he holds the title thereto in trust, which trust may be enforced in a court of equity.

Breach of contract by Employer held not to terminate trust arising from contract for assignment of patent rights. Defendant was employed by a manufacturing company for a term of years as mechanical engineer; the contract providing that all inventions made by him during the term should be held by him in a fiduciary capacity and solely for the benefit of the company, and that he would when required, execute all instruments in writing deemed necessary by the company to vest in it the entire right, title and interest in such inventions. At a time when the company was not in default it requested him to execute assignments of certain pending applications for patents which he refused to do. Held, that such refusal was a breach of the contract by him; that the subsequent bankruptcy of the company, which terminated the contract, did not terminate his trust, nor give him the right to appropriate the property which he held as trustee, and wrongfully withheld from the equitable owner and that the right to enforce the trust passed to the trustee of the company and to his assignee of the contract. An agreement by an employee that inventions made by him shall be held in trust for his employer is valid, and a suit may be maintained to enforce such trust, arising from contract to assign patent rights, though there has been a breach of the contract which created it.-H. H. K.

POLYGON PRODUCTS CORPORATION V. KANT. RUST PRODUCTS. (Circuit Court of Appeals Third Circuit, July 5, 1923 as modified November 9, 1923. 292. Fed. 569.)

"The Abbott patent No. 1,333,363, for a compound for penetrating interior corrosion, which consisted of a penetrant, which was a hydrocarbon of low viscosity, a material colloidally soluble therein, and a relatively viscous lubricant, held to disclose inven

tion especially in view of its remarkable success in a new art, and claim 2 thereof held infringed by defendant's product, which contained elements answering to that description, though the materials were not those mentioned in the specification."

Infringement Scope of claims expressed broadly. One of the uses of the invention is the loosening of the rust on a rusted bolt and nut so as to make it easy to remove the nut. The penetrant is volatile. The colloid and the lubricant retard or prevent its volatilization. Neither the colloid nor lubricant alone can penetrate to the interior rust. The penetrant freights them in. The colloid and the lubricant disintegrate, plasticize, and lubricate the rust. Prior to the patent, colloids and lubricants were not used for "interior fluid penetration" in the "field of major metal corrosion". Although "the selfpenetrating power of oils was always recognized as an aid in unscrewing rusted bolts and units", "the fact remained that the physical force of the wrench, tongs, chisel, and hammer was the used method". The new method was promptly accepted by the public as soon as it was demonstrated. Because of its "marked originality in a practically unoccupied field", and of its "surprising efficiency, and of its "prompt acceptance" by the public, the Court held the method to be "inventive in character".

The court found that the defendant used a penetrant, a colloid, and a lubricating oil and therefore infringed the patent notwithstanding the patent did not specifically name all of the elements used by the defendant. As to such unnamed elements, the Court said:

"These elements, while absent in the body of the specification, are present in its spirit. To hold otherwise were to shear real invention of real protection."-L. W. W.

BURROUGH ADDING MACHINE CO. V. ROCKFORD MILLING MACHINE CO. ET. AL. C. C. A.-7. Alschuler, Cir. J. 292 Fed. 550.

Hopkins patent 1,336,904 for adding machine held not infringed.

Infringement.-Limitation of claims by prior adjudication of a broader patent to the same inventor-Absence of distinctive feature-"Setting up" mechanism of adding machine. This was an action at law charging infringement of the Hopkins patent 1,336,904 by machines constructed under the Sundstrand reissue patent 14,237. The original Sundstrand patent upon which the reissue was based was later filed and earlier issued than the patent in suit which latter was in the Office fourteen years before issuance. Two of the claims in suit were originally in the Sundstrand reissue and had been awarded to Hopkins during an interference proceeding. In a suit involving Hopkins patent 1,039,130 charging infringement against the same Sundstrand machine, the court limited the construction of the patent so as to exclude infringement. The patent in suit varied from the earlier Hopkins patent only in having the stop carrier divided into two fields. The general concept of a stop mechanism as there employed was shown by the prior art to have been originated by others. In the Sundstrand machine there was no divided stop carrier. Held not infringing.

The Sundstrand machine was admittedly covered by the general terms of the claims sued upon, however, the construction of the claims was limited by the prior art and the adjudication of the broader patent to the specific disclosure of the patent. Speaking with reference to the protracted prosecution of the patent in suit before the Office, the court said:

"The Hopkins patent presents the disturbing situation of its pendency in the Office for over fourteen

years, and the allowance of the appalling number of 421 claims. These facts while not influential in determining the issues here, suggest the dire need of change in our patent law or practices or both".

Same action at law-Construction of claims by the court where the prior art is clear as to scope. In an action at law charging infringement the court passed upon the proposition of infringement without submitting it to the jury. There was no dispute or doubt as to the scope of the prior art. Held properly determined.

The court further stated that where the construction of the claims is dependent on the prior art, doubtful or disputed questions of fact relative to the pertinent art are matters for the jury.

Same evidence-Admissibility of prior patents, as part of record before appellate court; which were not before the district court until motion for directed verdict. Certain prior art patents and also the record of a prior suit between the same parties had not been formally introduced as evidence before the district court but after the plaintiff had rested its case they had been brought to the attention of the lower court upon the consideration by that court of the motion for directed verdict, and the conclusion that followed was influenced in part by these patents. In the argument before the appellate court, counsel for plaintiff invited the court to consider these patents. Objection by the plaintiff without assignment as error. Held the prior patents competent as evidence in the record before the appellate court.

The court was of the opinion that since the patents were regarded by the district court in determining a matter connected with the suit, they can be considered for any and all purposes and form part of the record on appeal.-M. C. R.

EDWIN S. WOODS AND CO. ET. AL. V. MINER. C. C. A. 7 Circuit. Baker, Cir. J. 292 Fed. 589.

Invention. Improvements in roller side bearings for

railway cars. O'Connor patent 984,236 held not anticipated, valid and infringed. It was old on the railway car art to put anti-friction devices between the end of the car bolster and the truck bolster to reduce the friction produced when the truck moved with respect to the car body. Many persons appreciated the desirability of being able to make in a factory a roller side bearing that could be assembled as a unit and would accommodate itself to the various conditions under which it would be used. O'Connor (appellee's assignor) understood this need and met it in a structure having only three main elements which was a mechanical and a commercial success. The court was unable, even with the aid of experts and counsel to see anticipation in prior art devices put into the record.

Multiplicity of claims.. Appellants divided the claims, of the patent sued on into two groups and asserted that the decree of the lower court if sustained at all must be limited to one claim of each group and that appellee must be directed to file a disclaimer of the other claims of each group. The Court, however, refused to examine the claims microscopically and decided that one claim (claim 3) furnished an adequate basis for deciding the questions of patentable novelty and infringement. The court considered appellant's device in detail with respect to claim 3 and decided that the claim was properly drawn broad enough to cover appellant's device. Decree of the lower court affirmed.-R. L. G.

PERKINS GLUE CO. V. GOULD MFG. CO. ET. AL. SAME V. WISCONSIN CHAIR CO. ET. AL. C. C. A. 7. Baker, Cir. J. 292 Fed, 596.

The Perkins reissue, patent No. 13,436, claims 28, 30, and 31, for a wood and fibre glue, held limited to the product of the valid processes described in its other claims, and, as so limited, not infringed. Disclaimer. Product claims limited to use of valid process. Reissue patent No. 13,436 was found by a deci