joints. The layers are secured together by paste or cement. The whole forms a composite structure which is light, is sufficiently strong for the uses for which it is intended, can be economically constructed, and can be readily cut into shorter lengths if desired. The patentee states in the specification:

"While I regard the tube when made of paper as the better construction, because more economical, I do not limit myself to a paper tubing, as metal might be used without departing from my invention."

The claims are as follows:

“(1) In a tube, the combination of a cylindrical core, formed from a single thickness of material and having an abutting or slightly overlapped seam, said core being covered throughout by a spirally wound tape, substantially as described.

"(2) In a paper tube, the combination of a cylindrical core, formed from a single thickness of paper and having an abutting or overlapped seam, tapes of the same material spirally wound around said core and breaking joints, and an adhesive material to bind said core and tapes, substantially as described."

The prior state of the art in respect to tubes generally is referred to in the opinion of the court below by the following statement:

"The commonplace expedient for strengthening both rigid and pliable materials, by rolling them in tubular shape and confining them by means of an outer binding. had been developed in a variety of ways and applied to all manner of structures, from paper rolls to rubber hose and metal pipes."

Flexible tubes were old, made of rubber coated with canvass, in which the core was formed and the covering was applied similarly to that of the patent in suit. The prior patent to Stone discloses such a tube. The rigid tubes of the prior art which approach most closely to the tube of the patent are those shown and described in the earlier patents to Stow and to Tainter.

The patent to Stow, granted December 20, 1870, for "improvement in pipes and tubes for water and gas," shows a tube consisting of a sheet metal core with a wrapping of paper. The core is bent around a mandrel into the form of a tube, so that the edges of the metal abut or slightly overlap, and it is then wrapped spirally to any desired thickness with a strip of roofing paper, and the paper is then saturated with hot pitch.

The patent to Tainter, granted in 1887, after pointing out that "paper tubes are ordinarily made by rolling a flat sheet upon a mandrel until the edges meet or overlap, and securing them by glue or other adhesive substance," describes a tube in which the core is a strip of paper wound in a spiral of very low pitch, and the wrapping is a similar strip wound similarly. The edges of the strips abut throughout. The strips are wound in opposite directions, or in the same direction, so as to break joints with each other. The tube may be composed of two or more enwrapping strips wound about the core. The layers of paper are coated with paste to firmly unite them together.

The first claim of the patent in suit is not limited by its terms to a paper tube, and such a limitation cannot be imported into it, in view of the statement inserted in the specification in order to preclude. such an interpretation. Construed as it must be, it is completely

met and anticipated by the Stow patent. The tube of that patent is in all details of construction identical with that of the claim, when the core of the latter is made of metal, as the patent contemplates it may be. It is made of a single thickness of material, and has an abutting or slightly overlapping seam, and is enwrapped to any desired thickness over the core by spirally wound strips.

The second claim covers a paper tube in which the core is enwrapped by tape spirally wound and breaking joints; that is, enwrapped by two or more strips successively in such manner that the seams of one shall not be opposite the seams of the other. The tube of this claim is the tube of the Tainter patent, except as respects the core; and the core is the old form of paper tube referred to in the Tainter patent. Tainter preferred a core wound in a spiral of low pitch, but the patentee preferred the form which Tainter desired to dispense with. From another point of view, the patentee substituted. for Tainter's core one in form and details of construction like that of the Stow patent, but made of paper, instead of metal. He then enwrapped it, and applied adhesive material to bind the parts together, as Tainter had done. We are unable to discover any invention in this. If the patentee had been the first to discover the superior adaptability of paper for the kind of tube which he desired to construct, there might have been patentable novelty in his improvement. When, however, it appears that this had been disclosed by Tainter, and that it was old to construct cores in the identical form of his and enwrap them spirally with a strip or strips of paper as he did, and to enwrap them so that the strips would break joints, and to cement the layers together by adhesive materials so as to make the tube sufficiently rigid and strong, it is impossible to discover patentable novelty. If his tube is an improvement upon that of Tainter, it is one of that character which was plainly suggested by the prior art, and the improvement exhibits merely good judgment and the exercise of very simple mechanical adaptation.

