Appeal from the District Court of the United States for the Northern District of Illinois, Eastern Division; Philip L. Sullivan, Judge.
Before EVANS and SPARKS, Circuit Judges, and BARNES, District Judge.
The plaintiffs-appellees, The Flexwood Company, which is the owner of the two patents in suit, and United States Plywood Corporation and The Mengel Company, which are joint exclusive licensees under the patents, sued the defendant-appellant, Matt G. Faussner & Company, charging infringement and asking an injunction and accounting. The patents are Elmendorf 1,819,775 for a Flexible WoodFaced Sheet Material, issued August 18, 1931, on an application filed January 24, 1929, and Elmendorf 1,778,250 for a Method of and Apparatus for Treating Flexible Wood-Veneered Material, issued October 14, 1930, on an application filed March 27, 1929.*fn1 The trial court adjudged the patents valid and infringed.
The defenses urged here are: (1) That the defendant's product and the method of making it were disclaimed by Elmendorf; (2) that the defendant's product and the method of making it are different from those disclosed and claimed in the patents and are not infringements; (3) that the claims are invalid for want of patentable novelty; (4) that the claims are invalid because their sole point of novelty is stated in functional language and lack the distinctness and particularity required by statute; (5) that failure to file a supplemental oath to cover new matter rendered the product patent void; and (6) that plaintiffs, by concerted action, are employing the patents and others to secure a monopoly in unpatented materials and are violating the anti-trust statutes.
Unquestionably, there were proceedings in the Patent Office on the applications which ripened into the patents in suit which had the effect of narrowing the claims finally allowed, and, unquestionably, the plaintiffs cannot have a construction of the allowed claims which would make them equivalent to those relinquished in order to secure the grant.
In the application for 1,819,775, the applicant stated that "In carrying out my invention I make the veneer limp by dividing it, throughout its entire area, into narrow strands or filaments, preferably but not necessarily extending in the direction of the length of the grain." and "It may be done by crushing between rolls or otherwise, or by cutting, tearing or splitting along parallel lines or along lines extending in the direction of the grain." Nine claims were filed with the original application. After rejection of these and other claims the applicant canceled the words "preferably but not necessarily", the words "crushing between rolls or otherwise, or by cutting," and the words "along parallel lines or," and in his cancellation stated -
"There is only one form that applicant's product may take, and that is the one that is the result of a rupturing across the grain through a stressing of the wood, without crushing or compressing and without wedging adjacent sections apart, as must result from the use of a knife to cut into or through the wood."
"It may be that, as the specification was originally drawn, too wide a range of equivalent methods was suggested, because of a fear that the product might possibly be obtained in some other way, and applicant did not wish to take the risk of having his product claims limited. The specification has been revised so as to eliminate all reference to cutting or crushing, because neither cutting nor crushing can produce applicant's product."
"The material would be useless unless the strands or filaments are so small and mesh with each other so exactly that the sheet appears to have a continuous surface which will lie flat and will not have any capacity to warp or curl."
By the foregoing and other amendments to the specifications, and by the claims which appear in the patent, the patentee expressly limited his patent much beyond its original disclosure.
During the prosecution of the application which ripened into 1,778,250, the applicant made amendments that had the effect of limiting that patent. Claims 1 and 2 were amended by striking out the words shown below in italics and inserting the words shown below in parenthesis:
"1. The method of making pliable a sheet composed of a flexible backing faced with wood veneer, which consists in (splitting) partially disintegrating the veneer to divide the face thereof into many narrow filaments (whose long edges follow the grain of the wood)."
"2. The method of making pliable a sheet composed of a flexible backing faced with wood veneer which consists in (breaking) dividing the veneer at least through the outer face along closely-spaced lines (following) extending in the general direction of the grain."
In making this amendment, the applicant said:
"As revised, claims 1 and 2 are believed to be allowable. Applicant's process of course has for its purpose to produce flexibility without leaving visible lines of division. This can only be done by breaking or tearing or splitting the wood. * * *
"The only feasible way of producing the product desired by applicant is to split or break or tear the wood, thereby forming breaks that are completely closed the moment the sheet is laid flat."
Both claims of 1,819,775 call for the veneer of the product to be in a ruptured state wherein "the face of the veneer is composed of a mass of small strands or filaments whose rupture contours follow the wood grain in close mesh with each other." The patentee says he does not wish to be limited to any particular way of division of the veneer into filaments but intends to cover the improved material regardless of the manner in which it is produced. He does say that:
"A very simple way is simply to draw the glued product over a knife-like bar with a blunt edge, while holding the material taut and causing it to bend where it passes over the bar; the grain of the veneer ...