fringement of the present patent could not result from using "what. was then old."

We are unable to perceive any force in the suggestion. Manifestly, the key was but one of the elements of the combination for which the patent in suit was granted-a very important element, it is true, but without the other elements of the combination the key would amount to nothing.

The Wilson patent numbered 827,595, granted July 31, 1906, was by this court, in the case of Union Tool Co. v. Wilson, 249 Fed. 736, 161 C. C. A. 646, held valid and not anticipated, and that claims 9 and 19 thereof were infringed by the holders of the Double patent, numbered 734,833, issued in 1903, under which the present appellant claims; which patent this court held in its decision rendered at the same time in the case of Wilson & Willard Mfg. Co. v. Union Tool Co. et al., 249 Fed. 729, 161 C. C. A. 639, was for a combination of old elements, and therefore limited to the device shown and described therein, and not to be entitled to a broad range of equivalents.

Both the Wilson patent of 1906, numbered 827,595, and that of Double of 1903, numbered 734,833, were very carefully considered and differentiated by this court in the decisions above cited, and it is needless to repeat here what was there said and pointed out. In each of them the key entering into and forming a part of the respective combinations, the purposes and functions of which are specifically set out in the opinions referred to, was a single-piece key. The present case shows that Wilson, subsequent to the issuance of his patent of 1906, and prior to 1908, made a key in two parts, designated in the record the two-piece key, and publicly sold during the period of about two years a number of the Wilson reamers with such two-piece key substituted for the one-piece key theretofore used by him in his combination, but that then finding that the two-piece key was not satisfactory because the slotted T-rod in connection with which it was used was too small and weak, and for the further reason that the two-piece key was itself too weak and would become jammed and difficult to remove, Wilson invented an improved one-piece key and embodied it as one of the elements of the patent upon which the present suit is based. The case further shows that during the time he was making that single-piece key one Bole was either in the employ of the Wilson company or was so associated with it as to acquire knowledge of the new key, whereupon Bole, on February 9, 1911, made application for letters patent on the said single-piece key, pursuant to which application a patent was issued to him December 2, 1913; the Patent Office having overlooked the fact that on March 18, 1913, Wilson had made application on the same key, which application remained pending and undisposed of. Based upon the patent so issued to Bole, he and Double brought suit in the District Court of the United States for the Southern Division of the Southern District of California against Wilson and his associated Wilson & Willard Manufacturing Company for the alleged infringement of the Bole patent, resulting in an interlocutory decree in favor of the complainants, which case was brought here on appeal from that interlocutory decree, and is reported

(263 F.)

in 227 Fed. 607, 142 C. C. A. 239, where the decree was reversed with directions to dismiss the bill; this court concluding its opinion in these words:

"We might say in this connection that, after the issuance of the Bole patent, an interference was declared in the Patent Office between it and the Wilson application. A hearing was had on that interference before the Examiner of Interferences. The parties were represented by the same counsel, and substantially the same witnesses were examined. The record in this case shows that there were no controlling differences between the testimony before the Patent Office and before the court below. After a careful review of the testimony, the Examiner of Interferences found that Wilson, and not Bole, was entitled to a patent. An appeal was taken from that decision to the Examiners in Chief, where the testimony was again reviewed, and the decision of the Examiner of Interferences affirmed. An appeal has been taken from the latter decision to the Commissioner of Patents, where the matter is now pending. The first decision was prior to the decision in the court below, but the decision on appeal was of a later date. Had a final decision been reached in the interference proceedings in the Patent Office, that decision would be controlling in a large measure upon the courts. But what, if any, effect should be given to the decisions of the Examiner of Interferences and the Examiners in Chief in the present state of the record, we will not inquire, further than to state that their conclusion upon the facts is in full accord with our own."

The interference resulted in the issuance to Wilson on May 16, 1916, of the patent upon which this suit was brought.

