1. The Court may decline to consider points not presented in
compliance with Rule 25, concerning briefs. P.
272 U. S.
431.
Page 272 U. S. 430
2. A decree of infringement recovered by a patentee in a suit
against a dealer in goods embodying his invention, does not bind by
estoppel the manufacturer of the goods, from whom the dealer
procured them, where the manufacturer refused to become a party to
or assume any control over the suit and took no part in it
otherwise than in the adjustment of the damages after a decree
pro confesso had been entered. P.
272 U. S.
432.
3. Patent 14,049, reissued, January 11, 1916, to the I.T.S.
Company, as assignee, on an original patent to Tufford, of 1914,
for resilient heels, is limited, as to Claims 5-9, to the specific
form of three-point contact heel lift, whose upper side and breast
edges, as well as all other points of the upper surface, lie below
the plane passing through and defined by the rear upper edge and
breast corners of the lift. P.
272 U. S.
434.
4. Where an applicant for a patent to cover a new combination is
compelled by the rejection of his application by the Patent Office
to narrow his claim by the introduction of a new element, he
cannot, after the issue of the patent, broaden his claim by
dropping that element. P.
272 U.S.
443.
5. Where a claim to a combination is thus restricted to
specified elements, all must be regarded as material, and the
limitations so imposed by the inventor must be strictly construed
against him and looked upon as disclaimers. P.
272 U. S.
444.
6. And the patentee, having thus narrowed his claim to obtain
the patent, may not thereafter, by construction or by resort to the
doctrine of equivalents, give the claim the larger scope which it
might have had without the amendments amounting to a disclaimer. P.
272 U. S.
444.
7. The claims in suit were not infringed by the heels made by
defendant, which are not three-point-contact lifts, their upper
side edges having no vertical curve and lying entirely in the same
horizontal plane as the rear edge and breast corners. P.
272 U. S.
444.
1 F.2d 780 affirmed.
Certiorari ( 266 U.S. 600) to a decree of the circuit court of
appeals which affirmed one of the district court dismissing the
bill in a patent infringement suit. The patent had been construed
otherwise by the Circuit Court of Appeals for the Sixth Circuit in
260 Fed. 947.
See also other cases cited in
footnote 8 to the opinion
Page 272 U. S. 431
MR. JUSTICE SANFORD delivered the opinion of the Court.
This is a suit in equity brought by the U.S. Rubber Company
against the Essex Rubber Company in the Federal District Court for
Massachusetts, for the infringement of United States patent No.
14,049, on resilient heels, reissued to the I.T.S. Company January
11, 1916, as assignee, on an original patent to John G. Tufford,
issued in 1914. After final hearing on the pleadings and proof,
[
Footnote 1] the bill was
dismissed by the district court for want of infringement. This was
affirmed by the circuit court of appeals. 1 F.2d 780. And there
being a conflict of opinion with the Circuit Court of Appeals for
the Sixth Circuit as to the scope of the patent, this writ of
certiorari was granted.
The Essex Company, which manufactures and sells the heels
alleged to infringe, expressly admitted the validity of the
reissued patent. And the only questions are, first, whether it is
estopped to deny infringement; second, if not, whether infringement
is shown.
1. In the courts below, the I.T.S. Company relied on estoppels
by reason of adjudications in various prior suits brought by it in
the Sixth Circuit against dealers in the Essex Company's heels. In
the brief for the I.T.S. Company in this Court, it is asserted in
general terms that the action of the Essex Company "in suits
brought against its jobbers in the Sixth Circuit estop it from
denying infringement
Page 272 U. S. 432
here," and that the circuit court of appeals erred in holding
that it was not estopped by the decrees in such suits. The argument
in the brief, however, specifies and deals with only one of such
prior suits, and there being as to the others no semblance of
compliance with the requirements of Rule 25 of this Court,
[
Footnote 2] we need consider
only the suit specifically relied on.
That was a suit brought by the I.T.S. Company against one Wendt,
a dealer in Essex heels of a type involved in the present suit, in
which infringement of the patent was adjudged. The I.T.S. Company
contends that the Essex Company, although not a party of record,
took entire control of the defense, participated in the suit until
the final decree, paid all the expenses, and is now estopped from
denying infringement as therein adjudged.
