(47 S.Ct.)

(Argued and Submitted Oct. 13, 1926. Decided this court condemned the practice of inquirNov. 22, 1926.)

D. H. Brasfield and others were convicted of conspiracy to possess and transport intoxicating liquors, in violation of the Na-partial conduct of the trial that the inquiry tional Prohibition Act, which conviction was itself should be regarded as ground for reaffirmed by the Circuit Court of Appeals (8 versal. Such procedure serves no useful F. [2d] 472), and they bring certiorari. Judg-purpose that cannot be attained by questions not requiring the jury to reveal the nature

Mr. John W. Preston, of San Francisco, or extent of its division. Its effect upon a diCal., for petitioners. vided jury will often depend upon circum

For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

5. Patents

168 (2).

168 (2).

stances which cannot properly be known to 4. Patents the trial judge or to the appellate courts and An applicant for patent to cover a new commay vary widely in different situations, but | bination, compelled to narrow his claim by inin general its tendency is coercive. It can troduction of a new element, cannot, after israrely be resorted to without bringing to sue, broaden claim by dropping such element. bear in some degree, serious, although not measurable, an improper influence upon the jury, from whose deliberations every consideration other than that of the evidence and the law as expounded in a proper charge, should be excluded. Such a practice, which is never useful and is generally harmful, is not to be sanctioned.

[2] The failure of petitioners' counsel to particularize an exception to the court's inquiry does not preclude this court from correcting the error. Cf. Wiborg v. United States, 163 U. S. 632, 658, et seq., 16 S. Ct. 1127, 1197, 41 L. Ed. 289; Clyatt v. United States, 197 U. S. 207, 220, et seq., 25 S. Ct. 429, 49 L. Ed. 726; Crawford v. United States, 212 U. S. 183, 194, 29 S. Ct. 260, 53 L. Ed. 465, 15 Ann. Cas. 392; Weems v. United States, 217 U. S. 349, 362, 30 S. Ct. This 544, 54 L Ed. 793, 19 Ann. Cas. 705. is especially the case where the error, as here, affects the proper relations of the court to the jury, and cannot be effectively rem. edied by modification of the judge's charge after the harm has been done.

It is unnecessary to consider other assignments of error directed to the instructions given the jury at the time of its recall. Judgment reversed.

Applicant for patent, accepting a narrower claim than originally made, is bound by it, whether examiner was right or wrong in rejecting original claim.

6. Patents

177.

If a claim to a combination be restricted to specified elements, all must be regarded as material.

On Writ of Certiorari to the United States Circuit Court of Appeals for the First Circuit.

Patent infringement suit by the I. T. S. Rubber Company against the Essex Rubber Company. Decree dismissing suit for want of infringement was affirmed by the Circuit Court of Appeals (1 F.[2d] 780), and plaintiff brings certiorari. Decree affirmed.

#431

*Messrs. F. O. Richey, of Cleveland, Ohio, and Melville Church, of Washington, D. C., for petitioner.

Mr. Lucius E. Varney, of New York City, for respondent.

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 bill was dismissed by the District Court for

1 Various intermediate proceedings, on a preliminary motion to dismiss, appear in 270 F. 593 (D. C.); 276 F. 478 (C. C. A.); and in 281 F. 5 (C. C. A.).

For other cases see same topic and KEY-NUMBER in all Key-Numbered Digests and Indexes

(47 S.Ct.)

want of infringement. This was affirmed by the Circuit Court of Appeals. 1 F.(2d) 780. And there being a conflict of opinion with the Circuit Court of Appeals for the Sixth Circuit as to the scope of the patent, this writ of certiorari was granted.

any losses he sustained by reason of the suit, suggested that he and counsel whom it had employed procure an adjustment of the damages and profits. Wendt and the counsel for the Essex Company thereupon secured an agreement to settle the case by Wendt's payment of $1,000. This was embodied in a stip

The Essex Company, which manufactures and sells the heels alleged to infringe, ex-ulation signed by the I. T. S. Company's counpressly 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] 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 in

⚫432

*fringement here," and that the Circuit Court of Appeals erred in holding that it was not estopped by the decrees in such suits. The argument in the brief, however, specifies and deals with only one of such prior suits; and there being as to the others no semblance of compliance with the requirements of rule 25 of this Court,2 we need consider only the suit specifically relied on.

