HOUGH, Circuit Judge
(after stating the facts as above). [1] It is assigned for error that the court entered “pro forma” decrees. That Cramp, etc., Co. v. International, etc., Co., 228 U. S. 645, 33 Sup. Ct. 722, 57 L. Ed. 1003, ever requires reversal merely for this reason is not admitted, but need not be decided. The phrase complained of, in an appealable decree or judgment, usually means, and is asserted to mean in the present instance, that decision was rendered, not upon intellectual conviction that the decree was right, but merely to facilitate further proceedings.
But this court is not concluded by a phrase. We may examine the record to discover whether there was a genuine decision, and, having done so, are satisfied that the trial court by these decrees expressed the result of a consideration of the evidence. The decrees are not in fact pro forma, and do not become so by having a label put on them. We therefore consider the merits.
[2] Although the-patents in suit issued on the same day to the same man, the senior patent is prior art. By rebuttable presumption the earlier in number of several patents dated alike is earlier in publication (Crown Cork, etc., Co. v. Standard, etc., Co., 136 Fed. 841, 69 C. C. A. 200); but in this case application was made for the junior patent more than a year after that for the senior had been filed, and the former is confessedly for an improvement on the latter. Under such circumstances the art to and including the senior patent is known to the patentee, not only by legal presumption, but by personal study. Writing Machine Co. v. Elliott, etc., Co. (C. C.) 106 Fed. 507; Willcox, etc., Co. v. Merrow, etc., Co., 93 Fed. 206, 35 C. C. A. 269.
[3] Much of plaintiff's case as to range of equivalents, existence of invention, and interpretation of claims rests on commercial success, and we are especially referred, not only to the language, but the facts, of Benjamin, etc., Co. v. Northwestern, etc., Co., 251 Fed. 288, 163 C. C. A. 444. See also Stanley Works v. Twisted Wire Co., 256 Fed. 101, 167 C. C. A. 340. Before success in business becomes available as evidence to aid in proving the fact of invention, or to extend the construction of words, it must be proved to have flowed from the claims in suit. A claim is for means, and those means must be proved to have been the means of success.
[569]*569Until 1909 the patent of Weston (No. 480,900) was in force, plaintiff was licensed thereunder, and publicly by advertisements claimed (in effect) the advantages of Weston’s invention. An examination of this patent (especially claim 1) shows on this record a basic invention, without paying tribute to which we incline to think that few plugs in evidence could have lawfully employed “detachable engagements” making electrical contact. It is quite impossible to say how much of plaintiff’s success was due to manufacturing for upwards of five years under Weston’s patent.
Further, this record requires mention of the decisions pointing out that commercial success as evidence is to be considered when patentability is doubtful (Locklin v. Buck, 159 Fed. 436, 86 C. C. A. 414); that nothing is more easily suggested by a popular new thing than an endeavor to put “mere novelty in the place of invention” (Robins, etc., Co. v. Link Belt Co., 233 Fed. 1005, 148 C. C. A. 15); and that successful exploitation of a device covered by a patent is often no more than the improvement by advertising and other energetic business methods of a commercial opportunity (National, etc., Co. v. Bissell, etc., Co., 249 Fed. 198, 161 C. C. A. 232).
These considerations have application here: The commercial op portunity is shown to have been afforded by the enormous growth of the electrical appliances for comfort above enumerated, and plaintiff is and has been a most pushful advertiser, setting forth in publications of record plausible reasons for patronage having no reference to whatever invention is defined by the claims in suit. We decline to consider commercial success in respect of either the fact of invention or interpretation of claims.
The accusations of infringement show that the fundamental question here is the scope or breadth of the senior patent. It is urged that plaintiff’s plug shows “a combination of elements” functioning “by reason of their co-operation,” which elements contained in an insulating body — that is, a single piece of porcelain — are (1) independent recesses functioning to contain and assist the contact springs; (2) locking contact springs, which are merely strips of metal bent into suitable shape and economically stamped out of sheet copper; (3) independent guide holes leading into the recesses and preventing abnormal distortion of contacts, because the walls of the holes sustain all the mechanical strain; and (4) recesses and guide hole walls closely surrounding and extending beyond the end of the contact springs, to the end that (5) the cap may and does carry plain and solid posts, which give good contact, and when of blade shape may also be economically stamped out of metal.
