although the cover had free play horizontally, it could not be lifted off or detached from the vessel without great trouble and inconvenience." Then follows in that patent the statement that some years ago Little. field "designed and applied to the ornamental covers of open-stove ovens an improvement in these swing-joints, by which the objection of a permanent fastening was in a measure obviated," such improvement being the oval-shaped projection on the under side of the cover in connection with the oval-shaped aperture in the rim of the upper plate of the stove. Then follows a statement that the object of the new invention is to improve on the oval-projection and oval-aperture plan, and obtain a swing-joint for the cover which shall so work as that the cover may be not only readily swung aside without being lifted off or falling when swung aside, but may, when closed, and then only, be removed; and that the improvement consists chiefly in substituting a circular aperture in the rim or top plate and a round projection on the under side of the cover in place of the oval aperture and oval projection. This new invention is clearly applicable to the stove covered by the patents embraced in the assignment and the supplemental agreement. It improves the method of hinging a cover to the top of the stove so as to enable it to be swung aside on a horizontal plane without falling off. It is an improvement on the rivet method in reissue 1,823. The rivet method was a permanent fastening. The oval-projection and oval-aperture method was an improvement which got rid of a permanent fastening, but was yet defective. The round-hole and round projection method is a still further improvement. All three of the methods allow the cover to be swung aside in a horizontal plane and to be supported in predetermined positions. The reissue of 1870, in the particulars just referred to, is to the same effect.

The bill complains only that the defendants have made and sold stoves containing the new improvement, and prays an account only in respect to such stoves, and a decree establishing the plaintiff's exclusive right for New York and Connecticut only to make and sell stoves embodying the new invention. It does not extend the plaintiff's claim to covers for any vessels but stoves.

As regards such stoves as are covered by the patents embraced in the assignment and the supplemental agreement, it seems quite clear that the plaintiff has the exclusive right, as against the defendants, to employ in such stoves the improvement claimed in the reissue of 1870, and that the bill is well founded in that respect. Whether the plaintiff would have the exclusive or any right to employ such improvement in other vessels than such stoves is not a material question in this case. Even though the plaintiff, in respect to such reissue, be a mere licensee in regard to such stoves, and not an assignee or a grantee of the entire exclusive right under the patent for a specified territory, yet as such licensee he can maintain this bill against Littlefield and all persons who claim

under him, as was directly determined by the Supreme Court in the former suit.

As the parties to the suit are all of them citizens of the State of New York, the bill is not maintainable so far as it asks for a decree that Littlefield execute further transfers to the plaintiff. But, as the demurrer is to the whole bill, and as the bill is maintainable in all other respects, the demurrer must be overruled, with costs to the plaintiff, and with leave to the defendants to answer on payment of such costs, to be taxed within thirty days after service of a copy of the order to be entered on this decision.

The plaintiff also asks for a preliminary injunction to restrain the defendants from infringing the plaintiff's exclusive right under the reissue of 1870. Such injunction is granted so far as regards the employment of the invention claimed in the reissue of 1870 in such stoves as are covered by the patents embraced in the assignment and the supplemental agreement, as determined by this court and the Supreme Court in the previous litigations between the parties, and by this court in this decision.

[United States Circuit Court-District of Massachusetts.]

HOLBROOK ET AL. v. SMALL.

SAME v. MATTHEWS ET AL.

Decided Cctober 9, 1878.

17 O. G., 55.

1. Expenses of suit are never allowed in assessing damages; nor is interest to be computed upon the amount of profits except under peculiar circumstances.

2. The power given the court by statute to treble the damages does not extend to profits in a suit in equity.

3. Costs having been taxed equitably and in the manner to which both parties had consented, neither can be allowed to withdraw consent upon coming in of the master's report.

Mr. John Hillis for complainants.

Mr. Thomas L. Livermore for defendants.

LOWELL, J.:

In each of these cases the first decree of the court found that one claim of one of the two patents relied on by the plaintiffs was void for want of novelty, and sustained certain other claims, and found infringement of these claims on the part of the defendants.

The master, in each case, has assessed the profits made by the defendants by the use of the inventions held to be valid, but has found nor damages as distinct from profits.

The complainants object'that some part of the expenses of the litigation should be assessed as damages and that interest should be assessed on the profits.

Expenses of suit are never allowed. Philip v. Nock, 17 Wall., 460. Interest may sometimes be added to the profits, but only under peculiar

circumstances, which the master does not find in this case. Mowry v. Whitney, 14 Wall., 620; Littlefield v. Perry, 21 Wall., 205.

The complainants ask that the court will treble the damages, under the power given in section 55 of the statute of 1870 (now Revised Statutes, section 4921); but it seems clear that the law contrasts profits and damages throughout that and the preceding sections, and that the power to treble the damages does not extend to profits in a suit in equity. It is true that under some circumstances a jury may consider the profits in ascertaining the damages when no better means are at hand, and so it may incidentally happen that in increasing the damages the court is adding to the profits, but profits are never of themselves the measure of damages at law. And in the section cited the court may increase damages as distinguished from profits. The increase is never to exceed three times the amount of the verdict (Revised Statutes, section 4919), and the verdict is to be for the actual damages. The master finds that there were no actual damages in either of these cases; and it is impossible for the court to make a substantial verdict by multiplying nothing by three or

less.

In respect to costs, the law is that, if by mistake the patentee claims to have invented some substantial part of the thing patented, of which he was not the original and first inventor, and that part is distinguishable from the rest, and the good part has been infringed, he may recover damages for such infringement, but no costs. Rev. Stats., Sec.

4922.

