(264 F.) tained in the battery or accumulator 20, would be materially reduced within a short time." It is therefore clear that a "negligible quantity" is something materially less than that which will result in a complete or a material partial depletion of the battery within a comparatively short time. While no claim, in terms, so limits the function of the patented apparatus, yet such a limitation must be clearly read into the claims, unless we are to disregard the patentee's own statement of what differentiates his apparatus from those of the prior art. The thermal resistance in the main or primary circuit of the defendant's alleged infringing apparatus is used only in connection with an ignition system having a generator operated by the engine, and its purpose is not to reduce the current in the sense of the patent, but merely to prevent the overheating of its primary induction coil. Indeed, for engines which do not have such a generator, the defendant furnishes, or at least recommends the use of, another device which is so constructed that, when the engine is on a dwell, there can be no flow of current whatever. [3] Of course, as a thermal resistance was a well-known device of the art, the defendant has a right to use it for any other purpose than that of the patent, provided that he does not also in effect accomplish the same result or perform the same function as that claimed for the patented apparatus; especially since the extent of the resistance which it will effect, and the consequent reduction of the current which it will produce, is dependent upon the length and size of the wire used in the resistance coil. It is therefore manifest that unless the alleged infringing apparatus reduces the current, on dwells, to "substantially a negligible quantity," as that expression is above construed, it does not infringe. As found by the court below, the evidence shows that, when it was used during a test made on plaintiff's behalf, a given supply of current lasted for 39 hours and 15 minutes, and that, when the same apparatus was used without the thermal resistance, the same supply of current lasted 31 hours and 25 minutes. Likewise, the evidence on behalf of the defendant is that the final or stable current upon a dwell when the alleged infringing device is used is from 60 to 64 per cent. of its value at the inception of the dwell, and this notwithstanding that one-quarter of such reduction is effected by the rise in temperaturue and consequent resistance in the primary induction coil. The evidence, therefore, does not demonstrate, we think, that the alleged infringing apparatus reduces the flow of current on dwells to "substantially a negligible quantity," as hereinbefore defined. It accordingly follows that no infringement of the patent has been shown, so far as its function in respect to dwells is concerned. 2. Assuming, without so deciding, that there is a sufficient disclosure of the second of the before-stated functions in the specifications, and that under running conditions the thermal resistance which the defendant uses in his alleged infringing apparatus does effect a variable current as the speed of the engine varies, although manifestly the amount of current must largely, if not wholly, be dependent upon the speed of the engine, irrespective of the thermal resistance, because under running conditions the current is supplied by the generator, still we think there was no error in the decree of the court below, because, in our judgment, none of the claims which are now relied upon, when properly construed, is broad enough to embrace this feature or function. The use of a thermal resistance for the purpose of diminishing the flow of current was so well known in the electrical art that, when it was imported into a particular branch of that art, and was there used to effectuate its old and well-known purpose, and it is sought to base invention upon such use, the claims must be strictly construed. Especially is this so when the main object of the invention was to protect the battery from depletion on dwells, and the other purpose was merely subsidiary, possibly an afterthought, if, indeed, it is useful at all in an apparatus where the current is generated by the engine, and when that other purpose was specially covered by another claim (6), which is not now relied upon. A brief analysis. of claims upon which the plaintiff does rely will demonstrate that they cannot, when strictly construed, be held to cover the function now in question. In claim 4 the purpose of the thermal resistance is stated to be to diminish the flow of current "when an abnormal flow of current occurs therein"; and in claim 5 it is said to be its purpose "to protect the circuit against the continued flow of the abnormal current." Claim 7 likewise designates its function to be the increasing of the resistance in the circuit "when there is an abnormal flow of current through said circuit." There is no abnormal flow of current, in the sense of the patent, when the engine is running at low speed, when the circuit is closed and broken intermittently, with varying degrees of frequency, but only when the engine is not running at all, when the circuit remains. closed over an extended period of time, and when the flow of current is consequently continuous. The "abnormal flow" is referred to in the specifications in connection with the dwell condition alone. Hence all of these last three claims should be limited to dwell conditions. Claim 