sustained the burden of clearly proving priority of invention; the evidence demonstrates that the Fisher oval safe with these T-shaped guards was put on the market in 1910, and thus anticipated Stone. The claims in question must therefore be held, not only valid, but infringed by certain of defendant Savings Loan & Trust Company's devices.

[5] 3. Claims 1, 2, and 5 of the fifth Fisher patent in suit, No. 1,073,847, and claim 6 of the third Fisher patent in suit, No. 990,535, likewise relate to the slot guards in combination with other elements. The form of slot guard described in the fifth Fisher patent was novel. Its utility was due to its simplicity, compactness, cheapness, and efficiency. The use of the bell crank form of guard and the resilient mounting reduces the elements essential to the operation of the slot guard from three to two. Validity is clear.

In defendant Bankers' Registering Safe Company's device the resilient arm or slot guard holder, being in the form of a piano wire, is carried by a nonresilient top plate. While there are thus three, instead of two, elements, the operation is identical: Claims 1 and 2 read practically directly thereon, and the long and short arms of defendant's guard, joined as they are by a web, is the full equivalent of the bent slot guard described in claim 5. These claims must be held infringed.

[3] Claim 6 of the third Fisher patent calls for pivotally mounted spring-actuated slot guards carried by the peripheral bearings with which the inner top plate is equipped, in combination with the other elements of the savings bank. The improvement is a very narrow one; a similar guard is to be found in the old single compartment safe. If its adaptation to the present combination involve invention, and if validity of the claim be assumed, its scope must be limited to the structure described; as defendant's guards are not in any true sense pivotally mounted, infringement is not established.

4. Claim 7 of the second Fisher patent in suit, No. 990,534, is specific as to details of the lock element in the combination. We concur in the finding of noninfringement. The fillet in Bankers' Registering Safe Company's device serves a different function and the bolt is not slidably mounted.

5. Claim 5 of this second Fisher patent describes specifically the relation of the name plate, the casing top, and the inner slot guard bearing plate as connected together by clinching lugs. Defendant W. F. Burns Company's device has no clinching lugs uniting all these parts. The name plate is attached to the case by the lugs which form the pivots for the safe handle. The invention is extremely narrow. The scope of the claims should be confined to the device as described. So interpreted, concededly there is no infringement.

6. The charge of infringement pro tanto of claims 2, 3, and 4 of the first Fisher patent by the Bankers' Registering Safe Company, because one of the coin compartments of its safe has a wide, open outer side cannot be sustained. Each of these claims clearly contemplates that, in the entire structure of the core, the compartment forming flanges shall be radial, and that the outer edges of each compartment shall necessarily be spaced apart more than the coin diameter.

The invention of these claims resides in the entire core; not pro tanto in one compartment thereof.

[6] 7. Though in a sense a pioneer patent in this specific art of multiple compartment portable savings banks, few of the Thompson devices were made. It was completely superseded by the Fisher device. Thompson's fourth claim alone is involved in each of these suits. Read in the light of the specifications and drawings and the prior art, one of the functions of the plate projections specified therein was to hold the assembled complete coin tubes in place; for, unlike the defendants, who in this followed Fisher, Thompson had no core. He gathered together into one structure a number of complete coin tubes. In the core and casing devices, in which the coin compartments are formed by flanges rising from a base, there are no such complete tubes, and consequently no such plate projections. In view of the totally different character of the structures, and of complainant's counsel's frank statement that there is room for difference of opinion concerning this claim, and assuming its validity, we add merely our concurrence in the views of the trial judge that it has not been infringed.

[7] 8. In so far as unfair competition is relied upon as a separate and distinct cause of action, the court was without jurisdiction both in the Bankers' Registering Safe Company Case and in the W. F. Burns Company Case, as there was no diversity of citizenship. U. S. Expansion Bolt Co. v. H. J. Kroncke Hardware Co., 234 Fed. 868, 148 C. C. A. 466, decided by this court April 18, 1916.

