fringement both before and subsequent to the extension; but the rule is otherwise where the original patent is surrendered, as the effect of the surrender is to extinguish the patent, and hence it can no more be the foundation for the creation of a right thau can a legislative act, which has been repealed without any saving clause of pending actions. Consequently the infringement of the reissned patent becomes a new cause of action, for which, in the absence of any agreement, or implied acquiescence of the respondent, no remedy can be had, except by the commencement of a new suit."

In that case a supplemental bill setting up a reissued patent had been filed, and. though this was improper under the quotations thus made, the Supreme Court did not reverse for this irregularity. It was held that the irregularity had been waived, which may be done, as stated in the concluding clause of the last quotation. Mr. Justice Clifford set forth this waiver in these words: "Instances, however, may be found where, in such a case, the complainant sought his remedy in a supplemental bill, no objection having been made by the respondent; and such examples induce the court to disregard the irregularity in this case, inasmuch as neither the respondent nor the court below appear to have regarded it as a matter of any importance. Instead of that, the complainant was permitted to file his supplemental bill charging infringement as in case of an extended patent, and the respondent, making no objection to the regularity of the bill, refiled the plea which he had filed to the original bill of complaint, accompanied with a general denial of every material allegation contained in the supplemental bill, as subsequently amended by leave of the court. Subsequently the proofs exhibited were taken, and, the parties having been heard, the court entered the aforesaid decree, deciding the whole case, as more fully set forth on the record. None of the proofs were taken before the reissued patent was granted, nor until after the supplemental pleadings were completed."

In view of the fact that the question had been waived in this case, it may be claimed that what is said as to the impropriety of a supplemental bill in such a case was a mere obiter dictum, and probably rightly so; but in the case of Fry v. Quinlan, Fed. Cas. No. 5,140, the question was directly involved, and it was held that a supplemental bill cannot be filed in such a case if seasonable objection is made thereto. That case was decided after, but in the same year that the case of Reedy v. Scott was decided; but no reference was made in the opinion therein to that case. In that case the original bill was filed under a patent that was afterwards surrendered upon a reissue. The complainant thereupon applied for leave to file a supplemental bill founded upon the reissued patent, and asked for an injunction. The motions were denied. The decision was rested on the authority of Moffit v. Garr, supra. Judge Johnson said: "It is true that the point decided in that case was that the surrender barred an action at law for a previous infringement; but the ground upon which the decision is put is equally applicable to a suit in equity." He then pointed out that it was contrary to the function of a supplemental bill for it to be filed in such a case. He said: "It is not, in general, the function of a supplemental bill to restore or renew a cause of action which has ceased to exist. Such a bill, on the contrary, rests on the equity of the original bill, and seeks to apply it under altered circumstances, but in the enforcement of the same right." As to the proper procedure to be had be said: "In order to avail himself of any rights he may have upon the facts stated in the supplemental bill, the complainant must proceed by original bill founded on the reissued patent, as was done in Orr v. Badger, Fed. Cas. No. 10,587."

In support of the application for leave to file the supplemental bill, the following authorities are relied on, to wit: Littlefield v. Perry, 21 Wall. 205, 22 L. Ed. 577; Reay v. Raynor (C. C.) 19 Fed. 308; Same v. Berlin & Jones Envelepe Co. (C. C.) 30 Fed. 448; Woodworth v. Stone, Fed. Cas. No. 18.021; Dental Vulcanite Co. v. Wetherbee, Fed. Cas. No. 3,810; Tremolo Patent, 23 Wall. 518, 23 L. Ed. 97.

