COLLET, Circuit Judge.
This action was brought by the Appellant Ronson Patents Corporation (which will be referred to as the plaintiff) against the Sparklets Devices, Inc., charging infringement of claims 12, 13, 14, and 16 of plaintiff's reissue patent No. 19,023 for a "cigar lighter". Brown & Bigelow, which manufactured the accused cigar or cigarette lighter, was granted leave to intervene as a defendant. Both defendants will be referred to as the defendant.
In the court below defendant alleged both invalidity of plaintiff's patent and noninfringement. The trial court held plaintiff's patent valid upon authority of similar holdings of the Court of Appeals for the Second Circuit in Art Metal Works v. Abraham & Straus, 2 Cir., 61 F.2d 122, and Art Metal Works v. Abraham & Straus, 2 Cir., 107 F.2d 940, wherein the same patent was involved. The trial court found, however, that the accused lighter did not infringe plaintiff's patent and dismissed plaintiff's complaint. From the judgment of dismissal this appeal is prosecuted. The issue of the validity of plaintiff's patent is only incidentally and contingently involved.
Plaintiff's lighter is aptly and adequately described in the Art Metal cases and need not be repeated here. As reference to the reported opinions from the Second Circuit will disclose, the plaintiff's lighter uses a lighter fluid, a wick, and an extinguishing cap. The defendant's lighter is described in the trial court's memorandum opinion, Ronson Patents Corp. v. Sparklets Devices, Inc., D.C., 103 F.Supp. 726, 727. As that opinion is not long and contains the findings of fact, for convenience it is incorporated herein as follows:
Memorandum Opinion of District Court.
Filed in U. S. District Court on January 29, 1952.
"The contest in this patent infringement suit is between a patented `cigar\' ligher owned by plaintiff, alleged to be infringed by a self-contained butane gas `cigar\' lighter distributed by defendant.
"Defendant raises the issue of validity. This question we consider settled by two opinions of the Second Circuit, by Judge Augustus N. Hand, holding the patent of plaintiff valid as early as 1932.1 Art Metal Works v. Abraham & Straus 2 Cir., 61 F.2d 122, Id., 107 F.2d 940. This Court is not bound by a Court of Appeals decision if the latter is clearly erroneous. Defendant has a heavy load to carry in undertaking to show as clearly erroneous the rulings of the distinguished Judge of the Court for the Second Circuit. They have stood for twenty years. Defendant\'s struggle on this issue has been unsuccessful.
"Claims 12, 13, 14 and 16 of plaintiff\'s patent are at issue in this litigation. The claims are similar. They cover a combination patent, to-wit:
"A lighter having in combination
"(1) a receptacle
"(2) an abradant wheel journalled over the top of the receptacle
"(3) a pyrophoric member
"(4) means retaining the pyrophoric member in contact with the wheel
"(5) a wick projecting from the top of the receptacle at one side of the wheel
"(6) a finger piece located over the top of the receptacle, said finger piece being pivoted on an axis spaced from the axis of the wheel and also being adapted to be pressed downwardly
"(7) a spring tending to force said finger piece upwardly
"(8) and means whereby movement of said finger piece is transmitted to said wheel whereby the wheel is operated by manual pressure to ignite the wick
"(9) a snuffer for the wick, said snuffer being journalled on the same axis as the wheel and operated by the finger piece.
"In sustaining plaintiff\'s patent in 1932, Judge Hand, 61 F.2d 122, 123, said that plaintiff\'s patent `made an advance over the prior development of cigar lighters by this arrangement of operating parts, so that the wick was at the side furthest away from the finger of the operator; the snuffer, abradant wheel, and thumb piece were on the top of the receptacle; all three were free from a cumbersome outer housing and the manual actuation of snuffer and abradant wheel by the finger piece through gears enabled the operator to obtain just the shower of sparks he might require at the moment.\'
"The issue in this case centers on one of the three features of the combination. Such isolated issue the decisions of the Second Circuit were not concerned with in the slightest, because they were not before the Court for the very good reason that self-contained gas lighters had not then been perfected. So this issue could not even have been contemplated. The feature we refer to is composed of the wick and snuffer cap. See plaintiff\'s Exhibit A-1.