[8] If, however, in infringing upon plaintiff's patent rights, defendants have aggravated the damages by unfair competition in the sale of the very infringing articles any damages thus caused may be awarded in the accounting. Payson Manufacturing Co. v. Ludwigs, 206 Fed. 60, 124 C. C. A. 194. Without detailing the evidence, we are satisfied therefrom that the trial judge correctly held that the probable result of similarity of appearance, confusion, and deception, actually occurred in the Bankers' Registering Safe Company Case, and that in the Burns Company Case, neither actual nor probable deception or confusion was established.

[9] 9. Violation of a common-law trade-mark, by its use on the infringing article, may also be shown in aggravation of damages. In the Bankers' Registering Safe Company Case, the bill alleged a trademark in the word "Teller" and its employment on plaintiff's product, usually associated with some auxiliary word, such as "Traveling,' "Home," "Savings," "Receiving," or "Automatic," and charged a violation thereof by the use of the words "Depositor's Teller" on the infringing device. The evidence showed registration in Illinois both. of "Teller" and of "Traveling Teller" as trade-marks, and federal registration of "Traveling Teller" only.

Proof of actual use of the word "Teller" to designate generically plaintiff's safe, even though never alone, but always in association with one or the other qualifying word dependent upon the specific form of safe, was sufficient to establish a common-law trade-mark in the word "Teller." And the District Judge was clearly right in hold

ing this word, as applied to portable bank safes, to be purely fanciful, and, however suggestive, in no sense descriptive of the device.

10. In claim 8 of the first Fisher patent in suit the lock element is more particularly specified than in claim 5; in claims 6 and 7, the elements of a central compartment formed by the walls uniting the inner edges of adjacent flanges, is added; in claim 7, the slot guards, too, are specified. The consideration of claims 1 and 5 disposes of the questions of validity and of the attempted limitation to radial flanges; Fisher's combination, including the central compartment, is of course none the less valid and unanticipated because the added element is not of itself novel.

We fully agree, too, that under the doctrine of Winans v. Denmead, 15 How. 330, 14 L. Ed. 717, neither the circular form of the base nor the central location of the bill compartment, neither of which were novel or vital, should restrict the claims to this precise description; the oval base and side bill compartment formed by the inner walls · of some of the flanges do not enable defendants to escape infringement. And the lock element of defendant Bankers' Registering Safe Company's Case is fully covered by claim 8.

The defendant Savings Loan & Trust Company's safe, made under the Stone patent, 1,011,521, does not thereby gain any added protection. If it be an improvement upon, it is none the less an infringement of, Fisher's device. The changes, whereby the core is drawer form, the casing horizontally instead of vertically removable, the keycontrolled bolt on the core with the bolt-engaging member on the casing, instead of the reverse location, are only in form and not in substance.

The differences in construction and operation between complainant's and the W. F. Burns Company safe, as clearly pointed out by Judge Sanborn, are likewise formal, and do not avoid infringement.

The decrees in each of these cases will be reversed, with directions to enter decrees in accordance with the views herein expressed. The original complainant will recover costs in all of the appeals and crossappeals.

GLAUBER v. H. MUELLER MFG. CO.

(Circuit Court of Appeals, Seventh Circuit. January Session, 1909.)

PATENTS

No. 1471.

312(3)-SUITS FOR INFRINGEMENT-EVIDENCE-EXPERIMENTS BE

FORE THE Court.

In experiments before the court with mechanical devices involved in an infringement suit, much depends on the adjustments for the moment, and such tests have little weight upon the question whether in actual use the devices would or would not operate successfully.

[Ed. Note.-For other cases, see Patents, Cent. Dig. §§ 548, 549.]

Appeal from the Circuit Court of the United States for the Southern District of Illinois.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

On petition for rehearing. Denied.

For former opinion, see 95 C. C. A. 108, 169 Fed. 110.

W. Clyde Jones and Charles C. Linthicum, both of Chicago, Ill., for appellant.

Albert H. Adams, of Chicago, Ill., for appellee.