In each of these cases the clerk, by consent of parties, taxed costs for the plaintiffs and deducted from the gross taxation so much of the expense as he found had been caused by taking evidence on the claim afterward declared by the court to be void. The plaintiffs contend that the above-cited section of the statute does not apply to these cases because they have prevailed on two patents, one of which was wholly valid. The defendants contend that, by appealing to the court, the plaintiffs have renounced the agreement, and that the law deprives them of costs altogether. The clerk has taxed the costs in an equitable mode, and by consent; and I see no reason for permitting either party to withdraw the consent.

Master's report and clerk's taxation in each case affirmed.

[United States Circuit Court-Southern District of New York.]

SARGENT v. THE YALE LOCK MANUFACTURING COMPANY.

[SUIT No. 1.]

Decided October 29, 1879.

17 O. G., 105.

1. Reduction of prices and consequent loss of profits enforced by infringing competition constitute a proper ground for an award of damages.

2. Where a patentee of a "turning-bolt," which is not marketable except when embodied in a lock, is compelled to sell his locks, of which the patented device is

an essential feature, at a reduced price, by the acts of an infringer, who sells, at low prices, locks embracing, as an essential element, the patented device, the infringement must be held to have occasioned the entire loss resulting to the plaintiff from the reduction of prices, after making proper allowance for any other patented device contained in the defendant's locks and for any other causes which may have given the defendant an advantage in the sale of his locks.

Mr. Edmund Wetmore and Mr. George T. Curtis for the plaintiff.
Mr. Frederic H. Betts for the defendant.

BLATCHFORD, J.:

The master reports that there is no basis from the proofs adduced before him to find what profits have been made by the defendant by the use of the "turning-bolt" (the infringing device) in the locks made and sold by it, and that therefore, on the testimony before him, he cannot find what profits, if any, are due from the defendant for the use of the "turning-bolt."

The patent on which this suit is brought is a reissue granted January 2, 1872. The master reports that after that time, and in 1873, in consequence of the defendant's offering and selling to the plaintiff's principal customers, and to the trade generally, locks containing the infringing device at a less price than the plaintiff was obtaining, a reduction of prices was enforced on the plaintiff, such reduction being, in round numbers, $1 on each No. 5 lock and $2 on each No. 3 lock. Exception 1 of the defendant is to such finding and report, and alleges that the master should have reported that no such reduction was enforced, and that there was no proof of the amount of any reduction caused by the defendant's infringement, and that there was no method of computing such reduction, even if it actually existed.

The master also reports that it is in evidence that during the period covered by the accounting the plaintiff could have manufactured, in addition to the locks he did manufacture, and without materially increasing his manufacturing facilities, all the locks manufactured and sold by the defendant. Exception 2 of the defendant is to such finding and report, and alleges that the master should have reported that no such additional manufacture by the plaintiff was possible, or that it was impossible without a very great extension of his facilities.

The master also reports that it is in evidence that during the period covered by the accounting the plaintiff would have made sales to many of the persons who were induced to purchase from the defendant, at his own established prices, had not the defendant offered its locks at lower prices. Exception 3 of the defendant is to that part of the report, and alleges that the master should have found and reported that no such sales would have been made, or that, even if made, they would not have been at the plaintiff's own established prices.

The master also reports that the plaintiff has suffered damage in respect to the matters to which Exceptions 2 and 3 relate. Exception 4 of the defendant is to that part of the report, and alleges that the mas

ter should have found and reported no damage whatever from the competition of the defendant.

The master further reports that the locks sold by the defendant contained, in addition to the "turning-bolt," a device patented by the Rosner patent, for which infringement a claim is made against the defendant in another suit; that as to the proportion of the reduction of prices above set forth which should be allowed to the device claimed under the Rosner patent it is claimed by the plaintiff, and nowhere effectually disputed by the defendant, "that, in computing the profits on these locks, onethird belonged to and was charged by him to the Rosner patent"; and that, admitting this proposition, and allowing in addition thereto for any superior external attractions of the defendant's locks, and for the number of combinations which they had over those of the plaintiff, and for the shape of the case of the lock, and for the commercial success of the defendant in effecting sales where the plaintiff would have failed, the master is of opinion that the plaintiff is entitled to recover from the defendant as damages one-half of the amount of the reduction in prices caused by the defendant since January 2, 1872-that is, on 1,009 No. 3 locks, $1 per lock, being $1,009, and on 13,524 No. 5 locks, at 50 cents per lock, $6,762; being a total of $7,771. Exception 5 of the defendant excepts to the finding and report that the plaintiff is entitled to recover from the defendant as damages one-half of the amount of the reduction in prices caused by the defendant since January 2, 1872, and alleges that the master should have reported "no reduction in prices, or no proof of such," caused by any infringement by the defendant since said date, and "hence no damages" to the plaintiff, "and consequently no method of calculating them." Exception 6 of the defendant excepts to the report for that the master erred in making the apportionment of the alleged reduction in the plaintiff's prices, charging one-half thereof to the alleged infringement of the "turning-bolt" patent, and alleges that no basis existed in the proof or in law for such, or for any apportionment, or for any award of damages. Exception 7 of the defendant excepts to the report for that the master erred in assessing damages which are not the damages suffered by the plaintiff, but are those suffered by the firm of Sargent & Greenleaf, and alleges that the master should have reported that the damage, if any, found to have been suffered by said firm is not the damage of the plaintiff, who is only one member of said firm, but that the plaintiff's damage is merely a portion thereof. Exception 8 of the defendant excepts to the report for that the master erred in finding and reporting as damages the sum mentioned in his report, or any damages whatsoever, and in not reporting that there was no proof of any actual damage suffered by the plaintiff from the alleged infringement.

The defendant contends that the competition of the defendant was not the sole cause of the reduction of the plaintiff's prices, and that the proportionate effect of the defendant's competition is not attempted to