MACBETH 'IJ. GILLINDER.
uses, and whether the defendants are withiil or without the bOundaries, will have to be decided upon the hearing. It is sufficient now to say that, in my opinion, the defendants are upon debatable ground. My conclusion is that this is a case for an order requiring the defendants to give bond in the sum of $10;000 to the complainants for the payment of any profits or damages that may be decreed against them; and an order will be made also requiring them to keep an account of their manufactures and sales, to be produced when called for by the court. The motion for a preliminary injunction is overruled, with leave to renew it if the bond above provided for be not furnished within 20 days from the date of the entry. .
MACBETH et aI. v. GILLINDER et at (Circuit Court, E. D. Pennsylvania. May 10, 1889.) No.6.
PATENTS FOB· INVENTIONS-COMITY .BETWEEN CIRCUIT COURTS.
A circuit court will not· disregard a deCision by anothereircuit court SItS> taining a patent, and declariJlg :infringement,unless fully convinced tbat such decision is erroneolli1,: and the existence of a grave doubt as to, the soundness thereof is not suificient warrant for refusing to follow it. .
.. BAME-VALIDITY-DESIGNS FOR LAMP CHIMNEYS.
Letters patent No. 14,373, issued October 30, 1883, to George A. Macbeth; as assignee of Henry Dietrich, for a design for lamp. chimneys, conSisting in what is called the "pearl top," are valid. with a so-called "prism top," as the original application included such a. top, . which was stricken out at the suggestion of the patent office, and the patentee, by accepting his patent, with this amendment, waived his claim to such design as effectually as if he had filed a disclaimer thereof, upon the suggestion of the patent office.
It is not an infringement of this patent to make or sell a lamp ch,ilIllley
The fact that the patentee subsequently applied for and received another patent for what is c13imoo to be virtually tbe same design would not a.ffect the force of the estoppel against'Wm under the former patent; for, if it was the same design, the new patent merely added force to the implication that it was not included in the old one, and, if it was not the same design, the taking of the new patent was a renewal of the assertion that this design was open to the public.
In Equity. Bill by Macbeth and others against Gillinder aild others for infringement of a design patent. Decree for complainants. James L Kay, Francis T. Chambers, and George H. Christy, for plaintiffs. , George Harding and George J. Harding, for defendants.
BUTLER, District Judge. The suit is for infringing letters patent No. 14,373-''Dsigns for Lamp Chimneys"-gTlJ.D.ted to George A. Macbeth, assignee of Henry Dietrich, October 30, 1883. This patent was involved in a suit by the same plaintiffs against Evans & CO.,1
No opinlon rendered.
in the cirenit court at Fittsburgb, 19, November term, 1884. It waathere held to. be: valid; and a crimp-top chimney, such as that manufactured by the defendants, and here involved, was held to be an infringement. Unless, therefore, we disregard that decision the bill ml1$tge sustained, and the defendants held responsible to this extent. We cannot disregard it, unless fully convinced that it is erroneous. The, importance of uniformity of decisions in courts of oo-ordinate jurisdiction and authority, is such that even grave doubt respecting the sOundness of a particulan,decision is not a sufficient warrant for disregarding it. The proper remedy, where such doubt exists, is by appeal. To courts of last this rule does not apply with equal force. The controlling effect of their decisions on all inferior tribunals within their jurisdiction, secures uniformity. We listened to an earnest and very able argument, intended to convince us that the decision at Pittsburgh is erroneous. We have patiently and fully considered what was urged; but we are not convinced. We must therefore follow Macbeth v. Evans. . Nothing reIIlains but to determine whether the defendants' "prismtop" chimney, is an infringement. When the 'case was before us on motion for. injunction, we were not .satisfied it was an infclBgement, and we therefore refused to include it in the writ ·... When application for the patent was originally made the patentee' cl.aiW-ed not only the "pearl top," but also two other designs, one of which was substantially, if not absolutely, identical with the def@.4Mlts' "prism top':-as appears py the drawings filed. He was informed· by} the