FEDERAL REPORTER.
vol. 50.
assignee. His app0intrnent was merely of a temporary character, to preserve the property from being wasted pending the appointment of an assignee; alld of course the title would remain in the insolvent debtor until the assignee was appointed. So there conld not have been an assignment on January 22. 1890, the day the petition was filed by the debtor. The order of the court authorizing Mr. Ewing to serve as assignee was made in April, 1891, after the new law had been passed and gone into effect. The new law contains provisions which are inconsist with the old law. Under the present law, the oniy way in wl;lich nt all assignment can be made is by an in;3trument in writing, (a deed,) filed in the office of the county auditor. The new law repealing all laws inconsistent with itself supplants the provisions of the Code, in relation to assignments.. The proceedings begun under the Code, if carried to a point where a transfer of title occurred, would I think authorize the court to complete the execution of the trust under the provisions of the Code; but, the power to appoint the the Code having been cut off by the new law, no assignee having been appointed while the old law was in force, and no transfer of the title having therefore taken place, the proceeding fell with the repeal ofthe· old law. The pleading does not show an assignment made in writing to any person named, or any such complianC'ewith the provisions of the new law as to give the assignment any validity, so I think the assignee, Mr. Ewing, has no such interest in the subject-matter of this mortgage as gives him a right to contest its validity.
GRAF:t et
al. v.
BOESCH et
01,.
(Oirouil.Ootwl, N. D. Oali/arnitJ" May 9, 1892.) ApPEAL-DBOISION-PROCEEDINGS BELOW-INFRINGEMENT OF PATENT.
In a suit for infringement the supreme .court, reversing the decree below, said, in itllopinion: "The complainants must be content with the IJrotection of an tiol1, and a recovery of the profits realized from the infringing sales." HeZd that, on the return of the cRse,nothilig could be allowed by way of damages, nor could a recovery of the profits be preventc:l on the assumption that thl' couri did not mean what it said.
In Equity. Bill by Albert Graff and J. F. Dun11ell against Emile Boesch and Martin Bauer, for infringement of letters: patent No. 671, issued December 4, 1883, to Carl Schwintzer and Wilhelm Graff, of Berlin, Germany, who assigned one half thereof to .1. F. Donnell & Co. of New York. Infringement was found by the trial court, (33 Fed. Rep. 279,) and a decree was afterwards entered for damages. This decree was reversed by the supreme court, on the questions of damages. 10 Sup. Ct. 'Rep. 378.: ,On the receipt of the mandate the cause was referred to a master, and the question is now on his report. John H. Miller, for complainants. John L. BO(ine, for respondents.
GRAFF .,. BOESCH.
661
McKENNA, Circuit Judge. This is a suit for the infringement of·a patent for lamp burners, and for damages. A decree was heretofore en· tered for complainants, adjudging respondents guilty of infringement, and for an injunction and damages. 33 Fed. Rep. 279. The supreme court reversed the decree as to damages. 10 Sup. Ct. Rep. 378. After the mandate was filed, this court, by Judge BEATTY, on motion of complainants, and after argument, made an order referring the cause to the master in chancery" to take and state a new accounting." The master has filed his report, and complainants move on it, and on the pleadings. records, and decision of the supreme court, for a final decree in their favor for the sum of $186.20, profits realized by respondents, and for the sum of $412.20, damages, and that the latter sum be trebled. The decisive words of the opinion of the supreme court reversing the decree of this court are as follows: "In the state of the case disclosed by this record, the complainants must be content with the protection of an injnnction, and a recovery of the profits realized from the infringing sales. The decree is reversed. and the cause is remanded for further proceedings in conformity with this opinion."
