on the supreme court of the island of this | save the expense of changing or altering special class of controversies. Such legisla- the old machines, will not justify a court tion was not contrary to the Constitution, of equity in withholding injunctive relief and was in conformity with the power con- against infringement. ferred by Congress upon the legislative assembly to regulate the jurisdiction of the

courts.

[No. 202.]

1908.

"Second. The Roman Catholic Church has Argued April 15, 1908. been recognized as possessing legal personality by the treaty of Paris, and it *proper

ty rights solemnly safeguarded. In so doing

the treaty has merely followed the recognized rule of international law which would have protected the property of the church in Porto Rico subsequent to the cession. This juristic personality and the church's ownership of property had been recognized in the most formal way by the concordats between Spain and the papacy, and by the Spanish laws from the beginning of settlements in the Indies. Such recognition has also been accorded the church by all systems of European law from the fourth century of the Christian era.

"Third. The fact that the municipality may have furnished some of the funds for building or repairing the churches cannot affect the title of the Roman Catholic Church, to whom such funds were thus ir revocably donated, and by whom these temples were erected and dedicated to religious

uses."

Decree affirmed.

(210 U. S. 405)

Decided June 1,

States Circuit Court of Appeals for the

N WRIT of Certiorari to the United

First Circuit to review a decree which affirmed a decree of the Circuit Court for the District of Maine for an accounting and for an injunction in a suit to restrain the infringement of a patent. Affirmed.

See same case below, 80 C. C. A. 407, 150 Fed. 741.

Statement by Mr. Justice McKenna: *This is a bill in equity to restrain the infringement of letters patent No. 558,969, issued to William Liddell for an improvement in paper bag machines, for making what are designated in the trade as selfopening square bags. The claims in suit do not include mechanism for making a complete bag, but only mechanism for distending one end of a tucked or bellows-folded paper tube made by other mechanism, and folding it down into a form known in the art as the "diamond fold." This fold is flattened and pasted by other mechanism and forms a square bottom to the bag.

The bill is in the usual form and alleges

CONTINENTAL PAPER BAG COMPANY, infringement of the claims by the Continen

Petitioner,

V.

tal Paper Bag Company, hereafter called the Continental Company, and prays for an ac

EASTERN PAPER BAG COMPANY, Re- counting and an injunction.

spondent.

equivalents.

1. The doctrine of equivalents may be invoked for other than pioneer patents, the range of equivalents depending upon and varying with the degree of invention.❤ Certiorari review of facts.

The answer interposed the defense of nonjurisdiction of a court of equity, noninfringement of the Liddell patent by defendant (Continental Company), and want of invention.

The allegation of the answer as to the jurisdiction of the court is as follows:

2. Concurrent findings of the courts be- "The defendant says, on information, adlow that the Liddell patent No. 558,969, vice, and belief, that a court of equity has for an improvement in paper bag machines, no jurisdiction to grant any prayer of the which combines a rotary cylinder with a bill of complaint, even if the said Liddell forming plate oscillating about its rear edge upon the surface of the cylinder, is patent, No. 558,969, were valid, and even if a broad invention, and is infringed by a the defendant's paper bag machines were to machine in which the surface of the cylin- be held to infringe that patent; because the der is depressed away from the forming said patent, No. 558,969, is a mere paper plate, while the patent adopts the device proposition which the complainant has nevof causing the pivot or axis of the former put into effect or use, and because it is ing plate to yield away from the cylinder, will not be disturbed by the Federal Supreme Court on certiorari, as clearly er

roneous.

Injunction-infringement of patent effect of nonuser.

3. Nonuser of a patent for an improvement in paper bag machines, in order to •Ed. Note.-For cases in point, see Cent. Dig.

406

contrary to equity to suppress a useful and established business, like that which the defendant is prosecuting with its paper bag machines, at the request of a complainant which simply owns one paper bag machine patent that has never been employed by*that* complainant in any way in any paper bag vol. 38, Patents, § 24.

machinery, and because the complainant in | this case has a plain, adequate, and complete remedy at law for any infringement which may have been done upon Liddell letters patent, No. 558,969."

