opinion, it is shown that we sustained the first claim; but, as to the second, we affirmed the decree of the Circuit Court dismissing the bill upon the ground solely that infringement was not proven. We did not pass upon the validity of the second claim. The decree entered below in conformity with our mandate directed that the accounting should be for the infringement of said first claim. The contention of the complainant that the profits on the bottom plate should be included rests upon the ground that the making and selling of it was a contributory infringement of the first claim. Assuming it to be so, it does not follow that the defendant should be charged with the profits on the manufacture and sale of it. The infringement was of the invention of the principal member of the entire casing, and only of that member. It might well be that the supplying of the bottom plate would be contributory to the infringement and render the contributor liable for the trespass of the principal infringer. But infringement by the latter, if not of the whole thing, is only of some part, and it is the infringing of that part which the contributor helps the principal to do. As we pointed out in our former opinion, patentable invention may be of some member of a combination or thing which, when associated with other elements, either such as are known to the art or such as are suggested but not claimed by the inventor, is new and useful. But that gives him no proprietary interest in the things thus associated. So here, Canda having invented certain new and useful parts of a draw-bar casing, though he might have omitted to mention any bottom plate, if the state of the art would indicate to the builder that a bottom plate should be added, did nevertheless specify that a bottom plate would be needed, and proceeded further to describe a good form for one. The result reached by the court below upon this part of the accounting confounds claims 1 and 2, and extends the recovery to all the elements of the second claim. This we think was erroneous; but, as the master took care to distinguish that part of the profits which accrued on account of the bottom plate, the decree may and should be modified by deducting that part, which the master reports as amounting to $1,532.

4. Another exception of the defendant rests upon the facts that certain earlier patents, two in particular, one to Cushing and another to Thornburgh, had been taken out for "draw-bar stops for railroad cars" and "draft apparatus" for the same, which the defendant says indicate certain features of construction which are embodied in the infringing castings made and sold by the defendant, and which augment the profits wherewith the defendant is charged. The principle upon which this exception is grounded is well settled; but, before it can be applied, it is incumbent on the defendant to prove that the peculiar characteristic features or some substantial part of such peculiarities of the former patents were embodied in the patented articles sold, and that they were of such a character that they probably contributed to the profits. Elizabeth v. Pavement Co., 97 U. S. 126, 24 L. Ed. 1000. On this being shown, the burden of proof is devolved on the party seeking to recover the profits to prove what part of the entire profits are due to the use of his own invention. He must make the separation of values and show to the court how much is his rightful

proportion. Garretson v. Clark, 111 U. S. 120, 4 Sup. Ct. 291, 28 L. Ed. 371.

Here is the rock on which many patent causes have been stranded at the end of their course, for, though it can sometimes be done, it is generally next to impossible to distinguish the profit due to one rather than another of the characteristics of the article sold, or manufactured to be sold. The price is single, and it would rarely happen that either the buyer or the seller would contemplate the price as made up of components grounded on such a distinction. The facts are similar to those which in other cases would condemn the guilty party to suffer the consequences of his mingling indistinguishably the property of an innocent party with his own or that of another. Counsel for defendant has argued this question upon the theory that the rule laid down in the case of Elizabeth v. Pavement Co. was an exception merely to that stated in Garretson v. Clark, and seems to suppose that, in every case where some element or elements of a combination found in a former patent is found also in the infringing article, the burden is cast upon the plaintiff to prove either that it did not affect the selling price of the article, or, if it did, to show what part of the price was due to his own invention. But such a rule would be inconsistent with the decision in Elizabeth v. Pavement Co. We think the two cases above mentioned are not inconsistent, and that they are easily reconciled upon the assumption that the rule of the first case is applicable to the question of the burden of proof of showing the presence of the extraneous element and the probability that it has affected the price, and that the rule in the second case relates to the burden of proof after those facts are established. Thus, in the later case of Keystone Mfg. Co. v. Adams, 151 U. S. 145, 148, 14 Sup. Ct. 295, 38 L. Ed. 103, in summing up the conclusions reached thereon, one was stated to be "that where the infringed device was a portion only of defendant's machine, which embraced inventions covered by patents other than that for the infringement of which the suit was brought, in the absence of proof to show how much of that profit was due to such other patents, and how much was a manufacturer's profit, the complainant is entitled to nominal damages only," from which it seems that the conditions stated must have been made to appear before the rule stated could be applied.

