after a careful consideration of the testimony,that it is not against the evidence, and should be 'undisturbed. exceptions, which The foregoing views dispose of nearly all the are based upon alleged errors of the master in deciding disputed questions of fact. If "fiber white" was talc, the proof is sufficiently clear that the defendant's white checks contained shellac and talc, in substantially equal parts. The evidence adduced to establish the identity of the checks analyzed by Prof. Chandler with those manufactured by the defendant was sufficient to sustain the master's action in that regard, and the same is true of the testimony upon the question of competition and the ability of the complainant to supply the market. It is thought that the rule enunciated in the carpet design cases (Dobson v. Dornan, 118 U. S. 10,6 Sup. Ct. Rep. 946; Dobson v. Carpet 00., 114 U. S. 439, 5 Sup. Ct. Rep. 945) has little application to the case at par. Those decisions proceeded upon the theory that, as there was no evidence to establish the value imparted to the carpet by the design, it was, error to attribute to the patent tpeentire profit upon the of the carpetS. When, however, the invention relates to a new composition of matter, and the infringing article is made ofthe patented material, and this alone, the measure ofthe patentee's damages may be the entire profit which he would have made. ,There is no room fQr segregation. It is not at all like a patentedimprov,ement upon an existing machine, for there it is entirely clear that evidence must be given to show what portion of the profits is due to the patented feature. Where the patent covers the infringing article in its entirety, no such evidence can be given. There can be notbiug in the proposition that becausE;3 the defendant's checks wereof a lower grade than the the master's computation among 'others, that they were so nearly alike is erroneous, for the in appearance as to deceive buyers not only,but experts in the trJtde. Theevidence has been examined withcal'e, error which wouhl warrant the court in refusingto confirm the report has been discovered. In many respects tho reportjs a most conservi1tive one. The exceptions overruled, and the reporli of the master is confirmed.
(Oz'rcuit Oourt, S.D. New York. February il'l', 1888.)
L PATENTS FOR INVENTIOIrS-INF.RtNGltMENT-MACHINES FOR FORMING STAPLESEAMS IN' UuTHEa.
The tliirdclaim of letters .. 136.840, .issued FelJruary 25,1878. to Samuel W. Shorey, foran inmachines for forming staple-seams in leather. which consists ofan inclined and retrea!ing 'b'ar or anvil' in combination w·ith a.bender;foot and a driving-bar, the' improvement. being that o! the anvil. retreating under :wire staple. it as It IS drIven Ipto and so.obvlates th.e necessIty (jf bc;>ring holes for It in advance. ISlDfrlD&"ed by a deVICe for staphngtog' of books all;d' pam.phlets, in :whICh the staple, while being driven <in, is
ported by a similar inclined plane. such incline is separate from the anvil, and the machinery moving the inclIne is different from that described in the patent.
2. SAME-DEFENSEs-DIFFERENT USE.
It is no defense to a suit for the Infringement of a patent that the patented machine is used solely for sewing leather and the infringing device for sewing paper, when either machine might be used indifferently on either material, all a patent covers the exclusive right to the use of the patented machiue for all purposes.
In Equity. Bill for injunction; fodnfringement of a patent. Horace Barnard, for complainants. M. B. PhiliPP, for defendant.
WHEEI.ER, J. This suit is brought for an alleged infringement of the third claim of patent No. 136,340, dated February 25, 1873, and granted to Samuel W. Shorey,assignor to Arza B. Keith, for an imin machinesforfornHng staple-seams in leather, and which is now owned by the orators. The principal defense is non-infringement. There were such machines prior to Shorey's invention. The wire of which the staples are formed· is made t'o pass across a bar, called an "anvil," in width equal to the length of the crown of the staple,until the end projects beyond theanvil·to an extent equal to a prong ofthe staple; then the mMhine cuts the wire at an equal distance from the other side of theaIivil for the other prong; a bender-foot, with a projection on each side of the anvil, having a groove on the inside next to the anvil, then comes down and presses the ends· of this piece of wire over the edges of the anvil, forming the staple with its crown across the top of the anvil, of the benderand its prongs down the sides of the anvil, in the foot; then a driving-bar follows the bender-foot until it strikes the cro\vn of the staple, when the anvil is withdrawn and the prongs of the staple lire pressed through the sheets of leather beneath the bender-foot by the force of the driVIng-bar on the crown. The wire used is too fine to be stiff enough to be forced through the material by pressure on the crown of the staple without support, and, until Shorey's invention, holes for the prongs of the staple were punched. Shorey made the end of the anvil inclined, and had it withdrawn so that the driving-bar would strike the crown of the staple at the top of the incline, and the crown would follow down, and be supported by, the. incline as it was driven home. so that the prongs would be pressed through the material to be stavled withfor them. This claim is for this out having holes previously inclined and retreating'anvil, in combination with the bender-foot and ,operating substantially asdescribed. The patent describes a lever, moved by a cam, to so withdraw the anvil as to make the crown of the sta.plecoincidewith the incline in its descent, and a work.,ing against the to return the anvil to its place for the next operation. In the defendant's machine the· bender-foot forms the staple over an :anvil whioh igforced from beneath the crown of the staple by the driver, the Qrown of the staple on an incline that supports the crown as it is dri.venhome, so that the prongs are forced through thematerial·on-
THOMPSON 'II. GILDERSLEEVE.
