Full opinion text
BARNES, District Judge. This consolidated cause came on for hearing on two amended complaints, both filed on February 16, 1942, one by W. F. . & John Barnes Company and Odin Corporation against International Harvester Company and Ex-Cell-O Corporation, and the other by John S. Barnes Corporation and Odin Corporation against the same defendants, and on an amended answer thereto, filed June 19, 1942, and two amendments to said amended answer filed, respectively, on July 2, 1942, and August 29, 1942. The amended complaints charge infringement of eleven United States patents on certain machine tools, hydraulic systems used in machine tools, and valves for directing the flow of fluid in such systems. The patents involved are: 1. Svenson 1,924,422, for a “Valve Construction,” issued August 29, 1933, on an application filed November 16, 1929, and containing 43 claims, of which 16 are in suit; 2. Svenson 1,986,862, for a “Fluid Controlling Means,” issued January 8, 1935, on an application filed November 16, 1929, and containing 29 claims, of which 22 are in suit; 3. Svenson 2,036,162 for a “Machine Tool Unit,” issued March 31, 1936, on an application filed September 13, 1930, and containing 28 claims, of which 11 are in suit; 4. Svenson 2,178,364 for a “Material Working Apparatus,” issued October 31, 1939, on an application filed September 13, 1930, and containing 15 claims, of which 3 are in suit; 5. Svenson 2,174,850, for an “Hydraulic Control and Actuator Mechanism,” issued October 3, 1939, on an application filed December 21, 1931, and containing 37 claims, of which 2 are in suit (two were dismissed out during the trial) ; 6. Barnes, Guiri & Johnson 2,098,220 for a “Material Working Apparatus,” issued November 9, 1937, on an application filed August 12, 1932, and containing 48 claims, of which 7 are in suit; 7. Svenson 2,078,695 for an “Automobile Lathe and Fluid Circuit,” issued April 27, 1937, on an application filed March 27, 1930, and containing 219 claims, of which 18 are in suit; 8. Svenson 2,215,257 for a “Material Working Apparatus and Control Therefor,” issued September 17, 1940, on an application filed August 11, 1933, and containing 90 claims, of which 13 are in suit; 9. Barnes & Guiri 2,020,868 for a “Boripg Machine and the Like,” issued November 12, 1935, on an application filed January 18, 1930, and containing 35 claims, of which 21 are in suit; 10. Walker 1,493,301 for a “Power Control for Boring Machines,” issued May 6, 1924, on an application filed July 30, 1921, and containing 43 claims, of which 6 are in suit; and 11. Barnes & Guiri 2,042,379 for a “Metalworking Apparatus,” issued May 26, 1936, on an application filed February 14, 1931, and containing 44 claims, of which 10 are in suit. The principal subject of study during the trial has been the hydraulic systems used in machine tools. A hydraulic system may be a volumetric system or a constant pressure system. A volumetric system is one in which all the fluid that is pumped by the pump goes to the actuator or actuators, and in such a system the speed of the actuator may be controlled by means of a variable delivery pump. Figure 1, hereinafter set forth, illustrates a simple volumetric system. A constant pressure system is one in which a certain maximum pressure is not permitted to be exceeded. This result is accomplished by placing in the system between the pump and the actuator a working pressure relief valve set to let liquid pass out of the system at the predetermined maximum pressure. In such a system the speed of the actuator may be controlled by means of a restricted orifice and the working pressure relief valve. The restricted orifice may be in the flow line, as in Figure 2 hereinafter set forth. The restricted orifice may be in the return line, as in Figure 3, hereinafter set forth: A simple hydraulic system comprises a sump or tank, a pump, and (in the jargon of the machine tool trade) an actuator, which may be a cylinder and piston, together with the pipes or conduits connecting all of the foregoing. A slightly less simple system might include (in addition to the foregoing) a reversing valve to direct the fluid to one end or the other of the actuator. A slightly less simple system might include (in addition to the foregoing) a restricted orifice in the flow line either between the pump and the reversing valve, or between the reversing valve and the actuator, or in the return line either between the actuator and the reversing valve, or between the reversing valve and the sump, and a “working pressure relief valve.” A less simple system might include (in addition to the foregoing) a selector valve for cutting the restricted orifice into or out of the system. A less simple system. might include (in addition to the foregoing) a larger or smaller orifice (so as to provide two feed rates) and a selector valve to cut one or the other of them in and out of the system. The system may be made somewhat more complicated by using two pumps —a large volume, low pressure pump and a small volume, high pressure pump — the former for the purpose principally of supplying a large quantity of liquid at low pressure for moving the tool head in so-called “rapid forward traverse” or “rapid reverse traverse,” and the latter for the purpose principally of supplying a small quantity of liquid at high pressure for moving the tool head in “feed forward” or “feed reverse.” The relationship of the flows of the two pumps may vary in respect of volume, pressure, and particularly, source of supply and time of flow. Different systems may have different so-called “cycles” and a given system may be so devised that its “cycle” may be changed. A simple cycle might have the following sequence: Neutral, rapid forward traverse, feed forward, rapid reverse traverse, and neutral. A single actuator may advance .and retract the tool head in a machine having a single tool head. A system may be greatly complicated by adding one or more additional actuators. Many actuators may each advance and retract a tool head in machines having many tool heads. An actuator may advance and retract the platen holding the work piece (jargon for the material to be worked). The relationship of the movements of the tool head to the movements of the platen holding the work piece may be varied in many particulars. With so many elements which may be put together, it is obvious that the possible combinations or aggregations which may be assembled are innumerable. Many of the questions of validity in the case at bar are questions as to whether or not the putting together in one system or machine of a few or many of the foregoing elements involved invention at the time the patentee put them together and claimed them in the patents in suit. Of the Effect as Estoppels or Otherwise of Certain Interference Proceedings in the Patent Office. On the facts next hereinafter set forth, plaintiffs contend that the defendant Ex-Cell-0 Corporation suffers the constraints and embarrassments of (a) inconsistency, (b) admissions, and (c) estoppel in its arguments as to validity and infringement of Svenson 1,924,422 and 1,986,862. Svenson 1,924,422 issued August 22, 1933, on an application filed November 16, 1929. Svenson 1,986,862, issued January 8, 1935, on an application filed November 16, 1929. Alden application Ser. No. 690,525, was filed September 22, 1933, as a division of Alden 2,000,553, filed March 17, 1932, and issued May 7, 1935. The filing