823.·. This,amounts, to, than showing .forth what the wares, are." be an inwlltional settingof,tli'eorators' markctothedefendants'wares to make them pass for the orators' wares. Tlle Foote patent did not expire till lately, since this suit was begun. A part of the Warren Hose Supporter may have been ane,\\" use of'the deyice covered by it. The supporter is not so clearly,outside of it as t6 make the reference to it a fraud. As the case stands, ,and is now the orators seem to be entitled to a decree making the preliminary injunction perooan,ent, and an account of profits. Let a det,heteooporary injqnction permanent,and for an account of beentere4.
to
PIRKL ,0..1
v.
SMITH
et
at CONSTITtTTliiS INrnmGB:MIiiN'l'·
I : :
(Circuit ,Oowrt, E. D. New York.
April Term, 1890.)
1.
a.
. 'Under24 U. at LargE/, 0. 105, whicbgiv6s tbe owner of .a design patent an . .adtion 'for the sale as well' as the manufaoture of gOOds to whiQh the design ahall . " have been applied without bis Ucense, the owner is entitled to recovel', on showing .an sale'of goods'after his patent went into effeot, though they may have lleen manufaotured betoretbat time; and though the manufacturer may have been ,. the existence :of ,tb,epatent. providing that anyone Who violates' any of its proVisions' shalt be liable, to the ownerc>t the patent '\iJ:lthe amount of 1250, "and for the ex,oesS,of ,pl'ofit above tb,atamo1.l1l,t, !lnd tb,at"tp,eful1 amoupt 9f suob liability" may be tecovered by'an action a,t18\\1oron bill to restrain the' infringement,: the owner may recover the t2ilO, though,beshows no mllas,ure of profits due to thed8!llgn . Thtl 'lta,tute' INFRINGIIIMIiiNT. '.' . . '. '
PA!f:Iiil.'Ts.,J\>n
In' E1quity. ' QIl bill for injunction. WiUiam,K. Olcott, for,complainant. Keith, defendants. WH)l:ELtim, ,J.. ,Thlss1.litisbrought design patent ,No. da.ted May 1, to a window-guard. Tile defendants admit t4M wi\l90",v-guarus Q{ this were ordered of them in, March, 1888, spd \ieljyered by the,m ,in July,1888., but deny that they patentl:>efoJ'ethe delive,:y, an4.s11ch knowledge is not sh<.iwn.;; proyid!*! that for,t.lny: person other than the owner of a, patent {oJ,' al1¢.sign , without license,: to aPply the dElS,ign, or any, colorable rimita.tiontb,ereQ.', "f.oI Jl.ny ufacture f-pr the purpose of sale, Qrto: lieU or :expose farllale !lny article of.mallwacture to whioh liuchdesigJ;l;,or shall,; witb,outtile of the owner, have been applied; knocwingthat ,so applied," shall, during tbl:l te.rmof thfl ,patent, be anli: tllat any personvio...illi9ns, ,or either of them, '.'shall beli,a.ple in the aooo11nt iaIJ,dfi-fty, qollars," anq for the of profit above
"" .PJ,RKL·"·. SHITH.
1',1
.
4il
that amount. "the full amount of such liability" to be recovered "by action at law, .Of upon.a bill in equity for an injunction to restrain such infringement." 24 St. 1887, c. 105. Whether the defendants applied the design to the guards before Or ,not till after 1vlay 1, 1888, is not shown; and, as argued in their behalf, theYlllay n9t .have so applied it ,within the term of the ,patent; which began on that day, and cannot ';be he1dliable under this statute for that. But the sale of was· completed when they were delivered, which was in July. 1888, and clearly within the term of the patent. They knew that the design had been S}pplied to the guards which they so sold,' for they applied it; and they knew it was so applied without license, for they had no license, and must have known that. That they did not. know oOhe patent is urged against liability on account of the sale; but the statute does not ,ipclude -knowledge of the patent among the things necessary to create :this liability. It only requires that the design shall have been applied withol;}t license, and a sale, "knowing that it has been so applied." The qefendants, unwittingly perhaps, appear to have brought themselves ,within this branch of the statute. . orator has shown no measure of profits due to the design alone, and asks for no profits beyond the $250 given by the statute. Couosel for the defendants argues that this is a penalty, or forfeiture, which can,not be in this form. That the profits could be recovered in this form, without the statute, is not qUElStioned. The statute seems to ,give this as a measure of profits in cases where a less amount · only can be proved, and not as a penalty above the actual profits. The profits as such, whether fixed in amount by statute or by fin4ing, would berecoverable in the same manner in either case. Newrnn.n v. Waite, 43 Vt.587; Waite v. Dowley, 94 U. S. 527. 'l'he statute itself removes all douQt about this by expres!!ly providiIlK for the recovery of the full amount of the liability upon a bill in equity for an injunction to re8train the infringement. This is such a bill. The statute seems to be intended to carry out the idea that the amount of the liability is merely a fixed<measure of profits which may be decreed in equity as an incident to tl)Et jurisdictiqn for relief by injunction in thp. same behalf. Root v. Railway Co., 105 U. S. 189. As the orator claims no profits beyond the $250 given by the law, there is no question about the amount, and no occasion to send the case to a master. A decree for the orator for that amount of profits as an incident toa decree for an injunction appears to be required by that statute, as the case stands. Counsel for the defendants further insists that the cross-examination of the orator shows an abandonment of the substantial part of this design to the public; and he asks leave to amend the answer, and make this defense, if that evidence will bear it out. But this testimony shows rather a preference of one style of guards of this design to another than any purpose to abandon the design itself. It would fall far short of making out thia set up. Let a decree be entered for an injunction, and $2p() profits, with 9Osts.