erated upon without having holes previously made for them. The incline is moved away by the action of the driver forcing the crown of the staple down it, against a spring, in a direction opposite to that in which the anvil is moved, and is brought back to its place for the next operation by the action of the spring. The defendant uses his machine wholly on paper for stapling together the sheets of books and pamphlets. One point made.in behalf ofthe defendant is that his machine is used in forming staple-seams in paper, and not in leather. The machine of the patent unites the leather by driving successive staples through the parts to be united, twisting together the prongs on the other side of the work, and forming thereby a continuous seam. The machine of the fendant does the same with sheets of paper. Either machine will operate upon either kind of material, in the same manner, as upon the other. The material is operated upon, and the kind of it has no effect upon the mode. The patent covers the exclusive right to the use of that part of the machine patented without restriction, and as much for new purposes as for old. Robe:rtB v. Ryer,'91 U. S. 150. Another point is that grooves in the bender-foot are necessary to port the prongs of the staple, and prevent them from crippling while being driven; that such grooves are not described in the patent, and are employed for that purpose in the defendant's machine, making a different machine from the patented one. These grooves were, however, well known, and in use as parts of a bender-foot for this purpose at the time of the patent. This claim is for the inclined and retreating anvil, in combination with the bender-foot and driver, and not for the bender-foot or driver. These grooves are no part of the anvil, and have no share in supporting the crown of the staple while it is being driven. It was not necessary to describe them in describing the operation of the anvil, for the purposes of this claim, any more than it would be to describe any other parts of this intricate machine, and their operation. The new part was to be described; those parts which were old and well known would be understood without description. Loom Co. v. Higgins,. 105 U. S. 580. j Another point is that the cam and lever for withdrawing the anvil aTe taken by the specification into the combinatIOn of this claim,. and; that, as the defendant does not make use of such a cam and lever, he does not use that combination. Many cases are referred to which show that a patent covers only what is described in the claims, and that, when a claim is for a combinatioI)., whatever is madelj,. part of the combinaf. lU, by the words of the claim'itself, or·by necesSary inference, is a material part in the construction of the patent. Bridge Co. v. Iron Co., 95 U. S. 274; Fay v. Cordesman, 109 U. S. 408, 3S1:1p. at: Rep. :236; White v. Dy,nbar, 119 U. S. 47, 7 Sup. Ct. Rep. 72; Hartshorn v. Barrel Co., 119 U. S. 664, 7 Sup. Ct. Rep. 421; Snoiv v. Railway Co.,121U:' 8'. 617, 7 Sup. Ct. Rep. 1343. Thel'ecanbe no question aboutthis·. '[The only question on this part of this case is whether it comes within the principles of t110se other Thej'a,nvjl, as a fortt\o/ of the slaple, and retreatmg afteut;ls formed, QutQi"the way, was
The inclinedpart,as asupportet,of the tJrClwn of the st!\'P1e, and retreating to give way to the crown as it is forced downward by the driver, was new,.: The cam and lever, are ne<ressary to draw the forming part of the anvil backward until the crown of the staple is brought to the top of the incline; then the downward motion of the driver on the crown will force the inclined portion back while it is giving support. The cam and lever are not brought into the combination of this claim by its terms, neither are they necessary to the 'operation of, the inclined and retreating part of the anvil; therefore they are not brought in by any necessary cation. This claim appears t<>be valid to cover: thil? inclined and retreating anvil, operating to Bupport the crown of the staple in the man· ner described, while the prongs are ,being supported by the bender.foot, and the staple is being driven hom:e by the driver. WhUe these parts work together indhis rnannerthey are the cQmbination of this claim; and all the other parts of the:maehine that make, thesepart:s operate in this way to produce the result required are, for that purpose, equivalents different, they may be in of the parts of any other machine( themselves, which also make these parts operate in the l?ame way to pro. duce the same result. (J[wgn v.Barker, 106 U. S.166, 1 Sup. Ct. Rep. 188, 1 9 8 . , , . In the defendant's machine, what is called in this patent.the "anvil," is,divided,andthe part over which the staple is forDled is, in one piece, and part, which ,supports, the crown of the $taple while being driven, is itt another.. But ,the inelined and retreating portion oper; ates to support ,the crown ,of ,tha.staple while the proQgs are supported by the bender.fOot and the staple is being driven home by the driver, precisely as these parts work: in, the combination of this claim. The forms are soinewhat different, but tM operation and result are the same. In thismaIiner: the defendant appeaJiS to make use of Shorey's invention as it was patehted by, this claill).. Mason v, Graham, 23 Wall. 261; IVe8v.lIamilton, 92 U. S. 426; Val'l!eG'o. v. Valve q,., 113 ,D.. S. 157,5 Sup. ,Ct. Rep.. 513. ' " ' Let there be a decree that the third claim of the is valid ;t1?at the defendal!lt infringes that claim; and, for an injlUlction ap.d an accollnt, with costs. .
PURCHAB;ERS WITH SUITS FOR,b',"', ' , ,) ','
A court1df equltyha& Jurisdiction tcfrestrain. anatternpted' i'l1tiplidation by one issning cireularsU1reatening tabring suits for infringements against perSC/DS dealing in ,competitQr'sp,ll,teD;tedarticle.the bill charging. and the that the charges of'irift'ingement were not made in good faith, but with'malicious intent to, injure ,complainant's business. : ,