with pawls to hold all that is gained by each throw of the levers. The still older devices of Weatherby and Wood also show extension bars and ratchets worked with a cog-wheel or lever. With the number of devices for carpet stretchers shown in the proof, all acting upon substantially the same principle, I think there can be no doubt that the patent-office, in granting the patent to the complainants, intended to only grant it for the special devices shown; and although several of the older patents have a working mechanism very much like complainants', it is possible complainants' patent can be upheld so far as to protect the special device shown, but it cannot be so construed as to include other machines which are mere adaptations or simplifications of other older devices, and I have no doubt from the proof that defendants' machine is, in its construction and mode of operation, an improvement upon the Stevenson and Boles machines, and that its construction does not embody the special devices of complainants' patent. The finding is that the defendants do not infringe, and the bill is dismissed for want of equity.
THAYER !1. SPA.ULDING.1
(Circuit Court, N. D. lllinoia. March 22, 1886.,
PA.TENTS FOR INVENTIONS-BASE-BALL MASKS-FENCING MASKS-ANTICIPATION.
Letters patent No. 200,358, of February 12, 1878, to Frederick W, Thayer, for an improvement in masks, is not anticipated by the old fencing mask, as the fencing mask had no forehead or chin rest, such as are specified in the Thayer patent. Although the patented mask and the old fencing mask are in some respects analogous in their use, held, that there was enough difference to make the former patentable over the latter. As patentee appeared, from the evidence, to be the first in the art to show a mask to protect the face having a rest for the forehead. held, that he was entitled to cover such forehead-rest broadly, and was not limited to the special means by which he affixed it to the wires of the cage. A party asserting a prior use of a device covered by a patent has the hurden of proof, and is bound to establish such prior use by strong and convincing if not absolutely conclusive proof.
SAME-PRIOR USE-EVIDENCE TO ESTABLISH.
In Equity. Coburn <t Thacher, for complainants. West <t Bond, for defendants.
by Charles C. Linthicum, Esq., of the Chicago bar.
THAYER V. SPAULDING.
BLODGETT,J. The defendants in this case are charged with the infringement of patent No. 200,358, granted February 12, 1878, to F. W. Thayer for "an improvement in masks," and an inj unction and an accounting asked. The purpose and description of the device, as stated by the inventor himself in his specifications, are:
"It is intended to protect the face of a player from being hit or injured by' a base ball while in flight towards him, and also, at the same time, to not materially obstruct his sight. It is usually to be worn by the catcher, or person in rear of the striker or bat wielder. It consists of a forehead and chin rest, or bottom bearing, and a wire cage to receive them, and extend about the face, * * * and provided with straps, or means of securing the cage to the head of the player."
The patent has two claims:
"(1) The face-guard or safety mask, substantially as described, for the purpose specified, it consisting of the open cage and forehead and chin-rests or bearings,-all combined and arranged essentially as set forth. (2) The open cage provided with the forehead-rest, arranged in it substantially as repre-
sented." The defenses are (1) that the claims of the patent are limited to rests supported by wires reaching from the pads to the wires of the frame,' and that under this construction the defendants do not infringe; (2) that the device is nothing but the old fencing mask; (3) that the defendants do not infringe; (4) prior public use of the device for more than two years. The patent contains a disclaimer of the old and well-known fencing mask, as it is called, worn by persons while fencing, or playing with foils or the small-sword. The defendants make and sell a face mass formed of a wire cage and frame, in the same manner 8S the plainant's, and containing a head·rest, and chin-rest; but their head. rest, instead of being supported by horizontal wires extending from the frame to the head-pad, is supported by straps reaching from the side wires across the frame, so as to bear against the forehead. The old fencing mask offered in evidence shows no head-rest, and, as Thayer seems to have been, from the evidence, the first in the art to show a rest for the forehead in a mask intended to protect the face, it seems to me that he had a right to covel', and does cover, his patent, the