ceeding. In Wells, Fargo & Co. v. Oregon Railway & Navigation Co. (C. C.) 19 Fed. 20, the court ordered a reference to a master to ascertain what loss, expense, or injury the plaintiff had sustained by reason of the misconduct of the defendant, "with a view of enabling the court to impose by way of punishment a corresponding penalty on the defendant for the benefit of the plaintiff." In Indianapolis Water Co. v. American Straw Board Co. (C. C.) 75 Fed. 972, the court ordered the fine to be paid to the clerk for the use of the complainant, and fixed the amount at $250, "as a moderate allowance for solicitor's fees," together with taxable costs.

It will thus be seen that the practice has not been uniform, and that in some of the adjudged cases the award, like that in the present case, was for a round sum, not based upon any proved items of loss or expense, but apparently intended to cover probable loss and expenses. It is obvious that a fine exceeding the indemnity to which the complainant is entitled is purely punitive, and, notwithstanding the foregoing precedents to the contrary, we think that when it is imposed by way of indemnity to the aggrieved party it should not exceed his actual loss incurred by the violation of the injunction, including the expenses of the proceedings necessitated in presenting the offense for the judgment of the court. We are also of the opinion that when the fine is not limited to the taxable costs it should not exceed in amount the loss and expenses established by the evidence before the court. Unless it is based upon evidence showing the amount of the loss and expenses, the amount must necessarily be arrived at by conjecture, and in this sense it would be merely an arbitrary decision. Another reason why it should be based upon evidence is that otherwise the question of its reasonableness cannot be re-examined upon an appeal from a final decree in the cause, and the appellate court would have to treat the fine as a purely arbitrary one, or deny to the appellant his right of review.

The orders under review did not proceed upon any estimate of the actual loss or expenses which the complainant had incurred made from the evidence before the court, and for this reason we think they were erroneous. It may be that the sum directed to be paid to the complainant in the first proceeding was not excessive in amount, but whether it was or was not, and how much of it was intended to cover the expenses of the proceeding, and how much the loss directly suffered by the violation of the injunction, can only be conjectured. The amount directed to be paid to the complainant in the second proceeding is so large that it is difficult to believe that it was not excessive. It follows that, although so much of the orders as directs the payment of half of the fine to the clerk for the use of the United States should be affirmed, that part which directs the payment of half to the complainant should be reversed, with instructions to the court below to take evidence and order payment to the complainant of such sum only as may be found to be a sufficient indemnity.

The orders are accordingly affirmed in part and reversed in part, with instructions to the Circuit Court to proceed conformably to this opinion.

CLEVELAND PNEUMATIC TOOL CO. et al. v. CHICAGO PNEUMATIC TOOL CO.

(Circuit Court of Appeals, Third Circuit. March 6, 1905.)

No. 36.

PATENTS-INFRINGEMENT-PNEUMATIC TOOL.

The Boyer patent, No. 537,629, for a pneumatic tool, as construed and limited by prior adjudication, held not infringed.

Appeal from the Circuit Court of the United States for the Western District of Pennsylvania.

Hector T. Fenton and E. Hayward Fairbanks, for appellants.
John R. Bennett, for appellee.

Before ACHESON, DALLAS, and GRAY, Circuit Judge.

DALLAS, Circuit Judge. The specification by which it is averred that "the Circuit Court erred, for want of jurisdiction, in making the order appealed from," is not sustained; but while it is proper, and perhaps requisite, that this should be stated, it is not necessary to enlarge upon the question of jurisdiction, for we are of opinion that, upon the merits, the preliminary injunction which was granted by the court below should not have been awarded.