The material facts found by the district court are: the Essex
Company, after being notified by Wendt of the commencement of the
suit, notified the counsel of the I.T.S. Company that it did not
wish to, and would not, appear. Wendt thereafter voluntarily
allowed the suit to go by default, and an order was entered taking
the bill
pro confesso. This was followed by an
interlocutory decree
pro confesso adjudging the
infringement of the patent and Wendt's liability for damages and
profits, and ordering an accounting. Down to the entry of this
decree, the Essex Company exercised no control over the management
and conduct of the suit. Thereafter, the Essex Company, having
previously written Wendt that it would reimburse
Page 272 U. S. 433
him for any losses he sustained by reason of the suit, suggested
that he and counsel whom it had employed procure an adjustment of
the damages and profits. Wendt and the counsel for the Essex
Company thereupon secured an agreement to settle the case by
Wendt's payment of $1,000. This was embodied in a stipulation
signed by the I.T.S. Company's counsel and by the Essex Company's
counsel as counsel for Wendt, and filed in the case. This
stipulation, with the interlocutory decree, was thereafter made the
basis of a final decree, readjudging the infringement, reciting the
settlement, and adjudging that the I.T.S. Company recover of Wendt
$1,000 and the costs of the suit. Wendt paid this judgment and was
reimbursed by the Essex Company. The District Count further found
specifically that, under the circumstances, the Essex Company did
not control the suit, and held that, even though the I.T.S. Company
understood that the counsel negotiating the settlement represented
the Essex Company as well as Wendt in adjusting the damages, it was
not estopped from contesting the question of infringement raised in
the present case.
On the appeal the circuit court of appeals stated that the
record showed clearly that the Essex Company refused to become a
party to the suit or assume any control over it, and took no part
in the conduct or control of the suit, "but only in the adjustment
of the damages" after the
pro confesso decree had been
entered, and approved both the findings and ruling of the district
court.
There is nothing which, under the well settled rule,
Del
Pozo v. Wilson Cypress Co., 269 U. S. 82,
269 U. S. 89,
justifies us in disturbing the concurrent findings of fact of the
two courts below, and we concur in their ruling that, on the facts
thus found, the Essex Company is not estopped from contesting the
question of infringement.
2. The question of infringement as here presented turns upon
matters of law arising out of a file wrapper
Page 272 U. S. 434
defense interposed by the Essex Company, which insists that the
reissued patent, although valid, was so limited in scope by the
proceedings in the Patent Office that the Essex heels do not
infringe.
The patent covers the part of a shoe commonly called a rubber
heel, or cushion heel lift. [
Footnote 3] This is usually made of rubber, and is
attached to the under side of the leather heel so as to furnish a
yielding, resilient heel, giving softness to the tread and
quietness in walking. These heels, which are in common use, are of
two types, the flat and the concavo-convex, both of which were old
when Tufford made his invention. The flat heel, which is the older,
is cemented to the leather and then fastened on by nails or screws.
The driving in of the nails or screws, however, has a tendency to
cause the rubber to spring away from the leather around the edges
and produce an open seam. In the concavo-convex type the body of
the rubber heel is curved downwards. It is attached to the leather
heel, without any cement, by placing its upper concave side under
the leather, pressing it upward flatly and then nailing or screwing
it on tightly. This, through the tendency of the rubber to resume
its original curved form, tends to keep it tightly pressed upwards
against the leather and overcome the tendency of the flat heels to
separate from the leather at the edges. This characteristic of the
concavo-convex heels, often called "the tight-edge effect," was
referred to as early as 1889 in Ferguson's patent No. 638,228.
The Tufford heel is of the concavo-convex type. We insert here
reproductions of Figure 2 of the drawings of the reissued patent,
which is described as
"a front to rear sectional view through the lift in position
disposed against the under side of a shoe heel and immediately
prior to application thereto,"
and shows one-half of the lift on a
Page 272 U. S. 435
median section, and of Figure 4, which is described as "a
perspective view looking at the upper side of the lift
removed."
image:a
The reissued patent contains ten claims. The first four, which
repeat the claims of the original patent, relate merely to the form
and position of the washers in a cushion heel lift, and to grooves,
channels, and suction areas in its concave surface. They are not
here involved. The others are additional claims relating to shape
defining improvements. The bill charges infringement of the new
Claims 5 to 9, inclusive. Claim 5 reads:
"A heel lift of substantially nonmetalic resilient material
having its body portion of concavo-convex form on every line of
cross-section,
the concave upper face lying entirely below a
plane passing through the rear upper edge and the breast [Footnote 4] corners of the
lift."