The circuit court adjudged the patent valid as to the first, second, and seventh claims thereof; that the Eastern Paper Bag Company was the owner of the letters patent; that Liddell was the original and first inventor of the improvements described in the claims; and that the Continental Company had infringed the same. It was also adjudged that the Eastern Company recover of the Continental Company the profit the latter had made or received by the infringement. An account was ordered and a perpetual injunction decreed. 142 Fed. 479. The decree was affirmed by the circuit court of appeals. 80 C. C. A. 407, 150 Fed. 741. This certiorari was then granted.

Mr. Albert H. Walker for petitioner. Messrs. Francis T. Chambers, Samuel R. Betts, James J. Cosgrove, and Betts, Sheffield, & Betts for respondent.

* Mr. Justice McKenna delivered the opinion of the court:

The defense of want of invention in the Liddell machine is not urged here, because it is said that the decision of that question depends upon mechanical comparisons, too numerous and complicated to be conveniently made by a bench of judges, and because, though the Liddell patent approaches closely the prior art, it "perhaps covers a margin of differentiation sufficient, though barely sufficient, to constitute invention."

broad, or even merely entitled to be construed as covering obvious mechanical equivalents, the question of infringement of the claims in suit by petitioner's machine becomes mechanically, and from a patent-law standpoint, a simple one, in spite of slight differences of operation, and of reversal of some of the moving parts." The lower courts did not designate the invention as either primary or secondary. They did, however, as we shall presently see, decide that it was one of high rank and entitled to a broad range of equivalents. It becomes necessary, therefore, to consider the point of law upon which petitioner contends the question of infringement depends.

The citation is from Cimiotti Unhairing Co. v. American Fur Ref. Co. 198 U. S. 399, 49 L. ed. 1100, 25 Sup. Ct. Rep. 697, and Kokomo Fence Mach. Co. v. Kitselman, 189 U. S. 8, 47 L. ed. 689, 23 Sup. Ct. Rep. 521, was adduced to sustain the proposition. But the whole opinion must be considered, and it will be seen from the language which we shall presently quote that it was not intended to say that the doctrine of equivalents applied only to primary patents.

We do not think it is necessary to follow counsel for petitioner in his review of other cases which, he urges, sustain his contention. The right view is expressed in Miller v. Eagle Mfg. Co. 151 U. S. 186, 207, 38 L. ed. 121, 130, 14 Sup. Ct. Rep. 310, as follows: "The range of equivalents depends upon the extent and nature of the invention. If the invention is broad or primary in its character, the range of equivalents will be correspondingly broad, under the liberal construction which the courts give to such inventions." And this was what was decided in Kokomo Fence Mach. Co. v. Kitselman, Cimiotti Unhairing Co. v. American Fur Ref. Co. and Computing Scale Co. v. Automatic Scale Co. 204 U. S. 609, 51 L. ed. 645, 27 Sup. Ct. Rep. 307. It is from the

The two questions, therefore, which remain for decision, are the jurisdiction of the court and the question of infringement. We will consider the latter question first. It does not depend, counsel for the Continental Company says, "upon any issue of fact, but does depend, as questions of in-second of those cases, as we have seen, that fringement" sometimes do, upon a "point of law." This point of law, it is further said, has been formulated in a decision of this court as follows: "Where the patent does not embody a primary invention, but only an improvement on the prior art, and defendant's machines can be differentiated, the charge of infringement is not sustained." Counsel for respondent do not contend that the Liddell invention is primary within the definition given of that term by petitioner. Their concession is that it is "not basic, in It is manifest, therefore, that it was not the sense of covering the first machine ever meant to decide that only pioneer patents produced to make self-opening square bags are entitled to invoke the doctrine of equivby machinery." They do contend, however, alents, but that it was decided that the that it is one of high rank, and, if it be range of equivalents depends upon and va given a "fair construction and scope, no mat-ries with the degree of invention. See Ives tor whether we call it basic, primary, or v. Hamilton, 92 U. S. 426, 23 L. ed. 494;

the citation is made which petitioner contends the point of law upon which infringement depends is formulated; but it was said in that case: "It is well settled that a greater degree of liberality and a wider range of equivalents are permitted where the patent is of a pioneer character than when the invention is simply an improvement, maybe the last and successful step, in the art theretofore partially developed by other inventors in the same field.”

