extended, and by means of the nuts on the side bars beneath the crossbars under the putlogs, the putlogs were securely fastened in their places so that the machines could not be knocked down without removing, or set up without fastening together putlogs, crossbars, and side bars in the manner which has been described. The fact that the ends of the putlogs were perforated for the side bars with two holes at right angles to the length of the putlogs shows that they were made and fitted for use in a hoisting machine suspended edgewise and not broadside to the building, and that the putlogs were made and fitted to be securely fastened, when in use, to the side bars of the frames, and not to be placed on the lower bars or parts of the frames without any fastening. And as, even in the case of a hoisting machine consisting of a U-shaped frame and a drum and means for its operation rotatably supported upon the vertical sides thereof, the freedom of the putlog, when in use, from any fastening, and the intended use of the machine broadside to the wall, were deemed essential to infringement, the evidence in this case fails to convince that Whitney ever had any intent or purpose to make or sell the Little Wonders to aid any one in perpetrating such infringement. The testimony of one or two witnesses that the bottom bars of the Little Wonders were capable of supporting putlogs that were not fastened thereto fails to shake this conclusion, in the face of the fact that all the evidence is that all the lower bars and all the putlogs sufficiently observed by the witnesses to enable them to state whether or not they were fitted to be fastened or were fastened, shows that the putlogs were perforated for this purpose, and that those in use were securely fastened by means of the holes in them, the bottom bars of the frame, and the nuts beneath them to the side bars of the frames.

[2] The question in contributory infringement is whether or not the defendant made or sold his machine or improvement with the intent or purpose of aiding another in the unlawful making, selling, or using of a third person's patented invention. The burden is on the plaintiff to establish the affirmative of this issue. The facts that the plaintiff's machine or device is capable of use in such a way as to aid in the infringement of the patented invention, that it has been used in that way, that the defendant knew it had been so used and still continued to manufacture and sell it, and that he fitted it for such use, are competent evidence of such an intention or purpose. But the mere fact that it is capable of such use, when it is at the same time capable and fitted for a rightful and innocent use, is not sufficient to establish such an intention or purpose where, as in this case, the evidence is that the machine and its parts were expressly fitted for use in a rightful way without aiding in any such infringement, and there is no evidence that the defendant ever knew of the use of the machine, or that it ever was sold or used in such a way as to aid others in infringing the patented invention.

2. There are, however, other reasons why Whitney's manufacture and sale of the Little Wonders failed to constitute an infringement of the patented combinations of Henderson. Henderson's patent is not for a new machine or device. It is for a new combination of old me

chanical elements. The first claim is for a combination of (1) crossbeams and floor pieces of a scaffold, with (2) a hoisting device consisting of a continuous U-shaped metal bar extending around the under side of and upward from the associated beam, and a hoisting drum. rotably supported by the side members of such bar. The third claim is for a combination of (1) a plurality of U-shaped bars arranged in pairs, (2) a crossbeam laid in and extending between each pair of U-shaped bars, (3) a floor laid upon said crossbars with (4) a drum rotably supported between. the upwardly extending side members of cach of the U-shaped bars, and (5) means for controlling the rotation of the drum.

[3] The absence of a single material mechanical element of a patented combination from the machine or combination that is alleged to infringe it is fatal to the claim of infringement. Two of the essential elements of the combinations of the first and third claims of Henderson's patent, the U-shaped bar and the drum rotatably supported between the side members of the frame, are absent from the Little Wonder, although they were both present in Whitney's first machine. In opposition to this view of this case, counsel argue that the rectangular frame of the Little Wonder built up out of two side bars and two end bars fastened together is the mechanical equivalent of the U-shaped bar of Henderson, and that the clutch mechanism which has been described is the mechanical equivalent of the drum and the means of operating it rotatably supported on the side members of the frame of Henderson. But the breadth of the signification of the term "mechanical equivalent" is proportioned in each case to the extent and character of the advance or invention evidenced by the patent under consideration. One who invents and secures a patent for a machine or combination which first performs a useful function is thereby protected against all machines and combinations which perform the same function by equivalent mechanical devices, but one who merely makes and secures a patent for a slight improvement on an old device or combination which performs the same function before as after the improvement is protected against those only who use the very device or improvement he describes, or mere colorable evasions thereof. In other words, the term "mechanical equivalent," when applied to the interpretation of a pioneer patent, has a broad and generous signification, while its meaning is very narrow and limited when it conditions the construction of a patent for a slight improvement. National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co., 106 Fed. 693, 710, 45 C. C. A. 544, 561; Yancey v. Enright, 230 Fed. 641, 644, 145 C. C. A. 51; Mallon v. Wm. C. Gregg & Co., 137 Fed. 68, 78, 69 C. C. A. 48, 58; James Heckin Co. v. Baker, 138 Fed. 63, 65-66, 70 C. C. A. 559, 561-562; International Mfg. Co. v. H. F. Brammer Mfg. Co., 138 Fed. 396, 398, 399, 71 C. C. A. 633, 635-636; Simmons Mfg. Co. v. Southern Spring Bed Co., 140 Fed. 606, 607, 72 C. C. A. 174, 175; Columbia Wire Co. v. Kokomo Steel & Wire Co., 143 Fed. 116, 121, 74 C. C. A. 310, 315; Dunlap v. Willbrandt Surgical Mfg. Co., 151 Fed. 223, 227, 80 C. C. A. 575, 579; Maunula v. Sunell (C. C.) 155 Fed. 535, 541; Union Match Co. v. Diamond Match Co., 162 Fed. 148, 155, 89 C. C. A. 172, 179. The patent to Henderson falls far