The last clause in this claim, which we have italicized, about
which the present controversy turns, is contained in all the other
claims in suit in identical or precisely equivalent words, except
that, in Claim 8, the word "rear" does not appear before the words
"upper edge." [
Footnote 5] For
immediate purposes, we treat Claim 5 as typical of all the claims
in suit, passing for the moment the consideration of the question
whether there is any essential distinction in respect to Claim
8.
Page 272 U. S. 436
The Essex Company contends: (1) That, by the proceedings in the
Patent Office, these claims were limited to the form of
concavo-convex heel lift in which the concave upper face lies
entirely below a plane passing through the rear upper edge and
breast corners -- that is, one in which, owing to the curvature of
the upper face, only its rear edge and breast corners lie in the
same horizontal plane, and its side and breast edges, as well as
all other portions of its surface, lie below the plane passing
through and defined by these three points -- this being referred to
as the "three-point contract" form, since, when, the lift is
brought in contact with the leather heel before being flattened,
only the rear edge and two breast corners will touch the leather.
(2) That the claims, thus limited, are not infringed by the Essex
heels, as their upper side edges, having no vertical curve, lie in,
and not below, the plane passing through the rear edge and breast
corners.
The file wrapper shows that, on the application for the reissued
patent, it contained, as first presented, no reference to the
position of the upper rear edge and breast edges of the lift in
relation to the other portions of its upper surface. Several new
claims were submitted, some of which, at least, [
Footnote 6] described a lift having its
attaching face concave on every line of cross-section. These were
rejected by the examiner on reference to Nerger's patent No. 611,
129. Another set of claims was then substituted describing a heel
lift of resilient material comprising a body portion of
concavo-convex form on every line of cross-section, and normally
held in such form by its own inherent resiliency. These were also
rejected by the examiner on reference to Nerger.
After an interview with the examiner in which the applicant
exhibited samples of his own lift and the Nerger lift, he them
amended the specification by inserting the
Page 272 U. S. 437
statement:
"By reference to Figs. 2 and 4 of the drawings,
it will be
seen that the concave upper face of the lift lies entirely below a
plane tangent to the rear upper edge and the breast corners of the
lift, whereby to cause the entire margin of said lift to exert
a uniform pressure on the heel of a shoe when the lift is
positioned on the heel and the convex face thereof depressed to
flatten said lift."
He also substituted another set of claims, 5 to 9, inclusive,
Claim 5 -- which was typical of all the others unless Claim 8 was
differentiated by the fact that the word "rear" did not appear
before the words "upper edge" -- read:
"A heel lift of substantially nonmetalic resilient material
having its body portion of concavo-convex form on every line of
cross-section,
the concave upper face lying entirely below a
plane tangent to the rear upper edge and the breast corners of the
lift."
In presenting these amendments, counsel for the applicant urged
that Nerger's lift was not concavo-convex on every line of
cross-section, since the deepest portion of the concavity in its
upper surface was at the breast, and that its concave upper surface
did not lie entirely below a plane tangent to the rear edge and
breast corners. In replying, the examiner, after calling attention
to the fact that, on the application for the original patent, the
applicant had presented claims for a lift in which all the edges of
the attaching face occupied the same plane -- which were rejected
-- stated that Figure 2 of the drawings indicated the same
construction, and did not show a lift whose concave upper face lay
entirely below a plane tangent to the rear upper edge and breast
corners, as set forth in the amendment to the specification, since
a point midway between the breast corners was in contact with the
upper heel, and "a plane tangent to the rear edge and the breast
corners would also pass through the entire front [breast] edge;"
that the applicant's sample lift did "not correspond to the
drawing, since all the points
Page 272 U. S. 438
of its breast except the two corner points lie below a straight
line passing through these points;" that, in
"each of the Claims 5, 6, 7, 8 and 9, the applicant specifies
that the concave upper face lies entirely below a plane tangent to
the rear upper edge and the breast corners;"
and that these claims do "not read on the drawing, and are
therefore rejected."