PER CURIAM. Complaint is made that, upon the oral argument of this cause in this court, appellant's counsel, to support his statement that the Craigie patent, No. 216,661, would not, and could not, prevent hammering, produced and operated a faucet, said to contain a valve like the Craigie valve, that in its operation before the court produced hammering; that the faucet thus operated was not an exhibit in the cause, and had never been seen by appellee or his counsel; that its production, and the result of such operation, was a great surprise to them; . and that either by the faulty construction of said faucet, or by its manipulation, the court was misled and deceived, as would be shown if upon a rehearing petitioner was given an opportunity to exhibit and operate a valve that is an exact and perfect reproduction of the valve of the Craigie patent. There is no point made in the petition other than what has been already fully considered. This point is the only one that arrests the court's attention.

The difficulty about this point, as a sufficient reason for rehearing, is that, though the exhibition asked for were made in accordance with the promise of the petitioner, the decree entered would be unaffected thereby, for the Glauber patent would be none the less patentable upon the reasons stated in the opinion, simply because the Craigie patent might be operated on exhibition to prevent hammering. Indeed, the court is not without knowledge that in exhibitions of this kind much depends upon the adjustments for the moment, that would have little weight upon the question whether, in practice, the device would or would not produce hammering. The probability is that there are circumstances in which the Glauber valve is not without hammering. The most, therefore, that a successful exhibition of the Craigie patent would do, in the way of affecting what the court has already done, might be to slightly modify the language of the opinion, for the practical success of the Glauber patent, its acceptance by the market, and appellee's choice to follow it rather than the Craigie patent, are all practical proofs, better than mere exhibitions, that in the matter of the prevention of hammering it must be decidedly superior to the Craigie valve-considerations that should lead us to resolve whatever doubts we have on the subject in favor of the validity of the Glauber patent.

The petition for rehearing is overruled.

1. PATENTS

WEBSTER ELECTRIC CO. v. PODLESAK.

(District Court, E. D. Wisconsin. January 8, 1917.)

215-AGREEMENTS UNFAIR COMPETITION.

A contract between a manufacturing company and an inventor in its employ, whereby the company agreed to pay the expenses of an application for a patent upon a device invented by its employé, so as to avail itself of the protection of the patent against competition, or to prevent a competitor from securing a similar patent, is a proper subject of agreement.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 328.] 2. SPECIFIC PERFORMANCE

71-AGREEMENTS-ENFORCEABILITY.

Where both parties knew that the invention for which patent was applied for had been publicly used more than two years prior to the application, an agreement for assignment of the patent cannot be specifically enforced.

[Ed. Note. For other cases, see Specific Performance, Cent. Dig. § 204.] 3. SPECIFIC PERFORMANCE

121(1)—EVIDENCE-SUFFICIENCY.

A decree for specific performance must be based upon evidence clearly · disclosing an agreement to transfer.

[Ed. Note.-For other cases, see Specific Performance, Cent. Dig. §§ 387, 388.]

4. SPECIFIC PERFORMANCE

121(4)-EVIDENCE-SUFFICIENCY.

In a suit to specifically enforce an alleged agreement for the transfer of a patent when issued, evidence held insufficient to establish the agreement asserted.

[Ed. Note.-For other cases, see Specific Performance, Cent. Dig. §§ 391393.]

In Equity. Bill by the Webster Electric Company against Emil Podlesak. Bill dismissed.

Williams, Bradbury & See, of Chicago, Ill., and Quarles, Spence & Quarles, of Milwaukee, Wis., for plaintiff.

Thompson, Myers & Kearney, of Racine, Wis., for defendant.

GEIGER, District Judge. After hearing the testimony and argument in this case, I give my views in support of a conclusion that an interlocutory decree should be entered, vesting the right to the invention, whose title is the subject of controversy, in a receiver or master with full power to prosecute the pending application for a patent, and to that end annulling the defendant's revocation of the power of attorney which he had previously given to the plaintiff's attorneys. I stated, then, that the two fundamental things of interest to both parties were whether Podlesak was entitled to a patent, and, secondly, whether the so-called Sumpter application might not be defeated through Podlesak's application. The possibility was recognized that, if the latter disclosed invention and public use more than two years prior to the date of application, both applications (if identity of invention should be found by the Patent Office) would have to be denied upon interference. It seemed to me that, in view of the importance of this Podlesak invention as between the plaintiff and its

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