AM. DIAMOND ROCK BORING CO. V. S. F. MARBLE CO.
deed did not carry this patent has already been determined in thIs case, upon full argument and consideration. There is no apparent ground upon which this motion can justly be sustained, and it must be denied. On account of the number of those found to be entitled to share in the avails of the and of the conflicting claims between them, it may be preferable to the defendant James, equally advantageous to those entitled, and perhaps more proper, as the case is made up, that he should have opportunity to make payment into the registry of the court for the benefit of those entitled, instead of being compelled to pay their shares to them severally. The exceptions to the master's report are overruled, the report is accepted and confirmed, and a decree ordered to be entered that the defendant James pay to the clerk of this court the sum of $63,000, mentioned in the master's report, within 20 days from the entry of the decree, for the benefit of the parties to this suit-$42,000 for the plaintiff; $13,125 for Samuel R. Clexton; $7,000 for Horace T. Caswell; and $875 for Charles Eddy-and for execution therefor in default of such payment, and for costs to the plaintiff, to be taxed.
AMERICAN DIAMOND ROOK BORING MARBLE SAME V. SHELDONS
Co. v. Co.
May 8, 1880.)
(Circuit Oourt, D. Vermont.
PATENT-COMBINATION-NEW ELEMENTS-MAY BE SPECIALLY PROTECTED.-A patent for a combination of new elements with old may secure the new elements by themselves, as weH as the combination. SAME-BORING HEms-USE OF AFTER EXPIRATION OF PA'l'ENT-INJUNOTION.-An injunction restraining the use of certain patented boring beads, manufactured during the term of the patent, is not violated by the use of such heads made after the expiration of the patent, in connection with propelling machinery, not patented, made during its term.
In Equity. v.2,no.3-23
CharZe, F. Blake, for plaintiff. Edward S. Phelps, Walter C. Dunton and Alda.u F. Wa.lkM', for defendants. WHEELER, D. J. These causes have been heard upon motions of the plaintiff for attachments for contempt for violation of the injunctions therein. The patent on which .the luits are brought has been sustained for a continuously revolving and progressive boring head, armed with diamonds for cutting rock, having a hollow central drill.rod, through which water is carried to the cutting diamonds, combined and forming a pari of a machine to be suitably constructed for imparting the motion. The injunction restrains the use of machines made in the infringement of the patent during its term, which has now expired. The defendants are using machines made during the term of the patent, which carry boring heads and drill-rods made since the patent expired, according to its specifications. The patented devices are themselves a machine to be operated by other machinery, connecting them with propelling power not described in the patent. The claims of the patent do not cover, nor show any attempt to cover, any combination of these cutting devices with the propelling machinery. A patent for a combination of new elements with old may secure the new elements by themselves as well a.s the combination. Seller, v. Dickinson, 6 Eng. Law & Eq. 544; Union Sugar Refinery v. Matthieson, 2 Fisher, 601. This is as much as any patentee of such a. patent is entitled to hold. Prouty v. Ruggles, 16 Pet. 336. Here the other machinery is neither an element of the combination patented, nor an element patented by itself, and is not drawn into the monopoly at all. It infringed upon no right secured by the patent to make and use that during the term. That is not machinery made in infringement of the patent, although it was made to infringe the patent with. As the devices made according to the patent have been both made and combined since the expiration of the patent, the defendants are not shown to be using anything made in infringemen t of the patent.
AM. DIAMOND ROCK BORING CO. V. RUT. MARBLE 00.
It is argued that because the other parts were made to be used with those that infringed, in violation of the plaintiff's right, the plaintiff has the same right to have their uance in use restrained as the continuance in use of the infringing parts. But this ground does not appear tenable. There is no forfeiture of other property as a penalty for infringement of a patent. Had there been a decree for the destruction of the machines to prevent further infringement, it would have extended only to the infringing parts, if they could be destroyed without destroying the other parts; and these could be. Needham v. Oxley, 11 Weekly Rep. 852. The object of the injunction is merely to secure to the plaintiff its exclusive right during the term of preventing the de-· fendants from taking any part of it out of the term and enjoy.. ing it, and not to punish the defendants for any wrong done by them, either during the term or after. Motions denied.
AMERICAN DIAMOND ROCK BORING COMPANY MARBLE COMPANY.
(Circuit Oourt, D. Vermont. March 8, 1880.)
PATENT-BILL TO ENJOIN AFTER EXPIRATION OIl' PATENT-WHAT MUST BE ALLEGED.-A
bill to enjoin the use of a patented device, after the expiration of the patent, must allege that the defendant is using rna· chines manufactured during the existence of the patent, or that the ora-tor fears such use.
In Equity. Charles F. Blake, for orator. Prout « Walker, for defendaut. WHEELER, D. J. This cause has been heard upon a motion for a preliminary injunction against infringement of a patent, the term of which has expired. The bill alleges that the defendants have, since the date of the patent, and since the title to it became vested in the orator, infringed by using machines embodying the patented invention. and that the orator fears the defendant will continue to use such machines;