To meet this rejection, the applicant further amended the
specification by substituting for the prior amendment the
statement:
"By references to Figs. 2 and 4 of the drawings, it will be seen
that the concave upper face of the lift lies entirely below a plane
passing through the rear upper edge and breast corners of the lift.
. . .
In other words, owing to the curvature of the concave
attaching face of the lift, the rear upper edge and breast corners
of said concave attaching face are disposed in a plane above the
upper side edges and the breast edges of the lift."
He also amended each of the claims by substituting the words
"passing through" for "tangent to" -- corresponding to the change
that had been made in the specification -- and added Claim 10,
reading:
"A heel lift of substantially resilient material comprising a
body portion, the attaching face of which is concave and the tread
face convex on every line of cross-section, the rear upper edge and
breast corners of the concave attaching face of the lift being
disposed in a plane above the upper side and breast edges of said
concave attaching face."
In presenting these amendments, counsel for the applicant stated
that the matter quoted by the examiner from the file wrapper of the
original patent merely showed, if anything, that error had crept
into the prosecution of the original application, which should be
corrected; that, as Figure 4 of the drawings showed
"that the breast lift was cut away on a curved line, the
attaching face of the lift at the breast thereof must necessarily
lie in a plane below
Page 272 U. S. 439
the breast corners and the rear edge of said lift or, in other
words, the rear upper edge and breast corners of the concave
attaching face are disposed in a plane above the upper side and
breast edges thereof;"
that the showing in Figure 2 was therefore obviously erroneous,
and, although Claim 10 read upon it without any correction, it did
not clearly illustrate the applicant's invention, and that
permission was requested to correct the drawing. This was granted,
and Figure 2 was changed to the form which we have reproduced in
this opinion, showing that the upper side and breast edges lie
below a plane passing through the rear edge and breast corners. The
new claims were then allowed, and the patent was reissued.
It thus appears that the applicant acquiesced in the successive
rejections by the examiner on reference to Nerger of claims for a
lift having its attaching face concave on every line of
cross-section and for a lift of resilient material of a
concavo-convex form on every line of cross-section, and that, to
meet this reference, he amended the specification so as to state
not only that the concave upper surface lies entirely below a plane
passing through the rear upper edge and breast corners, but that,
"in other words," owing to the curvature of the concave attaching
face, the rear upper edge and breast corners are disposed in a
plane above the upper side and breast edges; amended the claims to
describe a lift whose concave upper surface lies entirely below a
plane passing through the rear upper edge and breast corners, and
finally changed his drawing so as to correspond precisely with
these amendments -- and that then, and not until then, were the
claims allowed.
We think that, by this proceeding the claims were limited to the
specific form of a "three-point contact" lift -- that is, to one in
which, owing to the vertical curve of the upper side and breast
edges, these edges,
Page 272 U. S. 440
as well as all other portions of the upper surface, lie below
the plane passing through and defined by the rear upper edge and
breast corners. We cannot agree with the opinion of the Circuit
court of appeals for the Sixth Circuit in
United States Rubber
Co. v. U.S. Rubber Co., 260 F. 947, 948, that Claim 10, which
contains the limiting clause "the rear upper edge and breast
corners of the concave attaching face of the lift being disposed in
a plane above the upper side and breast edges," is the only one
which is limited to the three-point contact lift. It is true that,
if the limiting clause in Claims 5 to 9, "the concave upper face
lying entirely below a plane passing through the rear upper edge
and the breast corners," stood alone, there might be some question
as to whether the side and breast edges were to be considered as a
part of the upper face. However, the meaning of this clause was
made entirely clear by the last amendment to the specification,
adding to the previous statement that the concave upper face lies
entirely below a plane passing through the rear upper edge and
breast corners, that, "in other words," the rear upper edge and
breast corners are disposed in a plane above the upper side and
breast edges. We are unable to agree with the view that the phrase
"in other words" was here used to connect alternative thoughts
which were not identical, and think, that they were used in their
ordinary sense to introduce a specific element of the identical
matter previously described, precisely defining a lift whose upper
surface lies below a plane passing through the rear edge and breast
corners as one whose upper side and breast edges lie below this
plane, this being emphasized by the statement made by counsel for
the applicant and the corresponding change which was made in the
drawing. The limiting clause in Claims 5 to 9 must therefore be
read in the sense in which it is thus defined by the specification
-- that is, as referring to a three-point contact lift whose side
and breast edges, as well as all other points in its upper surface,
lie below
Page 272 U. S. 441
the plane passing through the rear edge and breast corners.