forehead rest, broadly, and not the special means by which he fixed it to the wires of the cage. What I have said about the forehead-rest of the two devices will apply to the chin-rest. Thayer'S chin-rest is supported in place by bracing wires, attached to the front wire or frame of the cage; while the defendants' is supported by being att,ached to the side wire. But, as both the defendants' head and chin rests perform the same function as that performed by the same elements in the patent, and no other, they must be treated as equivalents for the rests covered by the patent. As to the second point made, that this device is nothing but the old fencing mask, there seems to be a patentable difference between the
two devices, in the use to which they were to be applied, and also in the elements of which they were necessarily composed. The fencing mask required no head-rest, and no such chin-rest as was required for a base-ball mask. In some respects it may be said that the devices are analogous in their use, but there seems to me to be enough difference between them to make that difference patentable. The first claim of the patent is for the combination of the face·guard. and the forehead and chin rests; and the second claim is for the open cage provided with a forehead-rest. The fencing mask did not show these rests in any form, and they were not required for that purpose. It is urged that the fencing mask shows a chin.rest, but it is in fact a mere pad evidently to prevent abrasion of the chin by the wire frame. The chin-rest in a base.ball mask, being liable to receive heavy blows, performs a more important function. A comparison of the two masks satisfies me that the defendants' mask contains the elements of both the claims of the complainant's mask,-the cage, and the chin and forehead rests,-and I have no doubt but that the idea of the defendants' device is all found in the Thayer patent. As to prior use, the testimony is conflicting. Two witnesses, McVey and A. G. Spaulding, testify to having seen a base-ball mask worn at a match game, played in Boston, in the fall of 1875: while the testimony on the part of the complainant contradicts this testimony so fully and explicitly that I cannot but conclude that Mr. Spaulding and Mr. McVey are mistaken as to the time when they saw Tyng wear this mask. The testimony of a number of persons is taken, who were present at the game referred to by Spaulding and MeVey, and who all concur in saying that no such mask was worn at that game. Parties asserting a prior use of a device covered by a patent have the burden of proof, and are bound to establish such prior use by strong and convincing if not absolutely conclusive proof; and I feel compelled to say, after considering the proof on both sides in reference to this prior use, that I do not think that even the prepouderance is with the defendants. ,The finding will therefore be that the patent is valid, that the defendants infringe, and that the complainants are entitled to damages.
SMITH ". MURRAY.
and others v.
(Oircuit Oou'l't, No D. fllinoia.
PATENTS FOR INVENTIONS-DESCRIPTION OF THE INVENTION.
The specification of letters patent No. 206.930, of August 13, 1878, to Will· iam P. Clotworthy, for a baking powder, described as one of the ingredients "ammoniated potash alum," but the claim was for "a compound of exsiccl.Lted ammonia alum, "etc, The proof showed there was no such article known to commerce or chemistry as "ammoniated potash alum" It was contended that the claim, when standing alone, was a sufficient "description" of the compound to comply with the statute. Held, that it was a matter of grave doubt whether the "claim" was to be considered as the "description" required by law, because the statute speaks of the "description and claim," and the office of the claim is merely to point out what is claImed as the invention.
But the claim being repugnant to the specification, held, that the whole invention must be found in the one or in the other, and that the two, taken together, were so contradictory as to render the patent void for uncertainty.
It being known to the art that the burning or drying of the alum used as an ingredient of baking powder made it keep better, there was nothing patentable in the discovery that drying the alum so that all the water was expelled would make a baking powder which would keep longer than if a part of the water had not been expelled. '
As the defendants did not use the entire formula of the patent, but used an additional ingredient producing another result, heW, that they did not infringe.
In Equity. Ooburn <t Thacher, for complainants. Munday, Eva,rts <t Adcock, for defendants.
