to him, and all that the defendants contributed was the necessary mechanical skill, furnished at his request, to embody it in art opera. tive form. He did not lose the merit which is due to inventive suggestiveness, and devolve it upon the mechanic whose only function was to materialize it. Watson v. Bladen, 4 Wash. C. C. 582; Blandy v. Griffith, 3 Fish. 609. But some doubt may be entertained as to the right of the complainant to appropriate the combination covered by the fourth claim of the patent, treating it as an entirety. The cover, A, which is an indispeusable constituent of the combination, was not devised by him, but was sugg sted and constructed solely by one of the defendants. Whether that claim, then, is enforcible against the defendants we do not deem it imperative on us to decide. We will therefore adjudge that the patent is valid in so far as the third claim is involved, that an injunction issue against the of that claim, and that the profits or damages accruing from the past infringement thereof be ascertained by a master; and a decree will be prepared accordingly.
WOOSTER V. THORNTON.1
tUircuit (Jourt, 8. D. New York. January 26,1886.)
PATENTS FOR INVENTIONS-PRACTICE BEFORE 'mE MAsTER.
There had been an interlocutory decree declaring a reissued patent valid. finding certain devices to be infringements, and directing an account of profits and damages. The defendant offered the original patent in evidence, for the first time, before the master, and insisted that, upon anf construction of the reissue that would be valid on comparison with the original, defendant did not infringe. Held, that this evidence was properly rejected by the master. A decree as to what is an infringement is conclusive upon the parties and upon the master, and extends to everything substantially- like the infringement decreed against. Thomson v. Wooster, 114 U. S. 104; S. C. 5 Sup. Ct. Rep. 788.
SAME-DECREE AS TO WHAT IS AN INFRINGEMENT BINDING ON MAsTER AND PARTIES.
SAME-WEIGHT OF EVIDENCE IS A QUESTION FOR THE MASTER.
Where the evidence as to the extent of the infringement was conflicting, and sufficient to warrant the master in finding either way, according to what was believed or disbelieved, his conclusions should not be disturbed. Bridg1J8 v. Sheldon, 7 Fed. Rep. 17. An established royalty or license fee is evidence, and not an absolute test, of value.
SAME-LICENSE FEE ESTABLISHED BEFORE INFRINGEMENT.
It is for the master to determine. as a question of fact. whether the value of the invention. at the time of the infringement, was equal to the license fee es· tablished after the infringement. and the court cannot say, as a matter of law, that the license fee should govern.
Reported by Charles O. Linthicum, Esq., of the Chicago bar.
Frederic H. Betts, for orator. Joseph C. Fraley, for defendant. WHEELER, J. This suit is brought upon reissued letters patent No. 5,180, dated December 10, 1870, and granted to the orator as assignee of Alexa'nder Douglass, for an improved folding guide for turning in the edges of cloth or other material, preparatory to sewing, for binding and other' purposes. The defendant offered no evidence and did not appear at the hearing; the patent had been several times adjudged to be valid; the evidence of the orator showed infringement by the defendant; and a decree was entered adjudging that the patent was valid, that the defendant had infringed, and that an account be taken by a master appointed of the profits and damages due to the infringement. The original patent was not put in evidence for the hearing in chief. The defendant offered it in evidence before the master, for the purpose of showing that there was no infringement of the reissue upon any construction of it that would be valid on comparison with the original. The master rejected this evidence, and took an account of the damages due to the extent of what was shown by the orator's evidence in chief, and adjudged by the decree, to be an infringement. The most important question now arising is as to the propriety of this ruling by the master, raised by exceptions to his report. The later decisions upon reissued patents are relied upon 'largely in support of these exceptions. Wooster v. Handy, 21 Fed. Rep. 51; Spill v. Celluloid Manuf'g Co., Id. 631; American Diamond Drill Co. v. Sullivan Machine Co., Id. 74; American Diamond Rock-boring Co. v. Gilson, 24 Fed. Rep. 374. The question here is, however, different from the one in any of those cases, or in any similar cases which have been noticed. In those cases the interlocutory decrees were made on . comparison of the reissued patents with the originals, upon the application of the principles of law bearing upon that subject, as they were understood at the time. Before final decrees were made that understanding was changed by the later decisions of the supreme court, and the final decrees were adapted to the later view. This interlocutory decree was made before that change, but the change would not affect the decree as it was made on the case presented. There was nothing in the case touching the validity of the reissue, to be considered. The reissue was granted to the orator, and would stand valid until overthrown by competent proof. The interlocutory decree was right when made, and is right now, both as to validity of the patent and as to infringement, as the case is now made to appear and is understood. The argument is that the question is one of infringement, and that such questions are always open before the master. But the decree 8S to the fact of infringement, and that what was adjudged to be an infringement is an infringement, is as conclusive upon the parties and upon the master as it is with reference to anything else covered by it. Thomson v. Wooster, 114 U. S. 104; S. C.