date of each of the Svenson patents is, therefore, prior to the effective filing date of Alden, namely, March 17, 1932. The Svenson patents were assigned to John S. Barnes Corporation, one of the parties, and were owned by that corporation during all of the interference and until recently, when they were assigned to Odin Corporation, another of the plaintiffs. The Alden application was assigned to Ex-Cell-0 Corporation, one of the defendants. The Alden application in interference makes substantially the same disclosure as does Alden 2,000,553, the parent. Generally speaking, the unissued application makes claims to hydraulic features, while the issued patent claims mechanical features. Alden 2,000,553 is conceded by the defendants to be a correct representation of their so-called First Senior System. So far as infringement of Svenson 1,986,862 is concerned, there is no substantial difference between the First Senior System and other structures accused under that patent. An interference, No. 71,653, was declared by the Patent Office between Svenson 1.924.422, on the one hand, and the Alden application 690,525, on the other. The record in that interference has been made, briefed, and was argued on May 26, 1942, but no decision by the Primary Examiner has been rendered. Svenson 1,924,422 was cited against the Alden application on December 12, 1933, four months after the Svenson patent issued. On June 18, 1934, Alden filed an affidavit under Rule 75 of the Patent Office to swear back of Svenson’s filing date. In its action of May 27, 1935, the Patent Office again cited Svenson 1.924.422, stating that reference could not be overcome by affidavit under Rule 75 because certain claims of Svenson 1,924,422 were readable upon the disclosure of the Alden application. Alden was given until June 27, 1935, to make the claims of Sven-son if he desired to contest the issue of priority. On June 22, 1935, and again on July 8, 1935, Alden filed request for extension of time, and, after three months’ extension of time, on September 17, 1935, an amendment was filed copying Svenson 1.924.422, claims 5,' 33, 38 and 40 to secure a declaration of interference. The defend ant, Ex-Cell-O Corporation, has taken no steps to change its position on this matter, in the Patent Office. As to Svenson 1,986,-862, Alden and. his assignee, Ex-Cell-0 Corporation, copied claims 1, 2, 3, 4, 6, 7, 8, 12, IS and 16 on April 27, 1936. In Svenson l,92f,422, an interference was suggested to Alden and Ex-Cell-O Corporation, but Alden and Ex-Cell-O Corporation sought the interference as to Svenson 1,986,862. When the claims were copied from Svenson 1,986,862, there was added to the Alden application Fig. 4-A to show specifically the structure of the relief valve 120, which theretofore had been shown only by a conventional rectangle. The reason assigned for adding the figure was so that the in-, ternal structure of the relief valve might be shown. Under the Patent Office rules, when claims are copied to provide an interference at the initiation of the copier, that applicant must apply the copied claims to his disclosure. This Alden and Ex-Cell-0 Corporation did. There has been no decision in the Patent Office. In August, 1941, an answer was filed in the suit at bar denying validity and infringement of Svenson 1,924,422 and 1,986,-862. On the facts above set forth, the plaintiffs contend: (1) That the inconsistency of attempts to secure a patent and later pleading invalidity of the patent which a junior in-' ventor secures is an evidentiary fact which courts consider, that which is equitable or inequitable being determined on the facts of each case (citing: Hutchins Car Roofing Co. v. Standard Ry. Equipment Co., 7 Cir., 259 F. 226, 228; Cutler-Hammer Mfg. Co. v. General Electric Co., 7 Cir., 6 F.2d 376, 377; Russell v. J. P. Seeburg Corp., 7 Cir., 123 F.2d 509, 511; and Penn Electric Switch Co. v. United States Gauge Co., 7 Cir., 129 F.2d 166, 169); (2) That the naked fact of inconsistency on the question of validity does not pursue the offender to afford a basis for estoppel at some later date (citing: Paramount Publix Corporation v. American Tri-Ergon Corp., 294 U.S. 464, 476, 55 S.Ct. 449, 79 L.Ed. 997); and (3) That a party is estopped to shift position in respect of infringement (citing: Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959, 962; Jones v. Morehead, 68 U.S. 155, 158, 1 Wall. 155, 17 L.Ed. 662; Cheatham Electric Switching Device Co. v. Brooklyn Rapid Transit Co., 2 Cir., 238 F. 172, 175; and Overland Motor Co. v. Packard Motor Car Co., 7 Cir., 30 F.2d 497). The plaintiffs contend that the foregoing, principles bind the defendant, Ex-Cell-O Corporation, the assignee of Alden. The Ex-Cell-O Corporation says that it is not estopped to deny either validity or infringement of Svenson 1,924,422 and 1,986,862, and it denies that any word or act of it or of its assignor in the Patent Office interferences should be held here to be an admission of either validity or infringement. It is well settled, as the Ex-Cell-0 Corporation contends, and as the plaintiffs concede, that, under the circumstances here disclosed, Ex-Cell-0 Corporation is not estopped to deny validity. Paramount-Publix Corporation v. American Tri-Ergon Corp., 294 U.S. 464, 477, 55 S.Ct. 449, 79 L.Ed. 997; Haughey v. Lee, 151 U.S. 282, 285, 14 S.Ct. 331, 38 L.Ed. 162; and Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959-961. In order to determine the effect here, by way of admission, of what the Ex-Cell-O Corporation did in the Patent Office, it will be well to determine, with some accuracy, what it could do there and what it did do. Svenson 1,924,422 had issued when the Patent Office declared an interference between it and the Alden application, and Svenson 1,986,862 likewise had issued when Alden and his assignee Ex-Cell-O Corporation copied claims from it. The only issue that there could be in the interference was as to priority of invention (Sec. 52, 35 U.S.C.A.; United States ex rel. Lowry v. Allen, 203 U.S. 476, 27 S.Ct. 141, 51 L.Ed. 281; Hendrickson & Nelson v. Ronning & Ronning, 76 F.2d 137, 140, 22 C.C.P.A., Patents, 1040; McElrath v. Industrial Rayon Corp., D.C., 35 F.Supp. 198, 209, 210, affirmed 4 Cir., 123 F.2d 627; Campbell v. Dyson v. Dunham, 1917C.D. 56, 58; Dunkley Co. v. Central Cal. Canneries, 9 Cir., 7 F.2d 972, 977; Westinghouse v. Hien, 7 Cir., 159 F. 936, 941, 24 L.R.A.,N.S., 948; Hillard v. Remington Typewriter Co., 2 Cir., 186 F. 334; Dooley Improvements v. Motor Improvements, D.C., 18 F.Supp. 340), and the question of validity of the claims in interference over the prior art could not be put in issue (Patterson v. Neher, 1913 C.D. 143; Campbell v. Dyson v. Dunham, 1917 C.D. 56, 58). In the last mentioned case, it is said: “An interference is not a proceeding to determine whether the parties have a right to a patent. It starts with the assumption that both parties have a clear right to a patent except for the simultaneous claim of the other. Each party is presumed to have a right to the patent otherwise, but to be barred by the claim of the other. The contest is therefore as to which of two inventors, each with a clear right, was the first to invent. * * * ” When the Patent Office declared the interference between Svenson 1,924,422 and the Alden application, Alden and his assignee were confronted with the necessity either of conceding priority to Sven-son or of joining in the interference. The plaintiffs