answered, putting in a full defense, it would be held on the argument of the plea that the answer overruled the plea. Then Rule 37 was made. It applies to the present case.

The demurrer is allowed, with costs.

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

STEIGER v. HEIDELBERGER.

Decided November 12, 1880.

18 O. G., 1463.

1. A bill for the infringement of a patent praying for an injunction and an accounting will lie against a commission agent, although a suit under a similar bill is pending in another district against the parties for whom said commission agent is acting. 2. The commission paid an agent would not be included in the profits accounted for by his principal, as such commission is a distinct profit to the agent.

Mr. Francis Forbes for the plaintiff.

Mr. Furman Sheppard for the defendant.

BLATCHFORD, J.:

The bill in this case is filed for the infringement of a patent. It charges that the defendant has infringed, by making, using, and selling the invention patented, which is an "improvement in show-cards for embroid. ery." The infringement is alleged to have been committed in this district and elsewhere in the United States. The bill prays for the payment of the profits made by the defendant from the infringement and of the damages sustained by the plaintiff therefrom, and for an injunction against the defendant restraining him from making, using, or vending any show-cards containing said improvement.

The defendant has interposed a plea to the bill, and it has been set down for argument and argued. It sets forth (1) that the defendant has been and is employed by the persons composing the firm of Loeb & Schoenfeld, which firm is engaged in business in Philadelphia, within the jurisdiction of the circuit court of the United States for the eastern district of Pennsylvania, such persons being resident at Philadelphia; that his business is to visit divers places and exhibit to buyers samples of the goods made by said firm and solicit offers or orders for the purchase of such goods; that such orders or offers, when received by him, are transmitted by him to the said firm in Philadelphia; that said firm, in case the offers or orders are satisfactory to it as respects price, the solvency or pecuniary ability of the proposed buyers, the terms and conditions of the proposed purchase, and other particulars, accepts the same, makes the sale, supplies the goods, charges them to the proposed buyer, and renders to him directly a bill for the same; that the defendant, in such case, receives a commission on the amount of the sale; that if the

order or offer is not satisfactory it is declined by the firm and no sale is made, and the defendant receives no commissions, and that he has not in any other way made or sold show-cards for embroidery containing the patented invention. The plea also sets forth (2) that before the bill in this suit was filed the plaintiff filed a bill in said circuit court in Pennsylvania against the members of said firm for an infringement of said patent by them by making, using, and selling show-cards for embroidery alleged to contain said patented invention, and praying for a decree that they pay to him all profits realized from said infringement and all damages sustained by him thereby, and for an injunction restraining them from making, using, or vending any show-cards containing said improvement; that the defendants in said suit were served with process therein and appeared and answered said bill, setting up a defense; that said answer was replied to and said suit is pending undetermined; that said bill is for the same subject-matter and things and the same alleged grievances as are set forth in the bill against this defendant, and, in fact, legal effect and intendment, and prays a remedy and relief against and damages and profits for and an account of, among other things, the alleged acts of this defendant, as set forth in the present bill against him, and that said alleged acts of this defendant as an employé of Loeb & Schoenfeld are in contemplation of law deemed and taken to be and are included within and constitute a part of the alleged wrongs and grievances sued for in said bill filed in Pennsylvania, and that the rights, relief, profits, and damages, if any, to which the plaintiff is entitled by reason thereof constitute a portion of the subject matter and of the claim of said bill against Loeb & Schoenfeld, and are recoverable thereunder, and that therefore this defendant pleads said former bill and answer as a bar to the present bill.