8 is, however, broader. It states that the purpose of the thermal resistance is "to limit the flow of current through the main circuit." This, by a broad construction, might be held to cover the function now under discussion. But, as before noted, it is not entitled to a broad construction. Moreover, according to the claim, the thermal resistance becomes effective by the action of the interrupter in closing the circuit. During running conditions, the circuit is intermittently opened and closed-not left closed. Therefore a strict construction of this claim likewise confines it to dwell conditions. Having thus found that there was no infringement, it becomes unnecessary to pass on the other grounds relied upon by the defendant, or the further question, which the specifications themselves suggest, whether the several claims are not, indeed, restricted solely to an apparatus using a storage battery, not charged by a generator operated by the engine, as the source of electrical supply. Upon that question we express no present opinion. The decree below is affirmed, with costs. (264 F.) FREEMAN-SWEET CO. et al. v. LUMINOUS UNIT CO.* (Circuit Court of Appeals, Seventh Circuit. October 8, 1919. On Motion for Specific Directions in the Matter of Costs and for Cancellation of Bond, March 15, 1920.) No. 2651. 1. Patents 327-Effect of prior decision on validity of patent stated. While a former decision as to the validity of a patent is not res judicata in a subsequent suit against persons not parties to the former suit, it is more than persuasive. The validity of a patent, once sustained, is not subject to complete re-examination at the instance of each subsequent alleged infringer; but, although new matter, not merely cumulative, will be given full consideration, the determination of the validity of a patent on full hearing on a contested suit will not be reconsidered, unless clearly shown to be erroneous. The Guth patent, No. 1,076,418, for an improved electric lamp, held infringed. 3. Appeal and error 1050 (2)-Evidence 43(3), 340 (1)—Uncertified copy of record in prior case inadmissible; not prejudicial; court judicially knows its records. While plaintiff's uncertified copy of its own record in an earlier patent suit was inadmissible in evidence, no harm resulted from its admission, as it was unnecessary to introduce the record, for the court takes judicial notice of its records for all proper purposes. 4. Patents 290, 291—Making defending vendor formal party defendant held improper. In patent suit in federal District Court in Illinois, seeking injunction, damages, and accounting of profit for infringement, where, at the trial, counsel of record for the sole defendant stated, in answer to inquiry, that he had been employed and was compensated by a Missouri company to defend its vendee, defendant, it was improper, over counsel's objection, to make the Missouri company a defendant and compel it to submit to an accounting in Illinois, where it had no regular and established place of business, for all infringements committed in the course of its business in Missouri; its employment of counsel for defendant and his frank statement of the facts not being a general appearance by the company as defendant, although as privy it would be bound by the decision as to validity and infringement. 5. Patents 323, 324(4)—Decree determining validity "final decree"; appeal not dismissed because patent was surrendered and reissue granted. Since a decree determining validity and infringement of a patent and granting a permanent injunction is final in essence, even though interlocutory in time relation, the cause wherein such a decree has been entered will not be dismissed on appeal therefrom because, after appeal, the original patent was surrendered and a reissue patent granted, for the rights of the parties are determined as of the date of such a decree, and subsequent surrender of the patent does not involve abandonment of such rights. [Ed. Note.-For other definitions, see Words and Phrases, First and Second Series, Final Decree or Judgment.] On Motion for Specific Directions in the Matter of Costs and for Cancellation of Bord. 6. Patents 317-Bond for stay of injunction held valid. In patent infringement suit, although defendant's vendor, defending the suit for defendant, was improperly made defendant, yet in the deFor other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes Certiorari denied 252 U. S. 40 Sup. Ct. 482, 64 L. Ed. —. cree provision for stay of the injunction against both defendants, if the vendor gave a bond for damages and profits "which it may finally be decided plaintiff is entitled to recover from either defendant," was not erroneous in requiring the bond from the vendor, as, by giving the bond, the vendor secured the desired stay for its vendee, nor was the validity of the bond itself affected by the fact that the injunctional order was void as against the vendor, and a stay as against it therefore unnecessary. 