within the second class. His was not a pioneer invention. His improvement was too narrow and limited to entitle it to protection by such a breadth of signification of the term "mechanical equivalent" as would make the rectangular frame built up out of four separate bars and the complicated clutch mechanism of the Little Wonder the mechanical equivalent of Henderson's U-shaped bar, the drum and the means of operating it rotatably supported on the side members of his bar. The application of a meaning of this term much more restricted would render the patent to Henderson void, for his hoisting machine with the U-shaped bar and the drum rotatably supported on its side bars as described in Murray's patent is much nearer to the mechanical equivalent of Murray's device than the Little Wonder with its rectangular frame built out of four separate bars and its complicated clutch mechanism is to the mechanical equivalent of Henderson's hoisting machine.

[4] 3. Again, the statute requires the inventor to "particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery." Revised Stat. § 4888; 8 U. S. Comp. Stat. 1916, § 9432, p. 10214. When under this statute the inventor has done this, he has thereby disclaimed and dedicated to the public all other improvements and combinations apparent from his specification and claims that are not evasions of the combination or device he claims as his own, and has estopped himself as against those who subsequently use them from claiming or securing any monopoly thereof.

"The purpose of a claim in a patent is to notify the public of the extent of the monopoly secured to the inventor, and, while it is notice of his exclusive privileges, it is no less a notice, and a legal notice, upon which every one has a right to rely, that he disclaims, and dedicates to the public, any combination or improvement, not a mere evasion of his own, which he has not there pointed out and distinctly claimed as his discovery or invention. Every one has the right to use every machine, combination, device, and improvement not claimed by the patentee, without molestation from him." Adanis Electric R. Co. v. Lindell R. Co., 77 Fed. 432, 451, 23 C. C. A. 223, 242; Keystone Bridge Co. v. Phoenix Iron Co., 95 U. S. 274, 278, 24 L. Ed. 344; Miller v. Brass Co., 101 U. S. 350, 352,,26 L. Ed. 783; McClain v. Ortmayer, 141 U. S. 419, 424, 12 Sup. Ct. 76, 35 L. Ed. 800; Dobson v. Cubley, 149 U. S. 117, 121, 13 Sup. Ct. 796, 37 L. Ed. 671; Stirrat v. Mfg. Co., 61 Fed. 980, 984, 10 C. C. A. 216, 220; McBride v. Kingman, 97 Fed. 217, 223, 38 C. C. A. 123, 129; Expanded Metal Co. v. Board of Education, 111 Fed. 395, 397, 398, 49 C. C. A. 406, 408; O. H. Jewell Filter Co. v. Jackson, 140 Fed. 340, 347, 72 C. C. A. 304, 311.

In each of Claims 1 and 3 of his patent, Henderson specifically claimed a combination with other mechanical elements of the crossbeams or putlogs of a scaffold and one or more hoisting devices, and expressly specified that each hoisting device he claimed consisted of a U-shaped metal bar and a hoisting drum rotatably supported by the side members of that bar. He might have described and claimed a hoisting device consisting of the U-shaped bar and the drum rotatably supported on the side members thereof and a rectangular frame built up out of four metal rods and the complicated clutch mechanism made by Whitney. He did not do so. He confined his claim to a hoisting device consisting of his U-shaped frame bearing a drum ro

tatably supported on the side members thereof and thereby disclaimed, dedicated to the public, and estopped himself from successfully asserting a claim of a monopoly of the manufacture, sale, or use in his combinations of a hoisting machine which has neither U-shaped bar nor drum supported by the side members thereof, but consists of the rectangular frame and clutch mechanism of the Little Wonder.

For the reasons which have now been sufficiently stated, the evidence in this case does not, in the opinion of the court, sustain the conclusion that the manufacture and sale of the Little Wonder, whether used edgewise or broadside to the wall of the building, constitutes contributory infringement of either of the combinations described in Claims 1 and 3 of the patent to Henderson. The interlocutory decree granting the injunction against the manufacture and sale of that machine by Mr. Whitney must therefore be reversed, and it is so ordered.

