It is obvious that the securing means may be any two-part separable locking device of which one part is seated in the insole member, and the opposite part in the lift or insertion, and which is therefore practically self-contained within the parts themselves, so that I am enabled to dispense with the use of bars, pockets, or other mountings in securing the lift or insertion to the insole member.

The defendant's device has no socket in the insole, has no two-part separable locking device of which one is in the insole and the other in the insertion, and it is not enabled to dispense with the use of pockets. It makes an insole with a pocket therein, and fastens its insertions by means of small sharply-pointed metallic projections which penetrate the lower covering of the pocket. It uses no twopart device, and no interlocking device, and it does not attach the insert at predetermined points on the insole. These differences, we think, are sufficient to avoid infringement.

The cause will be remanded to the court below, with instructions to dissolve the injunction as to Patents 1,127,349 and 1,061,353. In other respects the decree is affirmed. In the view of the defendant's inequitable use of advertising-matter, we are not disposed to award costs to either party on the appeal.

[U. S. Circuit Court of Appeals-Sixth Circuit.]

DETROIT SHOWCASE Co. v. KAWNEER MFG. CO.

Decided April 5, 1918.

254 O. G., 655; 250 Fed. Rep., 234.

1. PATENTS-VALIDITY AND INFRINGEMENT-STORE-FRONT CONSTRUCTION. Patent No. 852,450, for store-front construction, Held valid and infringed.

2. SAME-INFRINGEMENT UNITING TWO PARTS IN ONE.

While infringement is not avoided by forming in one part two elements of a patented device if the part thus formed secures the same results in substantially the same way as the two elements, a combination claim is not infringed where one of its elements is omitted without the substitution of an equivalent.

3. SAME-SAME-ORNAMENTAL CONNECTION BETWEEN GLASS PLATES.

The Plym patent, No. 860,150, relating not only to store-front but to showcase construction and designed to provide a simple, strong, durable, inexpensive, and ornamental connection between glass plates, Held not infringed.

4. COURTS-FEDERAL COURTS-JURISDICTION.

Where a patent has been held valid and infringed, the unfair-competition feature arising out of that infringement may be included in an accounting for profits and damages, though the parties are citizens of the same State. 5. TRADE-MARKS AND TRADE-NAMES-UNFAIR COMPETITION-WHAT CONSTITUTES. Defendant, which appropriated plaintiff's patent for sash-rail construction, is not liable for unfair competition where there was no closer imitation of plaintiff's product than would naturally result from the appropriation.

6. SAME-SAME-TRADE-MARK.

A word descriptive of the articles sold is not the subject of a trade-mark unless it has acquired a secondary meaning, as indicating the product of a particular manufacturer.

7. SAME-SAME EVIDENCE.

Evidence Held insufficient to show that plaintiff had a trade-mark in the term "Almetal," under which it sold its metallic sash-rails, etc., so that defendant's use of that word to describe its own metallic-sash-rail construction was not unfair competition.

8. SAME-SAME-VALIDITY OF TRADE-MARK.

The existence of a valid trade-mark is not essential to a right of action for unfair competition where defendant palmed off its products as those of plaintiff.

9. COURTS-FEDERAL COURTS--JURISDICTION.

Where a patent was found not to have been infringed and the parties to the suit were citizens of the same State, the Federal court Held, under the facts presented, without jurisdiction over a cause of action for unfair competition arising out of defendant's sale of the alleged infringing articles.

APPEAL from the District Court of the United States for the Eastern District of Michigan; Arthur J. Tuttle, judge.

Suit by the Kawneer Manufacturing Company against the Detroit Showcase Company. From a decree for complainant (240 Fed. Rep., 737), defendant appeals. Affirmed in part, and in part reversed and remanded, with directions.

Messrs. Pagelsen & Spencer (Mr. Leo M. Butzel on the brief) for the appellant.

Mr. W. R. Lane and Mr. Clarence J. Loftus for the appellee.

Before KNAPPEN and DENISON, Circuit Judges, and SATER, District Judge.

KNAPPEN, Cir. J.:

Suit for infringement of United States Patents No. 852,450, May 7, 1897, and No. 860,150, July 16, 1907, both to Francis J. Plym, and for alleged unfair competition in connection with the making, selling, and using of the alleged infringing devices. The district court found both patents valid and infringed, and also found for complainant on the issue of unfair competition. (240 Fed. Rep., 737.) This is an appeal from the interlocutory decree for injunction and accounting on both features of the case.

(1) 1. Patent No. 852,450 (for convenience called the first patent) relates to store-front construction. Claims 5, 6, and 7 are involved. This patent was before us in Toledo Plate, etc., Co. v. Kawneer Mfg. Co. (237 Fed. Rep., 364; 150 C. C. A., 378), and the claims here in suit were there held valid as against all the references to the prior art cited here. We refer to the report of that case for

a description of the patent and a statement of the claims. The patent must be held valid here. On the subject of infringement, the only question is whether defendant's gutter member is "resilient," as defined in our former opinion. This question is purely one of fact. The claimed demonstration of non,resiliency presented failed to satisfy the court below, which was convinced by its own independent experiments that there was present substantial resiliency, within the definition of that term recognized in our opinion in the Toledo case. We are satisfied that defendant's device has fully as much resiliency as had the "scant bracket" construction we held in the Toledo case to infringe. The decree of the court below as to the first patent must be affirmed.