The judge who heard the cause in the court below, apparently from a kindly desire to save the patent from extinction, contented himself with giving it a construction so narrow that it would not include the defendant's tube. The defendant's tube is constructed like the tube of the Tainter patent, except that the paper strips are wound in a spiral of greater pitch. It is apparent that the difference between the low pitch of the Tainter strips and the greater pitch of the defendant's is a mere matter of degree. In affirming the decree of the court below we are constrained to base our decision upon the invalidity of the patent.

The decree is affirmed, with costs.

LEVY v. HARRIS et al.

(Circuit Court, E. D. Pennsylvania. June 3, 1903.)

No. 45.

1. PATENTS-INFRINGEMENT-EQUIVALENTS.

A patentee is not to be denied the benefit of the doctrine of equivalents, to the extent necessary to protect his actual invention, although it may be a narrow one.

2. SAME-CLAIM FOR COMBINATION.

In a claim of a patent for a combination, all the elements which the patentee has specified must be regarded as material, and infringement cannot be found in a device in which one of such elements is omitted, unless an equivalent part is employed.

8. SAME OMISSION OF PARTS-QUILL-GRINDING MACHINE.

The Levy patent, No. 664,564, for a quill-grinding machine, claim 1, held valid, but not infringed by a machine which, while substantially the same in all other respects, omits the "means for adjusting the tension of the said spring," which is made an element of the claim, and employs no equivalent therefor.

In Equity. Suit for infringement of letters patent No. 664,564, for a quill-grinding machine, granted in December, 1900, to Salovitz Levy. On final hearing.

Horace Pettit, for complainant.
Joshua Pusey, for respondents.

J. B. MCPHERSON, District Judge. This bill seeks to restrain. the infringement of letters patent No. 664,564, which were granted to the complainant in December, 1900, for improvements in machinery for grinding the quills of feathers. The principal object of the invention is thus described in the specifications:

"My invention relates to certain improvements in machines for grinding the quills of feathers; and the principal object of the same is to provide a machine which is simple in construction, and which will rapidly grind the ribs of the quill of the feathers, and remove all pith from the same, leaving only the bone portion of stems, with the web or vanes running from each edge, thus rendering the said quill of the feathers soft and pliable, and capable of withstanding considerable bending without the liability of breaking."

This object is satisfactorily accomplished by the complainant's machine, and I have no doubt the device displays patentable invention. Indeed, the defense of lack of novelty was practically abandoned at the argument.

The first claim, which is the only one involved, is as follows:

"In a quill-grinding machine, the combination, with the supporting-frame, of a grinding-roll journaled in said frame, a presser-roll, C, bearings for said presser-roll suspended in the machine-frame so as to be capable of moving upwardly, means for adjusting said suspended bearings so as to regulate the distance between the presser-roll and the grinding-roll, a spring, H, adapted to bear at each end on the suspended journal-bearings, means for adjusting the tension of the said spring, and a pair of feeding and crushing rolls arranged in front of the grinding and presser rolls, located so as to hold the quills while the grinding-roll is operating to remove the pithy material from the bone of the quill, substantially as described."

12. See Patents, vol. 38, Cent. Dig. § 387.

The defendants' machine presents substantially every element thus enumerated, and each element operates to produce the same result as in the complainant's machine, unless there be a substantial difference. in the respective springs that bear upon the suspended journal bearings. The specifications describe a bowed or plate spring, and this is also shown in figure 1 of the drawings.

"The spring, H, is bowed, as illustrated, and bears at each end upon the journal-boxes, d, of the presser-roll, C, for the purpose of keeping the said presser-roll in constant contact with the grinding-roll, or, in other words, for the purpose of keeping the quill, during the operation of the machine, in close contact with the grinding-roll, while at the same time allowing the said presser-roll to yield upwardly. Each end of the spring, H, is provided with an elongated opening, through which the bolts, e, pass. The tension of the spring, H, may be increased or diminished by adjusting the screw, h, carried by the bar, G."

