National Metal Molding Co. v. Tubular Woven Fabric Co.

PUTNAM, Circuit Judge

(concurring). While I concur in the result, I think that something further is necessary to make it plain why we undertake to reverse the District Court in what it decided with great attention and care. Its opinion contains some expressions indicating that the claims in the patent, if read literally, are to be construed to cover the whole art of conduits made for any purpose, provided they contain a helical transverse construction with a longitudinal binding thread. In reading the claims alone, such might be the effect; but the specifications are introduced with the words “flexible electrical conduits,” and the product, whatever it is, is limited to such purpose according to the ordinary rules of construction.

It is not an uncommon conclusion that, while ordinarily a patented construction is infringed if applied to any use whatever, whether named in the claims or not, this is not a universal rule; but there are many circumstances under which a merely new application, especially with some change, is patentable. These cases are constantly occulting *890in practice. The authorities abound in them. A striking example, with a sufficiently full discussion of the reasons involved, and with the necessary limitations, is found in the decision of this court in Heap v. Tremont & Suffolk Mills, 82 Red. 449, 27 C. C. A. 316, decided on.August 21, 1897.

The patent at bar, in view of the fact that what had preceded it had held the field so long and been so clearly inapt and awkward, is one of this class of cases, in view, also, of the fact that the patentee’s adaptation was SO' simple and successful. It is true that the helical fornj of conduit was customary in all the arts, but it had a peculiar adaptation in meeting the strain called for in this device, and enabled the manufacturer to dispense with several awkward elements that had been before regarded necessary.

A device by Herrick had preceded the patent in suit. The District Court incidentally described what was done by the patentee as an improvement; but it spoke of it as merely structural, and therefore decided that it was competent for the respondent to rely on what was well known in the art of constructing flexible tubes, even if such tubes had not been applied to electrical nonconductors. Right here was the error on the part of the District Court, in view of the circumstances to which we have referred. Without going into the matter at length, it is enough for us to say that such is not the universal rule, and that it does not always apply under these circumstances. The patentee, indeed, accomplished in practice what, in our opinion, was an improvement; and thus he was in line with many other inventions to which we might refer.