, Cropp, the alleged infringer, has thereby sustained his burden of establishing that Reed was not the first inventor; and so claim 1 must stand, unless otherwise overcome. Patents to Ransome, No. 416,950, and McKelvey, No. 663,999, are cited in the prior art to such use of the inner head or ring. We do not find disclosure in either of these patents responding to the elements of the combination of claim 1 in respect to an inner circular head having its periphery contacting with the tops of circularly-arranged charging-pockets, located as described in the claim. The record disclosing nothing further which would tend to show that Reed was not the first inventor of the combination with such inner contacting ring or head, appellees have failed to overcome the presumption that he was.

(2) Respecting claims 2, 7, 11, 12, 13, 17, 18, 19, 20, and 21, it is earnestly maintained that their determination must follow that of claim 1 for two principal reasons-first, that they describe the same invention or device as claim 1, and that the award to Reed of the interference necessarily carried with it these other claims; and second, that even if they described an invention different from that of claim 1, yet since they are similar to some of Cropp's claims these might have been brought into the interference proceeding, and that the determination of the interference not only adjudicated the claim specifically there in issue, but all other claims common to any two or inore of the applications, though not within the scope of the interference claim, which might by appropriate proceedings have been brought into the interference.

As to the first of these contentions: Reed's claim 1 does not in our judgment describe a structure like his other claims (except 2 and 11), which are alleged to be infringed, nor that of Cropp's typical claims 9 and 15. Said claim 1 describes the combination of a revoluble drum, means therein to mix the material

a continuous series of circularly arranged pockets located at one end of the drum within its cylindrical wall, inclosed at their outer ends, the open inlets of the pockets being turned toward the axis of the drum,

and the circular inner head with its periphery contacting with the tops of the pocket-walls. The circular arrangement of the pockets: means that they extend about the inner surface of the drum. There