receive in which 4e prosecutes; l!;nd lV-hEm by arrangement with the defendant he is paid more than that which the ·law allows him 'to charge, although the good faith of the transaction may be beyond suspicion, yet public policy requires that all money he receives in excess of his legal fees is for his client. The possibility of collusion which any other rule would place before counsel is sufficient reason for adhering to the rule even in cases where there is no reason to suspect collusion. I do not that the mere taxation of costs settles any question between counsel and client. There is no adversary relation between counsel and client, and the court does not decide anything between them when it taxes costs. The adjudication is conclusive between the parties because they are present as parties, and occupy adversary relations. But it would be very strange if the client who appears only in the case by his counsel could be bound by an adjudication ofthe court in respect to the matter of fees. As I said at first, under the circumstances of this case, were it riot for this imperative and important rule of law and publie policy, I should feel constrained to sustain the claim of the plaintiff, but as it is I feel bound by this rule, which public policy has so long affirmed to be wise and just.. The law requires a statement to be filed in cases, of this kind, and I simply adopt the statement which Judge THAYEa made in his decision.
FACER f7. MIDVALE STEEL-WORK
(Oircuit (Jourt, E. D. Pennayl'Dania. November 9,1888.)
PATENTS FOR INVENTIONS-PRIOR STATE OF THE ART-DiEs FOR FORQING.
In the application for the plaintiff's patent for dies for forging car-wheel tires the combination of an anvil die having a projecting horn and a hammer die having an extension over the anvil and horn was claimed. This claim was on of of the art. and amended. restricting it to a hammer dIe havmg a certam form and extent. Held not to be novel, and that the patent was invalid.
.. SAME-INJUNCTION-DISCONTINUANCE OF INFRINGEMENT.
The circuit court has jurisdiction to decree an injunction where the defend. ants had, previous to suit brought, upon request of plaintiff. discontinued the use of the infringing device. .
SAME-INVENTION-"-MECHANICAL SKILL NOT INVENTION.
Where a rectangular hammer die extending' over the face and horn ot au anvil was old, merely cutting off the two corners of the end extending ovf;lf the horn, reducing it to a" central projection, "involves mechanicalakill only, and not i n v e n t i o n . ' '
In Equity. Bill to restrain infringement of patent. One Facer, being the sole owner of a patent issued to himself and one Shaub, brings this suit to restrain the defendant,· the Midvale Steel-Work Company, from infringing it.· The facts are stated in the opinion.
Herbert A. Drake, for plaintiff. H. W. Hare Powel, Prank P. Pritchard, and Wayne MacVeagh, for reepondent.
BUTLER, J. On the 6th day of February, 1883, letters patent were issued to Facer and Shaub for "device for manufacturing car tires." The first claim reads as follows: "(1) The combination of the hammer die. comprising the main portion, m. with central projection. a. in front. and the anvil die. H, having a projection. b. and fiat face, n,. the projection. a. being above the projection. b. and the face. n.oi the anvil die being of substantially the same dimensions as the portion. 'fIl,' of the hammer die. as set forth...
Facer, having acquired the interest ofShaub, sued the defendant for infringing this claim. The defense set up is, invalidity of the patent, and non-infringement. 'l,'o sustain the claim it must be confined to the combination stated, with the special form of hammer die described. The prior state of the art and the history of the application, require this. Hammer dies with sides projecting beyond the anvil were old, as also anvil dies with projecting horns. The earliest method of performing the work which the plaintiff's hammer and anvil are intended to accomplish, consisted in the employment of two anvils in succession; the first for formingnnd punching the bloom, and the second (having a horn) for" becking" it. This method required the metals to be twice heated. All that was necessary to adapt the hammer and the anvil dies just mentioned, to the several processes of forming, punching, and "becking" (and or doing this at one heat) was to place a horn on the anvil die, and increase the size of the hammer die so as to project one of its sides over the horn. Such hammer and anvil dies had been used several years prior to the plaintiff's alleged invention. They were so used at Lewistown, Pa., (where the forming, punching, and "becking" were performed at a single heat,) and are found in Allen's English patent. In the latter, however, the relative difference in size of the upper and lower dies, was produced by diminishing the lower, of increasing the upper. This difference is not important. If the anvil thus constructed is too small for profitable use in forming and punching the bloom, (as plaintiff alleges,) the defect would be obviated by simply increasing the size of both dies; to do which would not require the exercise of invention. Hammer dies similar in principle and effect had been used in forging bar steel much earlier. That the bars were straight, and did not involve the use of a horn, is unimpormnt. The plaintiff's application for a patent was first made in 1881; and was rejected on reference to Allen's patent. The claim was, in effect, for a combination for an anvil die having a projecting horn with a hammer die having an extension over the anvil and horn. The plaintiff sought to meet the examiner's objections by an argument intended to distinguish the Allen hammer and anvil from his. By reference to this argument it
FACER V. MIDVALE STEEL-WORK CO.
