at a nearly uniform distance from its front, and the surface of the handle of the spoon showing an embossed or engraved ornamentation."

The corresponding parts of the specification of the second patent differ only in substituting "table fork" for "spoon" in the body of the specification and in the claim. Upon the filing of the bill the district judge granted a temporary injunction, and delivered an opinion reported in 23 Fed. Rep. 400. The case has now been heard upon pleadings and proofs. There is some conflict in the testimony. Taking the whole evidence as favorably as possible for the plaintiff, the material facts appear to be as follows: Before either of these patents was applied for, common spoons and forks, as well as jewelry pins in other shapes than spoons or forks, had been made, with the edges turned over as described in these patents. But jewelry pins in the shape of spoons and forks had never been made with the edges so turned, and the plaintiff's pins, by reason of their peculiar form and appearance, resulting from the turning of the edges, were easily distinguishable from such pins of other manufacturers, and had a readier and larger sale. Under section 4886 of the Revised Statutes, authorizing a patent to be granted to "any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof," it is well settled that the application of an old process or machine to a new or analogous subject, (although of very different size or material,) with no change in the manner of application, and accomplishing no result substantially different in its nature, will not sustain a patent. Pennsylvania R. Co. v. Locomotive Safety Truck Co., 110 U. S. 490, 4 Sup. Ct. Rep. 220, and cases cited; Peters v. Manufacturing Co., 129 U. S. 530, 9 Sup. Ct. Rep. 389; Peters v. Hanson, 129 U. S. 541, 9 Sup. Ct. Rep. 393. Under section 4929 a patent for a design can only be granted to "any person who by his own industry, genius, efforts, and expense has invented and produced any new and original design for a manufacture" or other thing mentioned in this section, "or any new, useful, and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication." A patent under this section, indeed, is for the design which is the product of the invention, and not for the process or the means by which it is produced, and has less regard to the utility of the product than to the novelty and originality of its appearance. But in order to support a patent for a design, as for any other subject, under the acts passed by congress in the exercise of its constitutional power to secure to inventors the exclusive right to their discoveries, there must be some invention, and not a mere application to a new material of something already known. The design must be new and original, and not a copy or an imitation. This is required by the clear words of the section, and has been constantly recognized in the judicial decisions under it. Clark v. Bousfield, 10 Wall. 133, 139; Gorham Co. v. White, 14

Wall. 511, 524, 525; Wooster v. Crane, 5 Blatchf. 282, 2 Fish. Pat. Cas. 583; Niedringhaus's Appeal, 8 O. G. 279; Northrup v. Adams, 2 Ban. & A. 567; Theberath v. Harness Co., 15 Fed. Rep. 246. The decisions under the corresponding provision of the English patent act are to the same effect. Mulloney v. Stevens, 10 Law T. (N. S.) 190; Lazarus v. Charles, L. R. 16 Eq. 117; Windover v. Smith, 32 Beav. 200; Adams v. Clementson, 12 Ch. Div. 714; Dicks v. Brooks, 15 Ch. Div. 22, 34; Le May v. Welch, 28 Ch. Div. 24; In re Bach's Design, 42 Ch. Div. 661. In the light of the words of the statute, and of the uniform course of decision upon the subject, we can have no doubt that a design for a piece of metal in the shape of a spoon or fork two inches long, precisely similar in appearance, both generally and in form of edge, to common spoons or forks six inches long, lacks the novelty necessary to support a patent. Bill dismissed, with costs.

CAMPBELL PRINTING-PRESS & MANUF'G Co. v. EAMES VACUUM

BRAKE CO.

(Circuit Court, S. D. New York. November 18, 1890.)

1. PATENTS FOR INVENTIONS-VALVES FOR PNEUMATIC PIPES-NOVELTY-INVENTION. Claim 1 of letters patent No. 401,680, granted to Edward S. Boynton, April 16, 1889, for an improvement in valves for pneumatic pipes, was "in combination with an external pivoted valve, a compressive helical spring inclosed within a tubular guide formed upon or attached to the valve.” In a device for coupling the pipes between railroad cars previously patented, the valve was made to hold the coupling, or to fly shut by means of a torsional helical spring. Held, that the combination of claim 1 was but the substitution of a compressive helical spring for the torsional spring of the older structure, with the limitation that the tubular guide must be attached to the valve, and that such claim was void for want of novelty. 2. SAME.

