JOHNSON, Cir. J.: The rights of the defendant become fixed at the date of the decree in the suit between Birdsall and Wickson and Van Wickle, the vendors to Spaulding of the machine the use of which is sought in this suit to be enjoined. That decree was made in January, 1875. Its force and effect as between the parties and their privies could not be affected by a subsequent agreement between the plaintiff in that suit, Birdsall, and the plaintiffs in the present suit. Their agreement bore date in September, 1875. It attempted to engraft a clause contained in it upon an earlier agreement between them, which bore date in September, 1874. This it was competent for them to do, so far as their own rights were concerned, but the previously existing rights of third persons could not be thus affected. The decree against Spaulding's vendors must be ooked to in order to determine whether its effect was to authorize the use by Spaulding of the patented machine which he had purchased of them until it should be incapable of further use. There is no question that the machine now owned by the defendant Spaulding was one of those for the making and selling of which Wickson and Van Wickle were sued by Birdsall, and for which he claimed to recover both profits and damages; nor that it was embraced in the decree in that suit; nor that the decree has been fully satisfied in respect to the damages and profits awarded. The question is, therefore, what effect is to be given to the decree? By its terms it adjudges that the defendants Wickson and Van Wickle have infringed the patent owned by Birdsall by mak. ing and vending the machines manufactured by them, and orders that they account to the plaintiff both for the damages sustained by him and the profits made by them in consequence of such infringement. It then declares that the amount of such damages and profits is adjudged to be the sum of one thousand dollars, and directs the mode of payment. It seems to be well established that, when a patentee gets his remuneration by patent or license fees, a recovery of the license or patent fee from an infringer and its payment authorizes him to use the particular articles for which such recovery has been had. On the other hand, when a patentee chooses to use his invention himself and find his remuneration in the sale of the products of its use, and to prevent others from using his invention, it is his right, and then a recovery for profits and damages will be limited to the profits and damages up to the time of the recovery. Such a recovery will not carry with it any right to the further use by the infringer of the invention. (Suffolk Co. vs. Hayden, 3 Wall., 315; Spaulding vs. Page, 4 Fisher's Pat. Cases, 641, 645, 646.) But when the patentee sells his patented instrument or machine for use by others, finding his remuneration in the profit of the sale of the manufactured machine or instrument, it is obvious that his interest is promoted by increasing the sale, and that into his profit enters the value of the patented invention over and above the cost of manufacture and the ordinary fair profit of the manufacture. Even if no patent or license fee is fixed, the value thereof, as a profit, enters into the selling price, and, if not capable of exact ascertainment, may nevertheless be approximated to, by estimation, when necessary. When the patentee sells he receives this profit, and thus obtains full compensation for the article sold and for the right to use it while it lasts. When for an infringement he obtains both the profits and damages, he will be presumed to have obtained a full compensation for all the injury he has sustained, and to be placed in as good a position as if he had made and sold the article himself. Such is, I think, the presumption between parties thus situated, and, if any different rule is sought to be applied in any particular case, it should appear that a recovery has not been sought or obtained for the whole gains of the manufacture as well as for all the damages sustained. (Spaulding vs. Page, before cited; The Gilbert and Barker Manufacturing Company vs. Bussing, 12 Blatchf. C. C. R., 426.) When a patentee manufactures and sells his patented arti cle for use, the right to use passes by the sale. If an infringer manu. factures and sells, he must account for and pay the profits, which are to be calculated upon the principle that the gain by the appropriation of the patentee's invention is their measure. If there are damages sustained and proved by the plaintiff beyond the profits made by the infringer, these also may be recovered. But when a full recovery and satisfaction from one party has been had the patentee has obtained all that the law gives him, and the particular article or machine, if it be a machine, becomes, in effect, licensed by the patentee, and may be used so long as it lasts free from any further claim by the patentee. The motion for an injunction must be denied. [United States Circuit Court-Eastern District of Michigan.] FRANK NORTHRUP ET AL. vs. SAMUEL ADAMS. O. G., vol. xii, p. 430. In Equity.-BROWN, J. Design patents are subject to the general principles of construction applicable to mechanical patents. A combination or aggregation of old designs producing no new appearance is not patentable. When, in a design of a rectangular provision-safe, the only originality consisted in the use of two vertical panels in each wall and a familiar molding around the top and bottom, the patent was held invalid. Mr. HUNT for complainant. Messrs. J. W. MCGRATH and GEO. H. LOTHROP for defendant. [This was a bill for the infringement of a design patent for a provision or cheese safe. The specification describes A rectangular base, with a top supported by four corner-posts, with an intermediate stile or support, dividing each side into vertical panels, all of which are covered with wire-cloth of fine mesh. The front side is made to open as a door, which is single, but folds upon itself, the two parts being hinged together at the center stile. Around the base is an ogee molding, and a similar one is run around the top to serve as a cornice. A lighter molding of the same pattern is run around the edge of each panel, and a pleasant effect is produced by staining all of the molding a dark color, varnishing all the rest of the wood-work, leaving it in its natural color. The claim was as follows: As a design for a cheese-safe, the rectangular cage shown, having two vertical pauels on each wall, a molded top, A, and a molded base, A'. The defenses set up in the answer were: First, that the invention was in public use for more than two years prior to the application for a patent; second, the invention was not patentable.] BROWN, J.: Complainant claims his patent by virtue of that clause of R. S., sec. 4929, which extends the protection of the patent laws to any new and original design for a manufacture, or "any new and original shape or configuration of any article of manufacture not known or used by others" before his invention or production thereof. The law applicable to this class of patents does not materially differ from that in cases of mechanical patents, and "all the regulations