Where the extraneous matter is another invention which is the subject of a monopoly in some other person, the reasons for the rule requiring a distinguishing of profits becomes clearer because of the necessity of preventing a double liability on the part of the defendant; but the reasons for its application to any other case are vague, and the practice difficult. In the present cause the court below held that it was not proven that the inventions of the Cushing and Thornburgh patents, or either of them, were embodied in the casings on which the profits were calculated, or contributed thereto, and in this we entirely agree. An examination of the testimony in the record shows that some of the forms of parts of the combinations of those patents are to be found in the Canda patent, but nothing which represents any patented device of Cushing or of Thornburgh. Nor do we find any substantial thing deserving of being reckoned as a factor to which a portion of the price was due. It was settled as between these parties by the former decree

that there was nothing in the prior art which anticipated the invention of the patent in suit, and that conclusion cannot now be disputed. The unpatented elements of the Cushing and Thornburgh patents (and they were all singly unpatented) were common property. Any other inventor might take them, if he did not take an entire combination, and use them as parts of his own structure, and, if they were a fit embodiment of his own ideas, they, in his combination, represented parts of his invention, and the invention pervaded the whole structure. We therefore conclude that there was no error in disallowing this exception. There are no other questions of sufficient importance to require discussion. There is a question of costs, but they were in the discretion of the court, and not the subject of appeal.

The decree of the Circuit Court will be reversed, and the cause remanded, with instructions to modify it in accordance with this opinion, and, as thus modified, re-enter it as the final decree of the court.

TYDEN v. OHIO TABLE CO. et al.

(Circuit Court of Appeals, Sixth Circuit. March 18, 1907.)

No. 1,598.

1. PATENTS-INFRINGEMENT-LOCKING DEVICE FOR TABLES.

The Tyden patent, No. 675,577, for a locking device for pedestal tables, claim 1, is void as too broad and substantially for a function. The remaining claims, while disclosing invention and valid as improvement claims, are of narrow scope and limited to the specific device shown. As so construed, held not infringed.

2. SAME.

The Wilhelm patent, No. 736,327, for a locking device for pedestal tables, held not infringed.

Appeal from the Circuit Court of the United States for the Eastern Division of the Northern District of Ohio.

C. S. Burton, for appellant.
H. Frease, for appellees.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

LURTON, Circuit Judge. This is a suit for alleged infringement of two patents, one issued to C. Wilhelm, August 11, 1903, and the other to E. Tyden, June 4, 1901. The Wilhelm patent has been assigned to Tyden. Both patents are for improvements in locking device for "pedestal tables." It is averred that the claims sued upon, being claims 1 and 2 of the Wilhelm patent, and 1, 2, 3, 4, 14, 15, and 16 of the Tyden patent, are capable of conjoint use, and that same have been so conjointly used by the defendants, who are operating under two later patents, one of October 16, 1904, to J. F. Arnold for an extension table lock, and one of December 27, 1904, to same party for an extension table. The defense was invalidity of complainant's patents and noninfringement. The court below sustained the patents, but held that they had not been infringed. A pedestal extension table was old. Tyden describes such a table as "a table which, when closed up without the ex

tension leaves, have a support consisting of a central pedestal with spreading feet at the base, the pedestal being vertically divided, and one part pertaining to each of the two parts of the table top, and having rigid with it two of the feet." He then says that in such tables a center leg, attached to a crossbar connecting opposite slides pertaining to the extension devices, is inclosed within the two parts of the pedestal, which is hollow for the purpose. The difficulty which he set himself to remedy in these well-known tables was, that the pedestals when closed did not close tightly so as to present a solid and workmanlike appearance. "My invention," says the patentee, "consists of means for locking the two parts of the pedestal together in such manner as to close them up from top to bottom. His first claim is an exceedingly broad one, claiming, as it does, every means which involve an element on each part and below the top of the pedestal. It is in these words:

"A pedestal extension table, in combination with a vertically-divided pedestal and the two separate parts of the table top attached to the respective parts of the pedestal, means for binding the pedestal parts together, comprising an element on each part at a substantial distance below the top of the pedestal, and means whereby they are adapted to be connected when the pedestal parts approach; means for operating on said elements after they are connected to cause them to bind the pedestal parts together, extending from said elements upward, and thence under the table top toward the margin thereof."

