has received consideration and reflection. It is based on the fact that the Star Company has been making and selling copies of the Moline Company's shares since 1905; that in 1907 the Moline Company brought a suit against Harbison-Modica Manufacturing Company for dealing in such shares made by the Star Company and subsequently dismissed that suit; that it brought this suit in 1910, but failed to prosecute it to decree until 1915. But these suits came to the knowledge of the Star Company, and they constituted notice to it that the Moline Company neither consented to nor acquiesced in the former's simulation of the marks and dress of its shares, so that its silence or acquiescence could not have been the inducing cause of its wrongdoing. The record contains no substantial evidence of an abandonment of its rights by the Moline Company, and constant or continuing trespasses neither deprive the victim of his equitable right to an injunction against their continuance in the future, nor confer upon the trespasser any right to perpetuate them. Stearns-Roger Mfg. Co. v. Brown, 114 Fed. 939, 944, 52 C. C. A. 559, 564; Layton Pure Food Co. v. Church Dwight Co., 104 C. C. A. 475, 481, 182 Fed. 35, 41, 32 L. R. A. (N. S.) 274. The defense of laches cannot be sustained.

[6] Nor was the court without jurisdiction to render the decree because only three plowshares of the value of but $5 were proved to have been sold by the Omaha Iron Company. There was a diversity of citizenship of the parties and an averment in the complaint that the profits the plaintiff was entitled to recover exceeded $5,000, and that it would suffer irreparable injury unless the defendant was enjoined from continuing its trespasses. The defendant denied that the plaintiff had sustained, or would sustain, any damage whatever. The court found that the plaintiff had been injured, and adjudged an accounting to ascertain the amount of its damages and an injunction. Since the decree the accounting has been waived, but during the trial and until the waiver the amount in controversy was the $5,000 profits alleged to have been received by the defendant, or the $5,000 damages alleged to have been sustained by the complainant, plus the value of the right of the complainant to prevent future unfair competition by an injunction. What the profits or damages that had occurred were was unknown when the decree was rendered, and the amount in controversy at that time under the pleadings was then more than the $5,000 which the complainant was still claiming. And, aside from the profits and damages that had accrued, the value of the right to the injunction was sufficient to sustain the jurisdiction of the court below. For a federal court of equity is not without jurisdiction to render a decree for an injunction against continuing trespasses, where threatened irreparable injury is alleged, by the mere fact that no proof has been made of the specific amount of that injury. Gannert v. Rupert, 127 Fed. 962, 964, 62 C. C. A. 594; Griggs, Cooper & Co. v. Erie Preserving Co. (C. C.) 131 Fed. 359, 360.

[7] But the injunction granted was too broad. It should be restricted to a prohibition of dealing in plowshares bearing the objectionable marks, words, and figures, which are fitted for use on plows made by the Moline Company, because the latter company sustains no ac

tionable injury from the sale by the defendant of shares, bearing the Star Company's marks, which are fitted for use on the products of other manufacturing companies, but not upon the products of the Moline Company.

[8] The Moline Company insists that the decree should have prohibited the sale of the Star Company's shares bearing the marks of the representation of a star, or "W. H. 16," "W. 14," "H. 116," or any other stock marks of the plaintiff. These marks were and are used by the company to designate the quality, sizes, and styles of the plows and shares it makes, and their use by manufacturers of specific shares to replace the original Moline Company shares is permissible, when it does not tend to confuse the trade, or to lead purchasers to buy the products of the latter for the manufactures of the former, but not otherwise. Wolf Bros. & Co. v. Hamilton-Brown Shoe Co., 165 Fed. 413, 416, 417, 418, 91 C. C. A. 363, 366, 367, 368; Deering Harvester Co. v. Whitman & Barnes Mfg. Co., 91 Fed. 376, 380, 33 C. C. A. 558, 562; Bender v. Enterprise Mfg. Co., 156 Fed. 641, 84 C. C. A. 353, 17 L. R. A. (N. S.) 448, 13 Ann. Cas. 649. But inasmuch as the manufacturers and dealers in the extras or repair parts not made by the original manufacturer appropriate, use, and have the benefit of the latter's stock marks, it is their duty to see that the purchasers are duly notified that such parts are not made by the original manufacturer. The star was and is stamped on its soft center shares by the Moline Company for the purpose of showing that they are made of two layers of steel extra-hardened with a layer of soft steel between them. The Star Company ought not to be permitted to stamp or use this star on the shares it makes, because the latter are not made of such layers, but of hard steel, and because the use upon the repair parts of the star, which is a part of the Star Company's trade-mark, tends to create a confusion in the trade and to mislead the purchasers. The letters and figures "W. H. 16,” “W. 14,” “H. 116,” and others of a similar character, designate the sizes and styles of the Moline plows which the shares so marked fit, and the Star Company may use them for that purpose on its replacement shares on condition, but not otherwise, that it stamps or stencils on each share in plain bold letters of equal style, size, and prominence, except that the letters in the word "Not" shall be twice the height and size of the other letters, the words "Not made by Moline Plow Co., but by Star Manufacturing Company of Carpentersville, Illinois."

