of plaintiff, but only as one of the "straws" indicating unfair competition. While the existence of a valid trade-mark is not essential to a right of action for unfair competition (Samson Works v. Puritan Mills, C. C. A. 6; 211 Fed. Rep., 603; 128 C. C. A., 203), we think it clear that, at least as applied to the sash-rail (still considering it independently), the case presented does not justify enjoining defendant's use of the trade-name "Almetal."

(9) We are, moreover, of opinion that, under the rule which we recognized in the Temco case, supra, we have no jurisdiction over the subject of unfair competition as related to the division and corner bars of the second patent, which we have held not infringed—at least as considered by themselves, and not as a part of a complete. store-front structure. Had the second patent been held invalid, such would have been the result under our decision in Schiebel Toy, etc., Co. v. Clark (217 Fed. Rep., 760; 133 C. C. A., 490); and the same result seems logically to follow where, as here, a patent is held not infringed, for we think the logical theory on which (in case a patent has been sustained) damages for unfair competition may be considered is that such damages are to be treated merely as "aggravation of the infringement," and recovery by way of aggravation of damages otherwise non-existent would seem anomalous. It therefore seems clear that no relief can be given in this case for alleged unfair competition, either by way of injunction or damages, unless it be on account of the store-front construction taken as a whole. There is much to be said in favor of a jurisdiction, even in the absence of diverse citizenship, to give relief for unfair competition with respect to a unitary or unified structure, the element representing whose major function is covered by a patent held valid and infringed-and regardless of the fact that certain remaining features of the unified structure have been held not to infringe other asserted patents in the same suit. Upon such a case we express no opinion; we have no such case here. The sash-rail is a minor part of the unified structure, which includes, in addition to that feature, and the features claimed to infringe the second patent, certain other unpatented features. Moreover, we have found an absence of unfair competition as respects the sash-rail standing alone. While the question is not free from difficulty, we are disposed to the opinion that, in this situation and having in mind the basis on which relief for unfair competition in a patent infringement suit is made to rest, an assertion of jurisdiction to cover the question of unfair competition in making or selling the unified structure would be an unwarranted extension.

So much of the decree of the court below as relates to unfair competition is accordingly reversed, but without prejudice to such right

of action, if any, as plaintiff may otherwise or elsewhere have with respect to the features not here passed upon.

The record will be remanded to the district court, with directions to enter a new decree not inconsistent with this opinion. The costs of this court, including the expense of preparing transcript, will be divided.

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

SIMPLEX LITHOGRAPH Co. v. RENFREW MFG. Co. et al.

Decided April 10, 1918.

255 O. G., 367; 250 Fed. Rep., 863.

1. PATENTS-SUBJECT-MATTER-NOVELTY.

A product which successfully imitates another is not necessarily a patentable novelty, the patent law being connected with the means, for if a successful imitation were per se patentable a natural product for that purpose would be within the act.

2. SAME-INFRINGEMENT WHAT CONSTITUTES.

The Stenz patent, No. 1,047,849, for sample-cards on which were embossed a replica in paper of the cloth advertised, Held limited to the process of embossing or striking up portions of cardboard, and, as limited, not infringed.

APPEAL from District Court of the United States for the Southern District of New York.

Bill by the Simplex Lithograph Company against the Renfrew Manufacturing Company and others. From a decree dismissing the bill, complainant appeals. Affirmed.

STATEMENT OF THE CASE.

Action is on patent to Stenz for improvements in "sample cards," numbered 1,047,849, claims 1, 4, 5, and 6.1 The patent was considered in this court in 221 Fed. Rep., 637; 137 C. C. A., 361, and the claims in suit are there set forth, as is the general nature of the invention. The action then before us was subsequently discontinued, and the

11. A sample card for displaying samples in the similitude of textile fabrics, comprising a body portion and an embossed panel struck up from said body portion having a surface forming a replica of a sample of textile material.

4. A sample card for displaying samples in the similitude of textile fabrics, comprising a body portion, and a plurality of embossed panels struck up therefrom representing replicas of samples of textile material differing in pattern from each other, and arranged symmetrically with relation to each other.

5. A sample card for displaying a sample in the similitude of textile fabric having struck up thereon a replica of a sample of the textile material to be displayed.

6. A sample card for displaying a sample in the similitude of a textile fabric, said card having a surface corresponding to the characteristic weave of the pattern of the fabric, and being colored in correspondence with the color and design of the fabric.

present suit begun, against substantially the same parties defendant, but a different article was alleged to infringe. The court below found no infringement and dismissed the bill. Plaintiffs appeal.

Mr. T. Hart Anderson and Mr. Charles Neave for the appellant. Mr. C. P. Goepel, Mr. Arthur Wm. Barber, and Mr. Lanier McKee (Messrs. Hervey, Barber & McKee of counsel) for the appellees.

Before WARD, ROGERS, and HOUGH, Circuit Judges.

HOUGH, Cir. J., (after stating the facts as above:)

(1) It is claimed for Stenz that he was the first to producesample cards which could be used strictly as such, showing in paper the actual fabric.

In the sense that what is made under this patent creates the optical illusion of seeing on the cardboard back something which, even on close inspection, it seems possible to pluck from its fastening, the assertion is true. The excellent "article of manufacture," the product, which is described and claimed, is new with Stenz.