The second claim is for specific means for accomplishing this end. It is in these words:

"In a pedestal extension table, in combination with a vertically-divided pedestal and the two separate parts of the table top rigid with the parts of the pedestal respectively, a locking device for connecting the two parts of the pedestal together, comprising two mutually engaging elements, one on each part of the divided pedestal, said elements being adapted to become engaged before the pedestal parts are fully closed together; one of the said locking elements being movable on the part of the pedestal to which it pertains, and operating connections by which it may be moved in direction to draw the parts of the pedestal together."

The other claims in issue cover slight differences in means described, and need not be set out.

A vertically-divided pedestal, hollow and inclosing a central leg when closed, this center leg being the support for the center of the table when extended, one-half of the pedestal being rigidly attached to each of the movable members of such a table, was old. Means intended to draw these two parts of the pedestal together and hold them in contact were well known. That they did not do this in such manner as to make a tight joint and prevent an unfinished appearance is shown. That Tyden has provided a locking device which is an improvement upon the old devices for the purpose, and with better results, is the best which can be said for him. Examples of the devices of the old art used to accomplish the same purpose are to be seen in the old Briggs patent of 1843 and the Thorn patent of 1851, also the Hoffmeier patent of 1881. Devices in analogous arts performing the same function of drawing two parts closely together and holding them so were very common. For furniture locks, see patent No. 22,456, to Robinson; No. 139,844, to

Wolf; No. 475,581, to Liebe; and that to Wilen, 552,026. For sash locks or fasteners, see patent to Christie, 160,509; No. 162,614, to Breckenridge; patent to Ives, No. 317,540. A sash fastener made by Hastings is admitted to be substantially identical with sash-fastener devices employed before Tyden's invention as a means for holding together the lower ends of divided pedestals on extension tables. The lever, C, of the Tyden device is identical with the lever or brake bar in the patent to Jones, 608,865, for a vehicle brake. What Tyden did was to combine old and well-known means for locking two parts and holding them tightly together and adapt them to the ornamental pedestals of tables. The field was a narrow one, and his device is not generic. Confined to the specific means he has shown for doing the thing he set out to do, his patent covers a step which is but an improvement, but a patentable one. This does not apply to claim 1. That is not limited. It claims all means for locking and holding such pedestals, and is substantially a claim for a function. It cannot be upheld, and must be held void. We agree with the court below in holding that, thus limited, the other claims are not infringed. We also agree in the conclusion that the claims of the Wilhelm patent are not infringed.

Modified so as to hold claim 1 of the Tyden patent void, as too broad, and for a function rather than a device, the decree of the Circuit Court will be affirmed.

GENERAL ELECTRIC CO. v. BULLOCK ELECTRIC MFG. CO. et al.

(Circuit Court of Appeals, Sixth Circuit. March 21, 1907.)

No. 1,507.

PATENTS-INVENTION-FIELD-Magnet POLES.

The Reist patent, No. 573,107, for means of securing field-magnet poles, is void for lack of patentable invention.

Appeal from the Circuit Court of the United States for the Western Division of the Southern District of Ohio.

W. K. Richardson, for appellant.

Thomas F. Sheridan and Clifton V. Edwards, for appellees.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges. RICHARDS, Circuit Judge. This was a suit in equity brought by the General Electric Company against the Bullock Electric Manufacturing Company and others, for an injunction, with the usual prayer for an accounting, for the infringement of letters patent No. 573,107. issued December 15, 1896, to Henry G. Reist, the assignor of the complainant, for secaring field magnet poles. In the specification, the invention is described as follows:

"My Invention relates to securing pole-pieces to revolving field-magnet structures, particularly in alternating-current dynamos, where the field-magnet poles are made of assembled laminations of sheet iron. To this end I make the laminations with a dovetailed tenon upon the ends, so that when they are assembled the pole-piece may be slipped sidewise into the field-magnet structure. I then insert keys, so as to take up any lost motion between the polepiece and the field-magnet, the end plates of the poles being provided with