ends of the guard are secured, is also flat in its outer portion with which the lower ends of the guard members are interlocked. The body hoop frame ring is turned up on its inner side, inside of the lower ends of the upright guard members, so as to form a short, annular, upright flange or collar, which surrounds the body hoop in the external annular depression formed in the latter. In this respect the body hoop frame ring of the defendants' lantern differs from that shown in the Spear patent in suit, in which that ring is flat frow the outer to the inner edge. In the defendants' lantern the ring therefore takes a somewhat wider bearing on the body hoop." I am unable to see any difference between the use of the body hoop frame ring in the complainant's lantern and the wider body hoop frame ring in the defendants' lantern, other than that stated in the last part of the witness' description, to wit, that one ring has a wider bearing upon the body hoop than the other; but the one used by the defendants is the equivalent of that used by the complainant. There are two other variations in the frame ring, to wit, a narrowing of the frame ring between the points where the upright guards join it, and by extending the upright guards beyond the body hoop frame ring and bending them in through the body hoop and turning their ends up on the inner side. These variations from the complainant's structure are plainly of no substance, and embody no new invention. It is evident that the first and second claims of the complainant's patent are infringed, unless the patent is void for any of the reasons set forth in the defense. As to the question of invention in the complainant's patent, it is evident that he has made an important improvement, which has not been anticipated by the various patents to which the court's attention has been called. No other lantern shows the simple and desirable connection of the body hoop with the frame that is shown in complainant's lantern. It is true, the improvement, after the discovery, seems slight; but it had never been known or used before, and lanterns previously made were not as rigid and stiff at this juncture. It is not necessary to separately consider the great number of patents for lanterns introduced, as the drawings and exhibits all show that this particular method of joining the parts had never been described or used in either; nor do we think that the patent has been abandoned by the complainant, or his right to a patent lost, by reason of the issuance of patent No. 399,944. That patent was for the frame of a lantern, and describes the kind of material to be used in the frame and the method of notching and interlocking the parts together; the lower horizontal guard ring of which is described in the patent in suit as the body hoop frame ring. The thing patented by the complainant was the method of securing the body hoop to a frame ring, which was part of the frame of a lantern, rigidly and securely, which had never theretofore been known; and the fact that this body hoop frame ring is part of the frame of the lantern described in the prior patent to himself is not an abandonment. A prior patent for a device does not defeat a patent for a combination of which such device forms one of its elements. McMillan v. Rees (C. C.) 1 Fed. 722; Bates v. Coe, 98 U. S. 31, 25 L. Ed. 68 (see page 74). Let a decree be drawn in favor of the complainant. 131 F.-56 MORRILL v. HARDWARE JOBBERS' PURCHASING CO. et al (Circuit Court, S. D. New York. July 22, 1904.) 2. PATENTS-INFRINGEMENT-SAW-SETS. The Morrill patents, Nos. 441,962, 532,175, and 703,440, each covering a saw-set, construed, and held not infringed. In Equity. Suit for infringement of letters patent No. 441,962, to Charles Morrill, granted December 2, 1890, No. 532,175, to the same, granted January 8, 1895, and No. 703,440, July 1, 1902, to Sarah C. Morrill, executrix, each for a saw-set. On final hearing. A. Bell Malcomson, for complainant. PLATT, District Judge. Patent suit for infringement and accounting on divers patents mentioned hereafter. Final hearing. The defense is that, in view of the prior art, the claims in issue are either invalid, or that they must be construed so narrowly that the defendant avoids infringement. An examination of the art instantly discloses the fact that for more than 20 years the opportunities for advancement must have stimulated the sale of powerful microscopes. With the unaided eye important changes may pass unnoticed. The candid trier must exercise unusual care when he treads upon such delicate ground. Patent 441,962. Claims 1 and 2 are in issue: "(1) The combination, with a saw-set having an adjustable or fixed anvil and saw-adjusting device, of a horizontally moving cylindrical hammer having a concaved and adapted to work in frictional contact with the cylindrical projection on the lower end of the punch-handle, substantially as shown and described. "(2) The combination, with a saw-set having an adjustable or fixed anvil and horizontally moving cylindrical hammer, of the saw-adjusting device composed of a screw arranged at a suitable angle to the horizontal