suggest that some sort of moral turpitude attaches' to Alden and his assignee Ex-Cell-O Corporation because they chose to contest priority in the interference and because they did not there concede priority and await suit for patent infringement. The court cannot find bad morals there. And it is suggested that a greater degree of moral turpitude attaches to Alden and his assignee because of their action as regards Svenson 1,986,-862 since they there sought the interference. But they were already involved in a law suit not of their seeking involving patent claims on devices used in hydraulic systems on machine tools, which devices included orifices, and the claims of Svenson 1,986,862 which they copied described devices of that general class. The court cannot find moral turpitude in those facts. Having been forced into a law suit, it was but natural that Alden and his assignee Ex-Cell-0 Corporation should desire to have all like issues between the parties to that law suit decided in that law suit. However, the plaintiffs say that the interference proceeding in the Patent Office cost them a large sum of money, and that they are now having to fight this (another) law suit. The court can well believe that the interference proceeding cost each side large sums of money. Litigation usually costs money. But why the plaintiffs should complain of this law suit, the court cannot understand. They started it. Had they refrained from suing here and awaited the action of the Patent Office they would doubtless, in the course of time, have had a decision of the issues submitted to the Patent Office and would, in that way, have received consideration for the money they spent in fighting the interference. The court does not mean to infer that the plaintiffs have done wrong by filing and prosecuting this law suit. They were at liberty to do so, but, doing so, they indulge in the luxury of two law suits. So far as morals are concerned in the matters now under consideration, the parties are on the same plane. They are rival manufacturers, competing with each other by means of patent claims and patent litigation, each seeking to establish and maintain the monopolies which patents grant and to prevent its rival from establishing and maintaining like monopolies. The court certainly cannot say that the defendants have been more active in these respects than the plaintiffs. It is well to remember the sort of alleged admissions that are by the plaintiffs said to have been made by Alden and Ex-Cell-) Corporation and that are relied on by the plaintiffs. The alleged admissions of validity are not direct admissions of validity; on the contrary, they are a sort of implied admissions which are claimed to have arisen out of the failure of the defendants, when interferences were declared, to concede priority and await suit for infringement. Likewise, the alleged admissions of infringement are not direct admissions of infringement; on the contrary, they are a sort of implied admissions which are claimed to have arisen out of the application by the defendants of claims of Svenson 1,986,862 to the disclosure of the Alden application, coupled with evidence here that the defendants’ First Senior System is an exemplification of the disclosure of the Alden application and that, so far as infringement of Svenson 1,986,862 is concerned, there is no substantial difference between the First Senior System and other structures accused under this patent. These are both rather long journeys which the plaintiffs are compelled to take to spell out admissions. Furthermore, the alleged admissions are as to the validity of patent claims for complicated devices and machines and as to infringement of certain of those claims. When one says that any one of those claims is either valid or invalid, or that it is or is not infringed, he expresses a conclusion, which, if it be a considered conclusion, has been arrived at only after a consideration of many, many facts which it has taken expert counsel many weeks to put before this court, and which conclusion will be at odds with the opinion of an expert on one side or the other. Questions as to the validity of patent claims are questions of fact (Thomson Spot Welder Co. v. Ford Motor Co., 265 U.S. 445, 447, 44 S.Ct. 533, 68 L.Ed. 1098; Williams Mfg. Co. v. United Shoe Machinery Corp., 316 U.S. 364, 62 S.Ct. 1179, 86 L.Ed. 1537; Sturtevant Co. v. Massachusetts Hair & Felt Co., 1 Cir., 122 F.2d 900, 906; Gilchrist v. F. B. Mallory Co., D.C., 281 F. 350, 352), and questions as to the infringement of patent claims are likewise questions of fact (Stilz v. United States, 269 U.S. 144, 147, 46 S.Ct. 37, 70 L.Ed. 202; Aluminum Co. v. Thompson Products, 6 Cir., 122 F.2d 796, 799; Wilson v. Haber Bros., 2 Cir., 275 F. 346; Laclede Christy Clay Products Co. v. St. Louis, D.C., 270 F. 338), and one may, of course, make admissions of fact. But an expression of validity or invalidity or of infringement or non-infringement of any one of the patent claims now under consideration is a conclusion of fact, based upon many, and some conflicting, evidentiary facts. And, accordingly, it seems to the court that, aside from all authority, except some fundamental authority, which points out the reason for permitting the use of admissions in evidence and the limitations upon such use, admissions, if they are admissions such as those now under consideration, should be permitted to be relied on only with great caution, One authority which may be regarded as fundamental is Greenleaf’s Evidence. There, in Vol. I, 15th Ed., Section 204, it is said: “With regard, then, to the conclusiveness of admissions, it is first to be considered, that the genius and policy of the law favor the investigation of truth by all expedient and convenient methods; and that the doctrine of estoppels, by which further investigation is precluded, being an exception to the general rule, founded on convenience, and for the prevention of fraud, is not to be extended beyond the reasons on which it is founded.” The “convenience” there referred to, whether it be that of the court or of counsel or of both, cannot be served here. Counsel have put in all of the evidence bearing on the issues of both validity and infringement and the court has heard it all. No time will be saved by recourse to admissions. The court has expressed the opinion that the conduct of the defendants has not involved bad morals, and, accordingly, there can be no fraud to warrant recourse to admissions by the defendants. In this connection, if there has been any inequitable, as distinguished from fraudulent, conduct on the part of either side, it has been on the part of the plaintiffs in failing to await the decision of the Patent Office on the issue of priority and in instituting and prosecuting this suit without awaiting the decision of the Patent Office. Had the plaintiffs awaited the action of the Patent Office on the issue of priority and had they won on that issue, then when they sued the defendants for making, using or selling machines made in accordance with the disclosures of defendants’ application which had been in interference one could come nearer figuring out a reason why (the rights of the public being disregarded) the defendants should be estopped to deny both validity and infringement. But when the plaintiffs refuse to await the action of the Patent Office on the issue of priority and bring suit as they have here, prior to the decision of the