Let the second paragraph of the decree be amended, so that it shall read: "It is further ordered and decreed that the defendant be, and the same is hereby, perpetually enjoined and restrained from directly or indirectly selling, or offering for sale, or otherwise dealing in, plowshares made by the Star Manufacturing Company of Carpentersville, Illinois, or others, fitted to replace plowshares on plows made by the Moline Company and bearing thereon the marks consisting of the monogram M. Co.' standing in association with the figure of a star, or the monogram 'M. Co.' standing separately, or the representation of a star standing separately. But the defendant is not forbidden to sell or deal in plowshares made by the Star Com

pany fitted for use on plows made by the Moline Company bearing such stock marks of the latter company as 'W. H. 16,' 'H. 116,' 'W. 14,' denoting merely the sizes and styles of its plows or shares, on condition, but not otherwise, that there are stamped or stenciled on each of said shares in plain bold letters of equal size and height, except that the letters in the word 'Not' shall be twice the size and height of the other letters, the words 'Not made by Moline Plow Company, but by Star Manufacturing Company of Carpentersville, Ill.,' nor is the defendant forbidden to sell such plowshares made by the Star Company fitted for use on plows made by the Moline Company as it has on hand in stock, provided it shall securely cover and conceal the monogram 'M. Co.,' the star, and any other letters or marks thereon tending to lead purchasers to buy them for plowshares made by the Moline Company"-and let the decree so amended be affirmed.

(235 Fed. 527)

LEDERER v. GARAGE EQUIPMENT MFG. CO.

(Circuit Court of Appeals, Seventh Circuit. May 2, 1916.)

No. 2329.

1. PATENTS 328-VALIDITY AND INFRINGEMENT AUTOMOBILE BUMPER. The Lederer patent, No. 1,035,610, for an automobile bumper, held not anticipated, valid, and infringed.

2. PATENTS

324(5)—APPEAL-REVIEW.

On appeal from an interlocutory order granting an injunction against infringement of a patent, the Circuit Court of Appeals cannot consider questions of accounting, which can only be reviewed on appeal from the final decree.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 606; Dec. Dig. 324(5).]

Appeal from the District Court of the United States for the Eastern District of Wisconsin; Ferdinand A. Geiger, Judge.

Suit in equity by Friederich Lederer against the Garage Equipment Manufacturing Company. Decree for complainant, and defendant appeals. Affirmed.

The following is the opinion of Geiger, District Judge, in the court. below:

This case is not unlike others in this respect: There is quite a large prior art in a general sense-that is to say, an automobile bumper art; and I believe that the patent here must be considered in the light of this further fact, that it is an art which has had rather a rapid development. The patents to which reference has been made-seven or eight-have all been granted, naturally, within the recent years of automobile development. Now, a striking feature about the art, as exhibited in defendant's proofs, is that apparently from an early date in the recent years of the automobile growth the matter of bumpers has received attention; and practically all of these prior art patents have three things in common, the round bar, the supporting arm, and the connection, which latter in most cases consisted either of the close For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

and permanently fitting collar, or one adjustable through the means of a set screw. Taking all these patents together, and using them as the courts have said as a background against which this patent in suit is to be thrown, it stands out as distinctive the defenses against these four claims-two of which relate to the buffer bar equipment as a whole, and the other two more particularly to the supporting arms, and the connection-are noninvention, because of the state of the art, anticipation by the defendant's prior manufacture, and noninfringement.

Without very much discussion, I feel that the court is bound to give to all of these prior art patents the presumption of validity; that to say, they are exhibited here as recognition by the government of the various steps of the art, and many of them have features similar to this device here in suit. But they have been accorded invention. Now, it being the fact that the physical make-up of the Lederer device is distinctive from all of these prior patents in the particulars mentioned, principally the use of the channel bar, the flange, and the adjustable clamping connection, as well as the supporting arms and use of the spring, the last-named element being under some coactive relation to the connection, it seems like saying a great deal in that situation to conclude that the field of invention had been entirely explored when Lederer entered; that there was no room for invention in the automobile bumper art; that whatever else is to be added to the art as shown in these patents, had to be added by mere mechanical skill. I do not think that conclusion can be reached at all. These prior patents are exhibited, not as anticipations. In answer to the general proposition that there was no more room for invention, the fact that this patent, in respect to these four claims, was granted by the government, apparently without question, I think shows rather persuasively that the Patent Office was entirely willing to recognize the distinctiveness of the step taken by Lederer, as compared with the steps taken by his predecessors in the art, and, of course, that being so, he is entitled to the full presumption of having invented something.