BLODGET'r, J. This is a bill for an injunction and accounting by reason of the alleged infringement of letters patent No. 206,930, granted August 13, 1878, to William P. Clotworthy for "an improvement in baking powders." In explaining the scope and purpose of his patent, the patentee says in his specifications:
"This invention relates to that class of compounds known as · baking powders,' and used as a substitute for yeast to lighten the various preparations of flour and meal in the processes by which they are transformed by the culinary art into bread, rolls, pan-cakes, and other articles of food; and it consists in the chemical adjustment of ammoniated potash alum, from which the water of crystallization has been expelled, by exsiccation, with bicarbonate of soda, or other alkaline carbonate, and starch, in snch proportions as to retain the carbonic acid gas until the application of heat in the process of baking com· mences. To prepare the baking powder, take a gi ven quantit,y of ammoniated potash alum, and burn or calcine the same until the water of crystalization is expelled therefrom, and it loses from forty-three to forty-eight per centum of its weight. This leaves a residue friable, nearly tasteless, and almost in· soluble in cold water, but readily soluble in warm water. Add to this exsiccated alum an equal portion, by weight, bicarbonate of soda or other alka.1
Reported by Charles C. Linthicum, Esq., of the Chicago bar.
line calbonate, and a double proportion of powdered corn-starch. Mix all of these ingredients well together, and the composition is ready" for use."
The patent has but one claim, which is as follows: "As a baking powder, a compound composed of exsiccated ammonia alum, bicarbonate of soda, and corn-starch, substantially in the proportion and for the purposes specified." The defenses interposed are (1) that the patent is void for uncertainty; (2) that the compound, substantially as covered by the claim, had been in public use in this country for more than two years pdor to the application for this patent; (3) that the defendants do not infringe. As to the first point. The patent law (section 4888, Rev. St.) requires that the inventor shall file in the patent-office a written description of his patent, and the manner and process of making, constructing, compounding, and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art or science to which it appertains, or with which it is most nearly connected, to make, construct, compound, and use the same. It will be noticed that in describing his compound this patentee states, "It consists in the chemical adjustment of ammoniated potash alum;" and in his directions how to compound the parts, he says: "Take a given quantity of ammoniated potash alum, and burn or calcine the same until the water of crystallization if:! expfllled therefrom." He further says that he adds to this exsiccated ammoniated potash alum a certain proportion of bicarbonate of soda, and a certain proportion of powdered corn-starch. When we come to examine his claim, we find nothing said about "ammoniated potash alum;" but the claim is "for a compound composed of exsiccated ammonia alum," etc. The proof shows that there is no such article known to commerce or chemistry as "ammoniated potash alum," and the contention is that this patent is void for uncertainty, because the claim does not cover anything which is covered or described in the specifications. It was contended upon the hearing that the claim, when standing alone, was a sufficient description of the compound to enable any person skilled in the art to make the baking powder which the patentee intended to cover. I very much doubt, however, whether the "claim" is to be treated or considered as the "description" of the patent required by law to be filed in the patent-office, because the statute speaks of the "description and claim," and the office of the claim is merely to point out what he claims as his invention or discovery. But, waiving that question, it seems to me that as the specifications and claim of this patent are repugnant to each other, we must either find the whole invention in the specifications or in the claim, and cannot take a part of the specifications to help out the claim, and reject the rest, and, if we do, either the whole patent must be found in the specifications or in the claim. If you treat the specifications as any part of the patent, then it becomes contradictory.
SMITH tl. MURRAY.