[4] The foregoing summary from a brief is a laudatory dissection of a popular form of plaintiff’s device as commercially exploited. It is always a temptation to take a patentee’s commercial article and argue that no advantage, shown by experienceffo reside therein, can be utilized by a competitor under pain of infringement. But legal infringement cannot be so proved; it is necessary to take the alleged infringing article, and show that the maker of that thing has appropriated what the claim substantially describes.
[570]*570[5] Substantial description is an elastic term, and it may (inter alia) be restricted by prior art, or by limitation arising in the Patent Office. The rule that acquiescence in the rejection of a broad claim, when accompanied by the acceptance of a narrower one, estops the patentee from ever demanding for the claim he got an interpretation that would cover what he was not given (Corbin, etc., Co. v. Eagle, etc., Co., 150 U. S. 38, 14 Sup. Ct. 28, 37 L. Ed. 989), has, we think, never been departed from in this court.
[6] The claim as granted is not restricted merely by a representation in the drawing (Consolidated, etc., Co. v. Metropolitan, etc., Co., 60 Fed. 93, 8 C. C. A. 485); but neither can it be enlarged by such reference. National, etc., Co. v. Roebling’s Sons Co., 158 Fed. 101, 85 C. C. A. 567, cites the earlier cases, and the rule has recently been restated in Strause, etc., Co. v. William M. Crane Co., 235 Fed. 128, 148 C. C. A. 620, and Auto Pneumatic, etc., Co. v. Kindler & Collins, 247 Fed. 323, 159 C. C. A. 417, with its appropriate limitations.
[7] It would be wasted time to do more than indicate conclusion with respect to the limitation arising as to the first claim of the senior patent by reason of its Patent Office history. The matter may be summarized thus: The first claim propounded when the application was filed was for a—
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HOUGH, Circuit Judge
(after stating the facts as above). [1] It is assigned for error that the court entered “pro forma” decrees. That Cramp, etc., Co. v. International, etc., Co., 228 U. S. 645, 33 Sup. Ct. 722, 57 L. Ed. 1003, ever requires reversal merely for this reason is not admitted, but need not be decided. The phrase complained of, in an appealable decree or judgment, usually means, and is asserted to mean in the present instance, that decision was rendered, not upon intellectual conviction that the decree was right, but merely to facilitate further proceedings.
But this court is not concluded by a phrase. We may examine the record to discover whether there was a genuine decision, and, having done so, are satisfied that the trial court by these decrees expressed the result of a consideration of the evidence. The decrees are not in fact pro forma, and do not become so by having a label put on them. We therefore consider the merits.
[2] Although the-patents in suit issued on the same day to the same man, the senior patent is prior art. By rebuttable presumption the earlier in number of several patents dated alike is earlier in publication (Crown Cork, etc., Co. v. Standard, etc., Co., 136 Fed. 841, 69 C. C. A. 200); but in this case application was made for the junior patent more than a year after that for the senior had been filed, and the former is confessedly for an improvement on the latter. Under such circumstances the art to and including the senior patent is known to the patentee, not only by legal presumption, but by personal study. Writing Machine Co. v. Elliott, etc., Co. (C. C.) 106 Fed. 507; Willcox, etc., Co. v. Merrow, etc., Co., 93 Fed. 206, 35 C. C. A. 269.
[3] Much of plaintiff's case as to range of equivalents, existence of invention, and interpretation of claims rests on commercial success, and we are especially referred, not only to the language, but the facts, of Benjamin, etc., Co. v. Northwestern, etc., Co., 251 Fed. 288, 163 C. C. A. 444. See also Stanley Works v. Twisted Wire Co., 256 Fed. 101, 167 C. C. A. 340. Before success in business becomes available as evidence to aid in proving the fact of invention, or to extend the construction of words, it must be proved to have flowed from the claims in suit. A claim is for means, and those means must be proved to have been the means of success.
[569]*569Until 1909 the patent of Weston (No. 480,900) was in force, plaintiff was licensed thereunder, and publicly by advertisements claimed (in effect) the advantages of Weston’s invention. An examination of this patent (especially claim 1) shows on this record a basic invention, without paying tribute to which we incline to think that few plugs in evidence could have lawfully employed “detachable engagements” making electrical contact. It is quite impossible to say how much of plaintiff’s success was due to manufacturing for upwards of five years under Weston’s patent.