5 Sup. Ct. Rep. 788. This extends to everything that is substantially like the infringement decreed against for which the defendant is reo sponsible. If there was something claimed to be an infringement which had not been passed upon by the decree, then the question con· cerning that wonld be open before the master to be passed upon by him. Here there was nothing before the master that was substan. tially different from the device covered by the decree. The question whether these things were infringements or not could not be passed upon by the master withont reviewing the decree in that respect. This was not within his province, and his decision that he would not enter upon it appears to be correct. The evidence as to the extent of the infringement was quite con· flicting. It was sufficient to warrant a finding either way, according to what should be believed and disbelieved. The question of belief or disbelief was for the master, and no reason for disturbing his con· elusions is made apparent. Bridges v. Sheldon, 18 Blatchf. 295; S. c. 7 Fed. Rep. 17. There was infringement before any license fee or royalty had been established. The orator insists that the amount of the license fee should be applied as a rule of damages to that infringement, as it does not appear but that the value was the same then as afterwards. The master has found the profits of that infringement to the defend. ant's firm, and has not found damages otherwise. It is understood that an established royalty or license fee is evidence, and not an abo solute test, of value. Whether the situation was such that the value was equal to the license fee before the latter became established, was a question of fact for the master. The weight of the evidence was for him. The court cannot say, as a matter of law, that the license fee, which did not become established until afterwards, should govern. Suffolk 00. v. Hayden, 3 Wall. 315; Packet 00. v. Sickles, 19 Wall. 611; Birdsall v. Ooolidge, 93 U. S. 64. As the master has not found any damages for that infringement beyond the profitR, it does not appear that anything more than the profits can be allowed. These considerations dispose of all the exceptions. Exceptions overruled, report accepted, and confirmed, and decree to be entered accordingly.
ARNHEIM 'II. FINSTER.
and others. l
(Circuit Oourt, S.
n. N(f/J) .York. February
PATENTS FOR INVENTIONS-VOID REISSUE.
Where the application for the reissue was filed one year, nine months, and ten days from the date of the original, during which period articles which would infringe the claims of the reissue, but not of the original, were made and put upon the market by others, and where the inadvertence, accident, or mistake in the original, if any existed, was easily discernible, the reissue is void. Where a claim is rejected by the patent-office, and the rejection is acquiesced in by the applicant, he cannot afterwards secure such claim in a reissue, on the ground of inadvertence, accident, or mistake.
2. SAME-AcQUIESCENCE BY ApPLICANT IN REJECTION BY PATENT-OFFICE·.
In Equity. Frederic H. Betts and C. Wyllys Betts, for complainant. Gilbert M. Plympton, for defendants. COXE, J. The complainant is the owner at letters patent granted to Marcus Marks for an improvement in caps. The original patent, No. 166,395, is dated August 3,1875. It was reissued July 24, 1877, in two divisions, A and B, Nos. 7,807 and 7,808. The application for the reissue was filed May 14, 1877, one year, nine, months, and ten days from the date of the original. Division B of the reissue is alone to be considered. Division A is substantially a reproduction of the original patent. The description is as follows. The words in brackets are not in' the original patent; the words in italics are not in the reissue.
"Be it known that I, Marcus Marks, of the city, county, and state of New York, have invented a new and useful improvement in caps, which improvement is fully set forth in the following specification, reference being had to the accompanying drawing, in which Figure 1 represents a side view when the [swinging] ear and neck protector is pulled down. Fig. 2 is a vertical central section when the ear and neck protector is up. Similar letters indicate corresponding parts. "This invention consists in an ear and neck protector, connected to the back part of the crown of a hat or cap by a tape, [or cloth,] and to the sides [or near the front of the hat or cap] by loops and button8, or other equivalent fastenings, in such a manner that, whenever it may be desirable, said protector can be drawn down to cover the ears and neck of the person wearing the cap, and when no such protection is needed said protector can be raised, when it serves to impart to a cap a finished appearance. "In the drawing, the letter, A, designates a cap, to the rear part of which is attached my ear and neck protector, B. The protector is held in place by a tape, Lor cloth,J a, in its middle, fat the back,] and by loops. b, which are fastened to its ends, and catch over buttons, a, secured to the body or crown of the cap, [at the sides or near the front,] said fastenings being so constructed that the protector swings up and down as far as the tape, [or cloth,l a, will allow; t.he buttons, a, forming the centers on which the swinging motion takes place. It is obvious that, for loops and button, other devices may be
Reportcd by Charles C. Linthicum, Esq., of the Chicago bar.