In the case of Littlefield v. Perry it does not appear, save inferentially, that there was a supplemental bill; and, if there was one, no objection to its being filed was made, and any objection that could have been made thereto was waived. In one of the quotations made from the opinion of Mr. Justice Clifford in Reedy v. Scott, supra, he says that: "Instances can be found

where, in such a case, the complainant sought his remedy in a supplemental bill, no objection having been made by the respondent, and such examples induce the court to disregard the irregularity in this case." Possibly the case of Littlefield v. Perry is one of the instances or examples which the learned justice had in mind. It is not exactly clear what patents were the subject of recovery in Littlefield v. Perry; but certainly it was not held therein that a recovery could be had on a surrendered patent after the surrender, or that the reissued patent could be set up by supplemental bill, if seasonable objection is made thereto. There is nothing in the case that squints at either position, and, if there were, it could not prevail over the abundant authority otherwise. The case of Reay v. Raynor was not a case like the one we have in hand. It was not a suit on an original patent whilst in force, but which was subsequently and pending the suit surrendered. The original patent had been surrendered and the reissue granted long before the suit was brought. The suit was brought on the original patent, when it should have been brought on the reissue. By an amended bill the suit was changed from the one to the other. It was held that this could be done. Whether rightfully so or not, it is not necessary to determine herein. We have no such case here. What is involved here is a supplemental bill, and not an amended bill.

The cases of Woodworth v. Stone and Dental Vulcanite Company v. Wetherbee should be considered together, as they arose in the same district, that of Massachusetts. In each case suit was brought on the original patent before its surrender, and thereafter upon its surrender a supplemental bill was filed setting up the reissue. In neither case was any objection made to the practice pursued, to wit, of setting up the reissue by a supplemental bill. That seems to have been the recognized practice in that district at the time these cases were decided. Possibly these are two more of the instances or examples to which Mr. Justice Clifford referred in his opinion in Reedy v. Scott. The latter case, no doubt, was one of them, as he rendered the decision therein. Concerning that case Judge Johnson had this to say in the close of Fry v. Quinlan, supra: "The case only shows that in the district of Massachusetts it is in fact the usual practice to file a supplemental bill upon a reissued patent before surrender. It does not appear how or upon what view of the right of the parties that practice was established. The statute only declares that the reissued patent with the corrected specification shall have the same effect and operation in law on the trial of all actions for causes thereafter arising as if the same had been originally filed in such corrected form. Rev. St. § 4916 (U. S. Comp. St. 1901, p. 3393). But this declaration gives no countenance to the idea that the reissued patent can be availed of to sustain and render effectual a suit the basis of which is taken away by the act of the party in surrendering his patent."

In the Tremolo Case the reissue involved was granted before the suit, and in the suit both parties treated it as if it was a suit thereon. The respondent was held to this action on his part, and not allowed to claim that the reissue was not sued on.

There is, then, nothing in any of these decisions controverting Reedy v. Scott and Fry v. Quinlan, and the principles on which they are based. The order of submission is set aside, as such seems to be the desire of both parties. The motion for leave to file a supplemental bill must be overruled.

As to the motion to be permitted to file a new bill and for an order that the testimony taken herein may be used in the new suit thus instituted, there is to be said: The complainants had a right to bring a new suit without leave of court; and it is not proper to make an order in this suit as to what shall be done in the new suit. Such an order can only be made in that suit. Of course, testimony taken herein relevant in the new suit can be used therein; but that is not a matter to be determined herein.

Then, as to the defendant's motion to dismiss the bill at complainants' cost, both parties appear before me, stating that the original patent has been surrendered and reissue granted pending the litigation, and seek action of the court on the basis of that fact. One seeks to have the bill dismissed. The other seeks alternative relief heretofore stated. In view of this, I think I am justified in accepting such to be the fact, and act accordingly, without any new pleadings. Both parties are agreed that the case should not and cannot pro

gress as it is.

be dismissed.

This being the case, this cause has come to an end, and should
An order will be entered dismissing the bill; each party pay-

ing its own costs. I think this is equitable.

I have not considered the question as to the validity of the reissue, and the effect of the surrender and reissue on intervening rights, which have been discussed by counsel, as they are not involved herein.