It is suggested in effect on behalf of the appellant that the improved single-piece key of Wilson was in every substantial particular the same as the prior Double one-piece key embodied as one of the elements of his improved reamer; but we think that suggestion is negatived by the fact that the appellant's key did not and could not perform the function of the Wilson improved single-key, namely, the dispensing with the theretofore extra joint in all reamers, and the permitting the removal or assembling of the rod, spring, and cutters in the reamer body by merely removing the key.

The court below was, in our opinion, quite right in holding that the key in the Double underreamer constituted an infringement of the complainant's patent No. 1,183,151.

We see in the record no ground upon which an estoppel against the complainant in the court below could have been properly adjudged, even conceding it not to have been necessary for the defendant to the suit to plead such estoppel, which it did not do.

The decree is affirmed.

MASTORAS v. HILDRETH.

(Circuit Court of Appeals, Ninth Circuit. February 24, 1920. Rehearing Denied April 5, 1920.) No. 3341.

1. PATENTS283(1)—PATENT FOR INOPERATIVE MACHINE NOT INFRINGED BY OPERATIVE MACHINE.

That under a patent no machine has ever been made and shown to work successfully does not prevent the owner from restraining infringement; For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

1

but, if the patented device is not operative, it cannot be infringed by one that is.

2. PATENTS 328-FOR CANDY-PULLING MACHINE NOT INFRINGED.

The Dickinson patent, No. 831,501, for a candy-pulling machine, conceding its validity as for an operative machine, held not infringed.

B. PATENTS 112(3)-PRESUMPTION THAT LATER DOES NOT INFRINGE EARLIER
PATENT.

There is a legal presumption that a later patent does not infringe an earlier patent.

4. PATENTS 11--FOR MACHINE DOES NOT COVER MODE OF OPERATION.
A patent for a machine cannot cover its mode of operation.

Appeal from the District Court of the United States for the District of Oregon; Wolverton, Judge.

Suit by Herbert L. Hildreth against Jim M. Mastoras. Decree for complainant, and defendant appeals. Reversed.

For opinion below, see 253 Fed. 68.

Joseph L. Atkins, W. A. Robbins, and David E. Lofgren, all of Portland, Or., for appellant.

MacLeod, Calver, Copeland & Dike, of Boston, Mass., and Chester G. Murphy, of Portland, Or., for appellee.

Before GILBERT, MORROW, and HUNT, Circuit Judges.

GILBERT, Circuit Judge. The appellant appeals from a decree of the court below whereby he was adjudged to have infringed claim 1 of patent No. 831,501, issued on September 18, 1906, to Herbert M. Dickinson, for an "improvement in candy-pulling machines." appellant denied infringement and denied the validity of the Dickinson patent.

The

The only prior patent to which we find it necessary to refer is No. 511,011, issued to Firchau on December 19, 1893, for an improvement in "machines for working or pulling candy." Firchau's machine consists of a fixed drum wherein are placed heads which carry lateral fingers arranged so as to travel in different orbits in opposite. directions. In operation the candy is hung upon the upper finger, and, upon the rotation of the heads in opposite directions, it is engaged by the lower finger and stretched in an opposite direction and worked. Say the specifications, "This takes place at each rotation of the heads, the candy being alternately massed and stretched." In the Dickinson machine the candy is placed in a trough some eight feet in length in the bottom of which at the center is placed an upright fixed pin. Attached to an arm pivoted on a transverse traveling bar are two pins which project downwardly and nearly to the bottom of the trough. The bar with the arm on which are fastened the projecting pins is carried back and forth on the top of the trough from one end thereof to the other. As the bar approaches each end, a hook engages the arm from which the pins are suspended and turns it about upon the bar, whereby the pins make in the trough approximately a semirevolution, before returning to the opposite end. The specifications say:

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

(263 F.)

"The candy is acted upon in a manner and by means of the shifting hook along a path corresponding to what I term a figure 8."

Claim 1 is as follows:

"(1) A candy-pulling machine comprising a plurality of oppositely disposed candy hooks or supports, a candy-puller and means for producing a specified relative in-and-out motion of these parts for the purpose set forth."

