The opinion
On Rehearing.
I have examined the record and the voluminous briefs submitted by the complainant, as well as the multitudinous metallic and paper models and comparative sketches, but I am disinclined to change or vary the views expressed in my former opinion. The rehearing was granted principally because no mention was made therein of claim 1, which complainant contends was also infringed by defendant’s process. Claim 3, however, which is basic, was sufficiently discussed and held, in view of the prior art, to be of limited scope. It was stated in the former opinion that:
“To justify holding that the defendant’s process or method of operation is an infringement of complainant’s, all the essential steps by which the latter produces the result must be employed either directly or by equivalency.”
Now claim 1 particularizes the process and emphasizes the feature of “striking, up the tongues and bending the unsplit portion of the same back parallel to the main sheet.” It is shown that the defendant does hot form a tongue or projection in its expanded metal; certainly there is no such tongue tip as that described in complainant’s specification, one that is struck up and projects into the general plane of the sheet, nor does the defendant in its process bend the un-split portion back parallel to the main sheet, and for this reason I think that the defendant’s product cannot be produced by the adaptation of the process described in claim 1.
Much is said by the complainant on the subject of estoppel, but, as heretofore stated, no such facts are thought disclosed by the record as to induce the holding that the defendant was so intimately associated with Forsyth as to justify the application of that doctrine. It is unnecessary to advert to defendant’s evidence indicating its belief that Forsyth had made a patentable improvement over his prior-patents owned by the complainant, and one which it believed he had the right to assign. It was concededly unknown to the defendant that Forsyth had agreed to assign to the Trussed Concrete Steel Company all his future improvements in expanded metal, and the evidence in its entirety falls short of showing that the defendant in *401 duced him- to break his contract. For this reason the adjudications cited on this point by the complainant are inapposite.
In answer to the argument that the oral testimony of Forsyth and other witnesses for defendant, tending to show that the machinery which was used by the defendant was in fact designed by the Bliss Company and that Forsyth’s design was .abandoned, is contradicted by the option agreement and escrow arrangement, it is only necessary to' state that such prior arrangements were evidently subsequently modified, if not wholly abandoned, and that therefore controlling weight cannot be accorded to the documents in evidence.
The complainant further insists that, as Judge Day has heretofore decided, in an action by this complainant against Forsyth, that the latter infringed the Forsyth patent in suit in assisting to produce defendant’s machine, this court should accord to such decision full faith and credit; but in answer to this contention it is enough to repeat that, unless the defendant was in privity with Forsyth or in any way induced him to break his contract with the complainant, the decision has no important bearing upon it. The burden of proof was upon the complainant to establish the privity of the defendant with For-syth, but in this I think it has failed. It is quite true that it appears that, when Forsyth’s application for a patent came into interference with the Clark application, he consented that his lawyer procure such patent by purchase for the defendant company; but, in view of defendant’s belief that the Forsyth improvement and the Clark improvement were patentably different from complainant’s construction, I do not think that defendant should be estopped from invoking the prior art to sustain its claim of noninfringement. This view entertained by me may be erroneous, but I am not so persuaded by anything appearing on the reargument.
It is unnecessary to dwell further upon the various matters contained in complainant’s briefs or upon the wrongful acts of the Patent Office in failing to follow the decisions rendered in the case of this complainant against Forsyth, or to point out with greater particularity the differences in the products or articles under discussion. In my former opinion I endeavored to make clear that the improvements were of exceedingly narrow compass; that the art was divided into two types, the string-tie type and the diamond-mesh type of cutting and slitting metal; that file complainant’s production was of the former type, while that of the defendant was of the latter; that the complainant’s patent was not for such an improvement as would warrant including within its scope the process and product of the defendant. I am still of this opinion, and therefore, for the reasons stated, a decree may be entered for the defendant dismissing the bill.