Ashcroft v. Boston & L. R. Co. 97 U. S. 189 Construction of letters patent for concrete pave (24:982); Matthews v. Boston Machine Co. 105 ments-effect of disclaimer-infringment-U. S. 59 (26:1024); Bridge v. Excelsior Mfg. Co. equivalent. 105 U. S. 618 (26:1190); Neacy v. Allis, 13 Fed. Rep. 874; McCormick v. Talcott, 61 U. S. 20 How. 402 (15:930).

Moury v. Whitney, 81 U. S. 14 Wall. 620, Carver v. Hyde, 41 U. S. 16 Pet. 513 (10:1051); 649 (20-860, 865); Philp v. Nock, 81 U. S. 17 Burr v. Duryee, 68 U. S. 1 Wall. 531 (17:650); | Wall. 460 (21:679); Goulds Mfg. Co. v. Cowing, Fuller v. Yentzer, 94 U. S. 291 (24:104); Brooks 12 Blatchf. 243, 14 Blatchf. 315; Black v. Munv. Fiske, 56 U. S. 15 How. 213 (14:665); Snow son, 14 Blatchf. 265; Buerk v. Imhaeuser, 14 130 U. S. 65 1011

[457]

Blatchf. 19; Blake v. Robertson, 94 U. S. 728
(24:245); Garretson v. Clark, 15 Blatchf. 70.

Mr. Geo. W. Hey, for appellees:

It is clearly proven in this case that defendant Hurlbut has infringed the Schillinger patent.

Grant v. Raymond, 31 U. S. 6 Pet. 218 (8: 376); Ames v. Howard, 1 Sumn. 482-485; Blanchard v. Sprague, 3 Sumn. 535-539; Davoll v. Brown, 1 Wood & M. 53, 57; Parker v. Haworth, 4 McLean, 372; Le Roy v. Tatham, 55 U. S. 14 How. 181 (14:367).

The proper measure of damages is the net profit actually realized by the defendant from the making and sale of his concrete flag pave

ments.

Tilghman v. Proctor, 125 U. S. 136 (31:664); Brady v. Atlantic Works, 3 Bann. & Ard. 577, 15 Pat. Off. Gaz. 965; Cox v. Griggs, 2 Fish. Pat. Cas. 174; Hays v. Sulsor, 1 Fish. Pat. Cas. 532; 1 Bond, 279; Bell v. Daniels, 1 Bond, 212, 1 Fish. Pat. Cas. 372; Wayne v. Holmes, 1 Bond, 27, 2 Fish. Pat. Cas. 20; Serrell v. Collins, 1 Fish. Pat. Cas. 289; Curtis, Pat. § 338; Lorcell v. Lewis, 1 Mason, 184; Whittemore v. Cutter, 1 Gall, 429.

Mr. Justice Blatchford delivered the opinion of the court:

and that the proper amount of recovery was
the defendant's profits, at the rate of four cents
a square foot, or $2,836.36; and it entered a
final decree, on the 16th of November, 1885,
for that amount. The defendant has appealed
from that decree.

The specifications, claims and drawings of
the original and the reissued patents are as fol-
lows, the specifications and claims being placed
in parallel columns, the parts of each which [459]
are not found in the other being in italic, and
the drawings of the original and the reissue
being the same:

Original.

"Be it known that I, John J. Schillinger, of State of New York, have the City, County, and invented a new and useful improvement in condo hereby declare the crete pavements; and I following to be a full, clear, and exact description thereof, which will enable those skilled in the art to make and use the same, reference being had to the accoming part of this specificapanying drawing, formtion, in which drawing

Figure 1 represents view. Fig. 2 is a vertical my pavement in plan section of the pavement.

"This invention relates

to pavements for side-
walks and other purposes,

This is a suit in equity, brought in the Circuit Court of the United States for the Northern District of Illinois, by John J. Schillinger and Elmer J. Salisbury against J. B. Hurlbut, [458] founded on the alleged infringement of reissued letters patent No. 4364, granted to John J. Schillinger, May 2, 1871, for an "improvement in concrete pavements," on the surrendering, with the joints of of original letters patent No. 105,599, granted to said Schillinger, July 19, 1870. The defenses set up in the answer are the invalidity of the reissue, want of utility in the invention, want of novelty, and noninfringement.

Reissue.