Hoyt v. Horne, 145 U. S. 302, 36 L. ed. 713, | tinental Company was necessary and a de12 Sup. Ct. Rep. 922; Deering v. Winona termination of their similarity or difference. Harvester Works, 155 U. S. 286, 39 L. ed. What was involved in these inquiries of 153, 15 Sup. Ct. Rep. 118; Walker, Patents, fact and the conclusions from them is indi362; Robinson, Patents, § 258. cated by a record of many hundred pages of expert testimony and exhibits.

in the manner in which the claims are ex

that result could be attained, and rejected its principle, and the best mode in which the contention of the Continental Company, he "contemplated applying that principle" that the invention was no broader than the and did not intend to give up all other details described in the specification. The modes of application. An inventor must court said that it was unable to see upon describe what he conceives to be the best what the proposition could be based. And mode, but he is not confined to that. further said that there was nothing in the If this were not so most patents would prior art which either broadened or nar be of little worth. "The principle of rowed the Liddell invention. "If any of the invention is a unit, and invariable; the [the nineteen patents which had beenmodes of its embodiment in the concrete input in evidence]" the court added, "pointed vention may be numerous and in appearance out any form of combining the forming very different from each other." 2 Robinplate with a rotating cylinder, they would, son, Patents, § 485. The invention, of of course, narrow what Liddell could clain; course, must be described and the mode of but they have nothing of that kind." And, putting it to practical use, but the claims speaking of the claims and their limitation measure the invention. They may be exby the description, it was said: "Nothing plained and illustrated by the description. Co. v. Greenleaf, 117 U. S. 554, 29 L. ed. They cannot be enlarged by it. Yale Lock 952, 6 Sup. Ct. Rep. 846. Snow v. Lake ed. 1004, 7 Sup. Ct. Rep. 1343, is a case Shore & M. S. R. Co. 121 U. S. 617, 30 L. where a claim was limited by a description of the device, with reference to drawings. The court, in rejecting the contention that the description of the particular device was to be taken as a mere recommendation of the patentee of the manner in which he contemplated to arrange the parts of his ma chine, said there was nothing in the context to indicate that the patentee contemplated any alterative for the arrangement of the parts of the device. Therein the description is distinguished from the description in the Liddell patent. Liddell was plicit in the declaration that there might be alternatives for the device described and illustrated by him. He was explicit in say ing that, in place of the device for controlling the movement of the forming plate rel

pressed adopts as an element the detailed description contained in the specification. So far as the details of that description are concerned, they come within the ordinary rule of the preferable method."

We think it is clear that the court con

sidered that Liddell sought to comply with § 4888 of the Revised Statutes (U. S. Comp. Stat. 1901, p. 3383). In other words, he filed a description of his invention, explained provided with one or more pairs of folding fingers adapted to be moved toward or from each other, a forming plate also provided with forming fingers adapted to be moved toward or from each other, means for operating said fingers at definite times during the formative action upon the bag tube, operating means for the forming plate adapted to cause the said plate to oscillate about its rear edge upon the surface of the cylinder during the rotary movements of said cylinder for the purpose of opening and forming the bottom of the bag tube, and connecting mechanism for timing the movements of the rotating cylinder and the formatively to the cylinder, that the plate might "be moved or operated by any other suita ing plate. ble means.

+Sec. 4888. Before any inventor or discoverer shall receive a patent for his invention or discovery, he shall make application therefor, in writing, to the Commissioner of Patents, and shall file in the Patent Office a written description of the same, and of the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same; and, in case of a machine, he shall explain the principle thereof, and the best mode in which he has contemplated applying that principle, so as to distinguish it from other inventions; and he shall particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. The specification and claim shall be signed by the inventor and attested by

two witnesses.

ex

This court said in Cimiotti Unhairing Co. V. American Fur Ref. Co. supra: "In making his claim the inventor is at liberty to choose his own form of expression; and while the courts may construe the same in view of the specifications and the state of the art, they may not add to or detract from the claim." See also Howe Mach. Co. v. National Needle Co. 134 U. S. 388, 394, 33 L. ed. 963, 967, 10 Sup. Ct. Rep. 570.

The discussion thus far brings us to two propositions: That infringement is not averted merely because the machine alleged to infringe may be differentiated from the patented machine, even though the invention embodied in the latter be not primary; and, second, that the description does not necessarily limit the claims. It is probably not contended *abstractly by the Continental Company that the description necessarily limits the claims, but only in the case