3. PATENTS 328-INFRINGEMENT-ROTARY PRINTING MACHINE.

The Evans & Wichmann patent, No. 958,484, for a rotary printing machine, claim 3, held not infringed.

Appeal from the District Court of the United States for the Southern District of New York.

On appeal from a decree of the District Court of the United States for the Southern District of New York finding claim 3 of letters patent No. 958,484 granted to A. B. Evans and G. C. H. Wichmann valid and infringed.

J. Edgar Bull and George F. Scull, both of New York City, for appellant.

Victor D. Borst and William M. Stockbridge, both of New York City, for appellees.

Before LACOMBE, COXE, and WARD, Circuit Judges.

COXE, Circuit Judge. The patent in controversy was granted May 17, 1910, to Evans and Wichmann for improvements in rotary printing machines for printing on sheets of paper, card, metal and the like in the form of sheets which can be bent around a cylinder. The machine comprises suitable printing surfaces grouped upon the periphery of three constantly rotating cylinders, which may be brought into mutual contact or removed from such contact as may be required during the working of the machine.

The first cylinder carries on its printing surface or surfaces one or more designs in the same or different colors, which are inked or damped and inked in the usual manner. The second cylinder carries a number of printing surfaces adapted to receive impressions from the surfaces of the first cylinder. The third cylinder carries a single printing surface adapted to receive impressions from the surfaces on the second cylinder. The diameter of the third cylinder is a submultiple of the diameter of the second cylinder, such submultiple corresponding with the number of printing surfaces carried on the second cylinder. By bringing into use all or some of the printing surfaces and by proper adjustment of the gripping and releasing mechanism, such a machine can be arranged to print upon either or both sides of the paper or metal, in one or more colors. Figure 1 shows the machine arranged for printing in a single color; in figure 2 the cylinder a is of the same diameter as cylinder c and carries only one printing surface adapted to transfer an impression to each of the blankets on cylinder b, at each revolution of the machine. If a sheet is fed to cylinder c, at each revolution thereof, there will be two sheets printed at every revolution of the machine. The specification points out how the machine may be altered for printing in two colors consecutively on the same side of the sheets or on the same side in different colors at the same time. The third claim, which alone is involved, is as follows:

"3. A rotary printing machine comprising a continuously rotating first cylinder, a plurality of printing surfaces on its periphery, a continuously rotating second cylinder of the same diameter as the first cylinder, printing surfaces on the second cylinder equal in number to those on the first cylinder,

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a continuously rotating third cylinder of a diameter which is a submultiple of that on the second cylinder, a single printing surface on the said third cylinder, the three cylinders being adapted to be moved into and out of printing contact with each other and means carried by the third cylinder for retaining a sheet to be printed when fed thereto."

The only defense is noninfringement. Since the argument we have received letters from counsel for the complainants to the effect that a German patent corresponding to the patent in suit has been sustained. by the "highest legal court of Leipzig." We have also received a similar communication from counsel for defendant stating that the British patent, for the same combination has been declared "invalid and not infringed." As the question here is one of infringement, we do not think that these decisions, if both were before us, would be particularly helpful. We must construe the terms of the patent as they are understood in this country. The term "printing surfaces" means in the English language "surfaces from which you actually print."

The claim contains the following elements, in a rotary printing machine:

First, a continuously rotating first cylinder.

Second, a plurality of printing surfaces on its periphery.

Third, a continuously rotating second cylinder of the same diameter as the first cylinder.

Fourth, printing surfaces on the second cylinder equal in number to those on the first cylinder.

Fifth, a continuously rotating third cylinder of a diameter which is a submultiple of that of the second cylinder.

Sixth, a single printing surface on the said third cylinder.

Seventh, the three cylinders being adapted to be moved into and out of printing contact with each other.

Eighth, means carried by the third cylinder for retaining a sheet to be printed when fed thereto.

