The complainant's patent being for a combination only, it must be limited to the parts specified, or to their mechanical equivalents, and there is no infringement of it unless the combination is infringed, even though the same ingredients are used, if arranged and used in a substantially different manner.

In Rowell v. Lindsay above, it is said, quoting from Prouty v. Ruggles, 16 Pet. 336–341, 10 L. Ed. 985:

"This combination composed of all of the parts mentioned in the specification, and arranged with reference to each other and to other parts of the plow in the manner therein described, is said to be the improvement and is the thing patented. The use of any two of these parts only, or two combined with a third which is substantially different, in form or in the manner of its arrangement and connection with the others, is therefore not the thing patented. It is not the same combination if it substantially differs from it in any of its parts."

In Gill v. Wells, 22 Wall. 1-14, 22 L. Ed. 699, above, it is said: "Valid letters patent may be granted for * a new combination of old ingredients, * * but the rule is equally well settled, in such a case, that the invention consists merely in the new combination of the ingredients, and that a suit for an infringement cannot be maintained against a party who constructs or uses a substantially different combination, even though it includes the exact same ingredients."

In the light of these principles the defendant's machines may be compared with that of complainant's patent. In defendant's machines Nos. 1 and 2 involved in the former suit, the combination was the same, and the different parts composing it were arranged to operate intermittently and alternately, substantially as claimed and as described in the specifications and drawings of the complainant's or Bates patent. Claim 1 of the Bates patent specifies the mechanism combined, and for which the patent is claimed. It is as follows:

"(1) In a wire fence machine the combination of (1) mechanism for intermittently feeding a plurality of longitudinal strand wires, (2) mechanism for intermittently feeding a plurality of stay wires simultaneously and transversely of the strand wires, (3) mechanism for cutting off suitable lengths of the stay wires to span the space between the strand wires, and (4) mechanism for simultaneously coiling the adjacent ends of the stay wires around the strand wires."

Claims 2, 3, 4, and 6 are for the same combination, and are substantially the same, but claim 6 adds thereto "mechanism for taking up the fencing as it is formed." It is plain that the design of this combination is that two at least of its parts are to act simultaneously, but alternately with the others, or, as it is expressed in the claims, "intermittently." For instance, the specifications of the patent and a model of the machine show that the mechanism for feeding the strand and stay wires into the machine so feed them simultaneously, the stay wires transversely of and in close relation with the strand wires, while the mechanism for cutting and coiling the stay wires are inactive or at rest. When the wires are so fed into their proper position the feed mechanisms stop and become inactive; the cutting device then comes into action, cuts stay wire sections of the requisite lengths from the stay strand, while it and the strand wires are at rest; the coiling mechanism, which up to this time has been at rest, then comes into

action, seizes the ends of the stay wire sections and coils and intercoils them around the strand wires simultaneously and stops, thus completing the fence fabric. The stay wire sections are then released from their confinement, the cutting and coiling mechanisms assume a position of rest or inactivity, and the completed fence fabric is carried forward by the take-up mechanism; the wire feeding mechanisms then come into action again simultaneously and the operation is repeated. This is the principle upon which the machine as a whole is constructed, and every element of the combination is arranged to so act alternately with each other and can only effectively so act, for if the wire feed mechanisms should be called into action at the same time the other mechanisms are the operation of the machine would be wholly ineffective for the purpose for which it is constructed. Defendant's machines Nos. 3 and 4, also spoken of in the preliminary proofs as the Colorado and the Cedar Rapids machines respectively, are substantially alike, and are made according to the Denning patent, No. 816,538, and are presumptively not infringements of the complainant's machine. Claim 3 of this patent sufficiently shows the combination, the different elements included therein, and in a general way the principle upon which the machine is organized. It is as follows:

"In a wire fence machine the combination of (1) mechanism for continuously feeding forward a plurality of strand wires, (2) mechanism for continuously feeding forward a plurality of stay wires, (3) mechanism for severing the advance portion of each stay wire to form a section of a transverse stay wire across the plurality of strand wires, (4) mechanism for carrying forward and delivering the stay wire sections into position for coiling their ends around the strand wires, and (5) a reciprocating mechanism for coiling the ends of the stay wire sections around each other and then around the strand wires as the strand wires are fed forward, substantially as described."