(2, 3) 2. Patent No. 860,150 relates not only to store-front but to show-case construction, and the invention is designed to provide a simple, strong, durable, inexpensive, and ornamental connection between the glass plates. The device is well enough illustrated by

Fig.3.

8

Figure 3 of the patent drawings, which is a horizontal section of one of the suggested forms which the connecting device may take, although this particular form is adapted only to the connection between two alined plates. The device is available for plates at right angles to each other, as in corner-pieces.

In the drawing 1 indicates a channeled face-plate, 2 the glass plates, 3 the flanges projecting in opposite directions from the channeled plates, overlapping and bearing against the outer face of the glass plates, 4 a back plate with V-shaped wings 5, pressing the glass plate outwardly against the flanges of the face-plate, 6 a stiffeningbar fitting into the channeled back plate, 7 bolts extending through the front and back plates and the stiffening-bar, and 8 nuts engaging the inner ends of the bolts and bar, clamping the plates in the desired relation. In practice the independent stiffening-bar 6 may be dispensed with, its place being supplied by a construction of the

black plate 4 following, for example, the outlines of the bar 6, thereby providing the needed stiffening. As thus far described the structure was old in the art. As recognized by the inventor in the specifications of his patent, the only new element provided by him is the so-called "filling strip" 9, provided with inwardly-projecting flanges 10, between which the bolts extend and against the outer ends of which the heads of the bolts bear. The inventor declares the purpose of this filling-strip to be

providing a finish for the store front or showcase and to prevent tampering with the bolts,

saying:

This filling strip is adapted to be slipped into the channel of the face plate from one end of the latter before the face plate is secured in position and after the bolts have been slipped through it, the nuts being evenly turned to clamp the parts in the desired relation.

The only claims in suit are Nos. 1 and 2, which read as follows:

1. The combination of a channeled front plate, a back plate, a channeled filling strip occupying the channel of the front plate and headed fastening devices extending through the channeled plate and the back plate and having their heads within the channeled filling strip to be covered by the same.

2. The combination of a channeled front plate provided with lateral flanges, a back plate of the same and provided with resilient wings, a stiffening part engaging the back plate, bolts extending through the channeled front plate, the back plate, and the stiffening part, and a channeled filling strip occupying and closing the channel of the front plate and clamped in position by said bolts.

The second claim differs substantially from the first only in calling for "lateral flanges" for the front plate, "resilient wings" for the back plate, and a "stiffening part" therefor. The validity of the claims is not assailed. The question is thus one of infringement. Defendant's structure differs from the device of the patent in this: The channel of the front plate opens inwardly, instead of outwardly, as in the device of the patent; the heads of the bolts thus being invisible from the outside. The channel of the front plate is always open, the heads of the bolts connecting the front and back plates being gripped by the inturned flanges forming the lower edges of the side walls of the channel of the front plate. It thus lacks, as a separate element, the "channeled filling strip" of the patent, which, as already said, is the only new element of the claims in suit. The learned district judge was of opinion that the structure was identical with plaintiff's device

excepting that the defendant, by removing the bottom part of what plaintiff calls the channel front plate, has impaired to that extent the function which that plate is to perform,

and that the case is one for the application of the rules that an infringer cannot escape liability by diminishing or impairing the advantages and functions of the patented device, if he retains the substantial form, function, and manner of operation, nor by forming in one part two elements of a patented device, if the part thus formed secures the same result, in substantially the same way, as the two elements.

But the pivotal question is whether the case presented is merely that of making in one part that which before was made in two parts, the integral structure continuing to perform all the functions of the former two-part device, and in substantially the same way, or whether it falls within the rule that a combination claim is not infringed if one of its elements is omitted without the substitution of an equivalent. Were plaintiff's invention a broad or primary one, it might be held that defendant has merely made integral what before was made in separate parts. But the patent claims, and their range of equivalents, are narrow. There was nothing new in concealing the heads of the screws, nor in the use of a round central strip. The inventor's only contribution to the art was in the form and manner of accomplishing this old result, viz, by—

a channeled filling strip occupying [and closing] the channel of the front plate. Defendant has but one of these elements. If this element is a front plate at all, there is no "channeled filling strip," and for the sufficient reason that there was no occasion for one. Defendant thus has not, as we view it, merely removed the bottom part of plaintiff's channeled front plate, nor has he impaired the function of that plate, nor retained the substantial function and operation of plaintiff's device, nor secured its result in substantially the same way. It is very clear that what defendant has done is so to construct his front plate as wholly to dispense with the necessity of the function performed by a filling-strip, and so with the filling-strip itself. In other words, there was no occasion for a filling-strip, either to provide a finish, or to prevent tampering with the bolts, or otherwise. There was thus no infringement. (Union Paper Bag Mach. Co. v. Advance Bag Co., C. C. A. 6; 194 Fed. Rep., 126; 114 C. C. A., 204 et seq.; Proudfit Co. v. Kalamazoo Co., C. C. A., 6; 230 Fed. Rep., 120; 144 C. C. A., 418.)

This conclusion is not weakened by the fact that in some of its constructions defendant passes the heads of the bolts through washers which grip the edges of the channel of the face-plate and prevent their spreading. The function of the washers is entirely different from that of the "filling strip" of the patent. It also seems not without pertinency that neither defendant's channeled front plate nor its washers are

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