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It will be observed that the particular design thus shown and described is a combination of a central panel-such as is shown in Fig. 3 of the English patent-with a triple border, or, rather, a double border, for the two inner borders may be considered together as forming a single one of the well-known "herringbone" pattern. The record does not disclose any such combination in the prior art. The design thus shown as a whole is, so far as appears, new, producing a new effect.

The learned judge who decided the case at final hearing tersely expressed the rule by which the novelty of a design is to be tested:

"The question is not whether the prior art shows anything which looks like sections of the design, but whether it shows the design as a whole." 48 Fed. Rep. 558.

For "the specific design exhibited in [the] patent and shown in the drawing" the patent is therefore sustained. The design of defendant's mat is shown below:

[graphic]

The true test of infringement of a design patent is laid down by the supreme court in Gorham Co. v. White, 14 Wall. 528, as follows: "If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other."

The differences in the borders of the two mats (the corrugations of one being arranged in four sections; of the other in two) are not substantial; but it hardly needs testimony to show (though evidence to that effect was given) that an ordinary observer, giving such attention as a purchaser usually gives, would not be likely to mistake the oblong mat with its double swallow-tailed center for the square mat with its center of four equal triangles, presenting the effect of a Maltese cross. The defendant's mat, therefore, is not an infringement of the "specific design exhibited in the patent and shown in the drawing." Complainant, however, contends that his patent cov ers not only the square mat shown in the drawing, but also an oblong mat such as the defendant's. The patent in referring to the drawing states that it "represents a mat embodying the design. A is the mat, which is, as represented, square, although it might be oblong or other desired shape." And it is insisted that the complainant should not be limited to a square mat just because he did not, by a drawing, illustrate the mat in its oblong as well as in its square

form. If the change of shape involved no change of design-if it were accomplished merely by a general enlargement or by a duplication of the details of the square mat, as it would be, for example, if the central portion of the patent were a checker-board device or a fragment of Greek border-this contention would be sound, because whoever was shown the square mat, and told to make it oblong, with the same design, would inevitably produce an oblong mat of a single specific pattern. But that is not this case Manifestly, in changing from the square to the oblong there must be a change of pattern in the central panel, a change which is not a mere duplication of the details of the original,-such, for instance, as would suffice to lengtuen the border, but a rearrangement of the principal lines of the figure, and such rearrangement is not necessarily confined to a single pattern. One way of rearranging the central panel is shown in defendant's mat. Other ways are indicated below:

When placed side by side, these three central panels (viz. the two last above shown and that of defendant's mat) present different designs, and we do not find in the evidence sufficient to warrant the finding that either of them is the one which would inevitably result from an effort to reproduce the square mat of the patent in an oblong shape. It seems impossible to determine from the directions of the patent what is the particular design which the patentee produced for an oblong mat. He has failed to give the description of his oblong mat in such "full, clear, concise, and exact terms as to enable any person skilled in the art to make the same." Such person would be as likely from the description in the patent to make the one variety of central panel as the other. The necessity of a clear and exact description of his oblong design was not apparent to the patentee, because he intended to claim any and every possible variety of design which, by means of parallel corrugations arranged in sections, produced kaleidoscopic and similar effects on the surface of rubber.

Such exact description was, however, essential to the validity of his patent, in view of the narrow field of invention which was really open to him, for the production of shifting light and shadows by means of corrugations on the surface of many different substances was old, and had in the prior art been applied to rubber. The patent contains no separate claim for the border, as in Dobson v. Carpet Co., 114 U. S. 439, 5 Sup. Ct. Rep. 945, and the defendant's combination of his central panel with the complainant's border cannot be held to be an infringement unless complainant first produced such combination, and exhibited it in his patent so clearly and fully that one skilled in the art would understand that it was that specific combination which the patentee claimed. As none of the defendant's mats infringe the only specific design exhibited in the patent and shown in the drawing, the decree of the circuit court should be reversed, with costs.

HOKE ENGRAVING PLATE CO. v. SCHRAUBSTADTER.

(Circuit Court, E. D. Missouri, E. D. November 2, 1892.)

PATENTS FOR INVENTIONS-INFRINGEMENT DAMAGES-PROFITS.

The entire profits derived by an infringer from the manufacture and sale of an article which owes its entire commercial value to the patented invention are recoverable in a suit for infringement.

In Equity. Bill by the Hoke Engraving Plate Company against Carl Schraubstadter, Jr., for the infringement of letters patent of the United States, No. 388,361, granted to said company for an improvement in relief type production. On exceptions to master's report. Overruled.

For a report of the opinion delivered at the time the interlocutory decree for the complainant was entered, see 47 Fed. Rep. 506.

Benjamin F. Rex, for complainant.

George H. Knight and H. G. Ellis, for defendant.

THAYER, District Judge, (orally.) In this case the master finds, as a matter of fact, that the infringing engraving plates manufactured and sold by the defendant during the period of the infringement derive their entire commercial value from the invention covered by complainant's patent. If this is the fact, then it follows that the complainant is entitled to recover the manufacturer's profits. The defendant's attorneys do not dispute this proposition. real question that arises under the exceptions is whether the master is right in his finding of fact, that defendant's engraving plates derived their entire commercial value from the infringement of complainant's patent. I have considered the testimony on this point carefully, and I am unable to say that the master's finding is errone

ous.

