degree of a poreless gum-size, or of a water-proof character, imparted thereto or therein, substantially as and for the purpose described. (3) The process of sizing paper-stock materials and paper pulps to make pulp-sized papers, when chloride of lime, or its equivalent, shall compose a constituent part of the composition or mass of other sizing ingredients or materials, substantially as and for the purpose described. (4) Chloride of lime as a sizing ingredient, in combination with the resins, soaps, starches, oils, tallows, and alums, separately or collectively, substantially as and for the purpose set forth.

The common method pursued in the manufacture of pulp-size paper, at the date of the patent, and for many years previous, embraced the use of chloride of lime. Its work in the process was bleaching. The common opinion being adverse to its retention after this work was performed, (in consequence of a belief that its presence was detrimental to the sizing,) the usual, if not universal, practice was to wash it out before the sizing materials were applied. Of course it was not all removed. To get rid of it entirely, by the ordinary method of washing, was impossible. More or less remained,-depending upon the use for which the paper was designed, and the amount of care bestowed in the washing. Mr. Dorlan having discovered, as he believed, that this common opinion was erroneous,--that the presence of chloride of lime was not only not injurious to the sizing, but highly beneficial,--applied for and obtained his patent. Under it he asserts the right to compel manufacturers of such paper to remove the chloride of lime introduced for bleaching, before the application of ordinary sizing ingredients. Can the patent (if valid) be accorded such a scope? If such is the right intended to be conferred, is the patent valid? The use of chloride of lime in the manufacture of pulp-sized paper is not objected to; and could not be, for the use is, probably, as old as the art itself. The objection is that it is not extracted from the pulp and excluded at a particular stage in the process, so as to avoid combination with the sizing ingredients. objection is, not that something is done which should not be, but that something is omitted, whereby the patent is infringed. This certainly is a novel proposition. Of course the objection to retaining the chloride of lime does not extend to the quantity formerly retained. It would be difficult, therefore, to ascertain and fix the limit, if no other difficulties existed. Notwithstanding the novelty of the position, however, it may, possibly, be sound. As it is unnecessary to pass upon

it at present, we should not do so.

The

The defendant's answer asserts, substantially, that long before the date of the patent he and other paper manufacturers pursued the method of manufacturing pulp-size paper here complained of,-allowing the chloride of lime, introduced for bleaching, to remain. If the defendant pursued this methed, it is unnecessary to inquire into the methods of others. Equity will not interfere to restrain a continuance of the defendant's business or manufacture as pursued anterior to the patent. It is immaterial why he allowed the chloride of lime to remain in-if he did so. Whether he believed it to be beneficial or inv.25F,no.14-52

jurious to the sizing, or without effect either way in this respect, is of no consequence. If it was beneficial he got the benefit, and is entitled to such as may arise from a continuance of his method of manufacture, notwithstanding the plaintiff's patent. That he was unaware of the benefit, and that it, consequently, was accidental, argues nothing against his right to pursue his business as he had been accustomed to do in the past. The cases cited respecting accidental prior use, and accidental effect, bear no relation to such a case as this.

Did the defendant pursue this method, as he alleges, prior to the patent? A good deal of testimony was taken to meet and determine this question. While the truth respecting it is not free from doubt, the weight of the evidence is, in my judgment, with the defendant. The circumstance that a different conclusion cannot be reached without imputing perjury, or something much like it, to witnesses who, so far as appears, are respectable men, is entitled to great, if not controlling, influence. The force of the criticism to which the testimony of these witnesses was subjected by the learned counsel has not been overlooked. It is not sufficient, however, to justify a disregard of their sworn statements,-a conclusion that they are untruthful and corrupt. Nor have I overlooked the circumstance that Speakman and Stott, employes of Guie, for a time, testify that the chloride of lime was washed out, and the consequent difficulty of reconciling this testimony with that of the defendant's witnesses. Nevertheless, as it was customary to wash the chloride out in manufacturing certain descriptions of paper, it is certainly possible that Speakman and Stott have gotten their present impressions from this circumstance. It is clear that their knowledge respecting the subject is much less than that of several witnesses who testify otherwise, and the probability that they are mistaken is consequently much greater. Indeed, it is quite clear that some of the defendant's witnesses cannot be mistaken. Their testimony can only be rejected upon the hypothesis that they are willfully and corruptly untruthful. It would be unprofitable to discuss the question at greater length. While the truth respecting it is involved in doubt, the preponderance of evidence is with the defendant.

This finding of fact is fatal to the plaintiff, and a decree must be entered accordingly.

BOSTOCK and Wife v. GOODRICH.1

(Circuit Court, E. D. Pennsylvania. November 6, 1885.)

PATENTS FOR INVENTIONS-INFRINGEMENT-PROFITS-DAMAGES EVIDENCE. Complainants received letters patent 64,404 and 80,269 for improvements in tuck-markers, which proved to be of little value. Defendant made improvements on same which cured the defects and rendered the device marketable. Complainants obtained a decree for assessment of damages and profits for infringement of the above patents. Held, that complainants must show what proportion of profits arising from the sale of the improved tuck-markers was due to the original invention, and that, failing in that, they were entitled to nominal damages only.