In one part of it yon are told to componnd "ammoniated potash \ alum" with the other two ingredients; and in the other, you are told to compound "exsiccated ammonia alum;" and there is nothing in the instrument to show which of these the patentee really intended to use. Ammonia alum not being referred to in the specifications as the article to be compounded with soda and starch, no one cau say with certainty in what proportions the patentee intended to compound them, because the fact that he directed the compounding of certain proport'ions of "ammoniated potash alum" with certain proportions of soda and starch is no evidence that he intended to make a baking powder by compounding the same proportions of starch and soda with "exsiccated ammonia alum." But if I am wrong in my conclusion that this patent is void by reason of the uncertainty referred to, and if the term "alllmonia alum" in the claim controls and modifies the formula in the specifications, still I think there is a complete defense upon the facts in the case. Conceding for the argument that the direction is to use exsiccated ammonia alum, the proof satisfied me that the only object in burning or 'drying the alum is that a baking powder made of dried or exsiccated alum will keep longer than such a compound made from tlie raw alum crystals, which carry from 47 to 49 per cent. of water of crystallization. In the United States Dispensatory, introduced upon the hearing, (Ed. 1884,) under title" Alumnia Exsiccatum," page 164, after giving the directions for burning or drying alum, in which it is said the heat must not be raised beyond the temperatnre of 400 degrees l!'ahrenheit, it is stated: "The object of this process is to obtain the alum free from the water of crystallization, . without otherwise in the least decomposing it." Now, there can be no donbt from the proof that M. A. Christian began the manufacture of baking powders in the fall of 1874, in which he used burnt alum as the Bole acid ingredient, using bicarbonate of soda and bran-dust or starch as the other ingredients, and that he con· tinued such manufacture up to the time his testimony was taken in this case, having begun at (}ranby, Missouri, in November, 1874; moved from there to Fort Scott, Kansas, in February, 1875, and from there to St. Louis, Missouri, in August, 1876; and that he has been quite a large manufacturer during all that time, and that powders so made by him and his firm with burnt alum as the only acid constituent have been extensively sold through the state of Missouri and adjacent states since February, 1875. It is urged that, from his description of his apparatus for burning his alum, he could not have burned it so as to expel all the water, but his testimony shows that little, if any, fault was found with his goods on the ground that the powders did not keep well, and he seems to have learned, soon after he commenced the business, that the better and more thoronghly he burnt his alum the better his baking powder kept. The acid ingredient, Which is needed to combine with the soda in order to evolve carbonic
acid RaS which leavens the bread, is as effective in unburnt or slightly
burnt as in the thoroughly burnt alum. In fact, the only purpose of burning it is to expel so much of the water that the starch or other ' dryer used will keep the compound, so that the gas will not be evolved until the powder is used, and this depend:; evidently, to some extent, upon the quantity of starch or bran-dust used, because a large proportion of starch will absorb and hold more moisture than a small quantity, as that is the sale office of the starch or a similar ingredient. That is, if all the water of crystallization is expelled, no more effective baking powder is made; but you do get one that will keep in stock and retain its properties longer, the degree of dryneos having no other effect on the powder than to improve its keeping qualities; so that the degree of dryness of the alum baking powder depends on the dryness to which the alum is burned. Burriing, then, is only a question of degree, for a single purpose, and, Christian having learned soon after he began the manufacture that the keeping qualities of his goods depended upon the thoroughness of his burning, the mere fact that Clotworthy learned by his experiments that the best alum baking powder was made by burning or drying the alum until all the water is expelled, was no patentable discovery, when others had learned that the dryer the alum was made the longer the powder would keep. It therefore seems to me that, after what Christian did, there was nothing for Clotworthy to invent. It was a mere question of a better manufacture by taking more pains with the preparation of the ingredients, and a housekeeper might as well claim a patent for more thoroughly kneading her dough than was done by her neighhors, because she had found the more she kneaded the dough the better her bread became. It being known to the art that some burning or drying of alum made the baking powder keep better, there was nothing patentable in drying it so as to expel all the water, and make it keep longer than if the water had not all been expelled. - Then, too, the proof shows that the defendants' baking powders are not made upon the formula of complainants' patent, if it can be said to contain a formula, but that the defendants use a percentage of acid phosphate in all their powders. It is true that the learned chemist who analyzed defendants' powders, and testified as a chemical expert in this case, testified that the acid phosphate is the equivalent of so much alum, and performs no other office in the compound than the same quantity of alum; but this line of argument would prohibit the use of all or part acid phosphate, cream of tartar, or tartaric acid, or any other acid, because they are the acid equivalents of the alum. The sale function of the acid ingredient is to combine with the alkali and evolve carbonic gas, for it is the carbonic acid gas that is needed to leaven the dough. The proof shows that other acids were used for this purpose long before Clotworthy's experiments began; in fact, proof would hardly be necessary upon a matter so completely within the realm of common knowledge. The proof also shows the further
BROWN, ETC., MANUF'G 00. tI. STUDEBAKER BROS. MANUF'G 00.
