Mr. JUSTICE SANFORD delivered the opinion of the Court.
This is a suit in equity brought by the I.T.S. Rubber Company against the Essex Rubber Company in the Federal District Court for Massachusetts, for the infringement of United States patent No. 14,049, on resilient heels, reissued to the I.T.S. Company January 11, 1916, as assignee, on an original patent to John G. Tufford, issued in 1914. After final hearing on the pleadings and proof
The Essex Company, which manufactures and sells the heels alleged to infringe, expressly admitted the validity of the reissued patent. And the only questions are: First, whether it is estopped to deny infringement; second, if not, whether infringement is shown.
1. In the courts below the I.T.S. Company relied on estoppels by reason of adjudications in various prior suits brought by it in the Sixth Circuit against dealers in the Essex Company's heels. In the brief for the I.T.S. Company in this Court it is asserted, in general terms, that the action of the Essex Company "in suits brought against its jobbers in the Sixth Circuit estop it from denying infringement
That was a suit brought by the I.T.S. Company against one Wendt, a dealer in Essex heels of a type involved in the present suit, in which infringement of the patent was adjudged. The I.T.S. Company contends that the Essex Company, although not a party of record, took entire control of the defense, participated in the suit until the final decree, paid all the expenses, and is now estopped from denying infringement as therein adjudged.
The material facts found by the District Court are: The Essex Company, after being notified by Wendt of the commencement of the suit, notified the counsel of the I.T.S. Company that it did not wish to, and would not, appear. Wendt thereafter voluntarily allowed the suit to go by default, and an order was entered taking the bill pro confesso. This was followed by an interlocutory decree pro confesso adjudging the infringement of the patent and Wendt's liability for damages and profits, and ordering an accounting. Down to the entry of this decree the Essex Company exercised no control over the management and conduct of the suit. Thereafter the Essex Company, having previously written Wendt that it would reimburse
On the appeal the Circuit Court of Appeals stated that the record showed clearly that the Essex Company refused to become a party to the suit or assume any control over it, and took no part in the conduct or control of the suit, "but only in the adjustment of the damages" after the pro confesso decree had been entered; and approved both the findings and ruling of the District Court.
There is nothing which, under the well settled rule, Del Pozo v. Wilson Cypress Co., 269 U.S. 82, 89, justifies us in disturbing the concurrent findings of fact of the two courts below; and we concur in their ruling that on the facts thus found the Essex Company is not estopped from contesting the question of infringement.
2. The question of infringement as here presented turns upon matters of law arising out of a file wrapper
The patent covers the part of a shoe commonly called a rubber heel, or cushion heel lift.
The Tufford heel is of the concavo-convex type. We insert here reproductions of Figure 2 of the drawings of the reissued patent, which is described as "a front to rear sectional view through the lift in position disposed against the under side of a shoe heel and immediately prior to application thereto," and shows one-half of the lift on a
The reissued patent contains ten claims. The first four, which repeat the claims of the original patent, relate merely to the form and position of the washers in a cushion heel lift, and to grooves, channels and suction areas in its concave surface. They are not here involved. The others are additional claims relating to shape defining improvements. The bill charges infringement of the new claims 5 to 9, inclusive. Claim 5 reads:
"A heel lift of substantially non-metallic resilient material having its body portion of concavo-convex form on every line of cross section, the concave upper face lying entirely below a plane passing through the rear upper edge and the breast
The last clause in this claim, which we have italicised — about which the present controversy turns — is contained in all the other claims in suit in identical or precisely equivalent words, except that in claim 8 the word "rear" does not appear before the words "upper edge."
The file wrapper shows that on the application for the reissued patent it contained as first presented no reference to the position of the upper rear edge and breast edges of the lift in relation to the other portions of its upper surface. Several new claims were submitted some of which, at least,
After an interview with the examiner in which the applicant exhibited samples of his own lift and the Nerger lift, he then amended the specification by inserting the
In presenting these amendments counsel for the applicant urged that Nerger's lift was not concavo-convex on every line of cross section since the deepest portion of the concavity in its upper surface was at the breast; and that its concave upper surface did not lie entirely below a plane tangent to the rear edge and breast corners. In replying, the examiner, after calling attention to the fact that on the application for the original patent the applicant had presented claims for a lift in which all the edges of the attaching face occupied the same plane — which were rejected — stated that Figure 2 of the drawings indicated the same construction and did not show a lift whose concave upper face lay entirely below a plane tangent to the rear upper edge and breast corners, as set forth in the amendment to the specification, since a point midway between the breast corners was in contact with the upper heel, and "a plane tangent to the rear edge and the breast corners would also pass through the entire front [breast] edge"; that the applicant's sample lift did "not correspond to the drawing, since all the points
To meet this rejection the applicant further amended the specification by substituting for the prior amendment the statement: "By references to Figs. 2 and 4 of the drawings, it will be seen that the concave upper face of the lift lies entirely below a plane passing through the rear upper edge and breast corners of the lift . . . In other words, owing to the curvature of the concave attaching face of the lift, the rear upper edge and breast corners of said concave attaching face are disposed in a plane above the upper side edges and the breast edges of the lift." He also amended each of the claims by substituting the words "passing through" for "tangent to" — corresponding to the change that had been made in the specification — and added claim 10, reading: "A heel lift of substantially resilient material comprising a body portion, the attaching face of which is concave and the tread face convex on every line of cross section, the rear upper edge and breast corners of the concave attaching face of the lift being disposed in a plane above the upper side and breast edges of said concave attaching face." In presenting these amendments counsel for the applicant stated that the matter quoted by the examiner from the file wrapper of the original patent merely showed, if anything, that error had crept into the prosecution of the original application, which should be corrected; that as Figure 4 of the drawings showed "that the breast lift was cut away on a curved line, the attaching face of the lift at the breast thereof must necessarily lie in a plane below
It thus appears that the applicant acquiesced in the successive rejections by the examiner on reference to Nerger of claims for a lift having its attaching face concave on every line of cross section and for a lift of resilient material of a concavo-convex form on every line of cross section, and that to meet this reference he amended the specification so as to state not only that the concave upper surface lies entirely below a plane passing through the rear upper edge and breast corners, but that "in other words," owing to the curvature of the concave attaching face the rear upper edge and breast corners are disposed in a plane above the upper side and breast edges; amended the claims to describe a lift whose concave upper surface lies entirely below a plane passing through the rear upper edge and breast corners; and finally changed his drawing so as to correspond precisely with these amendments — and that then, and not until then, were the claims allowed.