We have, then a claim containing eight elements. It is axiomatic that one who omits one of these does not infringe. It is contended by the defendant that the construction placed upon the claim by the court below fails to take into consideration the second, fourth and sixth of the elements as above stated, and that these elements are not found in the defendant's combination. We do not understand that this is seriously controverted by the complainants and are unable to adopt the explanation suggested by them as follows:

"Of course only one (segment) was used in the printing operation in a single color machine. That is pointed out in lines 3 to 9 of page 2 of their specification and is plainly indicated in plates 4 and 8 at the end of appellant's brief. But in drafting their claim they looked beyond the simplest embodiment of their invention, they saw the potential uses of these segments and they naturally, inadvertently if you will, referred to them both as printing surfaces, even when only one of them was used."

[1] The inventor can, of course, use any language he wishes in describing his invention and in stating his claims. Having done so, however, he must abide by the phraseology chosen. It is then too late to reconstruct his claims by adding to or subtracting from the language used. This rule may result in hardship in many cases but a contrary rule would work a far greater injustice and would enable the patentee

to hold as infringers those who have invested their capital in what they supposed. relying on the plain language of the patent, to be a perfectly legitimate business. When the language of the claims of a patent is clear and distinct, the patentee is bound by it. Keystone Bridge Co. v. Phoenix Iron Co., 93 U. S. 274, 24 L. Ed. 344; Merrill v. Yeomans, 94 U. S. 568, 24 L. Ed. 235.

[2, 3] We know of no authority where a defendant has been held as an infringer of a combination claim where he omits three of the elements of the combination. If the defendant omits one or more of the elements which make up the combination he no longer uses the combination. It is no answer to assert that the omitted elements are not essential and that the combination operates as well without as with them. The patentee was at liberty to describe his combination as he saw fit, having done so, the rights of the public are involved and the court cannot construe the claim precisely as if all reference to the said printing surfaces were omitted.

The decree is reversed with costs.

(223 Fed. 542)

GUARANTY TRUST CO. OF NEW YORK et al. v. BETTENDORF

AXLE CO.

(Circuit Court of Appeals, Eighth Circuit. May 3, 1915. Rehearing Denied July 24, 1915.)

PATENTS

No. 4297.

328-INVENTION-UNDERFRAME FOR RAILWAY CARS.

The Hansen patent, No. 650,792, for an improvement in underframes for railway cars, claim 1, is void for lack of invention in view of the prior art.

Appeal from the District Court of the United States for the Southern District of Iowa; Smith McPherson, Judge.

Suit in equity by the Guaranty Trust Company of New York and another against the Bettendorf Axle Company. Decree for defendant, and complainants appeal. Affirmed.

Alfred W. Kiddle, of New York City (Wilson, Grilk & Wilson, of Davenport, Iowa, and Wylie C. Margeson and William F. Bissing, both of New York City, on the brief), for appellants.

James R. Sheffield, of New York City (Ramsay Hoguet, of New York City, and Lane & Waterman, of Davenport, Iowa, on the brief), for appellees.

Before HOOK and CARLAND, Circuit Judges, and AMIDON. District Judge.

HOOK, Circuit Judge. This is an appeal from a decree dismissing, on final hearing, the suit of the Guaranty Trust Company and the Pressed Steel Car Company against the Bettendorf Axle Company, for infringement of claim 1 of patent, No. 650,792, issued May 29, 1900, to John M. Hansen for an improvement in underframes for railway

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cars.

The trial court held there was no infringement, and dismissed the bill.

A complete railroad car consists, generally speaking, of three parts; the trucks or running gear, the underframe which rests on the trucks, and the car box or body carried on the underframe. The claim in suit is as follows:

“A metallic underframe for cars, comprising bolsters, center sills extending from bolster to bolster and rising above the same to receive the floor nailingstrips and restrain or prevent sidewise movement of the car-body on the underframe, and draft-rigging beams or sills alined with said center sills in length only, substantially as described."

The words we have italicized were inserted in the claim as first presented to meet the ruling of the Patent Office that, unless the object of the center sills rising above the bolsters was specified, it would appear that the claim was met by patents 223,437, January 13, 1880, to Cushing, and 554,641, February 18, 1896, to Bagshawe. Originally the specifications stated that in practice the center sills stood about five inches above the upper flanges of the draft-rigging beams to provide for the nailing stringers and to increase the bearing surface for the floor, and that they effected those purposes without in any wise decreasing the capacity of the car body. When the claim was amended to meet the objection of the Patent Office the applicant also interpolated in his specifications the following:

"Such projection of these center sills affords an anchorage for the carbody which restrains or prevents its sidewise movement on the underframe, and, further, adds materially to the strength of the sills without occupying space that could be advantageously used otherwise."