GENERAL ELECTRIC CO. v. ELECTRIC CONTROLLER & MFG. CO.* (Circuit Court of Appeals, Sixth Circuit. May 18, 1917.)

No. 2884.

1. PATENTS 328-VALIDITY AND INFRINGEMENT-CONTROLLER FOR ELECTRIC MOTORS.

The Carichoff patent, No. 763,658, for a controller for electric motors, claim 7, was not anticipated, and discloses invention, covering a meritorious improvement; also held infringed.

2. PATENTS

230-INFRINGEMENT-“EQUIVALENCY."

"Equivalency" in the patent law is not necessarily mutual, and whether the device of a defendant is the equivalent of that of complainant's patent depends upon the scope of the claim in suit.

[Ed. Note. For other cases, see Patents, Cent. Dig. § 367.

For other definitions, see Words and Phrases, First and Second Series, Equivalent.]

3. PATENTS 112(4)—INFRINGEMENT-PRESUMPTION FROM ISSUE OF LATER PATENT.

The issue of a later patent raises no presumption of noninfringement of an earlier, and usually does not even tend to establish that conclusion. [Ed. Note. For other cases, see Patents, Cent. Dig. § 165.]

Appeal from the District Court of the United States for the Eastern Division of the Northern District of Ohio; John H. Clarke, Judge. Suit in equity by the General Electric Company against the Electric Controller & Manufacturing Company. Decree for defendant, and complainant appeals. Reversed.

W. K. Richardson, of Boston, Mass., for appellant.

Karl Fenning, of Cleveland, Ohio, for appellee.

Before KNAPPEN and DENISON, Circuit Judges, and HOLLISTER, District Judge.

DENISON, Circuit Judge. The appellant filed in the court below the usual infringement suit, based upon claims 5, 6, 7, 28, 29, 30, 31,

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes For opinion on application to modify mandate, see 243 Fed. 1007, 156 C. C. A. —,

32, 45, and 47 of patent No. 763,658, issued June 28, 1904, to the Sprague Electric Company as assignee of the inventor, Carrichoff. Upon the argument below, it relied chiefly, if not wholly, upon 5, 6, and 7. The bill was dismissed by a decree adjudging all the 10 claims void for want of invention. Upon this appeal, complainant assigns error in the conclusion as to each of these claims; but, by its brief in this court, it rests its appeal solely upon claims 6 and 7. It does this, coupled with an express disclaimer of acquiescence in the decree as to the remaining claims affected, but for the purpose, as it says, of simplifying the issue.

[1] The patent relates to a controller for an electric motor. Claims 5, 6, and 7 are given in the margin.1

We do not attempt any complete statement of construction or operation. The general aspect of these matters is familiar to counsel and to the parties, and to all who might be interested in patents involving the same subject-matter; to others they are not important. We do not undertake to achieve perfect accuracy either in the use of the technical terminology or with reference to operative conditions; we propose only so much of statement as to make our conclusions intelligible. The rotation of the armature of an electric motor, resulting from the current conducted thereto over the line from the source of power, creates a counter electromotive force which (so to speak) neutralizes or dams back a large part of the original electromotive force. The net resultant becomes the effective operating power, and the motor is so built as to be adapted and fitted for only this net resultant. For example, it may be supposed that the line will furnish 100 power units, and that the counter electromotive force, at the preferred motor speed, will be 80 units. The motor will then be so constructed that it will best operate under a net load of 20 units, but will be able to carry 40 without injury, while it will be destroyed by the total load of 100, and, indeed, will be liable to injury by much more than 40. Accordingly, the current is taken from the line to the motor through a series of

15. The combination with a motor, of an electrically operated controller for the motor, a master switch, a circuit from the master switch, a series of consecutively operating magnets for the controller, a throttle operated by the current through the motor, contacts in the master switch circuit which are controlled by the throttle, and a contact in the circuit through each magnet, except the circuit through the magnet first operating, which is closed by the magnet which precedes in operation, substantially as described.

6. The combination with a motor, of an electrically operated rheostat for the motor, a master switch, a circuit from the master switch, a series of consecutively operating rheostat magnets, a throttle operated by the current through the motor, contacts in the master switch circuit which are controlled by the throttle, and a contact in the circuit through each magnet, except the circuit through the magnet first operating, which is closed by the magnet which precedes in operation, substantially as described.

7. The combination with a motor, of an electrically operated rheostat for the motor, a master switch, a circuit from the master switch, a series of consecutively operating rheostat magnets. a throttle operated by the current through the motor, contacts in the master switch circuit which are controlled by the throttle, a branch circuit from the master switch through each rheostat magnet, and a contact in the branch circuit through each magnet, except the circuit through the first magnet operating, which is closed by the magnet which precedes in operation, substantially as described.