[U. S. Circuit Court of Appeals-Second Circuit.] H. L. JUDD & COMPANY v. FOWLER et al. Decided May 29, 1894. 68 O. G., 914. FOWLER AND LINGLEY-CURTAIN-ROD-VALID-CONSTRUED-INFRINGEMENT. Letters Patent No. 466,940, dated January 12, 1892, issued to Henry A. Fowler and John H. Lingley, for improvement in curtain-rods, construed and Held to be valid, and that claim 1 is to be read that "the spring may be prevented from pushing through the end of the tube, not only by compression, but also by turning over the end of the tube, forming an internal flange, or by indenting the end of the tube," and it is infringed by the use of either of these constructions. APPEAL from the Circuit Court of the United States for the Southern District of New York. Mr. Arthur v. Briesen for the appellant. STATEMENT OF THE CASE. This was a suit by Henry A. Fowler, John H. Lingley, and Samuel Fowler against H. L. Judd & Company, a corporation, for infringement of a patent. The Circuit Court rendered a decree for complainants. Defendant appealed. On the hearing in the Circuit Court the following opinion was rendered: WHEELER, J.: This suit is brought upon Letters Patent No. 466,940, dated January 12, 1892, and granted to the orators Henry A. Fowler and John H. Lingley, as inventors, and to the orator Samuel Fowler, as assignee, for an improvement in curtain-rods, to be held between opposing sides of casings by the friction of the ends made to press against the casings by springs. The infringement alleged is of the first claim, which is for: "1. In a curtain-rod, the combination, with a rod B, of a tube C, having one end inclosing and sliding on said rod and having its opposite end reduced in diameter, a spring inclosed in said tube and held from longitudinal movement by said reduced end of the tube, and a shell or tip carried by the reduced end of the tube and adapted to bear against the window casing, substantially as described." The defenses are want of novelty; that the two orators were not inventors, and one John H. Bennett was the inventor, of this improvement, and that the defendant does not infringe. The defendant has pleaded, put in evidence, and relied upon various structures, brackets, rods, and fixtures made before, and patents for such things issued before, the date of this invention; but none of these things show a curtain-rod or analogous structure held in place by the mere pressure of springs outwardly from the ends of the rods against opposite parallel casings; and although, in some or all of them, each of all the parts of the combination of this claim is found, in none of them are all of these parts in the same combination found, and neither any nor all of them appear to anticipate this claim. The orators Fowler and Lingley, and one Carroll W. Dodge, as joint inventors, on July 12, 1889, made an application for a patent for a curtain-rod which contained this claim: "1. In a curtain-rod, the combination of a rod or bar upon which the curtain is supported, a flaring shell forming a tip, a tubular sleeve, with one end of said sleeve inclosing the smaller end of said shell or tip, and forming a tight fit, whereby said shell and tube form practically a single piece, the opposite end of said tube being reduced in thickness, and inclosing and sliding upon the rod, so the curtain held upon said rod will slide freely over the tube, a shank preferably formed integrally with said shell or tip, and concentric with the tube, and a spiral spring held on said shank with its bore slightly less than the diameter of the shank, and with its end bearing against the inclosed end of the rod, substantially as described,"-on which a patent was granted February 16, 1892, after the patent in suit, and is owned by the orators. The specification stated that the tips could be made of solid pieces of metal and the elastic blocks attached thereto, but that they considered it better to construct them, as represented in the drawings, of sheet metal. stamped into the desired form, with the rubber blocks inserted in the open ends. The construction of stamped tips to go into the end of the tube, and support the ends of the spring, was not practicable and solid tips were too heavy and expensive. These difficulties appear to have been stated by Fowler and Lingley to Bennett, who was a manufacturer of the articles for the owners of the patent, and the tip was made to go over the end of the tube, so it could be stamped out of sheet metal, and the outer end of the tube was reduced in diameter to hold the spring. Bennett appears to have made useful suggestions about these changes to overcome the difficulties, but he did not apply for a patent, nor claim the invention against them, and seems to have done what he did as an artisan rather than as an inventor; and the presumption that Fowler and Lingley were the inventors of this improvement, arising from the grant of the patent to them and their assignee, is not overcome by the proof of what he did about it. It is argued that somehow the pendency of the application of Fowler, Lingley, and Dodge deprived Fowler and Lingley of the right to claim the improvements of this patent against Bennett, or account for his failure to apply for a patent for these improvements himself. But they owed him no duty, and he had no rights in the matter unless he was an inventor. Whether he was or not has been considered in view of all the circumstances. The patent in suit was expressly made subject to the prior application of Fowler, Lingley, and Dodge, then pending, and, of course, covers only improvements upon the invention described in it. For such improvements the patent seems to be valid. The defendant has proceeded somewhat upon the claim of Bennett that he, and not Fowler and Lingley, was the inventor of this improvement, which, as now considered, fails. Besides this, the defendant has changed the form of the tube