As to the first branch of the plea, or the first plea, whichever it may be (no point being made or decided as to whether there are two pleas or only one, or if two as to the propriety of pleading two pleas without leave), the plea must be overruled. The substance of it is that the defendant is not liable in this suit for what the plea sets forth as having been done by him. This is not so. The plea shows that the defendant has made a separate and independent profit to himself out of the sale of such goods as he has been instrumental in selling by receiving a commission thereon, in which commission Loeb & Schoenfeld have no interest; that his commission is dependent on the sales; that he has made the sales for the purpose of receiving the commission, and that he obtains the commission by making the sales. This is a distinct profit from any profits made by Loeb & Schoenfeld. The commission to this defendant would not be included in any profits to be accounted for by Loeb & Schoenfeld, and such commission is a direct profit to this defendant from the sale of the goods. Moreover, this defendant, although selling only under the circumstances set forth, is liable to be restrained in this court by an injunction from selling the infringing goods, and this

suit is properly brought against him for that purpose. This court has obtained jurisdiction over his person. The plaintiff has a right to restrain the defendant by injunction from participating in the way set forth in such sales, although a bill will also lie against Loeb & Schoenfeld to restrain them from participating in the way they do in the same sales. Maltby v. Boto, 14 Blatchf. C. C. R., 53.

As to the second branch of the plea, or the second plea, it follows from the foregoing observations that the pendency of the suit in Pennsylvania against Loeb & Schoenfeld is no bar to this suit. This defendant is not a defendant in that suit and no injunction therein could be issued against him by name, and although an injunction therein against the defendants therein might reach them for the acts of this defendant as an employé of theirs, yet, although he is an employé of theirs in one sense in what he does, he is independent of them in the profit he makes by his commission on sales, although he may receive his commission through them out of the sale-price, and it is proper that the plaintiff should have an independent injunction against him in this suit. Again, as before said, the bill in Pennsylvania would not make the defendants therein account for the commission received by this defendant. This, therefore, is not the case of another suit pending between the same parties in another jurisdiction for the same subject-matter.

The plea is overruled, with costs, and the defendant will be assigned to answer the bill.

MATTHEWS v. SCHONEBERGER ET AL.

Decided October 27, 1880.

18 O. G., 1464.

1 Every claim of a patent has reference to the descriptive part of the specification, and must be construed as if the words "substantially as specified" formed part of said claim.

2. So where the specification speaks of a part or feature of the patented device as being "an important feature of the invention" and makes it a part of the claim, the omission of such feature from defendant's device saves him from infringing the patent.

3. Where a prior device accomplished the same thing, but not so perfectly as the patented device, the claim to the latter must be limited to its precise construction whereby it accomplishes the results more perfectly, and will not include other means of doing it.

4. A function cannot be claimed. The claim must be either to the physical structure, the combination of devices, or the method of operation.

5. The Codd bottle-stopper, consisting of a glass marble inside of a bottle seating against a rubber seat in the mouth of the bottle by the pressure of gases from within, is not an infringement of the Albertson patents for a gravitating stopper consisting of a stem with a rubber valve or skirt around it, which seats on the interior of the neck of the bottle.

Mr. A. V. Briesen for the plaintiff.

Mr. G. V. N. Baldwin for the defendants.

BLATCHFORD, J.:

This suit is brought on two patents. One of them is a reissue, No. 2,386, granted to the plaintiff October 30, 1869, for an improvement in bottle-stoppers, the original patent having been granted to Albert Albertson, as inventor, August 26, 1862. This patent has expired. The specification says:

This invention consists in a stopper which always remains in the bottle, and which readily permits the introduction of any fluid into the bottle, and at the same time effectually prevents any discharge of it except when desired, and which is particularly adapted to bottles containing soda-water, wines, and all fluids having or generating fixed air, as the greater the pressure from such cause the closer and tighter is the stopper. An important feature of the invention, which distinguishes it from all previously-applied stoppers which remain in the bottle, is that it is inserted into the bottle through the neck without requiring the use of a separate or larger opening or detachable cap to permit its introduction. The stopper represented

consists of a small metallic or other stem, A, upon the lower end of which is fixed a rigid button or disk, B, which is made of such a size as just to pass through the smallest part of the mouth or neck of the bottle. Close above the button or disk is secured to the stem A a smaller rigid ring or disk, C. Between these two disks is placed and held fast a disk or diaphragm of india-rubber, felt, leather, or cloth, D, or any yielding substance, which should be somewhat larger in its external diameter than the disk B-say, generally, of a diameter about as large again and larger than the lower part of the interior of the neck of the bottle. To a stop or shoulder on the upper part of the stem A, which is long enough to project above the mouth of the bottle or vessel when the valve is in contact with its seat, there is attached or applied a helical wire spring, E, which covers the stem A for some little distance, and which need only be stiff enough to hold up firmly the stem A and cause the rubber or other diaphragm D to fit closely against the inside neck of the bottle.