The elements of the claim are: (1) Bolsters; (2) center sills extending from bolster to bolster and rising above the same; (3) draftrigging beams or sills aligned with the center sills in length only. Metallic underframes for cars, with transverse bolsters, longitudinal center sills and draft-rigging beams or extensions of the center sills to the ends of the underframes were all old. It was old to have detachable draft-rigging beams aligned with the center sills in length only, though it is difficult to see what particular purpose such limited alignment serves except a lessening of the weight. The only feature of the claim for which there can be any color of novelty is in raising the center sills above the bolsters into the floor stringer space. That was the view of the Patent Office in the citations of the Bagshawe and Cushing patents. But even this feature is anticipated by the patent to Westinghouse, No. 615,118, November 29, 1898, for an improvement in center sills. True, the sill there described runs from end to end of the car frame, and between the two metal beams composing it is a timber filling, but in respect of its rising above the bolster and the offices performed by that particular position it is like Hansen's. There is no difference in principle or function between placing wooden stringers along the outside of the metal beams comprising the Hansen center sill, as should be done to secure the anchorage claimed by him, and placing a wooden stringer between them as with Westinghouse. The car floor is nailed to the upper surface of the Hansen stringers. Westinghouse says his wooden stringer or filling "also provides a bed to

which the flooring of the car can be secured along its longitudinal center line." But aside from this, Westinghouse provides alternatively for dispensing with the stringer between the beams and using distance or spacing pieces to keep them apart. He also specifies a method of saddling his center sill beams upon the bolsters, and so, like Hansen's they may be said to rise from the bolster. In the proceedings of the Master Car Builders Association in 1897 the value of having draft-rigging sills detachable from the center sills was plainly expressed.

It is urged that anticipation is not shown by finding the elements of the claim separately in old structures. But in respect of the particular forms and arrangements of the center sills and the draft-rigging sills of the claim in suit there is no coaction between them toward a common, new, and useful result. In the sense of the patent law no new result is obtained by their assemblage in a single structure. Each performs its original work in the underframe separately from the other. The draft-rigging sills are aligned in length with the center sills, are detachable when damaged, and are reduced in dimensions to lessen weight, but such things have no co-operative bearing upon the functions claimed for the height of the center sills above the bolsters. We think the claim in suit is invalid.

Affirmed.

(223 Fed. 544)

FOUNTAIN ELECTRICAL FLOOR BOX CORPORATION V. STEEL CITY ELECTRIC CO.

(Circuit Court of Appeals, Second Circuit. April 13, 1915.)

No. 222.

PATENTS297-SUIT FOR INFRINGEMENT PRIOR ADJUDICATIONS.

A verdict of a jury, on which judgment was rendered, finding a patent valid and infringed, does not preclude a court of equity from exercising an independent judgment on those issues, on a motion for preliminary injunction in a subsequent suit between the same parties, but involving a different structure, and where the evidence may not be the same. [Ed. Note.-For other cases, see Patents, Cent. Dig. §§ 481-488; Dec. Dig. 297.

Operation and effect of decision in equitable suit for infringement, see note to Westinghouse Electric & Mfg. Co. v. Stanley Instrument Co., 68 C. C. A. 541.]

Appeal from the District Court of the United States for the Southern District of New York.

This cause comes here upon appeal from an order of the District Court, Southern District of New York, refusing a preliminary injunction to restrain alleged infringement of United States patent No. 738,688 issued September 8, 1903, to Herbert Krantz for a floor box.

Fred Francis Weiss, of New York City (S. E. Darby, of New York City, of counsel), for appellant.

J. H. Roney, of Pittsburgh, Pa. (Paul M. Goodrich, of New York City, of counsel), for appellee.

Before LACOMBE, COXE, and ROGERS, Circuit Judges.

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