ADAMS V. HOWARD.
311
Gage v. Herring, 107 U. S. 640; [8. C. 2 Sup. Ct. Rep. 820.] The orator appears therefore to be entitled to a monopoly of the conical rollers in that combination. It is argued that the defendant's machines invade that monopoly. Those machines have not conical roHers, nor are they claimed to have any of his other mechanism. It is said that there is no invention in dividing the conical rollers into parts, and that the parts are the equivalent of the whole. This is not what the defendant does. The orator's machine gives the circular direction by mechanism that accomplishes that result in one way. the defendants by different mechanism that aocomplishes it in a. different way. That claim, therefore, is not infringed. Let there be a dismissing the bill of complaint, with costs.
ADA.MS
a.nd others v.
HOWARD
and another.
(Circuit Oourt, 8. D. New York. 1. 2. LETTERS PATENT-BASKET LANTERN.
February 6,1884.)
The validity of letters patent granted to John H. Irwin in 1865, for an improved basket lantern, sustained. RIGHT TO PART OF THE RELIEF SOUGHT WHEN THE REST OANNOT BE GIVEN.
The expiration of a patent, pending a suit for its infringement, will defeat a prayer for an injunction, but not for an accounting, though the bill contains both. CoSTS-WHERE BOTH PARTIES HAVE A DECRElIl.
8.
When two distinct causes of action are united, and one party prevails in each, costs will be allowed to neither.
In Equity. Betts, Atterbury If Betts, for complainants. Jas. A. Whitney, for defendants. WALLACE, J. Infringement is alleged of two letters patent for provements in lanterns, granted to John H. Irwin, one May 2, 1865, and the other October, 24. 1865, both of which have been assigned to the complainants. The second patent only is infringed upon the construction of the claims of the first patent adopted and expressed at the hearing of the cause, which limits it to a lantern having two horizontal guards connected by a hinge or catch, whereby the lantern may be opened at or near the middle of the globe. Infringement of the second patent is not contested. The claim is to be construed as one for a loose globe lantern, in which the globe is protected by a basket of guards, and is held in place by the top of the lantern when the lantern is closed, the basket being hinged at its upper horizontal guard to the top of the lantern, and opened by a spring catch opposite the binge. The special utility of the device over the lantern of the first patent consists in the protection of the loose globe against
318
-lEDERAL ' REPORTER.
accident, in case the catch is accidenta.lly unlocked, as when unlocked the basket will prevent the globe from falling out. It is insisted that there is no patentable novelty in the improvement, but, as was suggested at the hearing of the cause, assuming that Irwin's first patent was granted before the lantern of the second patent was it is believed that the change made in the last lantern was not such an obvious one as to negative the exercise of invention. As the lantern of Irwin's first patent approximates to that of the second far more closely than any other preceding device, it is unnecessary to examine further into the prior state of the art. The difference between the lantern of the second patent and that of the first consists only in a. new location of the hinge and spring catch, and the employment of a horizontal guard to form the upper rim of the basket for the purposes of this new location. This change of location seems to have been a very simple thing after it was made. But simple as it may have been, it rem{\died a grave defect in the lantern of the first patent; and the advantages which it introduced were immediately recognized by the public. Others who were actively experimenting in the same field of improvement failed to discover how readily this change could be made and what advantages would result by its being made. The defense that the patent is anticipated by the lantern described in the prior application for a patent by Anthony M. Duburn is not tenable, because there is no evidence, except his application for a patent, that he ever invented such a lantern. It was conceded by his solicitors upon the application that the model accompanying his application would not answer for use as a lantern, although it was sufficient to illustrate the construction of the device; and the examiner in charge condemned the mo.del as inoperative. As there is no evidence in the case to show that such a lantern as was described in the application and illustrated by the model was ever actually constructed by Dnbum, sufficient does not appear to defeat the novelty of Irwin's invention. It will not be profitable to consider in detail the numerous objections urged by the defendant to the complainant's title to the patent. The conclusion reached is that the complainant Adams is vested with the title to the patent which was acquired by the Chicago Manufacturing Company, October 6, 1866, together with the right of action of that company to recover for infringements since that date. This title is, of course, subject to the license which had been granted by that company to Archer and others to make and use the invention in this state and elsewhere. The complainant Dietz has acquired an undivided third interest in this license by the transfer of Pancoast of March 24, 1881. No objection having been taken by demurrer or the answer to the non-joinder of the other two owners of this license, such non-joinder can not now be insisted on to defeat a decree. If these parties are within the jurisdiction of the court, which does not
SCHALSOHA
V.