The specification then describes two ways of supporting the spring at its bottom. One is, to enlarge mouth or neck of the bottle from the bottom of the spring upward, so as to form an edge or shoulder sufficient to support the spring. The other is, not to enlarge the neck, but to clasp over the top of the neck two or three metallic strips, which extend down within the neck as far as the spring is to reach, and have their bottoms turned over the lower coil of the spring, and thus give it a sufficient support. The specification proceeds:

The stopper is placed in the bottle by simply inserting it in the neck and pressing the spring E until the rubber or flexible disk or diaphragm D has passed below the narrowest part or place a of the neck. As the ring or disk C is considerably smaller than the disk B, the flexible disk or diaphragm D will fold up around C as the stem A is passed down through the neck, and the stopper will thus easily pass into the bottle. But when once the stopper has been so placed in the bottle, as the disk B is of nearly the size of the opening in the neck, any effort of the spring E or of any kind to draw or push up the standard A presses the flexible disk D between the bottle and the bottom B and effectually prevents its coming out, and the greater the pressure from within against the bottom of the stopper the closer will the contact be of the parts B and D against the sides of the bottle.

When it is desired to open the bottle to discharge its contents, a bent instrument such as shown in Fig. 2, or any one fitted to accomplish the same purpose-pressing down the stopper-may be made use of.

The first two claims of the patent are as follows:

1. A stopper which is inserted through the mouth of the bottle or other vessel, and which, when inserted, is closed perfectly tight against a seat formed within the bottle itself by pressure in an upward direction.

2. A prolongation of such stopper by means of a central stem, rod, or other extension of the stopper in an outward direction beyond the seat of the valve, for the purpose of affording facility for opening the stopper, or that of receiving the upward pressure of a spring or other means of drawing the valve to its seat, substantially as herein specified.

The stopper and bottle used by the defendants is that shown in "Codd No. 2." It is not proved that they used any other. In the defendants' arrangement the stopper is a sphere of glass in a receptacle at the base of the neck of the bottle, which receptacle communicates with the body of the bottle below by an orifice which is too small to allow the sphere to pass down. The mouth of the bottle above the sphere is too small to allow the sphere to pass out above. The sphere is loose and there is no spring. In the inside of the mouth is an annular groove, in which a ring of india-rubber is inserted, with which the sphere, when it is to act as a stopper, comes in contact, and against which, as a seat, it is pressed to make a tight joint by the upward action of the gas in the liquid below. The receptacle referred to is of greater diameter than the neck above it and of less diameter than the bottle below it. The bottle is opened by inserting the finger or some pushing-instrument in the mouth and pressing the sphere downward, causing it to leave its seat and allowing the liquid to be poured out. The sphere, when the bottle is emptied, rests on the bottom of the receptacle referred to, over the ori fice which leads into the body of the bottle. It is alleged that the first and second claims of this patent are infringed by Codd No. 2. As the sphere in this bottle cannot pass out through the mouth, and as it is not inserted through the mouth of the finished bottle, it is put in before the bottle is finished. The bottle is made with the receptacle and the neck, and then the sphere is put in through the neck, and then a ring of melted glass is put on the outer end of the neck to form the finished mouth. The first claim of the reissue does not contain the words "substantially as specified;" but it must be construed as if those words were in it. Every claim of a patent has reference to the descriptive part of the specification. In the plaintiff's bottle the stopper can pass in through the smallest part of the mouth of the finished bottle. This is dwelt on in the specification as "an im portant feature of the invention," and is made an integral part of the first claim. This feature does not exist in Codd No. 2. The stopper in that cannot pass in through the mouth of the finished bottle. The first claim is not a claim to any mechanism, but, if not a claim to a function, is a claim to a mode of operation. It amounts to a claim to inserting a