The second claim of such letters patent was limited by stating that the tubular guide must be attached to the valve between one end of the guide and a stop at the pivoted point of the valve, and thus insured a neat, compact, and cheap structure, besides safety and durability. Held, that the device involved invention, and was valid.

In Equity.

Philip R. Voorhees, for complainant.

J. E. Maynadier, for defendant.

COXE, J. The complainant sues to restrain the infringement of letters patent No. 401,680, dated April 16, 1889, granted to Edward S. Boynton, assignor to the complainant, for an improvement in valves for pneumatic pipes or tubes. On the 17th of July, 1877, a patent, No. 193,078, was granted to Frederick W. Eames for a new device for coupling the pipes between railroad cars, especially designed for use in connection with the vacuum power-brake. In the Eames structure the valve is made to hold the coupling, or to fly shut upon the valve seat by means of a torsional helical spring. In the paten in hand the same result is produced by a compressive helical spring. The substitution

of the one spring for the other, with the ingenious mechanical changes made necessary thereby, constitutes the only difference between the Eames and Boynton couplings. Invention is predicated of this substitution and this only. The patentee refers, in the specification, to the Eames vacuum brake and points out various defects in the coiled torsional spring there used, which, he says, is perishable and liable to deteriorate under the influence of grit, dirt, and climatic changes. These defects he asserts are "well known," and are, he thinks, remedied by his spring, which is within a case and thus protected from the deteriorating influences referred to. The specification further states "that helical, compressive springs have been used for the automatic closing of valves and that such a combination is not broadly new; but in such cases both the springs and valves are not external to but one or both are within a valve-casing." The claims are as follows:

"(1) In combination with an external pivoted valve, a compressive helical spring inclosed within a tubular guide formed upon or attached to the valve, substantially as and for the purposes set forth. (2) In combination with an external pivoted valve, a self-closing device consisting of a compressive helical spring held within a tubular guide formed upon or attached to said valve between one end of said guide and a stop at the pivotal point of the valve, substantially as and for the purposes set forth."

Infringement is admitted. The defenses are, first, that the patent is void for want of novelty; and, second, that the defendants have an equitable license under it. The elements of the combination of the first claim are:

"(1) An external pivoted valve. (2) A compressive helical spring within a tubular guide. (3) The tubular guide must be formed upon or attached to the valve.

The combination here claimed involves nothing more than the substitution of a compressive helical spring for the torsional spring of the Eames structure, with the limitation that the tubular guide inclosing the spring must be attached to the valve. A claim so broad cannot be upheld. It is void for want of patentable novelty. It requires no argument to show that it is not invention to take a spring out of an old machine and put in its place another form of spring, equally old, to do precisely the same work. The use of the words "within a tubular guide formed upon or attached to the valve" do not aid the claim in this regard. The mention of a compressive spring in connection with the Eames coupling would naturally suggest to the skilled mechanic the use of an inclosing tube as well as the necessity of fastening the tube either to the valve or to the coupling. It must be attached to either one or the other. Fastening it to the former required no more ingenuity than. fastening it to the latter. There is nothing which limits the first claim to the combination shown in the drawings. The location of the tube is not specified further than that it must be attached to the valve. The word "valve" in the claim is doubtless intended to cover the valve lever as well, for, strictly speaking, the tube in the patented structure is not formed upon or attached to the valve proper but to the web connecting v.44F.no.1-5

the valve with the boss. An inclosed spring attached to the valve at any point or in any manner would, therefore, infringe. The claim is too broad.