"What is the apparent difference between the two lighters? The lighter of plaintiff operates by lighting a wick of some absorbent material such as cotton, which carries an inflammable material, such as benzene or alcohol, as fuel from a container to the end of the wick. There it is ignited by sparks from the flint by operation of the abradant wheel. The flame is extinguished by the snuffer cap. The accused device uses butane gas for fuel. The gas, under pressure, is forced into the receptacle part of the lighter from a small gas container, the end of which is screwed into the bottom of the lighter for filling. A gas burner is placed in approximately the same position on the accused device as the wick burner on plaintiff\'s device. A fuel valve is opened when the finger piece is pressed on the accused device. The finger piece causes an actuating lever to open the gas fuel valve and simultaneously the abradant wheel moving across the flint causes sparks to ignite the gas. The snuffer cap, as plaintiff calls the part on the accused device, will put out the gas flame when used in the ordinary manner but it does not stop the flow of gas. Defendant asserts that the substitution of the gas burner with the actuating lever and use of butane gas is a substantial change from the wick burner and snuffer cap of plaintiff\'s lighter. This contention, denied by plaintiff, presents the decisive question in this case.
"Plaintiff\'s position on this issue is summarized in its brief: `His (plaintiff\'s) invention is a lighter consisting of an organization of which a burner is a part. Aronson did not make or patent a new kind of burner or calling his burner a wick, he did not make or patent a new kind of wick. Wanting a steady supply of fuel (which had to be in gaseous form to be ignited, as above noted) he simply went out to the art and picked out a burner and he happened to select a wick. He then used the product of the burner in connection with his fingerpiece, abradant wheel, snuffer and interconnecting parts related and coordinated in a particular way with respect to each other and with respect to the fuel casing upon which these working parts are mounted.\' (Emphasis added.)
"The words `as above noted\' we assume refer to this language in the brief: `It should be noted that both in the case of the wick burner and the gas burner, it is a combustible mixture of fuel in gaseous form and air, which is thus ignited by the sparks to produce a flame.\'
"Do the claims of plaintiff\'s patent read on the accused structure? With the present position of plaintiff before us, that plaintiff `wanting a steady supply of fuel (which had to be in gaseous form to be lighted as above noted) he simply went out to the art and picked out a burner and he happened to select a wick\', the first paragraph of specifications in plaintiff\'s patent is interesting. The wick feature of plaintiff\'s patent appears to have been given more consideration at the time the patent was applied for than plaintiff would now ascribe to it. The first paragraph of the specifications reads:
"`The invention relates to cigar pocket-lighters or the like and has as an object the provision of an exceedingly simple, efficient and convenient form of lighter having means to ignite a wick by means of a shower of sparks.\' (Emphasis added.)
"Plaintiff charges that Claims 12, 13, 14 and 16 of its patent are infringed by the accused structure. In this connection Claim 1 momentarily arrests our attention. Claim 1 commences with this language: `A cigar lighter comprising, in combination, a receptacle, a wick tube carrying a wick projecting from said receptacle, * * *\'.
"The claims taken as a whole are substantially the same. At the commencement of Claim 1 we find the wick referred to, whereas in Claims 12, 13, 14 and 16 the wick reference has progressed toward the end of the claim. Claim 12 commences `A lighter having in combination a receptacle\', and after describing the mechanism ends `to ignite the wick, a snuffer for the wick, said snuffer being journalled on the same axis as the wheel and operated by the finger piece\'. Claims 13, 14 and 16 are subject to the same analysis. Each claim reads `to ignite the wick\' as the ultimate objective of the parts previously referred to. Reference to the wick in Claims 12, 13, 14 and 16 differs from Claim 1 only in that in Claim 1 the presence of the wick in the patent is more prominent than in Claims 12, 13, 14 and 16.
"Plaintiff does now stress the `one, two, three\' arrangement of operating the parts of its patent, but we cannot escape the conclusion that it is in this case endeavoring at the same time to minimize the place in that `one, two, three\' arrangement the wick and snuffer occupy. In the Second Circuit case upholding the patent of plaintiff, the Court uses these descriptive terms in describing plaintiff\'s patent (61 F.2d 122): `This
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