Patent Office, then they have refused to pay the consideration for the implied admissions of the defendants which they rely upon. Furthermore, the Federal Rules of Civil Procedure, 28 U.S.C.A. following section 723c', seem to the court to indicate a policy against extending the doctrine of estoppel by reason of mere pleadings and admissions in testimony in another law suit which has never been determined. The rules which should be considered in this connection are: Rule 8(e) (2), which provides that “A party may * * * state as many separate claims or defenses as he has regardless of consistency * * Rule 15(a), which provides that leave to amend pleadings “shall be freely given when justice so requires;” and Rule 15(b), which provides: “If evidence is objected to at the trial on the ground that it is not within the issues made by the pleadings, the court may allow the pleadings to be amended and shall do so freely when the presentation of the merits of the action will be subserved thereby and the objecting party fails to satisfy the court that the admission of such evidence would prejudice him in maintaining his action or defense upon the merits. The court may grant a continuance to enable the objecting party to meet such evidence.” The question whether a party should be estopped to shift position in respect of infringement is an interesting one. It will probably be conceded that, with the exception of the question of interest or lack of interest by the public in the question, the question of infringement is much like the question of validity so far as estoppels and admissions are concerned. The public is said to have an interest in the question of validity, so that a person who has sought a patent on a device which is covered by a patent issued to another is not estopped to deny validity of the other’s patent. Haughey v. Lee, 151 U.S. 282, 285, 14 S.Ct. 331, 38 L.Ed. 162; Paramount Publix Corp. v. American Tri-Ergon Corp., 294 U.S. 464, 474, 55 S.Ct. 449, 79 L.Ed. 997; Allbright-Nell Co. v. Autosteam Process Co., 7 Cir, 70 F.2d 959; Kellogg Switchboard & Supply Co. v. Michigan Bell Tel. Co., 6 Cir, 99 F.2d 203, 205; McElrath v. Industrial Rayon Corp., 4 Cir., 123 F.2d 627, 629. But there remains the exceedingly interesting question as to whether or not the public has an interest in the question of infringement. When one is considering the question of validity of a patent claim from the viewpoint of anticipation or invention, one compares the claim with the pertinent prior art, and when one is considering the question of infringment of a patent claim one compares the accused machine with the patent claim after .first determining the breadth of the claim by a consideration of the pertinent prior art. It is difficult to see why the public should be more interested in striking down an invalid patent claim as invalid than it should be in having a patent claim, which in the light of the pertinent prior art is narrow in scope, adjudged to be narrow in scope. From the viewpoint of the public, exactly the samei principles are applicable in both cases. The public is interested in seeing that a monopoly not based on an invention is destroyed, and it should be interested in seeing that a monopoly is no broader than the invention. If the court did not feel itself bound by precedent in this circuit, it would be inclined to hold that the public has an interest in the question of infringement so that one may not be estopped to deny infringement (consider the analogy of Westinghouse Electric & Mfg. Co. v. Formica Insulation Co., 266 U.S. 342, 45 S.Ct. 117, 69 L.Ed. 316). However, in considering the questions of infringement of Svenson 1,986,862, the court will bear in mind the rule, announced in Allbright-Nell Co. v. Autosteam Process Co., 7 Cir., 70 F.2d 959, that a party may be estopped to shift position in respect of infringement, and what appears to be an exception to the rule, expressed by Judge Baker in L. P. Larson, Jr., Co. v. William Wrigley, Jr., 7 Cir., 253 F. 914, 918, as follows: “ * * * unless the court can find an absolute demonstration from other evidence in the case or from facts within judicial notice, like the laws of physics, etc, that under no circumstances could the averments and admissions be true.” In considering the question of alleged estoppels and admissions arising out of interferences, the court has not ascended into the rarified atmosphere that seems to be ncessary for the consideration of the alleged differences in construction of patent claims in interferences and in infringement suits. The defendants' contend that there are such differences. The plaintiffs have not argued the subject. The court contents itself with observing that, if there are the differences as contended by the defendants, then there is an additional reason why the defendants should not be bound by alleged estoppels and admissions. Since writing the foregoing on the question of estoppels, the court has read Gilbert v. General Motors Corp., 2 Cir., 133 F.2d 997, at page 1002, decided February 23, 1943, where it is said (Italics supplied): “Although the foregoing would ordinarily require the affirmance of the decree the plaintiff insists that in the interference proceedings Dyer, whose application was then owned by the defendant, admitted that his invention was identical with that of the plaintiff. For the purposes of those proceedings the adoption by Dyer of a claim identical with that of the plaintiff was an admission that their conceptions were the same. Ewing v. United States ex rel. Fowler Car Co., 244 U.S. 1, 37 S.Ct. 494, 61 L.Ed. 955. But in those proceedings the sole issue was priority of invention. United States ex rel. Lowry v. Allen, 203 U.S. 476, 27 S.Ct. 141, 51 L.Ed. 281; Ewing v. United States ex rel. Fowler Car Co., supra. Neither Dyer nor the plaintiff prevailed and no authority has been called to our attention, and we have found none, to the effect that either was thereby estopped from later asserting as against the other such rights as might be his on the actual facts under the law.” Of the Status, as Prior Art, of Patents Issued on Earlier Filed Applications Co-pending with That of a Patent in Suit. An issue in the case has been the question as to the status, as prior art, of patents issued on earlier filed applications co-pending with that of a patent in suit. Plaintiffs’ position is “that a patent resulting from an earlier filed but co-pending application with that of a patent in suit is not prior art, cannot be considered as showing the state of the art, and cannot be considered in combination with prior art or other co-pending applications;” and that “such an application is relevant only on the question of prior invention.” Defendants’ position is that “plaintiffs’ contention must be rejected in so far as it attempts to set up any different standard for appraisal of a co-pending reference as prior art, as distinguished from any other prior art patent.” A leading case on this general subject is Alexander Milburn Co. v. Davis-Bournonville Co., 270 U.S. 390, 46 S.Ct. 324, 70 L.Ed. 651. There, the defendants relied upon a patent of Clifford to defeat a patent of Whitford, the Clifford patent having been issued upon an application filed earlier than that of Whitford. The court said Clifford’s application gave a complete and adequate description of the thing patented to Whitford, but did not claim it. The court held the later filed Whitford patent invalid, and