The motion to file supplemental answer is overruled.

WESTMORELAND SPECIALTY CO. et al. v. HOGAN.

(Circuit Court of Appeals, Third Circuit. February 15, 1909.)

No. 47.

1. PATENTS (§ 16*)-VALIDITY-UNRECOGNIZED BENEFITS OF INVENTION. The mere failure of a patentee to realize all the benefits and possibilities of his invention does not render his patent invalid, the benefits which test, time, and use develop being what really determine merit. [Ed. Note. For other cases, see Patents, Dec. Dig. § 16.*]

2. PATENTS (§ 328*)—INVENTION-DREDGE.

The Hogan patent No. 752,903, for a dredge for salt and pepper, having a celluloid cap, which has the advantage over metal caps that it will not oxidize and of being flexible so as to make a better joint, and the greater advantage that it insulates the salt and prevents it from caking, was not anticipated, and discloses invention. Also, held infringed. [Ed. Note. For other cases, see Patents, Dec. Dig. § 328.*]

3. PATENTS (§ 286*)-SUIT FOR INFRINGEMENT TITLE OF COMPLAINANT. A transfer of a patent by the patentee held merely by way of pledge, and not to disable him to maintain a suit for infringement. [Ed. Note.-For other cases, see Patents, Dec. Dig. § 286.*]

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

For former opinions, see 145 Fed. 199; 154 Fed. 66, 83 C. C. A. 178; 163 Fed. 289.

Howard P. Denison (Wm. A. Jones, of counsel), for appellants. E. M. Marble (Charles Howson, of counsel), for appellee.

Before DALLAS, GRAY, and BUFFINGTON, Circuit Judges.

BUFFINGTON, Circuit Judge. In the court below, Oliver K. Hogan charged the Westmoreland Specialty Company with infringement of patent No. 752,903, granted to him February 23, 1904, for a dredge. That court, in an opinion reported at (C. Č.) 163 Fed. 289, sustained the patent and found infringement. From a decree to that effect respondent appealed.

The opinion below is so exhaustive that we content ourselves with reference to it for the details of this case. It suffices to say the patent concerns a celluloid top dredge, the principal use of which is holding salt. While at first thought the device seems of minor importance, yet it has, in its sphere, served a very useful purpose, and has gone into rapid and general use. The use of celluloid as a dredge cap has several advantages: First, it will not oxidize; second, its flexibility adjusts it to irregular, noncircular, screw-mouthed vessels; and, third, it insulates the salt, keeps it dry, and prevents it from caking. This

For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes

insulating capacity of celluloid is not generally known. It arises from the fact that practically no surface moisture film or layer of adsorbed (not absorbed) moisture is deposited on celluloid. Under ordinary atmospheric conditions, metals and glass have layers of condensed moisture too thin to be perceptible to sight or touch. The ordinary salt cellars, prior to Hogan's device, had glass bases and metal tops, which collected moisture films. The moisture layers serve as wicks to convey moisture from the air to the salt in the cellar. The salt at the base of the cellar absorbs from the adjacent glass wall the moisture thereon. This is replaced by moisture drawn from higher up, and thus a continuous downward moisture transference goes on from the cap to the base of the cellar. This soon converts a perfectly dry mass of salt in the cellar to a moist, sticky one. The moisture film on the metal cap being the supply source of this downward process, the substitution of a celluloid top insulated the salt from the humidity of the external air. This highly desirable result was novel, and by it a dredge with a new function was created. It is true that at the time this patent was applied for the particular process of moisture supply from a metal cap and the insulating capacity of celluloid to stop it were not stated, or, indeed, known to the patentee. He knew metal caps would oxidize, and substituted celluloid to stop oxidation, and such use has shown that the stoppage of oxidation resulted in keeping the salt dry. But the mere failure of a patentee to realize all the benefits and possibilities of his invention is not fatal. The after-discovery of unsuspected usefulness in a disclosed apparatus, far from detracting from its value, may serve to enhance it. It is the benefits which test, use, and time unfold that really determine merit. It is this after-test, the test of use, that proves the worthlessness of the great majority of patents and establishes the value of the few. We are therefore of opinion that the after-recognition of the scientific fact of the insulating capacity of his celluloid dredge cover should not affect the validity of Hogan's patent. It had other patentable advantages. Mechanically, its flexible top could be used on dredges of irregular, noncircular mounted dredges, which latter could not be used at all with metal caps. Moreover, the nonoxidizable celluloid top made a much cleaner and more hygienic dredge. The fact that a celluloid cap had been previously used on a talcum-powder bottle, far from being an anticipation of its use on a dredge, rather tends to emphasize the novel character of Hogan's device. Although it was so used, it never suggested to any one its use on a dredge. But reflection will show they are not analogous uses. Talcum powder is a dry, chalky substance which neither caked nor became damp. Hence oxidation, causing dampness, or hygienic considerations and their avoidance, were not involved in its use on a talcum bottle. After full consideration, we are therefore of opinion the court below rightly sus tained the patent.