The second claim is further limited by the statement that the tubular guide must be attached to said valve between one end of said guide and a stop at the pivotal point of the valve. This language is not entirely clear, but there is little difficulty in interpreting it as covering the precise mechanism described and shown in the specification and drawings, minus the screw plug and some other minor details. It certainly is a fair construction of this language to locate the tube as it is shown in the drawings, one end being at the stop located at the pivotal point against which stop the spring is compressed, and the other end attached to the valve proper, or connecting web. It is hardly disputed that the peculiar mechanism devised by Boynton shows some exercise of the inventive faculty. Defendant's brief, practically, admits that he is entitled to a patent limited to his peculiar details of construction. The use of the compressive spring would certainly have occurred to a skilled mechanic, but the location of the tube and the operation of the various parts, in the form and manner described by the patentee, insuring, as they do, a neat, compact and cheap structure, besides safety and durability, certainly required the exercise of ingenuity of a high order and, I am inclined to think, of invention also. It is true that this device is very near the border line which separates invention from mechanical skill. The patent should, however, have the benefit of the doubt. It is thought that the second claim can be limited to the material features of the precise combination shown in the specification and drawings and that so construed it can be upheld. The evidence does not establish a license except as conceded by the complainant. The compiainant does not ask for an accounting. It follows that, upon filing a disclaimer of the first claim, the complainant can have a decree for an injunction as to the second claim, but without costs.

CONSOLIDATED SAFETY VALVE Co. v. CROSBY STEAM GAGE &
VALVE CO.

(Circuit Court, D. Massachusetts. October 7, 1890.)

1. PATENTS FOR INVENTIONS-DAMAGES FOR INFRINGEMENT.

Defendants who infringed a patented valve by the manufacture of valves commercially worthless but for the infringed invention, are liable for the profits realized by them, though the form of their valves is different from those manufactured by complainants.

2. SAME.

Where the valves manufactured by defendants also infringed another later patent, likewise owned by complainants, no injustice is done defendants in acceding to complainants' claim that all profits realized by defendants during the life of the earlier patent were solely due to the invention covered by that patent, especially in view of the fact that defendants contended that the invention embodied in the

later patent is worthless; and hence, in an action for the infringement of the earlier patent, it is unnecessary for the master to find how much of defendants' profits are due to the later invention.

3. SAME

ESTOPPEL.

Complainants, after contending for and accepting a finding, in an action for the infringement of the earlier patent, that defendants' profits, arising from the manufacture and sale of valves infringing both patents, were due solely to the earlier invention, cannot be permitted to recover more than nominal damages in an action for the infringement of the later patent alone, brought after the expiration of the earlier one.

In Equity.

Thomas W. Clarke, for complainants.

Joshua H. Millett, (Benjamin F. Thurston, of counsel,) for defendants.

COLT, J. These cases now come before the court upon exceptions to the master's report. In No. 1,184, the master finds that the complainants are entitled to recover the sum of $40,344.59 for the profits received by the defendants from the infringement of the Richardson 1866 patent, No. 58,294. In No. 1,199 the master finds that the defendants had made no more than nominal profits from the infringement of the Richardson 1869 patent, No. 85,963.

In

The main question raised by the defendants' exceptions relates to the method adopted by the master in estimating the profits allowed in case No. 1,184. These suits were originally brought in the circuit court, and decrees were entered dismissing the bills. 7 Fed. Rep. 768. The supreme court upon appeal reversed the decision of the circuit court, and remanded the cases to this court, with directions to enter decrees sustaining the validity of the Richardson patents, decreeing infringement of both patents, and directing an account to be taken of profits as to both patents, and to take such further proceedings as may be proper, and not inconsistent with the opinion of the court. 5 Sup. Ct. Rep. 513. judging of the correctness of the method pursued by the master in his estimation of defendants' profits, the construction put upon the Richardson 1866 patent, and the language used in respect thereto as embodied in the opinion of the court, cannot be disregarded. It was clearly the duty of the master in his findings, as it is also the duty of the court at the present time, to give full force and effect to the opinion of the supreme court. If the contention of the defendants is sound, that the supreme court, in their interpretation of the Richardson 1866 patent, gave too much prominence to the feature known as the "huddling chamber with a strictured orifice," it is for them, upon appeal, to obtain some modification of that opinion; but, so long as it stands as the opinion of that court, the views therein expressed should be strictly carried out The position, therefore, taken by the defendants that the complainants are only entitled to nominal damages, because, as they say, the Richardson valve of commerce does not contain the huddling chamber with a strictured orifice, or, in other words, a huddling chamber with an aperture for the exit of the steam into the open air which is of smaller area than the aperture at the ground joint, I cannot regard as sound, in view of the opinion of the supreme court. That court construed the Richard