CLIFFORD, Circuit Justice.
The better opinion is, that the first claim must be construed in connection' with the several explanations which follow it, as those explanations are, to a certain extent, the construction which the patentee put upon the claim, and being a part of the instrument, and immediately connected with the claim, the whole must be construed together. Taken in that point of view, the invention consists in a combination of three elements, all of which are admitted to be old. The claim; therefore, is for the combination, and for nothing more. The elements of the combination are as follows: First, the employment of an open-bottomed ice-box, constructed in such manner that, by the perforation of holes in the sides and bottom of the box, the air will pass freely down through the same, and fall directly from the ice upon the articles to be refrigerated; the second element is the dividing partition, open above [893] and below, and so placed that by means of a self-operating internal circulation, the whole of the contained air shall be kept in motion, moving downward and upward in currents as described, and be thereby caused t.o revolve around the partition; the third element is the chamber with the shelves or fixtures for holding the articles to be refrigerated, as more fully set forth in the explanatory clause. The currents are caused by the downward tendency of the cold air in the compartment or box containing tbo ice, and by the upward tendency of the warm air in the other compartment where it is less affected by the ice. As described, the partition does not extend to the bottom nor to the top of tlje casing, but leaves an opening, as it is called, at each end. The extent of the openings is not given, but it is quite evident that they must be sufficient to allow the currents of air, created by the downward and upward tendency of the cold and warm air, to revolve around the partition in tlie manner described. The utility of the invention when constructed as directed in the specification, cannot be doubted; and it is equally certain that the respondent has not introduced any satisfactory evidence tending to show that the patentee is not the original and first inventor of the improvement. The suit is founded upon the reissued patent, and when introduced the letters-patenc are prima, tacie evidence that the patentee is the original and first inventor of what is therein described as his invention. An argument upon that topic is unnecessary, as there is no evidence to overcome thé prima facie presumption which the letters-patent afford. Undoubtedly the second question, which is the question of infringement, is attended with more difficulty, as the evidence upon that subject is quite conflicting. The complainant does not deny that the rule of law applicable to the ease is correctly stated by the respondent. Where all the elements of a machine are old, and the invention eon-sists solely in the combination, by which a new and useful result is effected, as compared with the old machine, on which the improvement is made, no one can be held as an infringer who does not use all of the elements of the new combination. The reason of the rule is, that others as well as the first patentee, may improve the old machine; and if they do so by the use of a substantially different combination, they are not infringers, although they may have used all of the elements of the first invention, except one, and their machine may perform substantially the same functions.
The property of the first inventor consists in the new combination he has made, and to that and its result he is fairly and fully entitled, but he cannot invoke the doctrine of equivalents to suppress any other improvement which does not embrace his improvement, and which is substantially different. Formal differences or colorable evasions, however, are not sufficient to confer any right as against the first patent, but the patentee- and all those claiming under him will treat all such as culpable infringements.
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CLIFFORD, Circuit Justice.
The better opinion is, that the first claim must be construed in connection' with the several explanations which follow it, as those explanations are, to a certain extent, the construction which the patentee put upon the claim, and being a part of the instrument, and immediately connected with the claim, the whole must be construed together. Taken in that point of view, the invention consists in a combination of three elements, all of which are admitted to be old. The claim; therefore, is for the combination, and for nothing more. The elements of the combination are as follows: First, the employment of an open-bottomed ice-box, constructed in such manner that, by the perforation of holes in the sides and bottom of the box, the air will pass freely down through the same, and fall directly from the ice upon the articles to be refrigerated; the second element is the dividing partition, open above [893] and below, and so placed that by means of a self-operating internal circulation, the whole of the contained air shall be kept in motion, moving downward and upward in currents as described, and be thereby caused t.o revolve around the partition; the third element is the chamber with the shelves or fixtures for holding the articles to be refrigerated, as more fully set forth in the explanatory clause. The currents are caused by the downward tendency of the cold air in the compartment or box containing tbo ice, and by the upward tendency of the warm air in the other compartment where it is less affected by the ice. As described, the partition does not extend to the bottom nor to the top of tlje casing, but leaves an opening, as it is called, at each end. The extent of the openings is not given, but it is quite evident that they must be sufficient to allow the currents of air, created by the downward and upward tendency of the cold and warm air, to revolve around the partition in tlie manner described. The utility of the invention when constructed as directed in the specification, cannot be doubted; and it is equally certain that the respondent has not introduced any satisfactory evidence tending to show that the patentee is not the original and first inventor of the improvement. The suit is founded upon the reissued patent, and when introduced the letters-patenc are prima, tacie evidence that the patentee is the original and first inventor of what is therein described as his invention. An argument upon that topic is unnecessary, as there is no evidence to overcome thé prima facie presumption which the letters-patent afford. Undoubtedly the second question, which is the question of infringement, is attended with more difficulty, as the evidence upon that subject is quite conflicting. The complainant does not deny that the rule of law applicable to the ease is correctly stated by the respondent. Where all the elements of a machine are old, and the invention eon-sists solely in the combination, by which a new and useful result is effected, as compared with the old machine, on which the improvement is made, no one can be held as an infringer who does not use all of the elements of the new combination. The reason of the rule is, that others as well as the first patentee, may improve the old machine; and if they do so by the use of a substantially different combination, they are not infringers, although they may have used all of the elements of the first invention, except one, and their machine may perform substantially the same functions.