Instead of a spring of this description, the defendants use a spiral spring at each end of the presser-roll, and this, as I have already stated, is the only difference between the two machines. In my opinion, it is also an immaterial difference, for the spiral springs perform the same office and reach the same results in the same way as does the bowed spring of the complainant, and are evidently intended as a mere evasion of the patent. I see no difference in principle between the case now under consideration and Lepper v. Randall, 113 Fed. 627, 51 C. C. A. 337, in which the Circuit Court of Appeals for this circuit decided that a wrapper for boiling a ham, which was described as formed of a mat, and lacing devices on the back thereof, was infringed by a wrapper in all respects identical with the patented article, except that the fastenings were straps and buckles, instead of the lacing cord used upon the patented article. It may be conceded, for the purposes of this case, that the complainant's patent is to be narrowly construed; but I may say here, as the Court of Appeals said in the case referred to, that "in no case is a patentee to be denied protection commensurate with the scope of his actual and distinctly described and claimed invention, by wholly excluding him from the benefit of the doctrine of equivalents." Applying the doctrine here as it was applied there, since it is obvious that the departure made by the defendants from the patent in suit is merely formal, and of such a character as to suggest that it is a studied evasion of the claim in suit, I have no difficulty in reaching the conclusion that the complainant is entitled to the usual decree for an injunction and an accounting.

Upon Reargument.

(August 19, 1903.)

When I came to decide this case, several weeks ago, my recollection of the oral argument was that the particular point now urged was not insisted upon, and that the defendants relied almost wholly upon the substantial difference between their own coiled spring and the plate spring of the patent. Accordingly, I paid little attention to a position that I supposed to be abandoned, and for that reason the opinion does not refer to it. I am ready to believe, however, that the defendants' counsel remembers more accurately, and that my own rec

ollection concerning the oral argument was mistaken. At all events, there is no doubt that the printed record and the defendants' original brief develop with sufficient distinctness the point that was previously laid aside, but is now pressed upon the court for special consideration. The argument is this: The patent claims as one of the elements in the combination "means for adjusting the tension of the said spring.' The specification shows that the particular means described by the inventor was the screw, h. "The tension of the spring, H, may be increased or diminished by adjusting the screw, h, carried by the bar, G." Neither this screw, nor any equivalent device, is to be found in the defendants' machine; but the tension of the springs is adjusted therein by the same means that is used for regulating the distance between the two rollers, namely, by the bolts, e. The defendants have therefore omitted entirely. one element of the plaintiff's combination, and accordingly cannot be held to infringe. I think this position is sound, and is supported by the following authorities: Water Meter Co. v. Desper, 101 U. S. 332, 25 L. Ed. 1024; Wright v. Yuengling, 155 U. S. 47, 15 Sup. Ct. 1, 39 L. Ed. 64; Pittsburg Meter Co. v. Supply Co. (C. C. A., 3d Circuit) 109 Fed. 644, 48 C. C. A. 580. As was said in the last-cited case:

"Nothing in the law of patents is better settled than the rule that a claim for a combination is not infringed if any one of the described or specified elements is omitted, without the substitution of any equivalent thereof."

Neither is the argument effectively answered, as the plaintiff seems to suppose, by asserting (what is, no doubt, true) that the screw, h, or any equivalent means for adjusting the tension of the spring, performs a comparatively unimportant function, and might have been left out of the claim without seriously impairing the efficiency of the patent. It is probably the fact that, after the machine has been properly. set, it may not be necessary to touch the adjusting screw, h, for months; and it may also be the fact that the tension can be adjusted nearly, if not quite, as readily by proper movements of the bolts, e. Nevertheless it cannot be denied that the patentee chose to make "means for adjusting the tension of the said spring" a separate element of his combination, and under the decisions he cannot now be heard to disclaim its importance. As was said in Fay v. Cordesman, 109 U. S., at the foot of page 420, 3 Sup. Ct., at page 244, 27 L. Ed. 979:

"The claims of the patent sued on in this case are claims for combinations. In such a claim, if the patentee specifies any element as entering into the combination, either directly by the language of the claim, or by such a reference to the descriptive part of the specification as carries such element into the claim, he makes such element material to the combination, and the court cannot declare it to be immaterial. It is his province to make his own claim, and his privilege to restrict it. If it be a claim to a combination, and be restricted to specified elements, all must be regarded as material, leaving open only the question whether an omitted part is supplied by an equivalent device or instrumentality. Water Meter Co. v. Desper, 101 U. S. 332 [25 L. Ed. 1024]; Gage v. Herring, 107 U. S. 640 [2 Sup. Ct. 819, 27 L. Ed. 601]." Here a part has been omitted altogether, and its place is not supplied by any other device or instrumentality.

I have reached this conclusion with some reluctance, for I have not