The features of this claim which distinguish the operation of the defendant's machines from that of the complainant's patent are that each of its parts operate continuously and simultaneously. For instance, the specifications of the patent and a model of the machine show that the strand and stay wires are fed forward into the machine simultaneously and continuously, but at some distance from, and transversely to, each other; the stay wire sections are then cut the requisite lengths and pushed into contact with the strand wires, when their ends are then engaged by the coiler shafts, which move upon and in line with the strand wires, and coiled around the strand wires, thus completing the fence fabric as the strand and stay wires are carried forward from the machine; the coiler shafts then recede from the stay wires, move back upon the strand wires to meet the oncoming stay wires and repeat the operation. The principle upon which the Bates machine is constructed, therefore, is that its component, parts shall operate intermittently and alternately with each other; while that of defendant's machines Nos. 3 and 4 is that their component parts shall operate continuously and simultaneously. Machines or devices in which the different parts are arranged and constructed to operate continuously, are different in principle from those in which the parts are arranged and constructed to operate intermittently and alternately with each other, and one is not an infringement of the other. Dryfoos v. Wiese (C. C.) 19 Fed. 315, affirmed 124 U. S. 32, 8 Sup. Ct. 354,

31 L. Ed. 362. To avoid the effect of this difference in the operation of the Bates and defendant's machine counsel for complainant contend that, while the defendant's machines operate continuously, the stay wires are in fact at rest relatively to the strand wires while the coiling operation is in progress; the contention being that when sections of stay wires are cut from the spool of continuous stay wire and pushed directly into contact with the strand wires to be finally attached thereto, they are then at rest with reference to the strand wires while the coiling operation is in progress, and, therefore, that the coilers operate intermittently only, relative to the stay wire sections; also, that while the coilers are returning upon and along the strand wires to engage the ends of the oncoming stay wire sections, they are then at rest relatively to both the strand and stay wires, and though continuously in motion they operate intermittently only relatively to them. The contention is ingenious and plausible, but it fails to distinguish between the movement of the stay wire sections after being cut from the spool of stay wire, and the operation of the stay wire feed mechanism by which the stay wire is continuously fed into the machine. The language of the claims of the Bates patent is (2) "mechanism for intermittently feeding a plurality of stay wires simultaneously and transversely of the strand wires," while that of the defendant's patent is, "mechanism for continuously feeding forward a plurality of stay wires." That this mechanism does continuously feed forward the stay wires from which stay sections of the requisite length are cut in the continuous operation of the machine is obvious. It would be more nearly correct to say that the coiling mechanism of the defendant's machines 3 and 4 only acts intermittently with the stay wire feed mechanism and cutting mechanism because it does not commence to perform its function until the feed mechanism and the cutting mechanism has each fully performed its function with reference to the stay wire sections and they have been delivered to the coilers. But though this be true there can be no doubt that in these machines the wire feeding mechanism of both the strand and stay wires and the coiling and cutting devices are each in continuous and simultaneous operation while the machine is in motion, and this continuous operation of the coilers is essential to enable them to fully perform their functions, and is an essential element of the organization of the machines. In the Bates machines, and the Denning machines Nos. 3 and 4, the strand wires are fed through openings in the center of the coiler shafts, but in the former the coilers have but one movement, and that a rotary one upon the strand wire while the feed mechanisms of both wires are at rest. In the latter the coilers have this same rotary movement, also a reciprocating movement upon, and in a direct line with, the strand wires. This second or reciprocating movement is wholly absent in the coilers of the Bates machine and cannot be imparted to them without rearranging and rebuilding the machine upon a different principle. But in the Denning machines this movement is an essential element of their organization and cannot be eliminated therefrom without rearranging and reconstructing the machines upon a different principle. The coiling mechanisms of the two machines as constructed are not therefore interchangeable. So in the Denning

machines the cutting mechanism consists of a fixed or stationary cutter bar or plate with an aperture therein through which the stay wires are fed, and a companion cutter mounted upon the periphery of a continuously revolving disk, the cutters being so adjusted to each other and the stay wires that a section of stay wire is cut the requisite length, as it is projected through the opening in the fixed cutter, at each revolution of the disk. But the movement of the disk upon which the cutter blade is mounted is circular and continuous, while the movement of the cutter bar of the Bates patent is in a direct line reciprocating, and intermittent. The result attained by each is identical, viz., the cutting of the stay wires into sections of the requisite length, but this result is attained in a substantially different manner. Claim 7 of the Bates

patent is as follows:

"In a wire fence machine the combination of (1) a plurality of coilefs through which longitudinal strand wires are fed; (2) a plurality of guides through which stay wires are fed transversely to the coilers; (3) mechanism for cutting off suitable lengths of stay wires to span the spaces between the strand wires; and (4) mechanism for holding the stay wires intermediate of the coilers while their ends are being coiled around the strand wires."