"Be it known that I,
John J. Schillinger, of
State of New York, have
the City, County, and
invented a new and use-
ful improvement in con-
do hereby declare the
crete pavements; and I
following to be a full,
clear, and exact descrip-
tion thereof, which will

enable those skilled in
the art to make and use
the same, reference
being had to the accom-
ing part of this specifica-
panying drawing, form-
tion, in which drawing-

"Figure 1 represents a
Fig. 2 is a vertical section
plan of my pavement.
of the same. Similar let-
ters indicate correspond-
ing parts.

and consists in combin- so that each section can be

This invention relates to a concrete pavement which is laid in sections, taken up and relaid with out disturbing the adjoin ing sections. With the joats of this sectional

concrete pavements,
strips of tar-paper or
equivalent material ar-
ranged between the sev-concrete pavement are
eral blocks in such a combined strips of tar-
manner as to produce a paper or equivalent ma-

The bill was filed in October, 1882. Salis suitable tight joint and
bury having died, the suit was, so far as his yet allow the blocks to
be raised separately
interest was concerned, revived in March, 1884, without affecting or in-
in the name of Olive G. Salisbury, as adminis-juring the blocks adja-
tratrix. The interest of Salisbury was that he
cent thereto.
was the exclusive licensee under the reissued
patent for the State of Illinois. Issue having
been joined, proofs were taken on both sides,
and on the 15th of May, 1884, the court entered
an interlocutory decree, adjudging that the re-
issued patent was valid, that the defendant had
infringed it, and that the administratrix of
Salisbury recover profits and damages from the
26th of August, 1882, the date of the license to
Salisbury. The decree also ordered a reference
to a master to take an account of the profits
and the damages.

The master took proofs, and on the 30th of
September, 1884, filed his report, to the effect
that between August 26, 1882, and May 20,
1884, the defendant had laid 70,909 feet of
pavement by the use of the plaintiff's patent,
for which he should be held to account; and
that the plaintiffs had shown an established
license fee of five cents a square foot, or $3,
545.45, as damages, which amount he reported.
He also reported that the defendant's profits
had amounted to four cents a square foot. The
defendant excepted to this report, and, on a
hearing, the court held that the evidence did
not establish a fixed license fee as a royalty,

invention I form the
"In carrying out my
concrete by mixing ce-
ment with sand and
gravel or other suitable
materials to form a suit-
able plastic composition,
using about the follow-
part, by measure, of ce-
ing proportions: One
ment; one part, by meas-
ure, of sand, and from
three to six parts, by
suthicient water to make
measure, of gravel, using
the mixture plastic; but
I do not confine myself
making the
to any proportions for
concrete
composition. While the
mass is plastic I lay or
spread the same upon the
foundation or bed of
the pavement, either
in moulds or between
proper thickness, so as to
movable joists of the
form the edges of the
concrete blocks a a, &c.
been formed I take strips
When the block a has
of tar-paper b, of a width

terial arranged between
the several blocks or sec-

tions in such a manner
as to produce a suitable
tight joint and yet allow
the blocks to be raised
separately without af-
fecting the blocks adja-
cent thereto.

invention I form the con-
In carrying out my
crete by mixing cement
with sand and gravel or
other suitable material
to form a plastic com-
pound, using about the
following proportions:
One part, by measure, of
cement;

measure, of sand, and
one part, by
from three to six parts,
by measure, of gravel,
render the mixture plas-
with sufficient water to
tic; but I do not confine
myself to any definite

[460]

proportions or materials
for making the concrete
composition. While the
mass is plastic I lay or [461]
spread the same on the

foundation or bed of the
pavement, either in
moulds or between mov-
thickness, so as to form
able joists of the proper
the edges of the concrete
blocks a a, one block be
When the first block has
ing formed after the other.
set I remove the joists or

[462]

Fig.2

ing words: 'And since the concrete in setting The patent was before this court in Califor- [465] shrinks, the second block when set does not nia A. S. Paving Co. v. Molitor, 113 U. S. 609 adhere to the first, and so on,' and which oc- [28:1106], in March, 1885, but only on a ques curs near the middle part of the said specifica- tion of contempt, and in California A. S. Pav tion, and to the following words near the ending Co. v. Schalicke, 119 U. S. 401 [30:471], in of the specification: 'In such cases, how- December, 1886. ever, where cheapness is an object, the tarpaper may be omitted and the blocks formed without interposing anything between their joints, as previously described. In this latter case the joints soon fill up with sand or dust, and the pavement is rendered sufficiently tight for many purposes, while the blocks are detached from each other and can be taken up and relaid, each independent of the adjoining blocks.' Your petitioner hereby disclaims the forming of blocks from plastic material without interposing anything between their joints while in the process of formation. Your petitioner owns the said patent and the whole interest therein, except in the following places or ter ritory, for which he has granted exclusive licenses under royalty, or sold rights under said [464] patent, to wit: the Counties of Kings, Queens, and Richmond, New York State; Hartford County, Connecticut; the District of Columbia; the States of New Jersey, Georgia, Maryland, Louisiana, Texas, Ohio, Michigan, Missouri, and Illinois, which above named States and places comprise all the territory for which he has sold or granted exclusive licenses or rights in or under said patent, to the best of his recollection, knowledge and belief."