fact that the defendants use acid phosphates because the alum alone makes the bread bitter. If, therefore, this patent can be sustained at all, it mnst be for tbe specific compound of matter disclosed by it; and, as the defendants do not use the entire combination, but use another ingredient producing another result, they do not infringe. And, further, if this patent requires, as was urged upon the argument, that all the water of crystallization shall be expelled from the alum by burning or calcining, and if Christian did not practice the invention because he did not expel all the water, then the complainants fail in their proof in. this case, because they do not show how much of the water the defendants expel. The finding is therefore that the patent is void, and that t,he de,; fendants do not infringe, and the bill is dismissed for want of equity.
VAN ARSDALE MANUF'G Co. V. STUDEBAKER BROS. ¥ANUF'G CO.l
(Circuit COU1't, N.
March 22, 1886,)
PATENTS FOR INVENTIONS-AxLE SKEINS FOR VEHICLES.
Letters patent No. 216,615, of June 17,1879, to N. L. Holmes, for an improvement in axle skeins for vehicles. must, in view of the prior state of the art, be limited strictly to its special device, which is the cutting of the blank in such shape as that, when formed up, it will make two frustrums of cones, the small end of the larger one springing from the large end of the smaller one, or the skein itself.
The fifth and eighth claims of this patent cannot be sustained in view of the state of the art; and there was no infringement of the first and third , claims in this case.
Munday, Evarts It Adcock, for complainant. Coburn et Thacher. for defendant.
BLODGETT, J. The bill in this case seeks an injunction and accounting for the alleged infringement of patent No. 216,615, granted June 17, 1879, to N. L. Holmes, for "an improvement in axle skeins for vehicles." The patentee says in his specifications:
"Mv invention relates to the class of thimble skeins in which the thimble is formed up of sheet steel, and consists in a novel form of blank which furnishes both upper and lower wrist extension, continuous with the spindle portion, and which brings the seam or weld of the meeting edges in the spindle on one side of the latter instead of on the top as heretofore. It also consists in making the upper and lower extensions of such width ann form a8 nearly or quite to envelope or embrace the axle back of the spindle; sucb
lReported by Charles C. Linthicum, Esq., of the Chicago bar.
complete wrist having lateral joints only, so that the clip applied thereto, after the thimble has been forced upon the axle, will more easily bind the wrist to the axle. * * * The object of my invention is to give greater strength to the skein. to the attachment of the skein to the axle, and to the axle at the inner point of attachment, and also to obviate special objections to a seam or weld situated on the top of the spindle. "
The patent contains nine claims, but only the first, third, fifth, and eighth are alleged to be infringed. These claims are as follows:
(1) The blank for a thimble skein, having wings to form upper and lower wrist extensions continuous with the spindle portion, substantially as de8cribed. ' (3) A thimble skein formed from sheet metal, and having upper and lower axle extensions continuous with the spindle portion, substantially as and for the purposes set forth. (5) A thimble skein formed of sheet metal, and having an axle extension Qrwrist adapted to nearly or quite embrace the axle back of the spindle, so as to give lateral as well as vertical support to the spinule. substantially as described. (8) The thimble skein haVing an upper wrist extension sprung to rest all the rise of the back of the spindle, combined with the collar, c, embracing the skein at the point of increased rise, substantially as and for the purpose set forth.