center of the main body of the device, and supported by the correspondingly depending screw-threaded lug arranged on the under side of the device, substantially as shown and described." It is admitted that complainant's exhibit, defendants' infringing saw-set, does not infringe claim 1. The only attempt at novelty is the concavity of the horizontally moving lever, engaging frictionally with the cylindrical projection on the punch-handle, thus securing alignment. This is a common device, and it is only necessary to select the Harvey patent, 248,463, from the many references. Complainant says that it appears in figure 1 of the drawing of defendants' exhibit Potter Application, under which defendant claims to be manufacturing, but it is enough to say that it is absent from the device in evidence. So that, in any aspect of the case, we must eliminate claim 1. If claim 2 has any novelty, it resides in the substitution of the adjusting screw, d, for Charlton's gage-plate, nn (302,891), and the adjustment of the screw at a particular angle. Defendant sets his screw at an acute angle to the saw. Complainant, by his specification, con fines himself to practically a right angle, which he calls in his claim "a suitable angle." This claim may be eliminated. Patent 532,175. This has only one claim, viz.: "The combination, substantially as shown and described, consisting of the main stock, a, the lever, b, plunger, c retracting spring. d, depending lug, e, gage screw, f, rotatively adjustable anvil, h, having the indentations, o, thereon (the latter adapted to engage with corresponding means for locking the anvil in position), pin, i, shield washer, k, pin, 1, and spring, m; the whole forming a complete device." When letters are scattered so profusely through a claim, one naturally expects a narrow construction. The example before us is no exception to the rule. The complainant evidently sees that his only chance to discover infringement here is to claim pioneership, and so obtain the benefit of a stronger application of the doctrine of equivalents. Both by the prior art and by its own plain statements, the claim is closely limited to a means for automatically locking the anvil in its various operative positions. The other elements appear in Charlton, 302,841, or in the preceding patent in suit, 441,962. The rotatory adjustable cylindrical anvil having the eccentrically beveled edge came from Trickett's English patent No. 2,076. What remains is the automatic locking device, one form of which is shown in figures 1, 2, and 4, and another form appears in figures 9 and 10. In the beginning of his specifications he speaks specifically of the combination of parts whereby the anvil is locked automatically. And he must be confined to the kind of lock he describes, because an anvil lock was old. Taintor patent, No. 452,399, shows how essential it was to specify the exact parts and form of parts to be used. Defendant obsolutely omits the important feature of the patent in suit, and has not copied certain other details of construction, which must appear if we are to sustain the patent. Defendant does not infringe the second patent. Patent 703,440. Claim 1 only is in issue: "(1) In a saw-set a rotary concentric anvil having an eccentric bearing-surface and beveled anvil face, and a movable setting device having its operative face slightly inclined to the anvil face, the inclination being toward the perimeter of the anvil as described." The defendant does not use a rotary concentric anvil having an eccentric bearing-surface. His anvil is eccentric, and his bearingsurface and beveled face are concentric to the anvil. This is enough of itself. The defendant also claims that the operative face of his hammer is not at all inclined toward the perimeter of the anvil, but that it is parallel to the beveled face, and thus sets flat against the whole saw tooth. My eves are too weary to work out positively this contention. I think that he is right, but he does not infringe in any event, and I need not follow him further. FORCE v. SAWYER-BOSS MFG. CO. et al. (Circuit Court, E. D. New York. August 10, 1904.) 1. PATENTS-ACCOUNTING FOR INFRINGEMENT-COST OF MANufacture. A corporation organized and owned entirely by persons who joined in the sale and assignment of a patent to complainant, and which subsequently engaged in the manufacture and sale of an infringing article, cannot avoid an accounting for profits made on the ground that by reason of its having also made and sold other articles the cost of the infringing articles cannot be definitely ascertained, nor because it lost money on its entire business, where it does not appear that it lost on the infringement. In such case the cost of the article as made by complainant where shown may be made the basis for the accounting. 