in June, 1902, at large expense beyond taxable costs and disbursements to defendant, it was placed on the calendar for hearing at this October term, and stood over for hearing December 9th. The plaintiff's counsel wrote December 3d to defendant's counsel:

"Dear Sir: I have yours of the 2nd. We intend discontinuing the case of American Steel & Wire Co. vs. Mayer & Englund Co., when it is reached for argument on the call of the present calendar, and immediately thereafter we shall bring a new suit, as it is our intention to relitigate this question, in view of what has developed subsequent to the closing of the proofs in this case. We do not think the purpose we have in view could be accomplished by the opening up of the present case; therefore, we prefer discontinuing and starting de novo, and that we shall do."

On the call of the day calendar December 9th, the plaintiff asked leave to discontinue; showing no cause beyond the desire expressed in the letter. Under these circumstances, the defendant appears to have a substantial right to the benefit of its testimony upon the issue joined. A condition saving the right to the testimony as if perpetuated is suggested, but that would be uncertain and of doubtful advantage, and not an adequate substitute for its use now. Leave denied.

ROYAL METAL MFG. CO. ▾ ART METAL WORKS.

(Circuit Court, S. D. New York January 9, 1903.)

1. PATENTS-DESIGNS-SUBJECT OF DESIGN PATENTS.

A design patent cannot be made to cover a mechanical construction by which the shape of the article, which is the principal feature of the design, is produced.

2. SAME-INFRINGEMENT-DESIGN FOR BELT.

The Lewenthal design patent, No. 34,357, for a design for a belt to be worn, held not infringed by a belt which resembled the design only in having a downward dip in front; such feature being neither novel, nor patentable as a design.

On

In Equity. Suit for infringement of letters patent No 34,357, for a design for a belt, granted to Isaac Lewenthal April 9, 1901 final hearing.

Joseph L. Levy, for plaintiff.

Charles G. F. Wahle, for defendant.

WHEELER, District Judge. This suit is brought for alleged infringement of patent No. 34,357, dated April 9, 1901, and granted to Isaac Lewenthal, for a design for a belt, to be worn. The drawings show an oval back piece, marked 1, connected by links, 8, and bars, 7, to intermediate bands, 2, connected diagonally with triangularshaped front pieces, 3, having vertical meeting edges, 4, converging sides, 5, and curving top edges, 6. Here are the specification and claims:

"My invention relates to a design for a belt, and its essential features reside in the shape or configuration of the parts combined to produce a pleasant entirety. Reference is had to the accompanying drawings, in which figure 1 is a front elevation of the belt, substantially as it appears in use; and Fig. 2 is a side elevation of the same, showing it at full length. The essential

features of my design reside in the central, panel-like part, 1, the intermediate bands, 2, and the end triangular-like parts, 3, having substantially vertical meeting edges, 4, disposed, as in Fig. 1, in line with the part, 1, converging sides, 5, and downwardly and inwardly curving top edges, 6. At 7 are bars from which extend links, 8, to the part, 1. The belt is so shaped or designed that when the parts 3 are placed together, as in Fig. 1, the central front portion will have a dip downward, the outer ends of the bands, 2, being secured to the parts, 3, at an angle to the edges, 4. Having described my invention, I claim the design for a belt, substantially as herein shown and described."

The principal things are the downward dip in front, which appears to have been old, and the shape of the triangular front pieces to produce it by the angular attachments to the bands. This effect is mechanical. Design patents cover appearances only. A monopoly of operating devices can be secured only by a mechanical patent. The belt complained of does not have the bars and links at the back, nor anything in common with the patent in front, but the downward dip produced by the triangular pieces and their diagonal attachment to the bands. So there is nothing in controversy here but the appearance of the belt as a whole, due to the downward dip in front, which is not novel or patentable. As now considered, there is no ground for equitable relief.

Bill dismissed.

FULLER v. GILMORE et al.

(Circuit Court, S. D. New York, December 23, 1902.)

1. PATENTS-SUIT FOR INFRINGEMENT-PRELIMINARY INJUNCTION.

The rule of practice that a preliminary injunction will not be granted against infringement of an unadjudicated patent, unless long acquiescence is shown, applies only in cases where there is some question as to the validity of the patent. When it appears to be novel, useful, and ingenious, and there is no evidence at all assailing its validity, or where the evidence of the prior art is wholly unpersuasive, the presumption arising from the issue of the patent is sufficient to warrant injunctive relief.