by turn. ing in the outer end to keep the spring from being forced through it, instead of reducing its diameter by a taper, and bent out the end of the wire of the spring, or crooked the spring itself, to engage with the tube, and keep the spring from falling out in putting up or taking down the structure. The tube reduced in diameter of this claim of the patent is said in argument to be a tube reduced in every diameter producing a true taper, which will, by its reduction in that manner, hold the spring from longitudinal movement, from which the tube and spring of the defendant sq differ as not to infringe. This claim originally was for: "1. In a curtain-rod, the combination of a sliding tube, having its outer end reduced in diameter, as described, a spring with its outer diameter less than the internal diameter of said sliding tube, but slightly greater that the internal diameter of the reduced section of said tube, by which said spring is held within said tube, substantially as described." This claim was rejected as incomplete, with a suggestion that it be amended to include the rod, tubes, spring, and caps. The specification was thereupon amended by inserting: "The ends of the tubes are sufficiently contracted in diameter to prevent the spring from being pushed through the end of the tube, and crowding the disks out of the tip as the spring is being compressed by the sliding motion of the tube on the rod, in the operation of applying the curtain-rod to the window-casing. The compression of the tube is thus made to serve a double purpose; in holding the spring from falling out of the tube when the tube is removed from the rod and also in preventing the end of the spring from being pushed through the end of the tube and against the disk as the spring is compressed against the end of the rod. This latter purpose can obviously be secured by turning over the end of the tube, thereby contracting the opening, and forming an internal flange, by which the end of the spring will be held from contact with the disk, or the end of the tube which is held in the tip can be indented, so as to reduce its internal diameter, and hold the onter end of the spring from longitudinal movement while it is being compressed." And the claim was made to be as it now is. The claim is to be read with reference to the specification. When so read, the description of a tube as reduced in diameter, holding an inclosed spring from longitudinal movement by its reduced end will as well, although not so aptly, include the tube of this amendment as that of the other form. If this were not so, the changes of form of the end of the tube and of the mode of engaging the spring in the defendant's structure do not alter their mode of operation, and seem to be immaterial. They do the same thing, in substantially the same way, as the corresponding parts of the patented invention, the substance of which the defendant appears to have taken. The defendant, therefore, appears to infringe. Let a decree be entered for the orator. Before WALLACE, LACOMBE, and SHIPMAN, Judges. SHIPMAN, J.: This appeal calls in question the correctness of a decree of the Circuit Court for the Southern District of New York, which sustained the validity of Letters Patent No. 466,940, dated January 12, 1892, and issued to the complainants Fowler and Lingley as inventors, and to the complainant Samuel Fowler as assignee, for an i.nprovement in curtainrods, and which also adjudged that the defendant had infringed the first claim of the patent. On July 12, 1889, the inventors, Fowler and Lingley, and Carroll W. Dodge, applied for Letters Patent for an improved curtain-rod, which, numbered 468,987, was issued on February 16, 1892. This patent is for a tube sliding telescopically over the end of a curtain-rod, the tube carrying at one end a tip or head to receive an elastic disk which bears against the window-casing and having a spring inclosed within the tube, one end of the spring bearing against the end of the rod. The tension of the spring forces the tube away from the end of the rod and thus enables the elastic disk to be held firmly against the casing. Previous devices of this sort were either fastened to the woodwork or the ends of the rod were made to press against the casing by a screw-thread. The novelty of the invention. consisted in holding the rod in place solely by the outward push of a spring. The patentees began to manufacture curtain-rod tips of this sort in June, 1889, and ceased the manufacture during the next month. The device was defective because the pressure of the spring was exerted directly against the head and pushed it out of the tube, unless it was solid and soldered into the tube, a construction which made the manufacture too expensive. Fowler and Lingley, the two inventors named in the patent in suit, thereupon sought for and invented an improvement which should obviate the defect, and applied on May 8, 1890, for a patent therefor, which was issued as No. 466,940, and was by its terms made subordinate to the Fowler, Lingley, and Dodge application then pending in the Patent Office. As the decision of the case depends entirely upon the construction to to be given to the first claim, and as the construction depends upon an examination of the claim in connection with the specification and with the history of the application in its progress through the Patent Office, it is important to quote the specification with substantial completeness. The material portion is as follows: B is a rod forming the central section of our improved rod, and can be of metal or other material, as wood or of wood covered with metal, or it can consist of a piece of tubing. Upon each end of the central rod B we place the telescopic sliding tubes C C, with their inner ends ground or turned down to an edge in order to allow the rings or the hem of a curtain to slide