We agree with it also in holding that Hogan could maintain this bill. The papers which it is contended showed an assignment by Hogan are set forth at length in the court's opinion. It rightly held they should be considered as a whole. As such, it is clear there was n10

intent to transfer the title. On the contrary, there was a clear intent not to do so. In substance, there was a temporary pledge whereby Hogan's indebtedness could be liquidated from the proceeds of a business carried on under the patent. As the rights of other parties may be involved in these papers, we refrain from any present discussion of them, contenting ourselves with saying they did not preclude Hogan from maintaining this suit,

The decree below is affirmed.

INTERNATIONAL TIME RECORDING CO. v. W. H. BUNDY RECORDING CO.

(Circuit Court, N. D. New York. January 6, 1909.)

No. 7,175.

PATENTS ($328*) — INVENTION AND INFRINGEMENT WORKMAN'S TIME RE

CORDER.

The Bundy patent No. 671,129, for a workman's time-recorder, claims 1 and 4, which in effect claim broadly "means" for insuring the "proper" insertion of the card in the recorder to unlock the actuating mechanism, are void, in view of the prior art. Claim 2, which includes as a specific element a card having a portion cut away to prevent its insertion in any except the proper position, if conceded validity, must be narrowly construed to cover only what is shown and described, and, as so construed, held not infringed.

[Ed. Note. For other cases, see Patents, Dec. Dig. § 328.*]

Bill in Equity to Restrain Alleged Infringement of United States Letters Patent, and for an Accounting.

Kerr, Page, Cooper & Hayward, for complainant.
Parsons, Hall & Bodell, for defendant.

RAY, District Judge. The patent in suit, No. 671,129, for worknan's time-recorder, was issued to the Bundy Manufacturing Company, of New York, assignee of Willard Le Grand Bundy, April 2, 1901, on application filed October 25, 1899, and is now owned by the complainant company. It contains 26 claims, of which claims 1, 2, and 4 only are in issue here. These read as follows:

"(1) In a recorder adapted to make a record upon a card or other removable record-surface, the combination, with suitable recording mechanism, and suitable impression mechanism and means for actuating it, of a lock zdapted to prevent the operation of the impression mechanism, and means actuated by the card or other record-surface, when properly inserted in place in the machine, for removing the lock from its locking position to permit the operation of the impression mechanism, whereby the recording mechanism canLot be operated to make an impression until the card or other record-surface has been properly inserted in place to receive the impression.

"(2) In a recorder adapted to make a record upon a card or other removable record-surface, the combination, with suitable recording mechanism and suitable impression mechanism and means for actuating it, of a lock adapt ed to prevent the operation of the impression mechanism, a card or other removable record-surface having a portion cut away, and means adapted to *Fer other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes