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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.


(Circuit Court, E. D. Missouri, E. D. November 2, 1892.) PATENTS FOR INVENTION8–INFRINGEMENT-DAMAGES-PROFITS.

The entire profits derived by an infringer from the manufacture and sale of an article which owes its entire com inercial value to the patented invention are recoverable in a suit for infringement. In Equity. Bill by the Hoke Engraving Plate Company againg's 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 infringe ment 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. The 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 erroneous. The result is that the exceptions to the master's report must be overruled; but, as the complainant's solicitor professes a willing. Dess 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–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.




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 "ineans 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 infringe ment 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 demur. rer 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. SS 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.


(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.

Such a patent is an entirety, and all the parts of the combination must be

used, in order to constitute an infringement. 2. SAME-LIMITATION OF CLAIM-REJECTION AND AMENDMENT.

Where the claims of an application for a patent are rejected, and thereupon the patentee amends the same by inserting limitations and restrictions, the patent granted thereunder must receive a strict and narrow construction. 51 Fed. Rep. 81, affirmed. Sargent v. Safe & Lock Co., 5 Sup. Ct. Rep. 1021, 114 U. S. 63, and Roemer v. Peddie, 10 Sup. Ct. Rep. 98,

132 U. S. 313, followed. 3. SAME-PRIOR ART-BATH OVERFLOWS.

Letters patent No. 170,709, issued December 7, 1875, 'to William S. Carr, for an improvement in waste valves and overflows for baths and basins, claim: "The tube, a, provided with the collar, i, and lock nut, l, for clamping the slab, m, in combination with the tubular stem, f, of the valve, e, passing through the lock nut. 1, and means for sustaining the tube, f, when elevated, substantially as set forth.” Held, that in view of the prior state of the art, as showa especially by the patent of July 21, 1874, to J. T. Foley, and also of the fact that the above claim was filed as an amendment after the rejection of the original claims, the patent must be lin.ited to the specific mechanism described, and is not infringed by a device wbich omits some of the elements of the patent without supplying

their places with equivalents. 51 Fed. Rep. 81, affirmed. 4. SAME-COMBINATION-UNPATENTABLE AGGREGATION.

Claim 2 of letters patent No. 353,147, issued February 22, 1887, to John Demarest, for an improvement in waste valves and overflows for baths and basins, is for a mere aggregation of parts, without co-operatin; action, and not for a patentable combination.

51 Fed. Rep. 81, affirmed.

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

In Equity. Suit by the J. L. Mott Iron Works against the Standard Manufacturing Company for infringement of patents. In the circuit court an opinion was rendered upon a motion to compel the filing of depositions. See 48 Fed. Rep. 345. A hearing having been subsequently had upon the merits, the bill was dismissed. 51 Fed. Rep. 81. Complainant appeals. Affirmed.

Francis Forbes, (William Bakewell, on the brief,) for appellant.

Thomas A. Connolly and Joseph B. Connolly, (A. A. Connolly, on the brief, for appellee.

Before DALLAS, Circuit Judge, and BUTLER and WALES, District Judges.

WALES, District Judge. This is an appeal from a decree of the circuit court of the United States for the western district of Pennsylvania, dismissing a bill for infringement of letters patent No. 170,709, granted to William S. Carr December 7, 1875, entitled "Improvement in Waste Valves and Overflows for Baths and Basins," and also of letters patent No. 358,147, granted to John Demarest February 22, 1887, entitled “Waste Pipe and Valve for Basins." Each one of these patents was for a combination of parts, and not for a primary invention. The first claim of the Carr patent and the second claim of the Demarest patent were alleged to have been infringed. The material portions of the specification in the Carr patent are these:

"Overflows for baths and basins have been made of a vertical pipe passing through the wood work or slab, and connected at its bottom end with the sewer pipe, and with a branch to the bath or basin, and at the intersection is a seat for a valve at the lower end of an overflow pipe within the said vertical pipe. In this character of overflow the cap for the vertical pipe has been connected to the slab by bolts, and the rod that is used to lift the overflow pipe and valve has passed through this cap. My invention is made for dispensing entirely with the cap, and allowing the upper end of the vertical tube to be filled by a tube that is lifted with the overflow pipe, and which is capable of being withdrawn whenever it is necessary to take out the valve tor cleaning."

Referring to the accompanying drawings, the prior state of the art is described as follows:

"The vertical pipe, a, of the overflow, is connected near the bottom by a pipe, b, to the bottom of the bath or basin, and by a pipe, c, to the sewer or escape pipe. The valve seat, d, is below the inlet pipe, b; and when the valve, e, is upon its seat, water can accumulate in the basin or bath until it flows over the edge, 2, of the hollow stem of said valve, e; but when the valye is raised from its seat the contents of such bath or basin will flow off by the pipe, c. The parts thus far described have been known in use here tofore."

Then follows this description of the patented invention: “My improvement relates to a flange, i, applied around the upper end of the cylinder, a, and a lock nut, 1, at the upper end thereof, whereby the table or slab, m, is clamped between such lock nut and the flange, 1.

The tubular stem, f, of the valve, e, is continued through the lock nut, and of a size to fit the interior thereof loosely; and in this enlarged portion, n, of such stem, there is an L-shaped slot, as seen in Fig. 2, so that a screw or pin, 0, passing through the lock nut, may enter this slot, in order that the valve may be held up, after it has been raised, by partially turning the tubular stem, for the pin to enter the horizontal portion of that slot.

I do not claim an overflow tube, valve, and tubular stem, nor the device shown in the patent of J. T. Foley, July 21, 1874. I claim as my invention, (1) the tube, a, provided with the collar, i, and lock nut, 1, for clamping the slab, m, in combination with the tubular stem, f, of the valve, e, passing through the lock nut, 1, and means for sustaining the tube, f, when clevated, substantially as set forth."

Carr's application, as originally filed, contained three claims, the first two of which read as follows:

"(1) The lock nut, l, and collar, 1, in combination with the tube, a, pipes, b and c, and removable tubular stem, f, and valve, e, substantially as set forth. (2) The tubular stem, n, passing through the lock nut, l, and provided with means for sustaining said stem when elevated in combination with the valve, e, stem, f, and table, a, substantially as set forth."

These claims were rejected by the patent office November 12, 1875, on the patent of J. T. Foley, July 21, 1874, and because the lock nut, I, and collar, i, have no combination with the other elements of the invention, and, furthermore, that this element of fastening is common. Thereupon Carr amended and limited his claims by with. drawing those first filed, and substituting the first claim that is now found in his patent; and, having adopted this course, the claim in dispute must receive a strict and' narrow construction. This prin. ciple is well stated in Roemer v. Peddie, 132 U. S. 313, 10 Sup. Ct. Rep. 98, and in Sargent v. Safe & Lock Co., 114 U. S. 63, 5 Sup. Ct. Rep. 1021. In the former case the court said:

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