freely over them. The outer ends of the sliding tubes C C are compressed or reduced in diameter by compresssion or upsetting. On the reduced outer ends of the sliding tubes C C are placed the tips D D, which are either tubular in forin, as represented in Fig. 4, or flaring or bell-mouthed, as represented in Fig. 3, the special form of the tip itself being immaterial. Within the tip D and resting upon the ends of the sliding tubes C are the disks E, and upon the disks E are placed the rubber disks F F. Springs G G are inclosed within the sliding tubes C, the outer diameter of the springs being larger than the internal diameter of the sliding tubes C at their reduced ends C' C'. The springs are large enough to require considerable pressure to cause them to enter the ends C' C', and they are held in place by the pressure of the spring against the inner surface of the sliding sleeves at their reduced ends C' C' and kept from falling out of the tubes when they are removed from the ends of the rod B. The opposite ends of the springs G G rest against the ends of the rods B, aud as the entire length of the curtain-rod with the ends as applied is longer than the space between the sides of the casing, so that when it is applied to the casing the springs G G are compressed, their tension exerts a pressure against the sides of the casing, which serves to hold the rod firmly in position. (The ends C'C' are sufficiently contracted in diameter to prevent the spring G from being pushed through the end of the tube C and crowding the disks E and F out of the tip D as the spring G is being compressed by the sliding motion of the tube C on the rod B in the operation of applying the curtain-rod to the window-casing. The compression of the tube C is thus made to serve a double purpose: in holding the spring G from falling out of the tube C when the tube is removed from the rod B and also in preventing the end of the spring from being pushed through the end of the tube and against the disk E as the spring is compressed against the end of the rod B. This latter purpose can obviously be secured by turning over the end of the tube C, thereby contracting the opening and forming an internal flange by which the end of the spring will be held from contact with the disk E, or the end of the tube C, which is held in the tip D, can be indented, so as to reduce its internal diameter and hold the outer end of the spring from longitudinal movement while it is being compressed.) The part of the specification inclosed in parentheses was introduced by amendment. The first claim is as follows: 1. In a curtain-rod, the combination, with a rod B, of a tube ̊C, having one end inclosing and sliding on said rod and having its opposite end reduced in diameter, a spring inclosed in said tube and held from longitudinal movement by said reduced end of the tube, and a shell or tip carried by the reduced end of the tube and adapted to bear against the window-casing, substantially as described. The invention consisted in reducing in diameter the outer ends of the sliding tubes, whereby they received the force of the outward thrust of the springs, which were thus prevented from being pushed through the ends of the tube, and, as the tips no longer needed solidity to withstand the pressure of the springs, they were placed over the reduced outer ends of the tubes. The compression of the tube, in addition to its preventing the end of the spring from being pushed through the end of the tube, also kept the spring in position by friction, and thus prevented it from falling out when the tube was removed from the rod. In order to accomplish the first and main object of the improvement, the specification states three ways in which the ends can be reduced in diameter: First, by compressing them; secondly, by turning over the end, thereby forming an internal flange which will hold the end of the spring away from the disk, or, thirdly, by indenting the end of the tube. The defendant's expert says that in its curtain-rod tips the outer end of the tube is turned inward slightly at its extreme end, and has ears bent in from a point or short distance back from the end. These inturned ears form a stop to prevent the end of the spring from being pushed through the outer end of the tube, and that the result is that a spring of uniform diameter simply abuts against the stops formed by these inturned ears, and is not held from longitudinal movement by the reduced end of the tube. It is further said that the reduced ends do not hold or retain the springs, but that they are kept from falling out by being bent or bowed outwardly, so as to bear against the interior of the tube and create friction with it, and consequently that the defendant's reduced ends perform only one function of the patented method of construction. A further distinction is said to exist between the two structures in that whereas in the complainants' patent the reduced outer ends of the tube form a neck or seat for receiving the tip, in the construction of the defendant's articles the tip goes over the reduced end and is forced upon that portion of the exterior of the outer end of the tube which is not reduced in diameter. The attempt to avoid infringement rests mainly if not entirely upon such a construction of the first claim as to limit it to one mode of reducing the end of the tube-viz., by compression-and to exclude the modes named in the amended specification-"by turning over the end of the tube," or by indentation. The theory of the defendant is that the claim, as finally allowed by the Patent Office, was so reduced in scope as to limit it to that feature of construction which would prevent the spring from longitudinal movement in either direction. The original application contained three claims, which were properly rejected as "incomplete and vague." The amendment included in parentheses was |