"The novel form of blank" shown in this patent consists of one sheet of metal, so cut as that, when formed up into a pipe or hollow cone, it will show a complete pipe or cone, covering the end of the wooden axle, and of uniform pitch or slope back to about the point where the hurter band is to be shrunk on, or what the patentee calls the "band. c," from which backward the cone is enlarged for a few inches, and from thence a wing extends further back upon the nnder side of the axle. The enlargement back of the hurter band, however, is such that it will not cover or embrace the shoulder of the axle unless this part of the axle is brought substantially to a cone shape. Several defenses are interposed, but ronly propose to consider that of non-infringement and the novelty of the patent. It may be said to be 'Part of the common knowledge with reference to the construction of wagons, and of skeins for wagon axles, that where a wooden axle is used, upon the end of which a pipe or hollow skein is to be fixed, the axle is mnch enlarged back of the point reached by the inner end Of the hub of the wheel, and if a skein is intended to cover aubstantial1y more than the portion of the axle subjected to wear within the box of the wheel, a considerable enlargement of the skein must be made back of the spindle portion. For many years prior to the date of the patent in queRtion, a skein made of cast iron was in common use, which extended back of the hurter band, and embraced the shoulder, ,or part of the shoulder, of the axle, and was enlarged for that purp0se to conform substantially to the shape of the axle shoulder. IriN'dvember, 1869, one Schreyer obtained two patents for a skein,to'be formed from a blank of sheet steel or iron, a portion of which extended back from the hurter band along the under side of the
CO. V. STUDEBAKER BROS. MANUF'a CO.
axle; but the upper part was not enlarged to embrace or cover the shoulder of the axle. A patent was granted in February, 1862, to R. S. Hall, for a sheet·metal skein, which was formed of two blanks bent so as to make an upper and lower section; the two being arranged so as to embrace the spindle of the axle, and extend back from the hurter band upon the top and under side of the axle; and in June, 1862, D. and J. Gray received a patent for a wrought-iron axle skein, which was to completely surround the spindle of the axle, and extend back beyond the hub, and to be held in place by a clip or clips, so as to reenforce and strengthen the axle.. A similar patent was granted to M. Ehrgott in March, 1869, and a patent to J. C. Johnson in November, 1869, which shows a skein formed up so as to embrace the end of the axle, and a portion thereof to extend back from the hurter band upon the top and bottom, conforming to the shape of the shoulder of the axle. We see, therefore, that when this patentee entered the field quite a number of patents for axle skeins to be formed up from sheet metal had already been patented, and brought into public notice, and that some of them were not only clearly designed but adapted to be extended back of the hurter band, and embrace and cover some portions of the enlarged part of the axle back of the spindle, conforming, in some degree, to the shape of the axle shoulder. The cast-iron axle skein exhibited in the proof, and shown to have been used long prior to the date of complainant's patent, shows an enlargement back of the hurter band, for the purpose of covering a portion of the shoulder of the axle; and, waiving for the time being the question of whether it is patentable to substitute wrought iron in the place of cast iron for the purposes of an axle skein, it is clear that the idea of enlarging the skein back of the hurter band so as to receive a portion of the shoulder of an axle was not new to this patentee. Indeed, the patented devices set out in the proof show several as adapted to cover a portion of the axle back of the hurter band larger than that which was intended to enter the hub. Gray shows this in a marked degree, and the proof shows that under the Johnson patent the skeins were made to substantially conform to the shape of the axle shoulder, back of the hurter band. In fact, the appliance ceases to be a skein back of the hurter band, and becomes only a support, more or less, to the axle; the skein being only that portion of the device which is intended to cover and protect the spindle of the axle. In v.iew of the state of the art at the date of this patent, I have no doubt this patent must be limited strictly to the special device, which is the cutting of the blank in such shape as that, when formed up, it will make two frustrums of cones; the small end of the larger one springing from the large end of the smaller one, or the skein itself. The defendants make and use a skein which is formed by bending a sheet of metal around a mandril so as to cover, more or less, the shoulder of the axle with a wing, extending backwards quite a diB-
