examination discloses that he was compelled over and over again to amend and narrow his claims in order to avoid the prior art, and prevent the rejection of his application. Thus the file-wrapper shows that Williams first claimed for calks with the ends formed with bevels, and again with rounded lower ends. These were rejected; the examiner saying:

"There is no invention whatever in rounding off or beveling the cutting edges as desired, this being a matter of mere choice in' shapes, and inevitably resulting from the ordinary wear of the shoc for a few hours or days."

After such rejection the claims were amended, so that they respectively read having "beveled lower ends," "rounded lower ends," and "beveled and rounded lower ends." These amended claims were in turn rejected for substantially the same reasons as those given for the prior rejection. The claims were then consolidated and amended so as to read with "rounded beveled outwardly tapering knife-edge lower ends, providing a conoidal tread"; the applicant adding at the foot of his amendment the following:

"The single claim now presented is restricted to a construction not found in the references, and which comprises a conoidal tread of peculiar construction."

This amendment was likewise rejected, the examiner stating that: "The arching recesses, the beveling and the knife-edges are fully disclosed in the art. [See O'Neill.] The conoidal tread has been commented on previously. The slight difference shown is a matter of degree rather than of invention."

The claim was then put in the form in which it appears in the patent, and as thus framed was at first rejected, but was subsequently allowed and the patent issued.

This brief synopsis of the file-wrapper, taken in connection with what has been said in relation to the prior art, demonstrates that the claim if upheld, must be narrowly and strictly construed. The waivers and disclaimers of the file-wrapper were acquiesced in by the patentee in order to obtain his patent, and he is estopped from denying their force and effect.

"Where an applicant for a patent to cover a new combination is compelled by the rejection of his application by the Patent Office to narrow his claim by the introduction of a new element, he cannot after the issue of the patent broaden his claim by dropping the element which he was compelled to include in order to secure his patent." Shepard v. Carrigan, 116 U. S. 593, 597, 6 Sup. Ct. 493, 29 L. Ed. 723. "It is well settled that the claim as allowed must be read and interpreted with reference to the rejected claim and to the prior state of the art, and cannot be so construed as to cover either what was rejected by the patent office or disclosed by prior devices." Hubbell v. United States, 179 U. S. 77, 80, 21 Sup. Ct. 24, 45 L. Ed. 95.

When the claim is construed as we have indicated that it must be, it does not appear open to question that the defendants' device does not infringe the complainant's. Its patent is distinguished from the prior art, if at all, solely by the construction appearing at the end or tread of the calk. The patentee claimed as to this part of his de

vice two rounded cutting or knife-edged surfaces, such as are plainly. indicated in figures 1 and 4 of the drawings accompanying the patent and here reproduced.

They are not knife-edged, they are not rounded, they are not outwardly tapering, they are not vertical, and are rounded rather than beveled, but, if beveled, they are only slightly so, and at the lower ends. The above differences are disclosed by an inspection of the diagrams and exhibits in the case. If, in addition to such inspection, an attempt were made to apply the language of the claim of the patent in suit to the defendants' device, it would be unsuccessful, except in two or three particulars. The screw-shank attachment, the square base, and the arching recesses between the blades beneath the square base of the two devices might be sufficiently described in the same terms, but in all other respects language which would adequately and appropriately define the one would be entirely inadequate and inappropriate to define the other. In suggesting, as we have just

done, that perhaps three of the elements of the claim of complainant's patent can be found in the defendants' alleged infringing device, we have allowed much more than is granted by the defendants' expert, who says:

"Of the seven elements of this claim, I can find, therefore, but one which is unquestionably present, namely, the screw-shank. The second and third, namely, the square base and radial blades, have at the best but an imperfet representation. The fourth, sixth. and seventh elements are certainly absent, even on the most liberal construction."

Then, after expressing the opinion that the complainant's patent discloses no patentable novelty, he adds:

"It is obvious, however, that with three of the seven elements of the combination entirely absent from the exhibit [defendants'] under consideration, and with three of the remaining but imperfectly represented, it is impossible to consider the exhibit as an embodiment of the combination of elements recited in the claim of the patent in suit."

But, as was said by the court below:

"The significant point of difference to that where the claim [complainant's] calls for blades with strictly vertical sides developing into completely rounded ends, the defendants, after narrowing down their calks by tapering the sides. cut off the ends of the blades so as to form a sort of truncated pyramid or cone; the cruciform radial effect being at the same time retained, and an effective gripping surface provided by a notching or pointing of the ends. Form here is essential, and equivalency of function counts for little in view of the prior art, as well as the express terms of the claim."

If the complainant held a basic or initial patent, a different view might perhaps be taken of the case, but confined as its patent is in its scope, and limited as it must be to the precise wording of its claim, we do not hesitate to say that the defendants' device is not an infringement.

The decree below, dismissing the bill, with costs, is affirmed.

CORTELYOU et al. v. CHARLES E. JOHNSON & CO.

(Circuit Court of Appeals, Second Circuit. March 16, 1906.)

No. 139.