2. SAME-PROFITS-USE OF PATENTED IMPROVEMENTS. Where it appears that the improvements covered by complainant's patent constituted the chief value of the infringing articles sold by defendant, and that without them no sales would probably have been made, complainant is entitled to recover the entire profits realized from the sale. In Equity. On accounting for infringement. William E. Warland and Henry Schreiter, for complainant. THOMAS, District Judge. The defendant Sawyer-Boss Manufacturing Company was composed of the four persons who sold the patent in suit to the complainant, Force. After such sale such persons formed the defendant corporation, and through it and the firm of Stewart & Co. made and sold their entire product, including a large number of infringing machines. The vendors' action in making and selling a patented article, after transferring the patent, was unconscionable. They knew what the patent was, and gave it every assurance of validity. They began the manufacture after selling. They substantially reduced the price of the machine, and compelled the complainant to do the same. They sought by the tortious use of the patent to enrich themselves, and to that end sought to limit their assignee's beneficial use of what they had sold him. Their present defense in this accounting is that the defendant corporation made other articles, and that the expense of one product is so confused with the expense of others that the expense of making cannot be singled out, and, moreover, that they lost some $5,000 on the entire undertaking. This excuse for persons who deliberately seek to deprive their assignee of his merited profit upon the thing sold is claimed to be justified by law. If such law prevent a recovery herein, a gross injustice will follow. The defendants have, for their own gain, and with full knowledge, injured their assignee, and now conceal themselves behind their confusion of products. They put down the price, made the person who had the sole right to sell lower his price, and then assert that "there is such complication in our varied manufactures that the expense of and profit on the infringing article cannot be determined.' Their ¶ 1. Accounting for profits by infringer of patent, see note to Brickill v. Mayor, etc., of City of New York, 50 C. C. A. 8. 2. See Patents, vol. 38, Cent. Dig. §§ 572, 573. entire business was probably done at a loss, but neither they nor their books show that the infringing articles were made and sold at a loss. Because they failed to profit by what they legitimately did, it does not follow that they failed of profit by that portion of their business, which they illegally did. They do not know the expense of the manufacture of the infringing Defiance machine, but they do not show that there was no profit. The complainant has given satisfactory evidence of the cost of labor and material of the Defiance machines. The number made and sold was 4,024. The cost of such labor and material should have been $5,352.06. The complainant shows that the proportion of other expenses that should be borne by these machines is $1,165.61; making their total cost $6,517.67. These machines were sold to Sawyer & Co. for $13,389.19; hence a profit is shown of $6,871.52. Some special items are pointed out by the defendants that are alleged to impugn the correctness of the corporation's expenses. For instance, the cost of boxes to the amount of $254.19 is mentioned, and then some other details. If an additional $500 be allowed the defendant corporation to cover such items, there would still remain a profit of $6,371.52, and that amount, at least, the defendant corporation should pay. The complainant shows that Stewart & Co. realized a profit of $2,245.26 from the sale of the Defiance machine; that Holihan, a partner of that firm, was entitled to $1,222.63 thereof, and that sum he should pay. It is undoubted that the wrongdoer compelled the complainant to reduce its prices, but the complainant even then probably made a profit, and it sold more machines on account of the reduced price. What, on the whole, it lost, does not appear. It was within the power of the complainant to illustrate to what extent its whole profit fell off by reason of the competition. It did not do so, and the court is unable to know to what extent it was finally injured by the competition. Therefore no damages growing out of this unlawful competition can be allowed. It is urged that the complainant must be limited to the damages arising from the improvement shown by the patent. The Defiance machine infringed the first and second claims. It is considered that the combination shown in the first claim covered the substantial profit of the patented article, and that the chief value is found therein, although the stop pin may have facilitated sales. It is further considered that the sales of the Defiance machines were made possible by employing the patented combination; in other words, the salability of the device resulted from the use of the patent. This conclusion results from the evidence of the business done by means of the patented device both by the complainant and the defendants. The whole history of the business shows that the new article was the inducement to the sale. There is no satisfactory evidence from which it could be concluded that any sales would have been made had not the machine involving the combination been offered. The complainant should recover pursuant to the views above expressed. |