2. SAME-STAGE APPLIANCE.

The Fuller patent, No. 643,493, for a stage appliance to simulate a fire, held valid, on a motion for a preliminary injunction.

In Equity. Suit for infringement of letters patent No. 643,493, for a stage appliance, granted to Ida M. Fuller November 10, 1899. On motion for preliminary injunction.

Clifton V. Edwards, for the motion.
Louis C. Raegener, opposed

LACOMBE, Circuit Judge. Suit is brought to enjoin infringement of complainant's United States letters patent for a theatrical appliance -No. 643,493; February 13, 1900; application filed November 10, 1899. The claims relied on are:

"(1) In stage appliances, an open-work base, streamers attached to said base, and means for directing currents of air to the base and for illuminating streamers through the base.

"(2) In stage appliances, a foraminated structure, streamers connected thereto, fans beneath the foraminated structure, arranged to concentrate air121 F.-9

currents thereon, and an illuminating device, the delivery whereof is directed to the aforesaid foraminated structure."

By this appliance, as the specifications point out, "the effect of a fierce fire may be produced upon a stage, or wherever else desired, without the possibility of injury to the surroundings, or to any person appearing to be in the midst of the flames and apparently handling the tongues of fire, or moving in close proximity thereto." "The stage is provided with an opening, at which opening a gridiron or screen is secured, serving as a partial cover for said opening." Strips of a translucent or a transparent fabric are fastened at their lower ends so as to come over the meshes of the gridiron. They are "preferably tapering, although they may be given any desired shape." They are of colors approximately the color of flame, are entirely free above the point to which they are attached, and are capable of waiving, fluttering, or curling when subjected to a suitably directed blast of air. This blast of air is produced through the medium of fans, whose position may be changed as may be found necessary to direct the streamers in a proper direction. The streamers are placed sufficiently close together to collectively form a column or volume of strips when the strips are under the influence of the air-supply, but the spaces between the said strips are sufficiently great to permit each individual strip to wave independently in front of or at the back or side of an adjacent strip. The illusion of fire is produced by directing rays of light upward through the screen or gridiron, and upon and through the mass of waving strips. Various colors or shades of color may be imparted to the light supplied to the strips or streamers, thus indicating the changes of colors in a leaping flame. The effect of sparks is obtained by introducing small bits of paper, cardboard, or the like, suitably colored, between the currents of air and the screen or gridiron, whereupon the said currents of air will carry these small pieces of colored material up through the meshes of the gridiron, and as soon as they are freed from the influence of the air blast the said pieces will fall to the stage, where their smooth surfaces and glittering color will continue to sparkle when the light is turned on or changed on the screen.

Defendant calls attention to the circumstance that the patent has never been adjudicated, and is of such recent date that long acquiescence cannot be shown, as sufficient ground for refusing preliminary injunction. The practice referred to is followed in this circuit, but only in cases where there is some question as to the validity of the patent. When the specification shows that, assuming facts of common knowledge, it will probably need some affirmative evidence to indicate the presence of invention, or when some testimony put in by defendant as to the prior state of the art, slight though it be, indicates that there may be some arguable question as to validity, or as to a construction of the claims broad enough to cover the device complained of, then preliminary injunction on affidavits is refused. But where the patent appears to be novel, useful, and ingenious, and there is no evidence. at all assailing its validity, the presumption arising from issue of letters patent will be sufficient to warrant injunctive relief. The same rule should apply where the sole evidence as to prior art is wholly unpersuasive.