There is no ground for differentiating Claims 5 to 9 from claim
10 in this respect in order to give effect to Claim 10. The Circuit
Court of Appeals for the Sixth Circuit expressly declined to rest
its conclusion on this ground. 260 F. at 948. And as to this it
suffices to say that, as was pointed out by the district judge,
Claims 5 to 9 are sufficiently differentiated in other respects by
the presence of subsidiary elements relating to the character of
the material, nail openings, etc., that do not appear in Claim
10.
We find, further, no significance in the substitution of the
words "passing through" for "tangent to" in the specification and
claims. These phrases were used interchangeably by the examiner.
The applicant pointed out no distinction in their meaning, and, so
far as appears, merely adopted "passing through" as the preferred
form of equivalent expressions. And they have no difference in
meaning as used in the specification and claims; the one phrase as
well as the other aptly defining the plane passing through the
upper rear edge and breast corners.
We also find that the fact that the word "rear" does not appear
before the words "upper edge" in Claim 8 is not a ground upon which
it may be differentiated from the others. It appears that this
omission was inadvertent and unnoticed. The applicant called no
attention to the omission and did not differentiate this claim from
the others in his effort to avoid the reference to Nerger's patent.
The examiner stated that "each of the Claims 5, 6, 7, 8, and 9"
specified a plane tangent to "the rear upper edge and the breast
corners." And we cannot believe that, if the applicant's counsel
intended to differentiate this claim from the others by the
omission of the word "rear," he would have failed to disclose the
distinction
Page 272 U. S. 442
which he had in mind and permitted the examiner to pass upon the
claim under a misapprehension as to its language. It was also
stated by the district judge that, at the preliminary hearing on
the motion to dismiss, the I.T.S. Company recognized that this
clause in Claim 8 read the same as in the other claims; that this
had apparently been its position before other courts where these
claims had been considered, [
Footnote 7] and that it did not change its position in
this respect until after the circuit court of appeals on the
hearing in that court on the motion to dismiss had called attention
to the omission of the word "rear." We concur in the finding of the
district judge that the omission of the word "rear" was through a
clerical error due to oversight, and that both the counsel for the
applicant and the examiner understood that it was contained in
Claim 8 as well as the others, and we are of opinion that the claim
should be construed and have the same effect as if it had been
included. This is not in any real sense, a remaking of the claim,
but is merely giving to it the meaning which was intended by the
applicant and understood by the examiner.
Furthermore, if, by the omission of the word "rear," this claim
should otherwise be regarded as calling for a lift whose upper face
lies entirely below a plane passing through the entire "upper edge"
and the breast corners, thereby making it a claim for a lift having
all its upper edges in the same plane, such a construction would
not only conflict with the express disclaimer of counsel for the
applicant, but, as held by the circuit court of appeals, render the
claim invalid as being for a different invention from that
described in the specification and drawings of the original patent.
Mahn v.
Harwood, 112
Page 272 U. S. 443
U.S. 354,
112 U. S. 359;
Parker & Whipple Co. v. Yale Lock Co., 123 U. S.
87,
123 U. S. 97.
And, so construed, it would not read on the specification and
drawings of the reissued patent.
Having thus reached the conclusion that all of the claims in
suit are limited to the three-point contact form of lift, it is
unnecessary to determine here whether, in calling for a lift of
concavo-convex form on every line of cross-section, any of them are
also limited to a "saucer-shaped," as distinguished from a
"scoop-shaped," lift -- that is, to one having in its upper surface
a low spot centrally disposed which is below the lowest point in
the breast edge, as has been held by the Circuit Court of Appeals
for the Sixth and Seventh Circuits. [
Footnote 8]
It is well settled that, where an applicant for a patent to
cover a new combination is compelled by the rejection of his
application by the Patent Office to narrow his claim by the
introduction of a new element, he cannot, after the issue of the
patent, broaden his claim by dropping the element which he was
compelled to include in order to secure his patent.
Shepard v.
Carrigan, 116 U. S. 593,
116 U. S. 597.
If dissatisfied with the rejection, he should pursue his remedy by
appeal, and where, in order to get his patent, he accepts one with
a narrower claim, he is bound by it.