[2] 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 1. 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.

sel and by the Essex Company's counsel as counsel for Wendt, and filed in the case. This stipulation, with the interlocutory decree, was thereafter made the basis of a final decree, readjudging the infringement, reciting the settlement, and adjudging that the I. T. S. Company recover of Wendt $1,000 and the costs of the suit. Wendt paid this judgment and was reimbursed by the Essex Company. The District Court further found specifically that, under the circumstances, the Essex Company did not control the suit; and held that, even though the I. T. S. Company understood that the counsel negotiating the settlement represented the Essex Company as well as Wendt in adjusting the damages, it was not estopped from contesting the question of infringement raised in the present case.

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, 46 S. Ct. 57, 70 L. Ed. 172, 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. [3] 2. The question of infringement as here presented turns upon matters of law arising

434

out of a file wrapper *defense interposed by the Essex Company, which insists that the reissued patent, although valid, was so limited in scope by the proceedings in the Patent Office that the Essex heels do not infringe.

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 The patent covers the part of a shoe comand profits, and ordering an accounting. monly called a rubber heel, or cushion heel Down to the entry of this decree the Essex lift. This is usually made of rubber, and is Company exercised no control over the man-attached to the under side of the leather heel agement and conduct of the suit. Thereafter so as to furnish a yielding, resilient heel, givthe Essex Company, having previously writing softness to the tread and quietness in walking. These heels, which are in common use, are of two types, the flat and the conThis rule provides that the brief for the plain- cavo-convex, both of which were old when tiff in error, appellant or petitioner shall contain, Tufford made his invention. The flat heel, inter alia, a "concise statement of the case con- which is the older, is cemented to the leather taining all that is material to the consideration of and then fastened on by nails or screws. The the questions presented, with appropriate page ref-driving in of the nails or screws, however, has erences to the printed record," clause 2 (d); a "specification of such of the assigned errors as are a tendency to cause the rubber to spring away

*433

ten Wendt that it would reimburse *him for

intended to be urged," clause 2 (e); and an "argu-
ment
exhibiting clearly the points of fact
and of law being presented," clause 2 (f), 266 U. S. 671.

The under layers of shoe heels were called "lifts" by the cobblers.

suit, passing for the moment the considera-
tion of the question whether there is any es-
sential distinction in respect to claim 8.
*436

from the leather around the edges and pro- treat claim 5 as typical of all the claims in duce an open seam. In the concavo-convex type the body of the rubber heel is curved downwards. It is attached to the leather heel, without any cement, by placing its upper concave side under the leather, pressing it upward flatly and then nailing or screwing it on tightly. This, through the tendency of the rubber to resume its original curved form, tends to keep it tightly pressed upwards against the leather and overcome the tendency of the flat heels to separate from the leather at the edges. This characteristic of the concavo-convex heels, often called "the tight-edge effect," was referred to as early as 1889 in Ferguson's patent No. 638.228.

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

*435

shows one-half of the lift on a *median section; and of Figure 4, which is described as "a perspective view looking at the upper side of the lift removed."

Fig. 2.

13

*The Essex Company contends: (1) That by the proceedings in the Patent Office these claims were limited to the form of concavoconvex heel lift in which the concave upper face lies entirely below a plane passing through the rear upper edge and breast corners, that is, one in which, owing to the curvature of the upper face, only its rear edge and breast corners lie in the same horizontal plane, and its side and breast edges, as well as all other portions of its surface, lie below the plane passing through and defined by these three points-this being referred to as the "three-point contract" form, since when the lift is brought in contact with the leather heel, before being flattened, only the rear edge and two breast corners will touch the leather. (2) That the claims, thus limited, are not infringed by the Essex heels, as their upper side edges, having no vertical curve, lie in and not below the plane passing through the rear edge and breast corners.