Further, this record requires mention of the decisions pointing out that commercial success as evidence is to be considered when patentability is doubtful (Locklin v. Buck, 159 Fed. 436, 86 C. C. A. 414); that nothing is more easily suggested by a popular new thing than an endeavor to put “mere novelty in the place of invention” (Robins, etc., Co. v. Link Belt Co., 233 Fed. 1005, 148 C. C. A. 15); and that successful exploitation of a device covered by a patent is often no more than the improvement by advertising and other energetic business methods of a commercial opportunity (National, etc., Co. v. Bissell, etc., Co., 249 Fed. 198, 161 C. C. A. 232).
These considerations have application here: The commercial op portunity is shown to have been afforded by the enormous growth of the electrical appliances for comfort above enumerated, and plaintiff is and has been a most pushful advertiser, setting forth in publications of record plausible reasons for patronage having no reference to whatever invention is defined by the claims in suit. We decline to consider commercial success in respect of either the fact of invention or interpretation of claims.
The accusations of infringement show that the fundamental question here is the scope or breadth of the senior patent. It is urged that plaintiff’s plug shows “a combination of elements” functioning “by reason of their co-operation,” which elements contained in an insulating body — that is, a single piece of porcelain — are (1) independent recesses functioning to contain and assist the contact springs; (2) locking contact springs, which are merely strips of metal bent into suitable shape and economically stamped out of sheet copper; (3) independent guide holes leading into the recesses and preventing abnormal distortion of contacts, because the walls of the holes sustain all the mechanical strain; and (4) recesses and guide hole walls closely surrounding and extending beyond the end of the contact springs, to the end that (5) the cap may and does carry plain and solid posts, which give good contact, and when of blade shape may also be economically stamped out of metal.
[4] The foregoing summary from a brief is a laudatory dissection of a popular form of plaintiff’s device as commercially exploited. It is always a temptation to take a patentee’s commercial article and argue that no advantage, shown by experienceffo reside therein, can be utilized by a competitor under pain of infringement. But legal infringement cannot be so proved; it is necessary to take the alleged infringing article, and show that the maker of that thing has appropriated what the claim substantially describes.
[570]*570[5] Substantial description is an elastic term, and it may (inter alia) be restricted by prior art, or by limitation arising in the Patent Office. The rule that acquiescence in the rejection of a broad claim, when accompanied by the acceptance of a narrower one, estops the patentee from ever demanding for the claim he got an interpretation that would cover what he was not given (Corbin, etc., Co. v. Eagle, etc., Co., 150 U. S. 38, 14 Sup. Ct. 28, 37 L. Ed. 989), has, we think, never been departed from in this court.
[6] The claim as granted is not restricted merely by a representation in the drawing (Consolidated, etc., Co. v. Metropolitan, etc., Co., 60 Fed. 93, 8 C. C. A. 485); but neither can it be enlarged by such reference. National, etc., Co. v. Roebling’s Sons Co., 158 Fed. 101, 85 C. C. A. 567, cites the earlier cases, and the rule has recently been restated in Strause, etc., Co. v. William M. Crane Co., 235 Fed. 128, 148 C. C. A. 620, and Auto Pneumatic, etc., Co. v. Kindler & Collins, 247 Fed. 323, 159 C. C. A. 417, with its appropriate limitations.
[7] It would be wasted time to do more than indicate conclusion with respect to the limitation arising as to the first claim of the senior patent by reason of its Patent Office history. The matter may be summarized thus: The first claim propounded when the application was filed was for a—
“separable attachment ping comprising an insulating body having recesses, locking contact springs in said recesses, and guide holes leading into said recesses and a cap having contact posts adapted to pass through the guide holes and engage the locking 'contact springs.”
This was rejected on Weston, supra, Cunningham, 320,117, and Marshall, 714,928; the gist of objection being that locking springs and recesses were both old, and there was no invention in having two recesses, instead of one, so as to put the springs into separate compartments. The applicant was compelled to redraft the claim, so that it reads as at present, and plainly requires the contact posts to pass through guide holes before engaging the contact locking springs in the recesses. It was this provision of an approach through insulated material that was required by the Office and yielded to by the applicant, and that acquiescence procured the allowance of the patent.
It has not infrequently occurred that, after many contests with examiners, the patentee emerges from the Office with a claim which in the opinion of the courts is as broad, or perhaps broader, than some which were rejected before allowance. If such final claim is deemed to rest fairly on the disclosure, it is no objection to it that the solicitor outflanked the examiner; but that is not the case here. If this patentee had gotten the claim he first propounded, he might have summarized invention in the manner hereinabove set forth; but as the matter stands he cannot claim that anything infringes the claim in suit of the senior patent that has not an independent guide hole leading to a recess.