The property of the first inventor consists in the new combination he has made, and to that and its result he is fairly and fully entitled, but he cannot invoke the doctrine of equivalents to suppress any other improvement which does not embrace his improvement, and which is substantially different. Formal differences or colorable evasions, however, are not sufficient to confer any right as against the first patent, but the patentee- and all those claiming under him will treat all such as culpable infringements.
Applying those rules to this case, the respondent insists that he is not an infringer. He bases his defence in this behalf, chiefly upon two grounds, which will be briefly and separately considered. He insists, in the-first jffaee, that his ice-box is substantially different, because, as he insists, the eduction passage for the air across’ the bottom of the box in the rear, is not substantially the same as the holes in the ice-box of the complainant; secondly, because, as he insists, the side of the ice-box, as used in his machine, instead of the partition in that of the complainant, is not substantially the same as-the- partition in that of the complainant. The side of the ice-box, it will be observed, does not extend below the box itself, and. consequently, the lower opening, if such it may be called, is much larger in the machine-of the respondent than in that of the complainant. The corresponding suggestions are, that the machine of the respondent has no open-bottomed ice-box, like that of the-complainant, and that it has no device or-partition to keep separate the ascending currents from those which are descending. The-theory of the complainant is, that the currents of air in his machine moved upward in one apartment and downward in the other,. but the respondent insists that the currents in his machine move in all directions in each apartment, and that in that respect the two. machines are substantially' different. Evidently the operation of the machine of the-respondent is not as perfect as that of the complainant; but it cannot be admitted that an infringer can successfully defend himself against the charge of infringement by the allegation and proof that his machine is not as good as that of the inventor whose-rights he has invaded. The rights of an inventor are oftentimes affected as injuriously by the sale of poor machines in the market, as by those made more strictly in conformity to his patent. The effect of the eduction passage for the air in the one or the other machine is precisely the same in kind, and the mode of operation in the one and the other is also the same. The purpose is to allow the cold air to descend from the icebox upon the articles to be refrigerated; and when that is accomplished, it passes into the other apartment, where the temperature is warmer, and ascends precisely as in the machine of the complainant. But it is said that inasmuch as the ice-box does not extend more than two thirds of the way to-the bottom of the box, the operation is not as complete as it is in the machine of the complainant; and no doubt there is a difference, but it is one of degree, and not of kind, and in my judgment cannot save the respondent from the charge of being an in-fringer. The general tendency of the air-[894] in the compartment containing the ice-box is downward, and the general tendency of the air in the other compartment is upward; and although it may not be as completely so in either apartment of the respondent's machine as in the machine of the complainant, still the better opinion is, I think, that the difference is not such as will relieve the respondent from the charge of infringement. The same remarks are applicable also to the partition. The slide of the ice-box is not as long in the machine of the respondent, as the partition in the machine of the complainant; but the difference is merely formal, because, if it is not extended downward sufficiently to perform the same function as that of the partition, the machine would be of no value. Unless it accomplishes the same result in kind as the partition in the machine of the complainant, the machine would be useless; and it certainly is no defence that it is different in form, if it performs the same function in substantially the same way and produces substantially the same result. Nor is it any defence that the result is not as good, if it be substantially the same in kind and is produced substantially by the same means. The complainant is entitled to a decree.
[For other cases involving this patent, see note to lioberts v. Buck, Case No. 11.897.]