1. PATENTS-CONTRIBUTORY INFRINGEMENT-LIMITATION OF DOCTRINE.

The doctrine of contributory infringement should be limited to cases where the articles sold are either parts of a patented combination or device, or are produced for the sole purpose of being so used as to constitute infringement, and should not be extended to apply to ordinary and staple articles of commerce, used in connection with a patented machine, because the patentee sells or licenses such machine upon the condition that he alone shall furnish such articles. Townsend, Circuit Judge, dissenting.

[Ed. Note. For cases in point, see vol. 38, Cent. Dig. Patents, §§ 400402.

Contributory infringement of patents, see note to Edison Electric L. Co. v. Peninsular Light, P. & H. Co., 43 C. C. A. 485.]

2. SAME-SUFFICIENCY OF PROOF.

Evidence considered, and held insufficient to sustain the burden of proof resting on a complainant to show that defendant had knowledge of restrictions contained in the licenses granted by complainant to users of its patented machines, so as to charge defendant with liability for contributory infringement in selling an article to such users to be used in violation of such restrictions.

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

This is an appeal from a decree of the Circuit Court of the United States for the Southern District of New York, awarding an injunction restraining the defendant from selling ink to the licensees of a machine known as the "rotary neostyle." This machine is made under letters patent No. 584,787, granted June 22, 1897, to Henry W. Lowe, and is sold with the following notice attached:

"License Agreement.

"This machine is sold by the Neostyle Company with the license restriction that it can be used only with stencil paper, ink, and other supplies made by the Neostyle Company, New York City."

The defendant is not charged with direct infringement of the Lowe patent, but is charged with contributory infringement, in violation of the license agreement.

The opinion of the Circuit Court is reported in 138 Fed. 110.

Francis T. Chambers, for appellant.

Samuel Owen Edmunds and Edmund Wetmore, for appellees. Before COXE and TOWNSEND, Circuit Judges, and HOLT, District Judge.

COXE, Circuit Judge. In the case of Cortelyou v. Lowe, 111 Fed. 1005, 49 C. C. A. 671, this court fully accepted and approved the decision in the Heaton Peninsular Button-Fastener Case (77 Fed. 288, 25 C. C. A. 267, 35 L. R. A. 728), and by so doing made it, in effect, the law of the Second Circuit. The opinion of Judge Lurton in the Peninsular Case covers the entire field of controversy and presents the

arguments, and all the arguments, in support of the complainants' contention. It is a clear, comprehensive and convincing exposition of the law as applicable to the facts as stated in the bill and admitted by the demurrer, and, upon similar facts, is as controlling upon us as if it were originally promulgated by this court. The fact that the court is 10w differently constituted is, of course, quite immaterial. If entitled to be considered at all upon a question of general significance, like that under consideration, it should operate as an additional reason for adhering to existing conditions. It is the court, not the individuals composing it, that declares the law; and it would be unseemly, to say the least, to review propositions previously established, even though as an original question we might have been led to a different conclusion. Cimiotti Co. v. Nearseal Co., 123 Fed. 479, 59 C. C. A. 58.

The Lowe Case arose upon the same general contention which is made in the case at bar, namely, the alleged unlawful sale of ink to the licensees of the Neostyle machine. The injunction order, which was there affirmed, enjoined the making, selling or offering for sale of any duplicating ink adapted for use on restricted rotary neostyles with intent that such ink shall be so used. It is true that an estoppel was alleged in the bill by reason of the fact that the defendant, Harry W. Lowe, is the inventor and had assigned to the complainant the patent not only but the secrets and formulas for the manufacture of the ink and had agreed not to engage in the manufacture and sale of said ink. Harry W. Lowe did not defend the suit and it is very doubtful whether the estoppel alleged could be urged against John C. Lowe. Granting that it could be, it is apparent that it was not relied upon either in the Circuit Court or in this court, where the affirmance rested solely upon the concurrence of the court in the doctrine of the Peninsular Case.

No two cases are identical upon the facts. Differences can always be pointed out, but the question for the court to determine is are the differences of such a character as to induce the court to believe that if the facts in the second case had been present in the first case the same result would have been reached; in other words, are the cases the same in principle? The Peninsular and Lowe Cases have been generally followed in this and other circuits, several of the causes being unreported, but see Cortelyou v. Carter (C. C.) 118 Fed. 1022; Brodrick Co. v. Mayhew (C. C.) 131 Fed. 92, affirmed (C. C. A.) 137 Fed. 596. We therefore feel ourselves controlled by the Peninsular and Lowe Cases upon every point where the facts cannot be fairly distinguished, but, on the other hand, for reasons hereafter stated, we are of the opinion that the doctrine of those cases should not be extended to cover cases where the record shows a substantial distinction.

The majority of the court, consisting of Judge HOLT and the writer, is of the opinion that the decree at bar pushes the doctrine of contributory infringement to its extreme limits if, indeed, it does not transgress those limits. The doctrine originated in a desire to secure to a patentee complete protection in all the rights granted him by the patent. but it was confined to those rights; it went no farther. One who sold an element of a patented combination, which could not be used except in an infringing combination or device, was not permitted to reap the