SUTRO.
819
appear, a decree can be made without affecting their rights, and which will completely adjust the rights of all the parties to the suits as be· tween themselves. In this view the recovery by Dietz must be lim· ited to one-third of the damages and profits, by reason of the making, and using of the invention, accruing since March 24, 1881. The case does not disclose such laches on the part of the owners of the patent as should defeat an accounting. While infringements by va· rious parties and for considerable periods have been shown to have taken place during the life of the patent, the circumstances fail to esta1;l1ish acquiescence in the instances where. the infringement was known to the owners of the patent. No doubt is entertained of the propriety of decreeing an account· ing, although the patent has expired since the commencement of the suit, and although for that reason there should not be an injunction. The jurisdiction of a court of equity having been legitimately invoked by the complainant, he will not be sent away without redress, merely because all the redress to which he was originally entitled cannot now be awarded to him. Under such circumstances, the court will retain the cause in order to completely determine the controversy. Gottfried v. Moerelin, 14 FED. REP. 170. , Iuasmuch as the complainants have united two .distinct causes Of 'action in their bill, and upon their allegation tha,t the' d'efendants' lanterns infringed both the letters patent, have compelled the defend. ants to litigate both, and as to one of these causes of action the defend· ants have prevailed, neither party should recover costs as against the other. Strickland v. Strickland, 3 Beav. 242; Crippen v. Heermance, 9 Paige, 211; Elfelt v. Steinhart, 11 FED. REP. 896, 899. A decree is ordered for complainants in conformity with this opinion.
SOHALSCHA v. SUTRO and others. (Oirc'Uit Oourt, S. D. New York. February 6, 1884.) LBTTERS PATENT-PERFORATED CIGAR.
Letters patent No. 186,628, for a cigar with a hole In the end, cover only cigars manufactured by the machine described in the specifications. It is no infringement to punch a hole in the cigar with a pencil. .
In Equity. WALLAOE, J. The claim of the patent to Schalscha (No. 186,628, granted January 3,1877) "a cigar constructed as described, with a longitudinal opening, H, in its drawing end, and the end of the wrapper, A, secured permanently within the aperture, as and for the purEdmonds £f Jerome, for complainant. Hamilton Cole, for defendants.
320
FEDERAL REPORTER.
pose set forth." Read with the description, however, the claim must be limited to one for the cigar when made by the machine described in detail by the patentee as employed by him for the purpose, or a substantially similar machine. No mode of making such a cigar is disclosed in the specification except by means of the machine described.. The machine is described with particularity, and the mode of operating it; and among the advantages enumerated as the result of the invention are those which could only result from the employment of the particular machine. There is no evidence that the defendants' cigars were made by a machine; on the contrary, the proof is that the hole in the tip was punched by a pencil. The bill is dismissed.
MUNSON
and another York.
t7. HALL.
(C'Wcuit Oourt,
s. D. New
February 6, 1884.)
PATENTS-IMPROVED PAPER Box.
The distinctive characteristic of letters patent No. 124,319, for an Improved paper box, consists in the closed corners; and a box of which the end can be turned down is not an infringement.
In Equity. Munson et Philipp, for complainants. James A. Hudson and Frederic H. Betts, for defendant. WALLACE, J. The complainants letters patent (No. 124,319, granted to Beecher and Swift, assignors, March 5, 1872) describe an improved paper box of the class which are provided with tubular sliding covers, and commonly used for containing matches, etc. The box is made from a blank sheet of paper cut and creased so as to form a bottom, two side flaps, two end flaps provided with projecting end pieces, and two corner pieces which may be used or discarded at pleasure. The side flaps are turned up to form the sides, and the end flaps are turned up to form the ends, after which the corner pieces are folded around the side flaps, and the projecting end pieces are turned down into the top of the box. The specification states that "after thus folding the several parts together they are united by pasting the overlapping corner pieces to the side flaps, the whole forming a strong and durable box." The inventors point out two objections to the boxes previously in use, and which are obviated by their improvement. One of these is insufficient strength and rigidity owing to the absence of the corner pieces. The other is the liability of the contents to escape if one end of the box should accidentally project slightly from the tubular cover. 'l'hele are two claims: (1) The combination with a paper box