FEDER,U, :REPORTER,vol.
42.
ROOT
v. Stoux CITy
CABLE
Ry. Co. et ale
(Oircuit Court, N. D. Iowa. June 2, 1890.) PATENTS POR INVENTIONS-COMBINATION-FORMER. PATENT.
In.Equity. Bill to restrain infringement of letters patent. (hbu?m« Thacher, for complainant. .a. L. Wright and Offield &; Towle, for defendants.
J. On the :lOth of February, 1880, there were issued to William Eppelsheimer.letters patent No. 224,284, for "certain new and usefl;ll improvements in. the construction of wire cable railroads. " By .assignment" the, present oomplainant is now the owner of this patent, and brings the present bill against the defendant company on the ground that it is infringing the second claim of the patent, which is as follows: "The 'comoi"'l:tion of the standards, A, with the bars, E,E, of the form llerei)1shown, and:knee-braces, F, F,as a means of supporting and connecting the rail stringers, H, H." ,The defenses relied on are fourfold: That the second 'claim ofthe patent is void, in view of the condition of the art; that His void for want of inventive novelty; that the ,patentee dedicated and abandoned the invention to the public by exhibiting not claiming it, in certain English patents procured pY,him of the American patent; thatthe defendant does notiniringe. .An examination of the various patents .antedating that sued,'9nshows that at the date of itA issl,lance many devices were in use hadbeeu descriLedfor the accomplishment of the object sought in the ,combination described in the second claim of patent No. 224,284. In a patent issued to the same patentees under date of Jlily 31, 1877, and numbered 198·,757, is found, it seems to me, every clerilent present in the. combination described in claim 2 of the patent sued on in the pi'esent-,-case, unless ,it may, be the knee-braces. F, F. It is entirely clear that the in No. 193,757 are intended to serve the same aG theeombination found in the patent sued on, and the changes ill, theshape are only such as would naturally be expected to be developed from the use thereofjn practice. If patent No. 193,757 had been issued to a>persOIl other than Eppelsheimer, I do 'not see any escape from the conclusiou that claim 2 of the patent sued on would have to be held an ,infriI:lgementof the prior patent, and therefore void. With slight modifications· and changes, ;not involving any inventive skill, it thl;) same devices shown in the patent No. 193,757 ,and for the sa,me, purposes. It cannot be" permitted to an inventor to secure a secpng,llnq1ater paJentupona formerinvention by making such improve:ments thereon as the use of the original form would suggest to imyskilled mechanic, and which did not require the exercise of invention. Such
THE JOHN G.STEVENS.
413
second must, l.mder such circumstances, be held void, or otherwise a pl!!t!l*ee .conld J>I'olong his monopoly indefinitely, and it is not neces!!8;1'yto cite authorities in support of this proposition. The patent sued on being void for the reason stated, the bill of complainant based ' , thereon is dismissed, at his costs.
THE, JOHN THE LoUD
G.
STEVENS.
R. S.
CARTER.
et· 01.17.
THEJ.
STEVENS
and
THE
R.
S. CARTER.
(Circuit ,OOOTt, E. D. New York. November 29,1889.) MARITIME LIENS-DAMAGBSBY COLLISION-PRIORITY.
On intervention by material-men in libel against vessels for damages from coms, iOD, the objection, that the preference given maritime 'liens created by collision over . prior liens for repairs and supplies ought not to apply, because the collision was causedpar,tly by the fault of the vessel injured, and that such vessel should not be allowed to profit by its wrong to the detriment of innoccent material-men, cannot be considered, where the only evidence that the injured vessel was at .fault is the record ,ocf, a judgment in another suit declaring her at fault, which is set up in an intervenors, motion to 1ile which has been denied.
In Admiralty. For former report, see 38 Fed. Rep. 515, 40 Fed. Rep.33L ' Ge01'ge A. Black, for libelants. Mark Ash, for intervenors. , :';, i
The opinion delivered byrne in this ,case on tht:'?l'snWOctober, 1889, (40Fed. Rep. 331,) did not allude to one question it, although the point was not overlooked. It has now been presented again by briefs on both sides. It is insisted on behalf of the material-men that the rule that liens for damages are superiorto liens for repairs and supplies should be modified in this particular case, on the ground that the collision for which the libelants are seeking damages was caused partly by the fault of the 'schooner Flirtt; owned by the libelants; that a wrong-doer suffering damage by a collision stands in a different position from an innocent party whoSllffers8uchdamage; that the fault ofthe wrong-doer destroyed the security which the material-men had; and that the wrongdoer ought'not to profit by his own wrong, to the detriment of the innocent tnaterial-men,who were not in pari delicto with him. !tis further urged that, ,if the material-men took the risk of the negligence Of the owners' of the tug, the owners of the Flint also took the risk of the hegligenceof those'who were in charge of her; .that, in that aspect, · 'f