The machine which was held to infringe is one made under the patent to G. L. Langer No. 1,232,697, issued July 10, 1917, for "a candy-pulling machine." Langer's specifications say:

"My invention relates to candy-pulling machines, and more particularly to a machine adapted to automatically pull candy by means of a floating puller which is carried through a course of travel corresponding in form to the figure 8, and around fixed supporting pins arranged concentrically within the two circular portions of said figure 8, whereby the candy is pulled by said floating puller and alternately carried thereby around said fixed supporting pins."

The machine consists of a base supporting two circular or drumlike castings joined together at one side and standing on edge. In the center of each of these drums, and on either side thereof, is a fixed pin, while a movable pin projecting on each side passes first around one drum and then around the other in continuous operation. Candy is simultaneously pulled on each side of the machine. It is stretched across the fixed pins on either side and above the moving pin. By the movement of the machine the moving pin pulls the candy and wraps it first around one fixed pin, then stretches it and wraps it around the other, and continues that operation alternately from pin to pin, thus pulling and stretching the candy as the floating pin is carried through its course of travel. The essence of the Langer invention is that it is adapted to carry a floating pulling member first around one circular course in one direction, and then around another circular course in the opposite direction. The machine is shown below:

It is said that the Firchau patent has no place in the prior art for the reason that it will not pull candy but will only mix it. To this we can

not assent. The moving fingers of that device undoubtedly will to some extent pull candy. The candy, being placed upon the upper finger which has projecting knobs to hold it, will as that finger moves be caught by the lower finger and pulled in the opposite direction. If it be said that the pulling operation is not continuous but intermittent, the same may be said of the Dickinson device, for it is obvious that during the travel of the movable pins from the end of the trough toward and to the central pin there is no pulling of the candy or anything more than a pushing of the mass thereof in front of the moving pins. It is only as Dickinson's moving pins travel away from the center and toward the ends of the trough that any tension is placed on the candy. It is thus seen that Dickinson did not get very far beyond Firchau, and that in his device, as in Firchau's, the candy is "alternately massed and stretched." Although claim 1 of the Dickinson patent does not call for means to support the candy against gravity, it is obvious that the device will not operate without a trough for support such as the specifications describe, and that if the pins were placed in a horizontal position they could not be so operated as to sustain the candy against gravity, for the reason of the intermittent relaxation of the candy from all tension. In Hildreth v. Auerbach (D. C.) 223 Fed. 545, Judge Learned Hand said:

"I must confess that the conception of the pins as 'supports' seems to me quite foreign to Dickinson's disclosure."

Dickinson was not the first to invent a machine to pull candy. But if he were the first, as the appellee contends, he acquired no more than the exclusive right to pull candy in the way which he specified, and he is not justified in claiming the exclusive right to pull it in some different way.

The testimony leaves it doubtful whether the Dickinson machine is operative. The only testimony as to its practical operativeness is that of the appellee. He testified that three machines were made, that two of them had been broken up, and that the third was still in his possession; that he did not use it in practical operation; that on one occasion, a number of years after he bought it, he had used and pulled candy with it; and that by shortening the pull and speeding the machine it would "pull candy all right."

"Q. Will it pull it practically? A. Well, practically would be so it would be commercially.

"Q. Well, would it pull it commercially, then? A. Well, not the way we pull our candy. It was not pulled enough. It would pull it, but the stroke was too long. We shortened up the stroke, and made it all right.

*

"Q. And that would not pull candy until you changed it? A. Oh, yes, it would.

"Q. It would not pull it commercially? A. Well, no. It would not pull it, not as well as we wanted candy pulled."

A witness for the appellant, an experienced candy worker, testified that the Dickinson device would stir candy but would not pull it, and stated as a reason therefor that—

It does not let in enough air, "doesn't get the air to it. It lays flat on the floor there on the bottom of the trough, and it certainly doesn't get air around.