The

The result is that the exceptions to the master's report must be overruled; but, as the complainant's solicitor professes a willingness that the defendant should be made some allowance for the use of his plant, I have concluded to allow him on that account the sum of $270, which is the largest amount claimed. Deducting that sum v.53F.no.8-52

from the amount of profits as ascertained by the master, a decree will be entered for the complainant for the sum of $17,842.37, with interest from this date.

UNITED STATES CREDIT SYSTEM CO. v. AMERICAN CREDIT INDEMNITY CO.

(Circuit Court, S. D. New York. January 6, 1893.)

1. PATENTS FOR INVENTIONS-PLEADING-DEMURRER FOR WANT OF INVENTION. In a suit for infringement of a patent, the bill may be met by a demurrer, when it makes profert of the patent, and the same appears on its face to be invalid for want of patentable invention. Post v. Hardware Co., 26 Fed. Rep. 618, followed.

2. SAME-INVENTION-CREDIT INSURANCE SYSTEM.

Letters patent No. 465,485, issued December 22, 1891, to Levy Maybaum, for "means for securing against excessive losses for bad debts," being a plan of insurance agains losses from bad debts in excess of the usual percentage of such losses in a given line of business, the patent providing forms for ruling paper with spaces for entering various details of the insurance transaction, are void for want of invention. Munson v. Mayor, etc., 3 Fed. Rep. 338; Id., 8 Sup. Ct. Rep. 622, 124 U. S. 601, distinguished. In Equity. Bill by the United States Credit System Company against the American Credit Indemnity Company for the infringement of letters patent No. 465,485, dated December 22, 1891, and granted to Levy Maybaum for means for securing against excessive losses for bad debts. Heard on demurrer to the bill. Demurrer sustained.

In a prior suit between the same parties upon this patent, the circuit court for the northern district of Illinois also sustained a demurrer to the bill for want of patentable invention. See 51 Fed. Rep. 751, where a full description of the alleged invention, accompanied by cuts showing the ruled forms of the patent, may be found.

Rowland Cox, for plaintiff.

Edgar M. Johnson, for defendant.

WHEELER, District Judge. This bill is brought upon letters patent No. 465,485, dated December 22, 1891, and granted to Levy Maybaum, assignor to the plaintiff, for "means for securing against excessive losses for bad debts," makes profert of them, and is demurred to. As the patent contains a grant under the constitution and laws of the United States "to the patentee, his heirs or assigns, for the term of seventeen years, of the exclusive right to make, use, and vend the invention or discovery throughout the United States and the territories thereof," and the bill alleges infringement, the defendant must be put to the statutory defenses, unless what the patent covers is so far from any patentable invention or discovery as to be void, and require no defense whatever. Rev. St. U. S. §§ 4884, 4920. A bill upon such a void patent would seem to require no answer, (Hill v. Wooster, 132 U. S. 693, 10 Sup. Ct. Rep. 228;) therefore it may be met by demurrer, (Post v. Hardware Co., 26 Fed. Rep. 618.) The invention sought to be covered by this process is of a method

of insuring against loss by bad debts in different kinds of business above the average ascertained loss in such business by a form of guaranty entered into on ruled pages of books, with headings and margins to columns and lines, showing in spaces the names of the insurer and insured, and the terms and conditions of the guaranty. The claims are for the means of securing merchants and others from excessive losses by bad debts, consisting of these sheets having suitable spaces for, and headings and margins showing, the particulars of such contracts. The ruling of sheets and pages of books into columns and spaces, and placing headings and margins to show terms and particulars of business arrangements and transactions, were old and well known within the usual and customary art of persons skilled in stationery before the time of this alleged invention. The arrangement of such spaces, headings, and margins to show the parties to, and terms and details of, any particular contract, would not be new to persons skilled in that art, and could not amount to any patentable invention or discovery. Baker v. Selden, 101 U. S. 99. The novelty, if any, must consist in the terms of the contract of indemnity arising out of the plan of insuring only against excess above the average of losses from bad debts in similar lines of business, and in the embodiment of these terms upon the sheets or pages.

But plans of indemnity against losses or parts of losses from casualty or misfortune by contracts of insurance or indemnity in various forms were in common use before, and not, in any sense, novel. Besides this, the terms of contracts rest in the agreements of those making them, and coming to such agreements is not a new art. The practice of the plan, as set forth in the specifications of the patent, seems to have been intended for insurers or guarantors, and the utility of it to consist in the proposal of such terms as would be desirable to those wanting indemnity; but the art of making proposals for contracts would not be any more patentable than that of making the contracts themselves. This patent is different in this respect from that in Munson v. Mayor, etc., 18 Blatchf. 237, 3 Fed. Rep. 338; Id., 124 U. S. 601, 8 Sup. Ct. Rep. 622. That was for a contrivance to preserve paid coupons and bonds, and might be patentable as a machine or manufacture; this is for a method of transacting common business, which does not seem to be patentable as an art These views correspond with those of Blodgett, J., with reference to this same patent in a suit between these parties, as reported in 51 Fed. Rep. 751; but, as those views are said to have been published by some mistake, the subject has been examined here, instead of merely following that case, as would otherwise be usual. Demurrer sustained.

J. L. MOTT IRON WORKS v. STANDARD MANUF'G CO.

(Circuit Court of Appeals, Third Circuit. January 27, 1893.)

1. PATENTS FOR INVENTIONS-COMBINATION-PRIOR ART.

Where a patent has been obtained for a combination after the patentee has availed himself of all the knowledge derivable from a series of existing devices of a similar character, the claims must be restricted to the precise form and arrangement of parts described in the specifications.

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