It seems manifest from the patent itself that the device of complainant must produce a highly realistic simulation of a raging fire. The avidity with which it has been seized upon by defendants and by others confirms this inference. It is common knowledge that those who produce theatrical representations are solicitous to effect such simulations. For years it has undoubtedly been a desideratum to find appliances which would impress an audience with a belief that they were looking at a real fire, and at the same time be wholly without risk of causing a conflagration. Other appliances have been tried for years, some more effective than others, but never before, so far as the record shows, has the illusion of leaping flames been effected by a combination of colored streamers, an air blast, and appropriately applied illumination. In the device employed by an earlier "fire dancer," which was before this court in Fuller v. Bemis, 50 Fed. 926, the waving draperies of the performer, agitated solely by her own movements, were illumined, as in the device in suit, by colored lights cast up from beneath the stage; but there was no air-blast, the aperture for light being covered with a plate of glass. An English patent to Plunkett (No. 24,807 of 1893) describes apparatus for producing "an effect of dancing upon water or in space.' A mirrored floor is employed, properly lit and curtained; and, when wind effects are desired, air is introduced at the side of the apparatus, "blown in upon or underneath the drapery of the dancing figure, so as to give a floating effect in space. This air will, for preference, be warm, and forced in by gentle pressure through the agency of a descending cylinder, with a weight attached." All these appliances are very far removed from that of the patent in suit, and the circumstance that during the years since they were introduced they indicated to no one the complainant's method of securing an effective and safe simulation of fire, while during the same period representations of a conflagration were being constantly produced on the stage, is most persuasive as to the patentable invention involved in complainant's simple, effective, and ingenious appliance.

The patents to Sherwood (661,426) and to Carter (662,708) are both subsequent to complainant's; the respective dates of application being July 31, 1900, and January 22, 1900. There is no evidence produced on this motion of knowledge and use prior to the date of complainant's application, and the circumstance that one or both of the subsequent patentees last above named has brought or threatened suit against defendant is no answer by him to the present application. Infringement is entirely clear, and a preliminary injunction should issue. In view of the circumstance that defendants have invested a great deal of money in the production of a play in which the representation of a raging fire is a prominent feature, a reasonable time should be allowed them to substitute some of the earlier appliances for those of the complainant as the means of producing such effect. The operation of the injunction will therefore be suspended 10 days from the signing of the order. This decision is without prejudice to a motion to dissolve the injunction should defendant be able to produce any prior patents or publications which may indicate that the novelty or patentable invention of the complainant's appliance is fairly questionable.

MORTON TRUST CO. v. AMERICAN CAR & FOUNDRY CO.

(Circuit Court, D. New Jersey. February 24, 1903.)

1. PATENTS-SUIT FOR INFRINGEMENT-PLEADING.

While a bill for infringement of a patent is sufficient in form, on demurrer, if infringement is alleged in general terms without specifying the particular claims supposed to be infringed, yet where the patent sued on contains a large number of claims relating to different details of construction, the court, on motion, may properly require the complainant to specify the particular parts of defendant's structure claimed to infringe, and the claims upon which the allegation of infringement is based.

In Equity. Suit for infringement of patent. On motion by defend-ant to have the charge of infringement in the bill made more specific. Paul Bakewell, for the motion.

W. C. Strawbridge, opposed.

ARCHBALD, District Judge.* A bill for the infringement of a patent is undoubtedly sufficient in form, on demurrer, if infringement is alleged in general terms, without specifying the particular claims against which the defendant is supposed to offend. 3 Robinson on Patents, 430; American Bell Telephone Company v. Southern Telephone Company (C. C.) 34 Fed. 803. This is a long-established practice, and is not now open to question, although it has been reluctantly followed in several cases. It probably comes down to us as a precedent from the day when patents were general in form, and no specific claims, as now, were formulated. But this is not a demurrer, but simply a request for more particulars. The patent in suit is made up of 28 separate claims, each of which has to do with details of construction in a metallic railway car. The defendants may infringe them all if they infringe any, but it is not likely, nor to be assumed; and to prepare for defense to such an omnibus charge is necessarily burdensome. On the other hand, it is no hardship on the plaintiffs to compel them to specify. They are supposed to have definite information as to the extent and character of the defendants' infringement, and are not entitled to begin proceedings without it. Every patent suit, as a rule, comes down to the assertion of some one claim or group of claims, and where, as in the present instance, the claims are exceedingly numerous, the narrowing process ought to begin as soon as possible. Not only is this for the relief of the defendant, but it operates to prevent the accumulation of a voluminous and unnecessary record for the court to labor with. Nor is the present motion without authority to sustain it (Russell v. Winchester Repeating Arms Company [C. C.] 97 Fed. 634); and, while the practice may not have been adopted in this circuit (Johnson v. Columbia Phonograph Company, 106 Fed. 319), the present seems an appropriate time in which to do so.

It is therefore ordered that the plaintiffs within 30 days from this date specify the particular parts of the defendants' car or car construction that are relied upon as infringements of the patent in suit, and

Specially assigned.