7. Patents 325-Costs recoverable by defendant only to extend improper joinder affected appeal. Where the nonresident vendor, defending suit for patent infringement for defendant, its vendee, was improperly made defendant by the lower court, it can recover of plaintiff only such costs paid by it as were due to its joining in the appeal, and costs which were or would have been necessary if the vendee had been the sole appellant will be taxed against vendee defendant, unsuccessful on appeal. Appeal from the District Court of the United States for the Eastern Division of the Northern District of Illinois. Suit by the Luminous Unit Company against the Freeman-Sweet Company and the Reflectolyte Company. From a decree for complainant (249 Fed. 876), defendants appeal. Affirmed as to FreemanSweet Company, and as to the Reflectolyte Company reversed, with directions. Paul Bakewell, of St. Louis, Mo., for appellants. Dodson & Roe, of Chicago, Ill. (Harry Lea Dodson, of Chicago, Ill., of counsel), for appellee. Before BAKER, MACK, and EVANS, Circuit Judges. MACK, Circuit Judge. The opinion sustaining the validity of letters patent No. 1,076,418 and finding infringement of claim 1, but not of claim 2, thereof, is reported in 249 Fed. 876. In a prior suit by appellee against R. Williamson & Co., both claim 1 and claim 2 were found valid and infringed. 241 Fed. 265, affirmed in this court 245 Fed. 988, C. C. A.-. The facts, except those hereinafter set forth, bearing upon the making of appellant the Reflectolyte Co., a party defendant, will be found fully stated in these opinions. [1] 1. This former decision, to which these appellants were not parties, is, of course, not res adjudicata as to them. But it is more than persuasive; the validity of a patent, once sustained on appeal by this court, is not subject to complete re-examination at the instance of each subsequent alleged infringer. Unless clearly shown to be erroneous, the determination by this court of the validity of a patent on full hearing in a contested suit, will not be reconsidered. New matter, not theretofore introduced in evidence, and not merely cumulative in character, will be given full consideration; even the conclusions reached on the former evidence may be challenged as clearly erroneous. But the fact that alleged anticipating patents, or the file wrapper and contents, though in the record, are not specifically discussed in the earlier opinion, is of course, far from a demonstration, or even a suggestion, that they were not duly weighed or that the conclusions reached on the former record are clearly wrong. We have, however, in view of the earnest appeal of counsel, re For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes (264 F.) examined these matters, as well as the additional patents and other evidence appearing in this record; the latter is clearly but cumulative; the former does not change the conclusions heretofore arrived at as to the validity of the claims. [2] 2. Infringement.-While the language of the claims was changed from time to time to meet the Examiner's objections, at no time did the applicant, either voluntarily or to meet a specific objection, limit himself to a "wholly flat" reflector. In fact, the omission from claim 1 of the word "wholly," used in claim 2, is a clear indication that applicant did not intend to make an absolutely flat form an essential element in the claim, so as to waive any equivalent that would secure the same result in substantially the same manner. Giving the claim only the most limited range of equivalents, in holding it to cover, as an element in the combination, a reflector not absolutely flat, but deviating therefrom only to an extent that no substantial change whatsoever in function, result, or operation is thereby involved, defendants clearly infringe. [3] 3. While an uncertified copy of its own record in the earlier case was inadmissible in evidence, no harm resulted, inasmuch as it was unnecessary to introduce the record; the court takes judicial notice of its records for all proper purposes. The copy, however, was not introduced, and was not used for the improper purpose of bringing into this case, as evidence bearing upon the merits of the controversy, the testimony there given; the sole purpose was to show on what matters the decision in the former case was or might have been based, so as to make clear the extent and the bearings of the conclusions there reached. [4] 4. At the trial, counsel of record for the sole defendant Freeman-Sweet Company, stated, in answer to an inquiry, that he had been employed and was compensated by the appellant, the Reflectolyte Company to defend this suit brought against its vendee; he conceded that it was privy to the case and that the decision to be rendered would be res adjudicata as to it as well as to the Freeman-Sweet Company, on the questions of validity and infringement, but he objected to having his employer appellant the Reflectolyte Company, made a party defendant to this suit, claiming for it the privilege of not being sued in a jurisdiction of which it was not an inhabitant and in which it had no regular and established place of business. Specifically counsel urged that damages claimed for unfair competition could not be adjudicated against it, a citizen of the same state as plaintiff. Thereupon plaintiff specifically disclaimed any recovery against either appellant on this ground, limiting the suit to injunction, damages, and accounting of profit for infringement. But counsel did not thereupon consent to the jurisdiction of the court over this appellant; his objection to its being made a party defendant, as distinguished from a privy remained, and the objection, in our judgment, was valid. Without its consent, the court was powerless to compel this appellant to submit to an accounting in Illinois, for all infringements committed in the course of its business in Missouri. While as privy it was bound by the decision as to validity and infringe |