We are of opinion that the proper construction of the reissued patent is, that the invention consists in dividing the pavement into blocks, so that one block can be removed and repaired without injury to the rest of the pavement, the division being effected by either a permanent or a temporary interposition of something between the blocks. Concrete pavement had been laid before in sections, without being divided into blocks. The effect of the disclaimer was to leave the patent to be one for a pavement wherein the blocks are formed by interposing some separating material between them. To limit the patent to the permanent interposition of a material equivalent to tar-paper, would limit the actual invention. The use of a bottom layer of coarse cement, and placing on it a course of fine cement, and dividing the upper course into blocks by a trowel run partially or wholly through the upper course while it is plastic, in a line coincident with the joints between the sections in the lower layer, accomplishes the substantial results of Schillinger's invention, in substantially the way devised by him, and is within the patent as it stands after the disclaimer. The disclaimer took out of the first claim of the reissue only so much thereof as claimed a concrete pavement made of the plastic material laid in detached blocks, without interposing anything in the joints in the process of formation, leaving that claim to be one for such a pavement laid in detached blocks, when free joints are made between the blocks, by interposing permanently or temporarily between them, in the process of their formation, Feb-tar-paper or its equivalent.

The words specifically disclaimed by the disclaimer are embraced in brackets in the copy of the specification of the reissue above set

forth.

The Schillinger patent has been before several of the Circuit Courts of the United States, and also before this court, for adjudication.

In the Circuit Court for the Southern District
of New York, before Judge Shipman, in
ruary, 1877, in Schillinger v. Gunther, 14 In California A. S. Paving Co. v. Schalicke,
Blatchf. 152, and 2 Ban. & Ard. 544, and 11 supra, it was said, p. 406 [472]: "The evidence
Pat. Off. Gaz. 831; and in the same case, be- in the present case shows that the defendant,
fore Judge Blatchford, in August, 1879, 17 during the process of making his pavement,
Blatchf. 66, and 4 Ban. & Ard. 479, and 16 Pat. marked off its surface into squares. But the
Off. Gaz 905; in the Circuit Court for the Dis- question is whether he, to any extent, divided
trict of California, before Judge Sawyer, in it into blocks, so that the line of cracking was
May, 1881, in California Artificial Stone Pav-controlled, and induced to follow the joints of
ing Co. v. Molitor, and The Same v. Perine, 7
Sawy. 190, and 8 Fed. Rep. 821, and 20 Pat.
Off. Gaz. 813; in the Circuit Court for the
Northern District of New York, before Judge
Blatchford, in July, 1883, in Schillinger v.
Greenway Brewing Co. 21 Blatchf. 383, and 17
Fed. Rep. 244, and 24 Pat. Off. Gaz. 495; and in
the Circuit Court for the Southern District of
Ohio, before Judge Sage, in June, 1884, in Kuhl
v. Mueller, 21 Fed. Rep. 510, and 28 Pat. Off.
Gaz. 541, the patent was sustained. In the
Supreme Court of the District of Columbia, in
general term, in July, 1885, in Schillinger v.
Cranford, 2 Cent. Rep. 680, 4 Mackey, 450, and
37 Pat. Off. Gaz. 1349, it was held void, on the
question of novelty. It was also interpreted
by Judge Sawyer, in the Circuit Court for the
District of California, in California Artificial
Stone Paving Co. v. Freeborn, in January, 1883,
8 Sawy. 443, and 17 Fed. Rep. 735, and by Judge
Deady, in the Circuit Court for the District of
Oregon, in August, 1887, in Schillinger v.
Middleton, 81 Fed. Rep. 736.

the divisions, rather than the body of the block,
and so that a block could be taken out, and a [466]
new one put in its place, without disturbing or
injuring an adjoining block. The specification
makes it essential that the pavement shall be so
laid in sections that each section can be taken
up and relaid without disturbing the adjoining
sections.' Again, it says that the joint between
the blocks 'allows the several blocks to heave
separately, from the effects of frost, or to be
raised or removed separately, whenever occa-
sion may arise, without injury to the adjacent
blocks. This is essential; and, in all the cases
where infringement has been held to have been
established, there have been blocks substantial-
ly separate, made so by the permanent or tem-
porary interposition of a separating medium or
a cutting instrument, so that one block could
upheave or be removed without disturbing the
adjoining blocks. The patentee, in the dis-
claimer, expressly disclaimed the forming of
blocks from plastic material without interpos-
ing anything between their joints while in the