This suit was begun by bill of complaint charging the defendants below (appellants here) with infringement of claims 42, 45, 46, 47, and 48 of patent No. 537,629, dated April 16, 1895, issued to Joseph Boyer, for a "pneumatic tool." These claims were before this court in the case of Boyer v. Keller Tool Company, 127 Fed. 130, 62 C. C. A. 244, and the opinion which was then delivered renders any extended discussion of them now unnecessary. Their validity was upheld, but they were, of necessity, very narrowly construed. Among others, a certain British patent was set up as an anticipation, and as to it the court said:

"It is to be noted that the pressure supply in the Low is conducted the same as in the Boyer, through the grasping portion of the handle, and is controlled by a valve so placed as to be opened and shut by the finger of the workman. The only distinction is as to its position, and this is a narrow one. It is not located, in our judgment, in the grasping portion of the handle, as is required by the claims in suit, but beyond it, in a distinct recess or chamber of the tool body, specially fashioned to receive and hold it. This distinction, in our judgment, is sufficiently material to sustain the novelty of the plaintiff's device, and relieve it from the charge of having been anticipated by this reference any more than by any of the others."

We need not reconsider the question of anticipation upon the additional evidence which was introduced in this case. The court below did not refer to it with particularity, but contented itself with saying that no additional facts had been shown to qualify the conclusiveness of our decision in the case of the Keller Company; and the correctness of this statement may be assumed, for our present judgment will be rested wholly upon the ground of noninfringement.

A device which, if existent before the making of a patented invention, would not anticipate it, cannot, if made after the issue of the

patent, be said to infringe it; and we perceive no material difference between the Low tool, which, as we have seen, was found not to be an anticipation, and those of the appellants. The distinction upon which alone the patent was sustained related solely to the position of the valve, which, in the Low, "was not located * * * in the grasping portion of the handle, as required by the claims in suit, but beyond it, in a distinct recess or chamber of the tool body, specially fashioned to receive and hold it"; and this distinction is quite as apparent in the tools of the appellants as in that of Low. Their valve is not, it is true, located at the same point as his, but it is placed, nevertheless, in a chamber specially fashioned in a projection. which, though connected with the grasping portion of the handle, is no more a part of it than is Low's recess portion of the tool body; and the fact that the valve chamber in the one case is at the upper, while in the other it is at the lower, end of the handle, is immaterial. The court below erred, we think, in not giving controlling effect to that portion of the former opinion of this court to which we have especially referred, and for that reason the decree appealed from must be, and it hereby is, reversed.

BRILL et al. v. PECKHAM MFG. CO.

(Circuit Court of Appeals, Second Circuit. January 9, 1905.)

PATENTS-VALIDITY-CAR TRUCKS.

No. 201.

An order granting a preliminary injunction against infringement of the Brill patents, Nos. 627,898 and 627,900, for a car truck, reversed on the authority of a decision of an appellate court adjudging such patents invalid.

Appeal from the Circuit Court of the United States for the Southern District of New York.

For opinion below, see 129 Fed. 139.

Charles H. Duell, for appellant.

Edmund Wetmore and Francis Rawle, for appellees.

Before WALLACE, TOWNSEND, and COXE, Circuit Judges.

PER CURIAM. Upon the authority of North Jersey Street Railway Company v. John A. Brill (decided by the Circuit Court of Appeals for the Third Circuit on January 4, 1905) 134 Fed. 580, the order granting an injunction is reversed, with costs.

MANHATTAN GENERAL CONST. CO. v. HELIOS-UPTON CO.

(Circuit Court, E. D. Pennsylvania. February 6, 1905.)

1. PATENTS-CONSTRUCTION-METHOD PATENT.

A patent for a method of maintaining a constant electric current in an alternating current circuit, in which there are translating devices in series, is not limited by the description therein of an apparatus for practicing such method, which must be taken as merely illustrative.

2. SAME-METHOD OR PROCESS-PATENTS.

To support a process or method patent there must be a tangible product, or a change in character or quality brought about, and not simply a principle or result underlying or involved in certain mechanical or electrical means or steps. Telephone cases, 126 U. S. 1, 8 Sup. Ct. 778, 31 L. Ed. 863, distinguished.

[Ed. Note. For cases in point, see vol. 38, Cent. Dig. Patents, §§ 6, 7.] 8. SAME-METHOD OF REGULATING ELECTRIC Current.

The Baker patent, No. 684,165, for a method of regulating electric cir.cuits, is void, as being merely for an operative theory, and one which, if sustained, would monopolize every means by which such theory may be utilized or applied.