will be seen to be the same as that now urged upon the court, for the same purpose. Without appealing from the decision, the plaintiff allowed the . matter to pass until August, 1882, when he again applied for substantially the same thing, without alluding to the former proceeding. This second application was also rejected. The plaintiff then amended by describing the hammer die projection as limited to the form and dimension now shown in the patent. The claim thus limited was allowed. It follows, asbefore stated, that the claim must be confined to a hammer die and projection of the peculiar form and dimensions described, in the combination f'tated. To enlarge it, as the plaintiff desires, so afl to cover all hammer die projections extending over the common anvil (used for forming blooms) and their horns, would give him precisely what the office refused, and what the state of the art clearly shows he should not have. With this construction of the claim, the infringement shown extends only to the short period of time during which the defendant used a die with this peculiar projection. ,Such use began between the time when the first application was rejected, and ceasen soon after the patent was granted. But for this branch of the complaint we might avoid the question whether the patent is valid, even with the liinited interpretation stated. As the case stands, however, the question must be debided. We cannot adopt the defendant's view that for such infringement, ap injunction cannot issue, and that this court is therefore without jurisdiction in the premises. Discontinuance of the infringement alone would not deprive the plaintiff of a right to an injunction; nor, in our judgment, would any other circumstance shown, if the patent were valid. :We believe, however, that the patent is not valid. The plaintiff's own argument in'support of his position-that hammer dies with projecting sides covering horns on common anvils (used for forging blooms) are all infringement of his patent-fu1ly sustains this view. He says it if' unimportant whether the projection of the hammer die be confined to the center, as described in his claim,or extends the entirelength of the sides; that such extension (beyond the limits of his projection) is useless and immaterial, and that therefore hammer dies with such extended. projections are substantially ·like his, and consequently infringe. This, if sound, proves that his limited central projection is substantially like ,the old hammer die with projecting sides, which were in use, as we have seen, long before his alleged invention. It is sound, but unfortunately, when turned against him, is fatal to his patent. It certainly is unimportant whether the projection extends the whole length of the side or is confined to the center. It is true that the corners do not heat the metal in the latter case, but they increase the weight of the hammer, and add to the force of the blow, without impairing the efficiency of the die in any respect. If, however, it appeared that the plaintiff's limited projection materially improved the die, no invention could be found in the act of reducing the projection of the old die to such limited dimensions. No :Q?-ore was required than to cut otfthecorners or ends. Any mechanic famil-
iar with the, work iIi which such dies are employed, would understand how to do it,aI1d would do it as soon ashe found the corners objectionable. A deoree will therefore be entered dismissing the bill, with costs.
'!7. KEYSTONE BOTTLE STOPPER
Co. et al.
w: D. Pennsylvania.
: March 22, 1889.)
PATENTS FOR lNvENTIONS-REJSSUE-ENLARGEMENT-BoTTLE-STOPPERB·
.As the specification in reissued letters patent No. 7,722, June 5.1877, to Karl Hutter, though more ample in matters of an explanatory nature, contains nothing of importance which is not plainly disclosed in the specifica'tion and drawings In the original patent, No. 158,406, January 5,1875, the claim which is for the oombination substantially, etc., of the compound stop::per, the yoke, the lever, and the supporting device on the hottle by means of three. pivotal connection,s ,upon which such members can be tnrned relatively 'to eAch other without disconnecting either from tbe other, is not an enlargement of the claim of the original, which is for the bottle-stopping device com, posed ofa ,pivotal applied to neck of bottle with eccentrically hinged yoke carrying the elastic stopper and cap-piece arranged and operated substantially, etc.
Though the device manUfactured under one patent isadjudgedto,be an infringementof another patent, yet, where both patents are afterwards united , in the same person, the infring-ing .invention may'be held to be an improvement upon the other, as against' a person infringing both ' :FJ:om the grant of a patent to one to whoIIl.a patent fOfa similar devic,e has been granted there arises a presumptIon that there is a SUbstantial , difference between them; involving a patentable invention, and that the later one is for a patentable improvement on the earlier one.
A preliminary injunction should be granted in a suit to restrain the infringeFOR ,INFJUNGEME:NT-INJUNCTION-PRIOR ADJUDICATION.
8"SAKE---SUOCESSIVE PATENTS TO SAME PERSON-PREs'l1MPTION.
ment of a patent, where; in other suits for the infringement of the same patent, the patent has been adjudged valid, 'and devices identical in every mate.: rial respect with that of defendl'nt. have been held infringements.
lnEquity. 01) motion for ,preliminary injunction. Suit by Henry W. PutnaD;l and others against the Keystone Bottle.Stopper Oompanyand others. A. y. ,Br:iescn andW. Bakewell, for complainants. . WiUiam H. Doolittle, for defendants.
ACHESON, J. The bill of complaint charges the defendants with the ,infringement of tiWoletters patent for improvements in bottle-stoppers,,one granted to Karl Hutter, assignee of Charles. De: Quillfeldt, being reissue No. 7,722, dated June 5, 1877, of original patent to De Quillfeldt, ,No. 158,406, dated January 5, 1875; and the other granted to William ,Von,Hofe, being patent No. 167,141, dated August 24, 1875. The ,title ofthe plaintiffs to these patents is not controverted. ')i,,1. The.,De QuiUfeldt reissue t No. 7,722, has nine claims, but in-