said, at page 401 of 270 U.S., at page 325 of 46 S.Ct. (Italics supplied): “The delays of the patent office ought not to cut down the effect of what has been done. The description shows that Whitford was not the first inventor. Clifford had done all that he could do to make his description public. He had taken steps that would make it public as soon as the Patent Office did its work, although, of course, amendments might be required of him before the end could be reached. We see no reason in the words or policy of the law for allowing Whitford to profit by the delay and make himself out to be the first inventor when he was not so in fact, when Clifford had shown knowledge inconsistent with the allowance of Whitford’s claim, (Webster) Loom Co. v. Higgins, 105 U.S. 580, 26 L.Ed. 1177, and when otherwise the publication of his patent would abandon the thing described to the public unless it already was old. McClain v. Ortmayer, 141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800; Underwood v. Gerber, 149 U.S. 224, 230, 13 S.Ct. 854, 37 L.Ed. 710. "The question is not whether Clifford showed himself by the description to be the first inventor. By putting it in that form it is comparatively easy to take the next step and say that he is not an inventor in the sense of the statute unless he makes a claim. The question is whether Clifford’s disclosure made it impossible for Whitford to claim the invention at a later date. The disclosure would have had the same effect as at present if Clifford had added to his description a statement that he did not claim the thing described because he abandoned it or because he believed it to be old. It is not necessary to show who did invent the thing in order to show that Whitford did not. % sjc if; “As to the analogies relied upon below, the disregard of abandoned patent applications however explained cannot be taken to establish a principle beyond the rule as actually applied. As an empirical rule it no doubt is convenient if not necessary to the Patent Office, and we are not disposed to disturb it, although we infer that originally the practice of the Office was different. The policy of the statute as to foreign inventions obviously stands on its own footing and cannot be applied to domestic affairs. The fundamental rule we repeat is that the patentee must be the first inventor. The qualifications in aid of a wish to encourage improvements or to avoid laborious investigations do not prevent the rule from applying here.” The Milburn case decided that a patent issued on a co-pending earlier filed application was prior art, as of its filing date, despite the failure of the earlier applicant to claim the subject matter in question. It has been contended, and is contended at bar, that the Milburn case left open the question as to whether or not the disclosure of the earlier filed application may be supplemented by reference to the general state of the art in the manner customary in construing other prior art patents, and particularly left open the question as to whether the doctrine of equivalents may be applied in considering the effect of the earlier filed but co-pending application upon the later filed application. In Minnesota, etc., Co. v. Coe, 100 F.2d 429, 431, 69 App.D.C. 256 certiorari denied 306 U.S. 662, 59 S.Ct. 788, 83 L.Ed. 1059, it was contended that patents issued on earlier filed but co-pending applications could not be. combined with each other and with other references to defeat the claimed invention, and that the Milburn case is authority solely for the proposition that a co-pending reference may be relied upon to defeat a claim of first invention, only, when it, alone, gives a “complete and adequate description” of the thing for which the later applicant seeks a patent. The United States Court of Appeals for the District of Columbia, 69 App. D.C. at pages 258 and 259, 100 F.2d at pages 431 and 432, said: “ * * * But such a conclusion cannot properly be drawn from that case, even though it chanced that the application therein did give a complete and adequate description of the thing patented to the later applicant. The important consideration was that the co-pending application disclosed knowledge upon the part of the earlier applicant inconsistent with the allowance of the later applicant’s claim. * * * * * “Whether or not the co-pending applications could properly be considered, therefore, to show the prior art in the technical sense, they were properly considered to determine whether they disclosed knowledge upon the part of the prior applicants inconsistent with appellant’s claim of first invention. Stelos Co., Inc., v. Hosiery Motor-Mend Corp., 2 Cir., 72 F.2d 405, affirmed 295 U.S. 237, 55 S.Ct. 746, 79 L.Ed. 1414; In re Youker, 77 F.2d 624 [22 C.C.P.A., Patents, 1294], They did disclose such knowledge and, hence, Brown and Klein were not the first inventors. * * * # * * “The question has been considered and decided adversely to appellant’s contention, also, by the United States Court of Customs and Patent Appeals in Re Youker, supra; by the Circuit Court of Appeals for the Sixth Circuit in Ottinger v. Ferro Stamping & Mfg. Co., 59 F.2d 640, 643; by the Circuit Court of Appeals for the Second Circuit in Hazeltine Corp. v. Abrams, 79 F.2d 329; and by the Circuit Court of Appeals for the Fourth Circuit in Denaro v. Maryland Baking Co., 50 F.2d 1074, which adopted the opinion of the lower court reported in, D. C., 40 F.2d 513, 515, 516.” The same court, in 1941, in the case of Dyer v. Coe, 75 U.S.App.D.C. 125, at page 129, 125 F.2d 192, at page 196, adhered to its earlier holding, and said: “ * * * We think it can- be regarded as settled law that co-pending applications which, either singly, or in combination with previous patents or other co-pending applications, or both, disclose knowledge inconsistent with a claim of first invention, are available as references.” The Court of Customs and Patent Appeals, in Re Youker, 1935, 77 F.2d 624, 22 C.C.P.A., Patents, 1294, the Circuit Court of Appeals for the Sixth Circuit in Ottinger v. Ferro Stamping & Mfg. Co., 1932, 59 F.2d 640, 643, and the Circuit Court of Appeals for the Fourth Circuit in Denaro v. Maryland Baking Co., 1931, 50 F.2d 1074 (affirming and adopting opinion of the court in Denaro v. Maryland Baking Co., D.C., 40 F.2d 513) have all made decisions in accord with the decision in Minnesota, etc., Co. v. Coe, supra. Two cases have been decided by the Circuit Court of Appeals for the Second Circuit which refer to the question now under discussion. The first of these cases is Stelos Co. v. Hosiery Motor-Mend Corp., 72 F.2d 405. The other is Penmac Corp. v. Esterbrook, etc., Co., 108 F.2d 695, 696. The references to the principle under discussion are both said, with reason, to be obiter. The obiter in the Stelos case favors the contention of the plaintiffs, and that case was followed by some of the trial courts in the Second Circuit whose opinions are cited by the plaintiffs, but the Pen-mac case indicates that Court’s adherence to the view that has now been adopted by a considerable number of courts. The plaintiffs cite three cases (Farmers’ Handy Wagon Co. v. Beaver Silo & Box Mfg. Co., 7 Cir., 1916, 236 F. 731; Hamilton Beach Mfg. Co. v. P. A. Geier Co, 7 Cir., 1916, 230 F. 430; and Camp Bros. & Co. v. Portable Wagon Dump & Elevator Co., 7 Cir., 1918, 251 F. 603), all decided in the Circuit Court of Appeals for this circuit prior to the decision