4. SAME-MECHANICAL PATENT ABSTRACTION

Where no concrete conception can be worked out of a claim for a mechanical patent, nothing, indeed, but an ill-defined principle of construction, the only key to which is the abstract result to be attained, it cannot be sustained.

[Ed. Note. For cases in point, see vol. 38, Cent. Dig. Patents, 87, 9.] 5. SAME-SPECIFICATIONS-How FAR RECEIVED TO REMEDY CLAIMS.

A claim for a mechanical or apparatus patent, otherwise invalid as an abstraction, will not be sustained by reference to the specifications, where it not only goes far beyond anything which is there suggested, but fails to refer to that which is admittedly a distinguishing feature of the invention upon which its novelty is made to depend.

6. SAME LIMITATIONS IMPOSED BY SEPARATE SPECIFIC CLAIM.

While an invention is undoubtedly to be regarded as residing in a structure of the same general character as that which is described in the specifications, to which the inventor is to be confined, this does not restrict him to the particular form to which prominence is there given, where it is evident that he had variations of it in mind, and has formulated a claim in broad terms to cover them; the particular form having also been made the subject of a separate claim.

7. SAME-DISCLAIMER AFTER ISSUE-PURPOSE AND EFFECT OF PRIOR ART-AD

MISSION.

The purpose of a disclaimer after issue is to take out of a patent that which has been mistakenly or inadvertently included in it, by which it is made too broad. It must be of some distinctive and separable matters, and may be made use of to avoid the effect of having included more devices than could properly be the subject of one patent, or to remove an ambiguity. Matters so disclaimed cease to be a part of the invention, and the patent is to be construed as though they had never been included in it. They are not, however, to be taken as admitted to have been a part of the prior art.

8. SAME-VALIDITY AND INFRINGEMENT-REGULATOR FOR ABC LIGHT CIR

CUITS.

The Baker patent, No. 684,340, for a regulating device for arc lamp circuits, claim 1, is void as too broad and abstract in its terms. Claim 4 was not anticipated by anything in the prior art, but covers a device of greater simplicity and a greater range of effectiveness than any previously known, and discloses patentable invention. Such claim is not 135 F.-50

confined to the specific device described in the specification, which is illustrative only so far as said claim is concerned, but covers any other device of the same general character, and which comes within the terms of the claim, and operates on the same principle as that shown; nor was it limited by the amendment of the specification made in the Patent Office in relation to the description of such device. As so construed, also held infringed.

9. SAME-CONSTRUCTION OF CLAIMS-AMENDMENT OF SPECIFICATION.

Claims of a patent are to be taken as they read, and are not limited by an amendment of the specification more particularly describing the device shown in the drawings to meet objections of the Patent Office. where the claims themselves are left unchanged.

10. SAME-OTHER CONTEMPORANEOUS PATENTS BY SAME INVENTOR.

An invention covered by a patent is not necessarily to be cut down by the fact that, while the application for it was pending in the Patent Office, other applications were brought forward from time to time by the same inventor, representing different developments of the same idea; all being allowed and issued the same day.

In Equity. Suit for infringement of letters patent No. 684,165 for a method of regulating electric circuits, and No. 684,340 for a regulating device for arc lamp circuits, both granted to Malcolm H. Baker, October 8, 1901. On final hearing.

Thomas B. Kerr and Richard N. Dyer, for complainant.
Joseph C. Fraley, for defendant.

ARCHBALD, District Judge. The difficulty in the use of the alternating current for electric lighting, in a circuit with arc lamps in series, lies in the fact that the potential of the current having necessarily to be kept constant, at the maximum required for the full number of lamps, as these are severally turned off one by one there is an accumulation of pressure, due to the varying decrease of

resistance, which is destructive to the apparatus employed. The means proposed to meet and obviate this in the patents in suit is the insertion in the circuit in series with the lamps of a reactance device, consisting of an induction coil and core, which are drawn together by the varying magnetic pull, as the energy of the current is increased by the cutting out of lamps, this being counterbalanced 1 Specially assigned.