Shepard v. Carrigan,
supra; Hubbell v. United States, 179 U. S.
77,
179 U. S. 83.
Whether the examiner was right or wrong in rejecting the original
claim the court is not to inquire.
Hubbell v. United States,
supra. The applicant having limited his claim by amendment and
accepted a patent, brings himself within the rules
Page 272 U. S. 444
that, if the claim to a combination be restricted to specified
elements, all must be regarded as material, and that limitations
imposed by the inventor, especially such as were introduced into an
application after it had been persistently rejected, must be
strictly construed against the inventor and looked upon as
disclaimers.
Sargent v. Hall Safe & Lock Co.,
114 U. S. 63,
114 U. S. 86;
Shepard v. Carrigan, 116 U. S. 598,
supra; Hubbell v. United States, 179 U. S. 85,
supra. The patentee is thereafter estopped to claim the
benefit of his rejected claim or such a construction of his amended
claim as would be equivalent thereto.
Morgan Envelope Co. v.
Albany Paper Co., 152 U. S. 425,
152 U. S. 429.
So, where an applicant whose claim is rejected on reference to a
prior patent, without objection or appeal, voluntarily restricts
himself by an amendment of his claim to a specific structure,
having thus narrowed his claim in order to obtain a patent, he
"may not, by construction or by resort to the doctrine of
equivalents, give to the claim the larger scope which it might have
had without the amendments, which amount to a disclaimer."
Weber Elec. Co. v. Freeman Elec. Co., 256 U.
S. 668,
256 U. S.
677.
It results that as the claims in suit were limited by the
proceedings in the Patent Office to the specific form of a
three-point contact lift, they are not infringed by the heels made
by the Essex Company, which are not three-point contact lifts,
their upper side edges having no vertical curve and lying entirely
in the same horizontal plane as the rear edge and breast corners.
Nor can they be held to be infringements even if we assume that, as
asserted, they function in the same manner as three-point contact
lifts, and would infringe, as was conceded in the district court,
if the claims were not restricted by the limiting clause and were
entitled to a construction warranting a wide range of equivalents.
By the limitation of the claims in the Patent Office proceeding to
the three-point contact lift the patentee made this precise form
a
Page 272 U. S. 445
material element, and having thus narrowed the claims, cannot,
as was said in the
Weber Electric Company case, now
enlarge their scope by a resort to the doctrine of equivalents.
This would render nugatory the specific limitation.
The decree is accordingly
Affirmed.
[
Footnote 1]
Various intermediate proceedings, on a preliminary motion to
dismiss, appear in 270 F. 593, 276 F. 478, and in 281 F. 5.
[
Footnote 2]
This rule provides that the brief for the plaintiff in error,
appellant or petitioner shall contain,
inter alia, a
"concise statement of the case containing all that is material
to the consideration of the questions presented, with appropriate
page references to the printed record,"
cl. 2(d); a "specification of such of the assigned errors as are
intended to be urged," cl. 2(e), and an "argument . . . exhibiting
clearly the points of fact and of law being presented," cl. 2(f),
266 U.S. 671.
[
Footnote 3]
The under layers of shoe heels were called "lifts" by the
cobblers.
[
Footnote 4]
The "breast" is the front face of the heel.
[
Footnote 5]
All these claims are set forth in full in the opinion of the
circuit court of appeals in 1 F.2d at 781.
[
Footnote 6]
The file wrapper does not set forth all of these claims.
[
Footnote 7]
Thus, in the
U.S. Rubber Co. case, the Circuit Court of
Appeals for the Sixth Circuit stated that "each of Claims 5 to 9,
inclusive" contain the limiting clause referring to "a plane
passing through the rear upper edge and breast corners."
[
Footnote 8]
Fetzer & Spies Leather Co. v. U.S. Rubber Co., 260
F. 939,
United States Rubber Co. v. U.S. Rubber Co., 260
F. 950,
supra, Tee Pee Rubber Co. v. U.S. Rubber Co., 268
F. 250, Hill Rubber Heel Co. v. U.S. Rubber Co.,
269 F. 270,
U.S. Rubber Co. v. Tee Pee Rubber Co.,288 F. 794, in the Sixth
Circuit, and
United States Rubber Co. v. U.S. Rubber Co.,
288 F. 786, in the Seventh Circuit.