At least provisionally interpreting this language as admitting further proof, this court referred the cause to the master for a further accounting. It is, however, not important to decide whether this reference was ri!Sht or wrong, for the further proof taken and reported is fruitless ofadclition or change of the facts upon which the supreme court passed, and on which it based its decision. There were two invoices of infringing burners imported and sold by the respondents, and both were considand passed on by the court, and no new fact has been proven in regard to them. Mr. Bauer, one of the respondents, was sworn by complainants, and while there was some confusion in his direct testimony .caused by the identity of names of different burners, on cross-examination he said that, since his testimony in the accounting on the main case, he had not purchased, or bought. or had on sale, any of the class of burners with acap on. The"cap" constitutes the infringement. Mr. ·Graff, one of the complainants, testified that he had seen MitraiIlel1se burners in Mr. Boesch's window. Afterwards he called them "Diamond burners" but he said, "If there is a cap on I don't know." The burners were called, indifferently, "Mitrailleuse" or "Diamond;" sometimes "Diamant." Mr. Boesch, one of the respondents, called on his own behalf, testified that he had sold no burners since the filing of the master's report in which a half cap or any part of a cap was used, nor had he imported any since that time. All the imported ones were without caps. Against this direct testimony I see nothing in the record-and I have carefully considered it-to justify an inference of other sales than those passed on by the supreme court. The complainants, therefore, for indemnity "must be content," to use the language of the court, "with .a recovery of the profits realized from the infringing sales." These are found by the master to amount to $186.20. But respondents say tnat .<lomplainants, at the first accounting,waived the recovery of profits, and ,cannot now claim them. The supreme court, however, decides that
662 ooDlplattiantlf
I'EDERALltEPoR!l'ER,
vol. 50. lao-
gnag:eof the' decision, respondents',eounsel urges that the 9-U?stlOO ?f profitifandthe fact of waiver were not before the court. This 15 a mlStake. 'In'the opening sentences of the opinion the court say:
'entitled furet<>ver ihem ,and, to avoid the
"Tl)ecas.tl went to a mastet, reported * * *' tbatthe appellees bad sustained' damHges to the extent of $2,970.50, and that they waived all claims to 'the profits realized by the infringement. " The cQurt, therefore, wa.s D}anife!ltly inquisitive and considerate of the and, having' decided' in its final judgment that the comare entitled to" a recovery of the profits realized from the infringing ,sides," this court must execute its mandate, and cannot evade it by assumi"Dlf that the court does not mean what it says. Complainants, theretore, are entitled to a finnl decree for the sum of 8186.50, profits realized by respondents on infringing sales, and costs, and it is 80 ordered..
WESTERN ,UNION
TEL. Co.
11. AMERICAN
BELL TEL. Co.
(emuit Coun. EQ111'1'T.
MaB,ach:u,ettI. lIay 28, 1892.)
At a hearing before a master it. was agreed that, prior to the filing of bis report, · draft IIhoulcl be ,eublDitted ;tocwnsel, in order that they might present objections theretQ.T1:Ie master, filed the report without so doing. BubseqlleDt1y he withdrew it by' conBtlnt of counsel, other proceedings were bad before ,bim,:and objeotions :presented to tbereport. Held, that the cause report .had eyer j)eenfi.\ed, aOod that. defendant bad acquired no such right as'woUld exclude the 'operation'of the general rule that, where defendant demanus no alllrtnative rellef, tloblPll&inant may. upon paying costB,dismiss his bill at :any before interlocutol.';y or1inal decree.
,p:UJNTJr_MAsTllR'S RBPOR'1'.
In Equjty.Bill by the WesWrp.Union Telegraph CompRny and others American Bell'lie,li;}:>llone Company for discovery and ac{'ounting. . I:I:Elard on motion of complainants to dismiss without prejudice. Gran,red. JoBiah 11. 'Benton, Jr., {or compla:inants. William' G. Ru.sseU and E. Rockwood Hoar, for defendant. ants vember was heard on motion of complainthe bIll without ,prej9-dice, on payment of costs. On Nothe filed the present bill against the deaccount, under a certain contract. The defendant ",nswered, denying .the equities of the bill. The comOn May 28,1886, the case waE\ reJe#ed" to a master by of counsel, and the following order was'made py :the court: " '. "And of parties filed, it is ordered Lhatthe above-name4causo. be iefe1'l'eU to HOD. John Lowell as master