The file wrapper shows that on the applica

9

19

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-metalic resilient material having its body portion of concavo-convex form on every line of cross section, the concave upper face lying entirely be low a plane passing through the rear upper edge and the breasts corners of the lift."

The last clause in this claim, which we have italicized-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."5 For immediate purposes we

The "breast" is the front face of the heel.

5 All these claims are set forth in full in the opinion of the Circuit Court of Appeals, in 1 F. (2d) at page 781.

tion 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, described a lift having its attaching face concave on every line of cross section. These were rejected by the examiner on reference to Nerger's patent No. 661,129. Another set of claims was then substituted describing a heel lift of resilient material comprising a body portion of concavo-convex form on every line of cross section and normally held in such form by its own inherent resiliency. These were also rejected by the examiner on reference to Nerger.

After an interview with the examiner in which the applicant exhibited samples of his own lift and the Nerger lift, he then amend*437

ed the specification by inserting the *state

ment:

"By reference 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 tangent to

The file wrapper does not set forth all of these claims.

(47 S.Ct.)

the rear upper edge and the breast corners of the lift, whereby to cause the entire margin of said lift to exert a uniform pressure on the heel of a shoe when the lift is positioned on the heel and the convex face thereof depressed to flatten said lift."

He also substituted another set of claims, 5 to 9, inclusive. Claim 5-which was typical of all the others unless claim 8 was differentiated by the fact that the word "rear" did not appear before the words "upper edge"-read:

"A heel lift of substantially non-metalic 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 tangent to the rear upper edge and the breast corners 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 planeabove the upper side and breast edges of said concave attaching face."

$439

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 drawIn presenting these amendments counsel ings showed "that the breast lift was cut for the applicant urged that Nerger's lift away on a curved line, the attaching face of was not concavo-convex on every line of cross the lift at the breast thereof must necessarily section since the deepest portion of the con- lie in a plane below the breast corners and cavity in its upper surface was at the breast; the rear edge of said lift or, in other words, and that its concave upper surface did not the rear upper edge and breast corners of the lie entirely below a plane tangent to the rear concave attaching face are disposed in a edge and breast corners. In replying, the ex- plane above the upper side and breast edges aminer, after calling attention to the fact thereof"; that the showing in Figure 2 was that on the application for the original pat- therefore obviously erroneous, and, although ent the applicant had presented claims for a claim 10 read upon it without any correction. lift in which all the edges of the attaching it did not clearly illustrate the applicant's face occupied the same plane which were invention; and that permission was requestrejected-stated that Figure 2 of the draw-ed to correct the drawing. This was granted. ings indicated the same construction and did not show a lift whose concave upper face lay entirely below a plane tangent to the rear up per 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 It thus appears that the applicant acplane tangent to the rear edge and the breast quiesced in the successive rejections by the corners would also pass through the entire examiner on reference to Nerger of claims front [breast] edge"; that the applicant's for a lift having its attaching face concave sample lift did "not correspond to the draw-on every line of cross section and for a lift ing, since all the points *of its breast except the two corner points lie below a straight line passing through these points"; that in "each of the claims 5, 6, 7, 8 and 9 the applicant specifies that the concave upper face lies entirely below a plane tangent to the rear upper edge and the breast corners"; and that these claims do "not read on the drawing, and are therefore rejected."

*438

To meet this rejection the applicant further amended the specification by substituting for the prior amendment the statement:

and Figure 2 was changed to the form which we have reproduced in this opinion, showing that the upper side and breast edges lie below a plane passing through the rear edge and breast corners. The new claims were then allowed, and the patent was reissued.

concavo-convex

of resilient material of a
form on every line of cross section, and that
to meet this reference he amended the speci-
fication so as to state not only that the con-
cave 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 at-
taching face, the rear upper edge and breast
corners are disposed in a plane above the up-
per 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 cor-
ners; and finally changed his drawing so as
to correspond precisely with these amend-
ments-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 "threepoint contact" lift, that is, to one in which, owing to the vertical curve of the upper side