and provisions which apply to the obtaining or protection of patents for inventions or discoveries * shall apply to patents for designs." (Sec. 4933.) The same general principles of construction extend to both. To entitle a party to the benefit of the act, in either case there must be originality and the exercise of the inventive faculty. In the one, there must be novelty and utility; in the other, originality and beauty. Mere mechanical skill is insufficient. There must be something akin to geniusan effort of the brain as well as the hand. The adaptation of old devices or forms to new purposes, however convenient, useful, or beautiful they may be in their new role, is not invention. In the case of Bannage vs. Phillipi, 9 OFFICIAL GAZETTE, 1159, the Acting Commissioner of Patents decided, I have no doubt correctly, that the use of a small model of the main centennial building for paper weights and inkstands was not patentable. Another apt illustration of this is put by Simons, Design Patents, p. 194, of one who took a familiar statue of a shepherd boy, thrust a gaspipe through the leg and arm, and applied it to the purposes of a droplight. Here was good taste, undoubtedly, but not invention. He merely succeeded in making that which was before purely ornamental serve a useful purpose. It is true patents have apparently been issued for designs frivolous in themselves, or new adaptations of old designs; but, as remarked in an excellent opinion by Commissioner Leggett, in the case of Parkinson, Simons on Design Patents, p. 101, "the practice of the Office in granting design patents has been not only liberal but lax." In the later decisions of the Office a stricter construction has been given to the law, and one more consonant to the familiar principles applied to mechanical patents If a combination of old designs be patentable at all, of which I have some doubt, the combination must be such as to produce a new appearance. If the effect produced be simply the aggregation of familiar designs, it would be patentable. For example, if one should paint upon a familiar vase a copy of Stuart's portrait of Washington it would not be patentable, because both elements of the combination, the portrait and the vase, are old; but if "any new and original impression or ornament" were placed upon the same vase, it would fall within the express language of the section. Apply these rules to the case under consideration. Rectangular safes essentially similar to complainant's, covered with wire-cloth, have been made and used for many years. When constructed of large size, each side was divided into panels by a vertical stile; when of smaller size, no such division was made. As the difference in size would not be patentable, so the division of each side into panels is none the more so. The only novelty, then, in this patent is the use of an ogee molding about the top and bottom, and the combination of this with paneled sides is claimed as complainant's invention. Moldings of this description, however, have been used for centuries, and applied, not only by way of ornament in architecture, but to articles of furniture and the decoration of interiors. The embellishment of a provision-safe with this ancient design is simply the adaptation of a well-known ornament to a new purpose. The result is pleasing in appearance, but not entitled to the protection of the patent laws as novel or original. Rectangular safes were formerly used for the exhibition of cheese in shops; but of late years they have been supplanted by a round safe, with the top divided and connected with hinges, so as to permit one-half of it to be thrown back. The present design appears simply to be a restoration of the old style with a rolling bottom, for the more convenient handling of the cheese, and the addition of a simple molding around the top and bottom, giving it undoubtedly a more pleasing appearance. While the patentee showed some taste in the manufacture of this article, and while it may have become popular and valuable to him, it does not seem to me to possess the originality without which no manufacture can be pat. entable. It results that the bill must be dismissed with costs. [United States Circuit Court-Southern District of New York.] EMILE CORNELY vs. NORBERT J. HENDERICKX. BLATCHFORD, J.: O. G., vol. xii, p. 431. In Equity.-BLATCHFORD, J.-Decided May, 1877. ORDER. On the bill in this cause, and on notice of motion for an interlocutory injunction herein, with due proof of the service thereof, together with copies of the bill, and affidavits referred to in said notice on the defend. ant herein; and it appearing to this court that two letters patent of the United States were issued in due form of law, on the 10th day of November, 1868, to the plaintiff, as assignee of Antoine Bonnaz, each for an "improvement in sewing-machine for embroidering;" said letters patent being known and distinguished as Nos. 83,909 and 83,910, and that the said defendant has infringed the rights secured by the aforesaid two letters patent, by making, using, and selling to others certain embroidering-machines, known as "Petit Machines," and constructed and operating substantially as described in the two letters patent aforesaid, contrary to the form of the statute in such case made and provided, and after hearing Mr. B. F. Lee, of counsel for complainant, and Messrs. Coudert Brothers, of counsel for the defendant, on motion of Turner, Lee, and McClure, complainant's solicitors, it is ordered, adjudged, and decreed that an injunction issue, commanding and enjoining the said defendant, his clerks, attorneys, agents, servants, and workmen, under the pains and penalties which may fall upon them, and each of them, in case of disobedience, that they forthwith desist from making, using, or selling, in violation of said letters patent, any sewing-machines for embroidering, constructed substantially as described, and claimed in either of the said two letters patent, and particularly any of such machines known as "Petit Machines," until further order in this cause. [United States Circuit Court-District of Connecticut.] JOSEPH ZANE ET AL. vs. PECK BROTHERS & CO. O. G., vol. xii, p. 518. In Equity.-SHIPMAN, J.-Decided August 11, 1877. The patent of Nathaniel Jenkins for a self-closing faucet, issued June 27, 1865, is not anticipated by the French patent of Chretien Morand, dated November 14, 1851. Where the change in the faucet made it more simple and economic, and was not formal, but in a certain degree structural, patentable invention was exercised, notwithstanding the general principle of operation was old. It was not simply the "carrying forward or new or more extended application of the original thought," and was not " a change only in form, properties, or degree." (Smith vs. Nichols, 21 Wall., 112.) THOMAS WILLIAM CLARKE for plaintiffs. SHIPMAN, J.: OPINION OF THE COURT. This is a bill in equity to restrain the defendants from the infringement of letters patent for a self-closing faucet, which were issued to Nathaniel Jenkins on June 27, 1865, and which have been duly assigned to the plaintiffs. The defendants admit infringement, and the sole ques |