process of formation.' It appears that the de-off and made even with the top surface of endant laid his pavement in strips from the curb of the sidewalk inward to the fence, in one mass, and then marked the strip cross wise with a blunt marker, which is made an exhibit, to the depth of about one sixteenth of an inch. But it is not shown that this produced any such division into blocks as the patent speaks of, even in degree. There were no blocks produced, and, of course, there was nothing interposed between blocks. The mass underneath was solid, in both layers, laterally. So far as appears, what the defendant did was just what the patentee disclaimed. The marking was only for ornamentation, and produced no free joints between blocks, and the evidence as to the condition of the defendant's pavements after they were laid shows that they did not have the characteristic features above mentioned as belonging to the patented pavement." In its decision in the present case, which was made before that in the Schalicke case, the court said that the case was in no way different, so far as infringement was concerned, from the cases against Perine and Molitor and the case against the Greenway Brewing Company. In the Schalicke case it was said, in the [467] opinion of this court, in regard to the paveinent in the Molitor case: "The defendant's pavement was made by cutting a lower course into sections with a trowel, to a greater or less depth, according to the character of the material, making a joint, and doing the same with an upper course, the upper joint being directly over the lower joint. Into the open joint, in each case, was loosely put some of the partially set material from the top of the laid course, answering the purpose of tar-paper. A blunt and rounded jointmarker, which was said to be or of an inch in depth, was then run over the line of the joints, marking off the block. The pavement was weaker along the line of the joint than in any other place. This was held to be an infringement.' It was also there said that, in the Greenway Brewing Company case, "it was held that the 2d claim of the reissue was infringed by a concrete pavement which had an open cut made by a trowel entirely through two courses of material, the line of cut in the upper course being directly over the line of cut in the lower course, and that the interposition of the trowel, though temporary, was an equivalent for the tar-paper, even though the joint was left open after the trowel was reinoved, and was not made tight."

the joints. Then the short joist that is put in
at right angles, as before described, is taken up
and placed about the same distance as before,
and again filled in. The finer material in the
coarse concrete is generally worked next to
the joist, so as to make a good, smooth, strong
edge. When the top stuff is put on this last
stone, and finished over on top with a trowel,
the joint between the two stones being marked
on the outer joist, a trowel is drawn through
the top stuff, to make a joint straight, to cor-
respond with the joint below." The evidence
is satisfactory, that the trowel was used to cut
through or into the top layer to an extent suf-
ficient to make such a separation of the top
layer into blocks, at a line corresponding with
the joint below between the sectious of the first
layer, as to control the cracking of the top
layer, by dividing it substantially into separate
blocks. This division depends on the depth
of the cut. The defendant contends that the
object and effect of the marking with the
trowel was only to give to the pavement the
appearance of flagging; but the evidence is
entirely clear that the cut was made sufficiently
deep, in proportion to the thickness of the up-
per layer, to make such a separation of the
upper layer into blocks as would compel any
tendency to crack to follow the line of the cut
made by the trowel, and not run off into the
body of the layer; and that thus the object of
Schillinger's invention was attained. The de-
fendent is, by the report of the master and the
decree of the circuit court, made liable only
for concrete flagging so laid and cut as to pro-
duce such result. The defendant was par-
ticular to have the cut in the upper layer made
with the trowel directly over the line between
the two sections of the lower layer, and it is
shown that the upper layer of his pavement
thus made would come up in separate blocks.
He made his lower course of sand, gravel and
cement, mixed in the proportions of one part
of cement to six or seven of sand and gravel,
while he made his upper course of one half
sand and one half cement, made plastic with
water. The lower course of his flagging was
composed of material in which there was only
one part of cement or adhesive substance to
six or seven parts of nonadhesive substance,
and there was but a slight tendency to adhere
between the faces of the two sections in the
lower course; while as the upper layer was
composed one half of adhesive substance, the
tendency was for its material to adhere strong-
ly. Therefore, a cut in the upper course, co-
incident with the joint below, would permit
any action of the settling of the lower course,
through frost or upheaval, to extend to the top
of the upper course through a joint cut in that
course, of sufficient depth to prevent the ten-
dency of the upper course to crack in its body
rather than in the line of the cut.

In the present case, the only pavement for
which the defendant was held liable was what
was called in his account or statement before
the master "concrete flag pavement," the man-
ner of constructing which is thus described by
Mr. Perkins, a witness for the plaintiff: "First,
joists are placed seven to eight feet apart, in
front of the property where the work is to be
laid. First, one stone is formed by placing a We are, therefore, of opinion that the first
joist across between the others at right angles, claim of the reissue, as it stands after the dis-
generally at about four feet from the place of claimer, is infringed, because the defendant's
beginning. In this space a mortar, composed pavement is a concrete pavement, laid in de-
of sand, gravel and cement, is put and thor-tached blocks or sections, substantially in the
oughly tamped, so that the coarse material will
be from three to four inches in thickness, leav-
ing about one half inch on top for a mortar
composed of sand and cement, which is troweled

manner shown and described in the specifica-
tion of the reissue, the detached blocks in the
upper course being the equivalent of the de-
tached blocks or sections of the Schillinger

[468]

[469]