There is not a single one of the abpve-enumerated alleged infringing articles of which this is true. It is desirable to have tire path of the contact posts predetermined, to get them in line for their contacts and secure alignment by insulated material, before the cap is shoved home.
[571]*571If alignment is attained some distance from the point of contact, the careless or inexperienced handler is probably saved from an electric shock. Such alignment is attained by both defendants by squaring their contact posts with a central block of insulation. They have no guide holes, and in some of the forms complained of the distance from the point of electrical contact to the end of the block of central insulation is so slight that it is doubtful whether defendant’s devices possess the advantage, the means for attaining which was the one thing that gave Mr. Hubbell his patent.
It follows that there is no infringement of claim 1 of the senior patent, and it becomes unnecessary to determine whether that claim is invalid, if confined, as it must be, to the exact device described and depicted. There was small room for invention left when the application was filed, and the life of the patent is now nearly spent; “concealed contacts” has been a commercial catchword used by plaintiff to advance the sale of its patented article, and it is adopting the style of interpretation urged by the plaintiff here to say, what is admitted by the patentee himself, that defendants have no concealed contacts, but do have “wide-open contacts.”
In considering the question of contributory infringement, validity may be assumed for argument’s sake, as to all the claims in suit.
[8] Contributory infringement essentially consists in intentionally giving aid to, or intentionally co-operating in, an infringement. In this instance the assertion is in substance that any cap that would “work” with Hubbell’s patented combination plug (including the cap) became an infringement of patent rights the moment it was put in place; wherefore, since Bryant Company was told in substance that the decoy letter writer wished to use a Bryant cap with a Hubbell base, the defendants aided such imaginary purchaser to commit an infringement.
[9] Whether, in the absence of any other evidence tending to establish that tort which is infringement, the matter is not too trivial for serious consideration may be suggested, but is not made the basis of decision. Plaintiff, however, cannot prevail for two reasons: First.. It is not true that any claim in suit covers the combination of any and every cap just good enough for electrical connection with Hubbell’s base plug. There is nothing in any of the patents preventing the use of a Fictionally engaging cap with Hubbell’s base or any other base. Second. By construction so necessary as to require no explanation the combination of Hubbell is only effected when Hubbell’s contact blades are engaged with Hubbell’s contact and locking springs.
[10, 11] The allegation of contributory infringement cannot be supported, there having been no possibility of complete infringement within the cases cited in Walker (5th Fd.) § 407, and there is no such thing as partial infringement; nor is the intent requisite under Leeds & Catlin Co. v. Victor, etc., Co., 154 Fed. 58, 83 C. C. A. 170, 23 L. R. A. (N. S.) 1027, affirmed 213 U. S. 325, 29 Sup. Ct. 503, 53 L. Ed. 816, proved by the decoy transactions. So far as intent goes, that trick is completely offset by the whole course of„ business as testified to without contradiction. '
[572]*572[12] Discussion of the remainder of the case may be brief, after the foregoing statement of our views on the senior patent.
There was no novelty per se in the-use of knife blade contacts. They had been commercially used in the Ft. Wayne-Jenney construction, a'nd known at least since 1886. Nor was there inventive thought in securing a locking, as distinct from a frictional, engagement between contact post and current carrying spring. That was old, and is found in the senior patent, if nowhere else. The field of invention left open and occupied by Hubbell was to secure a notched or recessed blade by a supplementary spring, and this he did. That is the only idea validating the locking spring claims, and defendants do not employ that means. If the claims were read so as to cover, they would be void on the prior art.
The recess and screw claims, in so far as they advance those elements as presenting patentable novelty in attachment plugs, are void. As was candidly stated by plaintiff’s expert, if anything is composed of two parts intended to be fastened together, it was common practice to prevent relative rotation by “making one end square to fit into a square hole, or some such expedient.” That is what plaintiff does with its “base” and “end block.”
As for the “screw passing centrally” through the parts just mentioned, the method is shown to be nearly as old as electric plugs, and could doubtless be traced through many arts dealing with small articles assembled as needed from standardized parts manufactured in quantity. It is plainly within the competence of any good mechanic.
If, however, these claims be viewed as presenting the same combination as the senior patent and the locking spring claims, with recess and screw additions, they may stand; but the additions are worthless. No one infringes merely by using recesses and central screws.
Let each decree appealed from be reversed, with the costs of this court, and the causes remanded, with directions to dismiss the bills because of noninfringement, with the costs of the District Court.