tance npon the under side of the axle. This form of blank, when bent to the desired shape, does not make two sections of different cones, but makes a hollow spindle, the outside of which conforms to the shape of the hub box or pipe, and with an enlargement upon the top, back of the spindle, to cover and embrace the shoulder of the axle. The defendant's blank is not intended, and cannot be made, to form two cones, or sections of two cones, as does the Holmes blank, but simply forms a hollow pipe, the interior of which conforms substantially to the exterior of the axle which it is to cover. It is not a thimble skein having wings forming an upper and lower wrist extension continuous with the spindle portion, as called for by the first and third claims of the patent. It is obvious that the device of this patent is not adapted to cover or embrace an axle, tha shoulder of which rises abruptly upon the top back of the hurter band, while tl1e lower part extends back in substantially the same cone line as the spindle of the axle. The fifth claim of the patent is for a thimble skein formed of sheet metal, having an extension or wrist adapted to nearly or quite embrace the axle back of the spindle; and the eighth claim is for a thimble skein having an upper wrist extension sprung to rest on the rise of the axle back of the spindle, etc. These claims, in view of the state of the art, I do not think can be susta.ined upon tbis patent. The fifth claim would cover any thimble skein, formed of sheet metal, having an extension back of the hurter band, which embraced, or partly embraced, the axle back of the spindle; and this field was evidently more or less occupied by all the inventors shown in the proofs to have preceded Holmes; while the eighth claim is for a thimble skein having an upper wrist extension sprung to rest on the rise of the axle back of the spindle; that is to say, the form called for by this claim is not one which can be made by following the directions of this patent, but it would be any skein, the extension of which back of the spindle should be made to cover the shoulder; while the skein called for by the patent can only be a cone back of the spindle, and cannot cover the rise of the shoulder of the axle, upon the inner unless it has a corresponding rise or side. That is to say, there is no limitation upon the size of the rear cone which may be constructed under the Holmes patent, but there must be two cones: the cone which includes the spindle, and the extension back of the spindle which is an enlarged cone, calling for as much enlargement upon the under side as upon the upper side. I am therefore of opinion that the skein made and used by the defendant is not an infringement of that called for by the Holmes patent, because the enlargement back of the spindle in defendant's skein is only for the purpose of covering the top or shoulder of the axle, and the extension upon the under Eliop ifl '10 more than is shown in a large number of expired patents older that> B:olmes'. 0\ op.crep. may therefore. be entered, finding that the defendant does mumge.
BROWN ". LAPlUM.
(Circuit Oourt, S. 1.
A licensee under a patent is estopped to deny its validity on any question arising out of that relation between the parties, (Kinsman v. Pa1'khurst, 18 How. 289,) but it does not follow that he will be always estopped because he has stood in that relation.
SAME-WHEN LICENSEE MAY CHALLENGE VALIDITY OF PATENT.
When a licensee under a patent stands out from under the license. and claims nothing from it, and does nothing more under it, with full knowledge to the licensor of his position, he is at as full liberty to contest the patent as anyone. Taking and operating under a license is sufficient evidence of acquiescence to warrant an injunction without any previous adjudication, if the patent is unchallenged.
SAME-WHEN INFRINGEMENT llY LICENSEE WILL BE ENJOINED.
In Equity. B. F. Clark, for plaintiff. Samuel Greenbaum, for defendants. WHEELER, J. The defendants appear to have been licensees of the September 26, 1882, plaintiff under his patent No. 264,854, for an improvement in stylographic pens, and afterwards to have repudiated the license and continued their infringement in defiance of the patent. The plaintiff has moved for a preliminary injunction. On this motion the defendants have filed affidavits tending to show that a manufacturer for the plaintiff of another style of pen, and his -own workmen, devised this improvement for the plaintiff, and that they were the inventors of it, although the plaintiff got the patent for it. The plaintiff relies upon the estoppel of the defendants to deny the validity of the patent growing out of the license and the operating under it by them. There is no fair question but that a licensee under a patent is estopped to deny its validity on any question arising out of that relation between the parties. Kinsman v. Parkhurst, 18 How. 289. It does not follow that he will be always estopped be·cause he has stood in that relation. When he stands out from under the license, and claims nothing from it, and does nothing more under it, with full knowledge to the licensor of his position, he would appear to be at as full liberty to contest the patent as anyone. In this case, taking and operating under the license would appear to be suffi· cient evidence of acquiescence to warrant this injunction without any previous adjudication, if the patent was unchallenged. As it is, the plaintiff must stand upon the validity of his patent, and maintain it against this attack. On cross-examination of these witnesses, and the whole evidence when put in, this attack may not amount to
lReported by Charles C. Linthicum, Esq., of the Chicago bar.