In one use of the word, its novelty consists wholly in the perfection of imitation. The new "product" is the production of illusion; i. e., making the eye believe that actual pieces of cloth are in view. But patentable novelty must be more than this. Never can the patent law wholly divorce itself from the idea of "means," for that word suggests or implies the meritorious human effort which it is the object of the law to reward. If successful imitation were per se patentable, the selection and use of a natural product for that purpose would be within the act. (Denton v. Fulda, 225 Fed. Rep.,

537; 140 C. C. A., 521.)

(2) Therefore, to support this patent, and avoid the authority of the so-called "paper collar" decisions1 relied on by defendants, it is necesary to consider by what means, method, or process Stenz obtained a result so desirable commercially, and showed (if he did) that he deserved a patent. The specification shows plainly that he gets his effect and produces what he patents by striking up or embossing on the cardboard backing the panel which is to be colored and drawn upon to represent the pattern, color, and weave of the cloth it simulates. He contemplates raising his panel to "a distance substantially equal to the thickness" of the simulated fabric, to the end that he may show "in effect a replica" thereof.

This matter is, after trial, plainer than it was when the patent was here before on motion for injunction pendente lite, and we see

1 Union Paper Collar Co. v. Van Deusen (7 O. G., 919; 10 Blatchf., 109; Fed. Cas., No. 14,395, and 23 Wall., 530.) Same v. Leland (7 O. G., 221; 1 Holmes, 427; Fed. Cas. No. 14,394.)

no reason to depart from the ruling, then made, that the claims cover only imitation-sample cards made by "striking up" portions of cardboard substantially as specified. This limitation must be read into claim 6 (the only one not having it explicitly stated), or else that claim is void.

As thus construed there is no infringement, though the defendants, by (probably) improved methods of color-printing and the use of very old "conventional embossing," have come fairly near plaintiff's marked success. They have that right, provided they do not appropriate that which alone validates plaintiff's patent, viz., the striking up" method of production. Much is made of the alleged fact that defendants have imitated the "characteristic weave" of the simulated fabric. We doubt the fact; but, if they have, such result is reached by old means, not affected or limited by Stenz's invention.

66

Finding no error in the disposition of the case below, we express no opinion on other matters raised in argument, and affirm the decree appealed from, with costs.

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

UNITED STATES METAL CAP & SEAL Co. v. AMERICAN KEYLESS KAP CORPORATION et al. AMERICAN KEYLESS KAP CORPORATION v. UNITED STATES METAL CAP & SEAL CO.

PATENTS-VALIDITY.

Decided April 10, 1918.

255 O. G., 368; 250 Fed. Rep., 857.

The Spengler patent, No. 1,074,907, for a bottle-closing cap comprising a resilient disk, which utilized the buckling property of metals to produce a tight closure, Held valid and not anticipated by the earlier Clay patents. APPEALS from the District Court of the United States for the Southern District of New York.

Suit by the United States Metal Cap & Seal Company against the American Keyless Kap Corporation and another, together with a suit by the named defendant against the complainant. There were decrees for the complainant in the first case, and defendants appeal. Affirmed.

STATEMENT OF THE CASE.

Appeals from decrees in equity, in two cases, tried together and consolidated upon the record for this court. The action by United States Metal Cap & Seal Company is upon all the claims of patent to Spengler, No. 1,074,907, applied for June 5, 1911, and issued

October 7, 1913. After this suit began, the defendant therein, American Keyless Kap Corporation, brought against the United States Metal Cap & Seal Company the second action, on claims 4, 5, and 6 of Patent No. 755,275, and all the claims of No. 755,276, both issued to Clay on March 22, 1904, but the earlier number rests on an application antedating the later by six months.

The subject-matter common to all these patents is the closure of bottles, jars, and the like by caps of resilient metal, that can be repeatedly applied, removed, and reapplied, as does the "crown cork and seal," so well known and in extensive use before either Clay or Spengler made their applications. The United States Metal Cap & Seal Company put out commercially the Spengler device; the American Keyless Kap Corporation acquired the Clay patents, which had had no commercial development, and before date of first suit were making and selling an article which confessedly imitates Spengler.

The contest below and in this court may be thus stated: United States Metal Cap & Seal Company asserts that Clay neither anticipates nor narrows Spengler, and that the American Keyless Kap Corporation's product is a plain and willful infringement; the latter corporation replies that Spengler is invalidated by Clay, but, if not, his specification discloses nothing more than a variant of Clay's fundamental and basic concept, so that the later patentee must pay tribute to the earlier. The lower court upheld the Spengler patent and declared it infringed, and found no infringement of Clay's patents. From both decrees, the American Keyless Kap Corporation appealed.

Mr. Charles Neave and Mr. Howard Taylor for the appellants.'" Mr. Stephen J. Cox (Mr. Frank J. Kent on the brief) for the appellee.

Before ROGERS and HOUGH, Circuit Judges, and LEARNED HAND, District Judge.

HOUGH, Cir. J., (after stating the facts as above:)

The question of infringement need not detain us; it is admitted, if the relative merits of Clay and Spengler were correctly adjudicated in the trial court. The closure or stopper made under the Spengler patent utilizes the elasticity or resiliency of metal to produce a loose or tight fit over any aperture which, like a bottle-mouth, has a flange surrounding the open end. A rude form of this operation can be observed when the well-known "crown cork and seal," having been carefully detached with a tool, is pressed down again over the bottle-mouth, and makes a fairly close fit by the elasticity of its continuous rim.