office that these several designs could not be embraced in the letters applied for; whereupon he amended the application, therefrom everything except the pearl top,-illustrated by IWCOmpanying the patent. In view of these facts he cannot permitted claim that the letters cover the top in question. !fit were· proved, as he asserts, that the patent might, in the absence of these facts, be constroed to embrace it-that the office was mistaken, and he was misled-the result would be the same. He cannot be pel'll1itted to turn round aftel." obtaining a patent on the only terms ..which the office would grant it, and after declaring by hiscondllct, and language as emphatic as he could employ, that this top is not embraced, hold those who have engaged in its manufacture, guilty .of infringement. He is estopped by the circllIllStances undel' which tne patent was obtained. The ·case cannot be distinguished in principle, from those in which a patentee at the instance of the office, or to avoid Bome obstacle in his way, disclaims a part of his originaJ :demand. Here, as there,the pal't yielded and abandoned, be set up as protected by the patent. . The argument based on the fact that the language of the claim. was not having agreed to omit this top, changed, has little force·. The and obtaining his patent by this means, the claim must be read accor(ijngly, even though this may limit the scope to which it otherwise wouHl 'be entitled. We attach little importance to his subsequent conduct in applying for and ta;king the "Macbeth patent." If it is virtually for the same top as that withdrawn from the former patent, conduct in taking
MACBETH V. GILLINDER.
it was' a repetition of hiS declaration that this top was notenibraced in the former patent; but, this, could add nothing:to tb$ force and effect of what preceded it. The recordot'the office was a continuing declaration to the public tbatthis deilign was not embraced in the patent under consideration. If the "Macbeth patent" is not, as the plaintiff asserts, fol' the prism top, the effect of his former conduct is not weakened, but rather strengthened by taking this parent; for, in such ease it not only was at the time, but continues, to be an MBertion that the manufacture of this top is open to all may choose to engage in it. A decree will be entered in with this opinion.
MACBETH et aL v.GILLINDER et at (Olreult Court, E. D. Pennsylvania. November 17, 1891,) No.61. DESIGNED PATENTS-INFRINGEMENT. In determining whether a design patent Is intringed. the test 18 whether
the alleged infringing article presents to the eye of an ordinary purcha.ser the same appearance as the .patented article.
SAME-DESIGNS FOR LAMP CHIMNEYS.
Letters patent No. 14,373, Is/lued October 30, 18&3, toQ Qrge A. Macbeth. for a deSIgn for lamp chimneys, cons1stlng of. a so-called "pearl top,"arefu. fringed by one who manufactures or sells a lamp ch1mneypresentiIl.g!the same appearance to the eye of an ordinary purchaser; and it is immaterial whether such appearance was caused intentionally, or by the worn condition of the toolll by which they aTe made, as claimed by ,defendants.
In Equity. Bill by Macbeth and others against Gillmder and others, constituting the firm of Gillinder & Sons, for infringement of letters patent No. 14,373, granted October 30, 1883, to George A. Macbeth; as assignee of Henry Dietrichs, for designs, 'for lamp chimneys. The patent was heretofore sustained, and an injunction granted. 54 Fed. Rep. 169. .The cause is now heard on motion for an attachment for violating the injunction. Referred to a master to ascertain the facts. James L Kay, Francia T. Ohambel'8, and George H..Christy, for plaintiffs. George Harding and George J. Harding, for defendants. . BUTLER, District Judge. Have the respondent8 disregarded the injunction? The decree of the court limited to chimney tops with circular or flared mouth, ''having a beading, or similar ornamentation. raised above," so as to present a,pearl-like appearance - which the complainants caJl a "pearl top." The reasons for this limitation aJ."e stated in the opinion filed. The only feature ·of the case, as then presented, which called for ex· tended remal'k, was that arising from the complainants' effort to extend the patent so as to cover the respondents' .''prism top," The validity of the. patent,. and its infringement by the manufacture or sale of the "small pearl top," before the court, had been settled in a former suit. We had no occasion, therefore, to remark upon