by the Supreme Court of the Milburn case, supra. The plaintiffs say that these cases hold that a prior co-pending application is not prior art and is pertinent on prior invention only as to subject matter actually claimed therein. The plaintiffs also say that the Milburn case goes no further than to hold that an earlier filed co-pending application is pertinent on prior invention if the subject matter is completely disclosed though not claimed, that the law of the Seventh Circuit is clear, and that it is claimed by them. The defendants finally say that in at least three recent cases the Circuit Court of Appeals for this circuit has considered, on the issue of lack of invention, patents issued on earlier filed but co-pending applications. These cases are: Ajax Hand Brake Co. v. Superior Hand Brake Co., 132 F.2d 606 decided January 6, 1943; Triplett v. Line Material Co., 133 F.2d 533, decided February 8, 1943; and Curtis Companies, Inc., v. Master Metal Strip Service, Inc., 125 F.2d 690, decided February 16, 1942. The court is of the opinion that the statutes of the United States declare a public policy, which has been recognized by the Supreme Court in the Milburn case and by the Circuit Court of Appeals of this circuit in its recent decisions, and which requires that the disclosures of the earlier filed application may be supplemented by reference to the general state of the art in the manner customary in construing other prior art patents, and which requires that the doctrine of equivalents may be applied in considering the effect of the earlier filed but co-pending applications upon the later filed application. Of Facts, Establishing Personal Knowledge by the Patentee of Prior Public Uses of Machines Which Constitute Statutory Bars to the Validity of Claims, Giving Rise to the Necessity for Disclaiming. The defendants contend that Sven-son 1,924,422, Barnes, Guiri & Johnson 2.098.220, Svenson 2,215,257 and Barnes & Guiri 2,042,379, are void for failure to disclaim. The defendants say that the circumstances giving rise to the necessity for disclaiming in the cases of the four patents referred to are facts establishing personal knowledge by the patentee of •prior public uses of machines which constitute statutory bars to the validity of claims of each of the four patents referred to. The defendants say in respect of Sven-son 1,924,422, that claims 23 and 25 read squarely in terms and in substance on the prior Oilgear QRlx2 valve or system, which was known to and used by Svenson before his alleged invention disclosed in this patent; and that Svenson’s own alleged conception drawing, Exhibit A-72, makes acknowledgment in the title block of the Oilgear QR system. The plaintiffs say that claims 23 and 25 do not read on the QR, that in that system the gear pump is so directed that part of the fluid is used to charge the plunger pump, that because of this connection from the gear pump to the plunger pump in the QR there is never delivered to the actuator any more fluid than that pumped from the reservoir to the gear pump, and that, therefore, the QR system does not meet the requirement of claims 23 and 25 that in one position of the valve the combined delivery of a plurality of pumps is dispatched to the actuator. In respect of Barnes, Guiri & Johnson 2.098.220, the defendants say claims 1, 2, 3, 4, 7, 11 and 12 are completely anticipated by a machine admittedly manufactured in part by W. F. and John Barnes Company and sold to Universal Products Co. more than two years prior to the filing date of this patent, and that these facts were known to John S. Barnes, one of the joint patentees, who visited the Universal Products plant and doubtless saw the entire machine, including those portions which were supplied by H. R. Krueger & Co. The plaintiffs say that unless, as a matter of law, a claim is invalid in covering the making of a machine and providing the controls therefor to do automatically what had theretofore been done manually, the disclaimer issue should be decided in favor of the plaintiffs. Concerning Svenson 2,2.15,257, the defendants say claim 67 reads squarely in terms and in substance on the Oilgear QRlx2 system and is, therefore, plainly invalid. Additionally, it is asserted that all of the claims of this patent are invalid because claims 55 and 56 read upon Barnes & Guiri 2,042,379 and that the patentee knew that the claims so read. The plaintiffs say that the Oilgear QR does not meet the requirement of the last element of claim 67 which calls for shifting of the actuator by the action of fluid from two sources of supply and which further calls for the positive continued movement of the actuator under the influence of fluid from only one of said sources. The plaintiffs further say, referring particularly to claims 55 and 56, that Barnes & Guiri 2,042,379 and Svenson 2,215,257 are not for the same invention; that generally speaking, so far as similarity of subject matter is concerned, the former relates to spindle indexing, and the latter to sudden stopping of the spindle, that plugging a motor is neither disclosed nor claimed in Barnes & Guiri 2,042,379, and that it is required in claims 55 and 56 of Svenson 2,215,257. Concerning Barnes & Guiri 2,042,379, the defendants say claims 18, 20, 43 and 44, for example, are clearly anticipated by the Barnes Company’s own machines admittedly sold to the Paige and Reo automobile companies more than two years prior to the filing of the application for this patent. The plaintiffs say that the claims and the “means” elements thereof are directed to an automatic machine which needs only to be supplied with a workpiece and energized by an electric current; that for the many steps performed by hand in the machines sold, including indexing of the spindle and shifting of the workpiece, automatic means are provided; that these “means” cannot be an operator’s hand; and that the “means” provided are permanently functioning elements of the combinations claimed. As- authority for the proposition that personal knowledge by the patentee of prior public uses of machines which constitute statutory bars to the validity of claims gives rise to the necessity for disclaiming the defendants cite three cases. They are: Marconi Wireless Telegraph Co. v. United States, 81 Ct.Cl. 671; Holzhauer Products Corporation v. Zaiger, D. C., 15 F.Supp. 1006; and Bresnick et al. v. United States Vitamin Corporation, D.C., 47 F.Supp. 993. In Marconi Wireless Telegraph Co. v. United States, supra, the patentee had given a public lecture some fifteen years before his patent in which he disclosed as public knowledge the “feature” set forth “in his patent specifications as new and patentable.” The patentee, therefore, did know, as the court said he did, that he was claiming something which could not be sustained. In Holzhauer Products Corporation v. Zaiger, supra, the patentee on April 6, 1931, filed an application for reissue stating under oath that certain claims were too broad and that he was not the original and first inventor thereof. The reissue was denied. He did not file a disclaimer for more than two and a half years. Here, there was a specific admission under oath of invalidity. The sole question involved, as far as disclaimer went, was whether there had been undue delay in filing. In Bresnick v. United States Vitamin Corp., supra, the plaintiffs and patentee had admitted through the medium of a corresponding British patent that all substantial