We think that by this proceeding the claims were limited to the specific form of a "three-point-contact" lift, that is, to one in which, owing to the vertical curve of the upper side and breast edges, these edges, as well
There is no ground for differentiating claims 5 to 9 from claim 10 in this respect in order to give effect to claim 10. The Circuit Court of Appeals for the Sixth Circuit expressly declined to rest its conclusion on this ground (p. 948). And as to this it suffices to say, that, as was pointed out by the District Judge, claims 5 to 9 are sufficiently differentiated in other respects by the presence of subsidiary elements relating to the character of the material, nail openings, etc., that do not appear in claim 10.
We find, further, no significance in the substitution of the words "passing through" for "tangent to" in the specification and claims. These phrases were used interchangeably by the examiner. The applicant pointed out no distinction in their meaning, and, so far as appears, merely adopted "passing through" as the preferred form of equivalent expressions. And they have no difference in meaning as used in the specification and claims; the one phrase as well as the other aptly defining the plane passing through the upper rear edge and breast corners.
We also find that the fact that the word "rear" does not appear before the words "upper edge" in claim 8 is not a ground upon which it may be differentiated from the others. It appears that this omission was inadvertent and unnoticed. The applicant called no attention to the omission and did not differentiate this claim from the others in his effort to avoid the reference to Nerger's patent. The examiner stated that "each of the claims 5, 6, 7, 8 and 9" specified a plane tangent to "the rear upper edge and the breast corners." And we cannot believe that if the applicant's counsel intended to differentiate this claim from the others by the omission of the word "rear," he would have failed to disclose the distinction
Furthermore, if by the omission of the word "rear" this claim should otherwise be regarded as calling for a lift whose upper face lies entirely below a plane passing through the entire "upper edge" and the breast corners, thereby making it a claim for a lift having all its upper edges in the same plane, such a construction would not only conflict with the express disclaimer of counsel for the applicant, but, as held by the Circuit Court of Appeals, render the claim invalid as being for a different invention from that described in the specification and drawings of the original patent. Mahn v. Harwood, 112 U.S. 354,
Having thus reached the conclusion that all of the claims in suit are limited to the three-point-contact form of lift, it is unnecessary to determine here whether in calling for a lift of concavo-convex form on every line of cross section, any of them are also limited to a "saucer-shaped," as distinguished from a "scoop-shaped," lift, that is, to one having in its upper surface a low spot centrally disposed which is below the lowest point in the breast edge, as has been held by the Circuit Courts of Appeals for the Sixth and Seventh Circuits.
It is well settled that 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. If dissatisfied with the rejection he should pursue his remedy by appeal; and where, in order to get his patent, he accepts one with a narrower claim, he is bound by it. Shepard v. Carrigan, supra, 597; Hubbell v. United States, 179 U.S. 77, 83. Whether the examiner was right or wrong in rejecting the original claim, the court is not to inquire. Hubbell v. United States, supra, 83. The applicant having limited his claim by amendment and accepted a patent, brings himself within the rules
It results that as the claims in suit were limited by the proceedings in the Patent Office to the specific form of a three-point-contact lift, they are not infringed by the heels made by the Essex Company, which are not three-point-contact lifts, their upper side edges having no vertical curve and lying entirely in the same horizontal plane as the rear edge and breast corners. Nor can they be held to be infringements even if we assume that, as asserted, they function in the same manner as three-point-contact lifts, and would infringe, as was conceded in the District Court, if the claims were not restricted by the limiting clause and were entitled to a construction warranting a wide range of equivalents. By the limitation of the claims in the Patent Office proceeding to the three-point-contact lift the patentee made this precise form a
The decree is accordingly