BUTLER, J. The infringement complained of and decreed against, is of claims 2, 3, 5, and 6 of patent No. 64,404, and claim 1 of patent No. 80,269.

These claims are for improvements in "tuck-markers," consisting of minor combinations and devices employed in such machines. Tuckmarkers (differing from the complainant's only as respects these combinations and devices) had been in use for many years prior to the date of these patents. The complainant simply improved the oid machines, rendering them more serviceable than before, by increasing their adaptability to the use contemplated.

The rule for ascertaining profits, applicable to the case, is therefore, the one applied in Garretson v. Clark, 111 U. S. 120, S. C. 4 Sup. Ct. Rep. 291, and more recently in Dobson v. Carpet Co., 114 U. S. 439, S. C. 5 Sup. Ct. Rep. 945.

While, therefore, we might possibly not agree in all the master has said upon the subject of profits, his conclusion is right. The burden rested on the complainant to prove the proportion of profits justly ascribable to his improvements. Having failed in this he is entitled only to nominal damages.

The exceptions must be dismissed and the report confirmed.

1 Reported by C. B. Taylor, Esq., of the Philadelphia bar.

FRAIM V. KEen.1

(Circuit Court, E. D. Pennsylvania. November 2, 1885.)

1. PATENTS FOR INVENTIONS-IMPROVEMENTS IN SCANDINAVIAN PADLOCKS-INVENTION.

Reissued letters patent No. 10,272, granted to Edward T. Fraim (inventor) jointly with Miller W. Fraim, (assignee,) January 16, 1883, for an improvement in Scandinavian padlocks, held not void for want of novelty and invention.

2. SAME-INFRINGEMENT.

Where one party stands by and permits another to take out a patent, and then takes out a patent for a different invention, he cannot set up that he is the inventor of the first improvement.

3. SAME-NOVELTY.

Although the question of patentable invention may be open to doubt, the court will not reverse the decision of the patent-office except upon clear evidence,

In Equity.

The facts are as follows: Both parties claimed priority of invention. Complainant obtained a patent January 16, 1883. Defendant claimed that he made the invention at a time when he was employed by complainant in his shop, and it appears that he stood by while complainant made application for a patent without making any claim, and subsequently took out letters himself for another and a different invention.

Joseph C. Fraley, for complainant.

Grady & Gendell, for defendant.

BUTLER, J. While the question of patentable invention, respecting complainant's improved lock, may be open to debate and doubt, we do not feel justified in reversing the decision of the patent-office, by anything appearing in the case.

Nor do we think the evidence would justify a conclusion that Fraim was not the first inventor. While the direct evidence in favor of Shallass' claim is not satisfactory, the inferences arising from his conduct are strongly against him. He not only stood by and saw Fraim assert his right to the patent, without objection, but directly after took out letters for a different improvement.

The infringement of the second claim is clearly proved; and the infringement of the third is virtually admitted.

The bill is sustained, and a decree must be entered accordingly, and for costs.

1Reported by C. B. Taylor, Esq., of the Philadelphia bar.

YODER V. MILLS.1

Circuit Court, E. D. Pennsylvania. October 28, 1885.)

PATENTS FOR INVENTIONS-PRIORITY-INFRINGEMENT-COMBINATION PATENT. The employment of mechanical skill to construct a machine in accordance with ideas furnished by another gives no right to the invention. The entire merit is in him whose inventive suggestiveness conceived the invention.

In Equity.

William A. Redding, for complainant.

M. Daniel Connolly, for respondents.

MCKENNAN, J. The object of this suit is a patent to Lorenzo T. Yoder for an invention relating to the manufacture of candy, dated December 4, 1883, and numbered 289,488. The patent contains four claims, but no evidence is produced to show any infringement of the first two. The third and fourth claims are the only ones touching which there is any contest. They are both for combinations of mechanical devices, and differ only in that, to the elements specified in the third claim, is added a "cover, A," of peculiar construction, and thus the fourth claim is constituted.

Nor is there any substantial controversy between the parties upon the question of infringement. It is clear that the machine made by the defendants is, in every essential feature, identical with that described in the patent.

The only contested inquiry in the case involves the right to the invention itself. All the evidence exhibited relates to it. Both parties claim the merit which the patent apparently accords to the complainant, and, without discussing the evidence, it is enough for us to say that, in view of the decided preponderance of the proofs, it is justly devolved upon him. The conception of the invention belongs to him, and all that the defendants contributed was the necessary mechanical skill, furnished at his request, to embody it in an operative form. He did not lose the merit which is due to inventive suggestiveness, and devolve it upon the mechanic whose only function was to materialize it. Watson v. Bladen, 4 Wash. C. C. 582; Blandy v. Griffith, 3 Fisher, 609.

But some doubt may be entertained as to the right of the complainant to appropriate the combination covered by the fourth claim of the patent, treating it as an entirety. The cover, A, which is an indispensable constituent of the combination, was not devised by him, but was suggested and constructed solely by one of the defendants. Whether that claim, then, is enforceable against the defendants we do not deem it imperative on us to decide. We will, therefore, adjudge that the patent is valid in so far as the third claim is involved, that an injunction issue against the infringement of that claim, and that

1Reported by C. B. Taylor, Esq., of the Philadelphia bar.