parts of the composition of the claims sued upon were old. It may be inferred from a consideration of the statute and the foregoing cases that the obligation to disclaim arises only through positive knowledge of facts giving rise without doubt to the conclusion of invalidity. In none of the instances in which the defendants say that disclaimer was required is there established definite and certain knowledge of invalidity on the part of the patentee or plaintiffs. Accordingly, there was no duty to disclaim. Before proceeding with an expression of views on the individual patents, it may perhaps be permissible to state some reasons that move the court to express, in respect of each patent, conclusions both as to infringement and validity. Logically, there is very little difference between the question of the breadth of a claim (matters of mere grammar and terminology being disregarded) and questions of anticipation and lack of invention. A determination that a particular claim is anticipated is, in a sense, a determination that it has no breadth, because something in the prior art has appropriated the place which it would occupy. A determination that a claim does not disclose invention over the. prior art, is, in a sense, a determination that it has no breadth, because something in the prior art has so nearly appropriated the place which it would occupy that it cannot be said that there is any invention disclosed in the claim. A determination that a claim is entitled to a narrow construction is a determination that the prior art is such that the claim must be narrowly construed, otherwise it would include a portion of the prior art. A determination that a claim is entitled to a broad construction is a determination that it may be given a broad construction without including portions of the prior art. The questions are closely related, require consideration of the same facts, and the court can see no good reason for trying to segregate them. The parties have, by evidence and argument, in the case of each patent in suit contested the question of invalidity by reason of anticipation or lack of invention or both. In the cases of only a few of the 129 claims in suit have the defendants conceded infringement. Accordingly, it has been necessary in most cases to determine the breadth of the claim and then to determine the question of infringement. In the cases of all of the claims in suit the court has accordingly considered the prior art on the question of validity (including anticipation and lack of invention) and in the cases of most of the claims in suit the court has considered the same prior art on the question of the breadth of the claims. Evidence has been received and arguments have been heard and both have been considered on each issue, — that of validity and that of infringement. Conclusions have been reached on these issues, and there does not seem to be any compelling reason why they should not be expressed, particularly in view of the fact that reviewing courts frequently arrive at conclusions different from those of the trial court, and, if the trial court has expressed conclusions on both issues, infringement and validity, there is no occasion for sending the case back for an expression by the trial court on either of those issues and the waste of' time, effort and expense in a second trial and second appeal is prevented. From the viewpoint of one who desires the speedy and efficient administration of justice, there is much to be said for the view which would permit a trial court to make findings in respect of both infringement and validity, regardless of whether or not it finds the patent infringed or not infringed, or whether it finds it valid or invalid. This opinion is ventured after a consideration of: Electrical Fittings Corp. v. Thomas & Betts Co., 307 U.S. 241, 59 S.Ct. 860, 83 L.Ed. 1263; Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126, 62 S.Ct. 513, 86 L.Ed. 736; Altvater v. Freeman, 63 S. Ct. 1115, 87 L.Ed.-; Cover v. Schwartz, 2 Cir., 133 F.2d 541; Aero Spark Plug Co. v. B. G. Corp., 2 Cir., 130 F.2d 290; Richard Irvin & Co. v. Westinghouse Air Brake Co., 2 Cir., 121 F.2d 429. 1. Svenson 1,924,422, for a “Valve Construction," Issued August 29,1933, on an Application Filed November 16, 1929, and Containing 43 Claims, of Which 16 Are in Suit. In the case of Svenson 1,924,422, which is said to be a patent on a “Valve Construction,” it is necessary to quote at length from the specifications and the claims in order that the inventions claimed may be understood. The inventor says: “My present invention relates generally to fluid control mechanisms and more particularly to valves for automatically controlling the distribution of fluid which is used as a propelling medium. “In general, one of the primary objects of this invention is to provide a valve of improved practical and simple construction which is adapted to efficiently and automatically control the distribution of high pressure and low pressure fluids. “More specifically, it is an object of my present invention to provide a unique valve arrangement for accurately and positively controlling the distribution of high and low pressure fluids to a plurality of fluid operated actuating mechanisms as for example those mechanisms used for effecting the actuation of machine elements. “Another object is to provide an improved fluid valve construction which will preclude,the necessity of employing any auxiliary devices for controlling or effecting the reversal of the valve and to this ,end I propose to provide a self-contained valve unit which may be shifted in response to the action of the fluid medium. “Another object of my present invention 'is to provide a valve mechanism which 'will enable the combining of fluids under low and high pressures to permit increased displacement of said fluid for high speed transmission. “Still more specifically, my present invention contemplates the provision of a novel fluid valve arrangement in which a valve unit within a housing may be shifted by unbalancing the fluid pressure on said valve, said unbalancing being occasioned in response to the displacement of fluid from the valve chamber. “Still another object of the present invention is to provide a self-contained valve mechanism which may be effectively employed for distributing fluid to a plurality of fluid actuated mechanisms and to this end I propose to provide a plurality of adjustable and non-adjustable orifices which are directly associated with the valve unit, said orifices serving to direct fluid to said actuating mechanisms. “It is also an object of my present invention to provide a valve mechanism of the above mentioned improved construction which may be manually or automatically actuated and in this connection I contemplate the provision of simple means whereby certain of the automatic controlling devices may be rendered inoperative to effect complete manual control of the main valve unit. “These and numerous other objects and advantages will be more apparent from the. detailed description which is to follow. In accordance with the general features of the invention, one embodiment thereof includes a main cylindrical valve which is longitudinally slidable within a housing. One extremity of this valve is adapted to be connected to a control lever whereby manual reciprocation of the valve may be effected. When the control lever occupies a central or neutral position, fluid such as oil which is directed into the chamber, associated with the valve, circulates there-through without causing the distribution of fluid to various machine elements with which the valve may be connected. In this connection it is to be noted that said valve is connected to a source of high pressure and low pressure fluid supply. When the control lever is shifted to an extreme position as for example to the left, ports within the valve unit are so positioned as to cause the high and low pressure fluids to he directed through properly gauged, fixed passages to the machine actuating mechanisms. This rapid displacement of the fluid causes said mechanisms to he actuated at high speed. Thus, if these mechanisms were used for moving machine tools, said tools would be caused to rapidly move into operative association with the work. This movement might be referred to as a rapid approach movement. At a predetermined stage of the operation of these fluid actuated mechanisms, the main valve is automatically or manually shifted to a position in which only the high pressure fluid is directed to the machine actuating mechanisms and at this time said fluid is directed to restricted or adjustable orifices associated directly with the housing of the main valve. The reason for employing these adjustable restricted orifices will be apparent when it is understood that a variable amount of fluid must be displaced to give the desired speed to the parts which are propelled by the fluid actuated mechanisms. That is, the speed of these parts or members is controlled by means of these adjustable orifices. In other words, the fluid is now displaced at a feeding rate to the actuating mechanisms. At a subsequent predetermined interval, as for example when the machine tools have reached the limit of their cutting stroke, the main valve is automatically or manually shifted to the opposite extremity of the valve chamber. This shifting movement may be occasioned in response to an unbalanced condition of the fluid associated with the valve. This unbalanced condition is caused by a balancing member which serves to effect the decrease in pressure of fluid at one extremity of the main valve. This unbalancing of the valve serves to carry the same past the neutral point to a position in which high pressure and low pressure fluids are delivered in a reverse direction to the machine actuating mechanisms. This rapid delivery of the fluid may continue until the machine actuating mechanisms have reached the limit of their reversing stroke, at which time the valve will be automatically or manually shifted to its neutral position. If it is desired to impart a feeding reverse movement to the actuating mechanisms, it is only necessary to manually or automatically shift said main .valve from its rapid reverse position to a reverse feeding position. In connection with the shifting of the main valve for the purpose of reversing the delivery of fluid, it should be understood that I contemplate the provision of improved means whereby the positive reversal of the valves is timed with extreme accuracy. In other words, the reversing operation will not take place until all of the fluid actuated mechanisms have reached the limit of their advancing stroke and said reversal may be very accurately controlled for each cycle of the machine operation. ***** “Before discussing in detail the structural characteristics of the embodiment of my invention which is disclosed in the drawings, it is to be understood that the present invention relates to subject matter similar to that set forth in my co-pending application, Serial No. 391,130, filed Sept. 9, 1929. In said co-pending application I have disclosed a complete automatic lathe construction equipped with a fluid control valve, and the present invention relates to fluid control valves which are adapted for use in connection with such automatic lathes. However, the present invention represents certain improvements in valve construction and controlling mechanism therefor. ***** “A pipe line 40, Figures 4 and 15, serves to introduce low pressure fluid such as oil into branch passages 42 and 44, while a pipe line 46, Figures 6 and 15, serves to introduce fluid at high pressure into annular passage 48 which is provided in the housing 24. This high pressure and low pressure fluid may be supplied from any suitable source and for the purpose of illustrating the practical application of the valve I have shown the same connected to a variable displacement pumping mechanism which is shown diagrammatically in Figure 15. This pumping mechanism includes a variable displacement high pressure pump designated generally by the numeral 50 and a low pressure gear pump designated by the numeral 52. Fluid at high pressure is directed from the pump 50, Figure 15, through the pipe line 46 and thence into the annular passage 48, while fluid at low pressure is supplied from the pump 52 through the pipe line 40 which commmunicates with the branch passages 42 and 44. ***** “Thus, fluid at high and low pressures which is associated with the valve when said valve occupies its neutral position, circulates therethrough without being displaced for the purpose of propelling mechanisms later to be described. * * * * “Consider now that the valve 26 is manually shifted to its extreme left position as shown in Figure 9 through the agency of the control lever 34. With the valve in this position, high pressure fluid from the annular passage 48 is directed through the valve passage 54 into a passage 86 and thence through a plurality of fixed orifices 88, 90 and 92, Figures 8 and 9. The low pressure fluid is also directed through the fixed orifices 88, 90 and 92, together with the high pressure fluid. In other words, the combined high and low pressure fluid mediums are unrestrictedly passed through these orifices and thence through suitable pipe lines 94, 96 and 98. íj! Hí Jji “With the foregoing description of these various machine elements and the pipe lines connected therewith, it should be apparent that when the main valve 26 occupies the position shown in Figure 9, the combined high and low pressure fluids will be dispatched through these various pipe lines so as to cause the various machine mechanisms to be moved rapidly. In other words, this position of the valve 26 might be called the forward rapid traverse position because it permits of an increased displacement of the fluid through the pipe lines which results in a rapid forward traverse of the pistons in the actuating mechanisms. In this connection attention is directed to the size of the fixed orifices 88, 90 and 92. The cross sectional areas of each of these orifices must be properly gauged in order to effect proper movement of the fluid actuated mechanisms. Thus, when a plurality of orifices such as those disclosed in the drawings are employed, the. machine tools which are propelled by the fluid actuated mechanisms, are subjected to varying resistances and consequently the pressure of the fluid in the circuit must exceed the maximum necessary for propelling these machine tools in order to obtain unison in operation. Therefore it is important that the size of these fixed orifices 88, "90 and 92 be gauged so as to insure proper pressure conditions and thereby enable the control of a plurality of machine tools from a. single source of fluid supply and by means of a single valve. “Consider now that the valve is shifted to the position shown in Figure 10, which position will he