This claim and claims 8, 9, 10, 19, 27, and 35 relate to the same subject-matter, and in different ways call for a plurality of coilers, through which the strand wires are fed, in combination with a plurality of guides through which stay wires are fed transversely to the strand wires, and with mechanism for cutting the stay wires into the requisite lengths, and with mechanism for holding them in position intermediate the coilers while their ends are being coiled and intercoiled around the strand wires. Claim 11 is for a combination of mechanism. for rotating the coilers in one direction only, with mechanism for locking them against rotating during the intermission of the coiler-rotating mechanism. It is not urged that this claim is infringed by any device of defendant's machines, nor could it well be, for there is no intermission between the coiler-rotating, or reciprocating, movement of the coilers in those machines. Parts of some of these claims, notably 8, 9, 19, 27, and perhaps 35, may describe the functions of certain of the ingredients included in the combination; but this does not invalidate the claims for the combination of the different elements into a single machine, which is the thing invented, and for which the patent is claimed, or, as said in the opinion of the former suit, "the patent is for a machine endowed with certain functions, and not for the functions of a machine."

It is the contention of the defendant that there are no guides between the coilers in defendant's machines Nos. 3 and 4, and that this element is wholly omitted from these machines. Literally this may be true, for the stay wires in these machines are not fed directly from one coiler to another as in the Bates machine, but are projected across the intervening space between the strand wires at one side of, and a short distance from, the coilers, and after being cut the requisite. lengths are then pushed transversely towards and in contact with the strand wires to be acted upon by the coilers. There are, however, between the strand wires and at one side of the coilers, plates, in which are shallow uncovered grooves or passageways that act as guides for

the stay wires across the intervening spaces between the strand wires, and fingers that hold the stays in position while their ends are being coiled around the strand wires, which it is contended by counsel for complainant are the mechanical equivalents of the spring-hinged plates that perform the same function in the Bates machine. But the difference in the construction of these two devices is so marked, and the manner in which each operates is so unlike, that one cannot properly be regarded as the mechanical equivalent of the other.

In defendant's machine No. 5, also called the "Hopper Machine," upon which there is no patent, there is no mechanism for cutting the stay wire into sections, and this element of the Bates combination is wholly omitted. In lieu of it are hoppers, from which the machine. takes its name, into which the requisite stay sections are deposited and from which they are fed directly into position transverse to the strand wires ready for the coilers to act upon. The stay sections are previously prepared outside of, and apart from, the machine, and placed in the hoppers by some means other than by the machine itself. It is perfectly obvious that this mechanism and its mode of operation are wholly unlike any element of the Bates machine, and yet it is claimed to be the mechanical equivalent of the Bates cutting mechanism and operates in substantially the same way. The preliminary proofs show that defendant cuts stay wire sections of the requisite lengths with an ordinary wire cutting machine in no way connected with its fence machine, and then by means other than the fence machine transfers them to and deposits them in these hoppers. While this machine contains in equivalent form (1) mechanism for simultaneously feeding a plurality of longitudinal strand wires, and (4) mechanism for simultaneously coiling the adjacent ends of the stay wires around the strand wires, as called for in the first and other claims of the Bates patent, its similarity to the Bates machine ends there, for obviously it does not have in equivalent form or otherwise any (3) "mechanism for cutting off suitable lengths of stay wires to span the spaces between the strand wires," for it has no cutting device whatever. Nor has it any (2) "mechanism for intermittently feeding a plurality of stay wires simultaneously and transversely to the strand wires," within the meaning of the specifications and claims of the Bates patent, for the hopper device of this machine is intended only to hold and distribute stay wire sections, previously prepared and placed therein, into position for coiling, while the stay wire mechanism of the Bates patent is intended to intermittently feed the uncut or continuous stay wire from the spool into the machine where it may be cut into stay wire sections of the required length immediately preceding the coiling, by the cutting device, which is entirely absent in this machine. As well might it be claimed that the separate cutting machine used by the defendant is the equivalent of the Bates cutting mechanism; or if the defendant should arrange with the wire factory to furnish it stay wire sections of the requisite sizes and lengths, that the mechanism of the factory for cutting and preparing such stay sections, and the means by which they were delivered to the defendant and placed in these hoppers were together the mechanical equivalents of the cutting and stay wire feed mechanism of the Bates patent.