It may be true that the channel bar was well known-and it was-so was this idea of telescoping members that was found in other arts; but at the same time these men who came into the field, the automobile field, to meet a demand that undoubtedly existed, and exists to-day, for some device that would serve as a bumper, are entitled to the same credit for drawing upon the other arts and bringing into this something that was peculiarly available in this art, that has been accorded to other inventors. He simply chose from his own knowledge of the other arts, and combined something new and useful in the particular art. I do not believe, upon the record here, that the court would be justified in saying there was no invention here, because no possibility of invention. I assume that these prior patents, under the pleading and concession of counsel, must be eliminated as being anticipations. The single proposition is whether, upon the survey of the whole art, the court can say the field of invention was closed at the time Lederer conceived his device. I do not think the conclusion is justified.

This brings us to the next proposition, respecting anticipation of this patent by the defendant's own prior manufacture; and if validity be given to this patent as containing the elements to which I have referred, namely, the channel bar, with the flange and nut connection, as well as the other elements, the supporting bar or bracket, that of itself differentiates the Lederer structure from those which the defendant has manufactured. I do not believe the defendant reached the point that Lederer did until after he came into the field. These catalogues which are exhibited as corroborating evidence of the fact of manufacture, assuming they illustrate what was made, the structures therein disclosed are different from the defendant's as the prior art structures apparently are.

But, even if the defense were to be considered on other grounds, I do not believe the defendant has carried the burden which rests upon it with respect to the degree of certainty of prior manufacture by it of the structure embodied in the Lederer patent. It is not sufficient merely to use witnesses without fixing the time definitely, to show that a device was manufactured at

a certain time without showing some effort to get some of the structures, without showing why those efforts were unavailing. If it be true that the structures which are claimed to anticipate the Lederer structure so precisely that they must defeat his invention were manufactured by the defendant to the extent it says they were manufactured, it is probable that some one could be found who had such a structure. In any event, some effort should be made to find and produce one here in court. It is easy for a witness to go upon the stand, especially an interested witness, and then recall his anticipatory structure and prior use in the light of the patent which is under consideration. It is very easy to forget differences, and equally easy to find resemblances that do not in fact exist. It is done honestly, but under the stress of interest, and to my mind the case here to-day illustrates the wisdom of the rule requiring strict proof in those matters; and I do not believe the defendant has met the case by carrying the burden that rests upon it. Νο good reason is shown for failing to exhibit one of its structures, which it says were made within so recent a time as four or five years, and in such large numbers as it is averred they were made.

This brings us to the question of infringement. I am satisfied that defendant's structures infringe. As to its admitted structure No. 1, the mere use of a second piece, which is really a flange, or serves the purpose of a flange riveted in, instead of being the channel shape and turned inward, I do not think amounts to anything more than the clearest sort of evasion. The plaintiff here, if his patent has any validity at all, if the Patent Office recognized, as I believe it did, that he made an advance by getting away from the round bar and collar, and introducing the channel and flange as a basis for a clamping connection, his departure from the art is so distinctive that he is entitled to a fair range of equivalency. If he takes the bar and turns it in for the purpose of making a flange, another one who recognizes the merits of the structure cannot make an ordinary channel and then rivet on some flanges. That would be distinctive, but functionally it is as much an equivalent as two things can be.

So, too, with the sliding nut inside. That it seems to me is an evasion which the Lederer structure itself would suggest; but there is nothing in the art which suggests that particular connection of the round nut on the inside, and that other nut to clamp. That, of course, was known in other arts; but Lederer incorporated it into this art, and the defendant here adopted it. It has incorporated it into its structure, and it is fair to presume it did so because of its merit as a departure disclosed by Lederer.

With reference to structure No. 2, that may not be so clearly an infringement; but, the moment the rectangular bar is adopted, the defendant has put itself into a position where it has come to reject the feature distinctive in the prior art, and resorts to what, in effect, is a flange and clamping structure. I said during the course of the taking of the testimony that I did not believe that defendant's structure No. 2 embodied what in strict mechanical terminology is fairly called a flange; but it had all of the flange function and effect just as though, if a man cuts out the side of a box and leaves a portion of the cover of the box, leaves a portion on each side of the rectangle, no one could say he had made a flange, because he had not. He cut out one side of the box, but he left what is a plain equivalent of what he would have had, had be made a channel and then turned over some of the sides; and I think a fair definition and interpretation of claim 9 demands that the use of the rectangular hole in the bar; which is rectangular in cross-section, is an evasion, an attempted evasion, but in reality a clear equivalent of the flange element.

Just one further observation. There was a suggestion made that in defendant's structure No. 1, in the arm, and in connection with the spring, there was an additional advantage resulting from a better adjustability-that is to say, the spring responded more readily, and adjusted itself more readily to varying pressure. Assuming that was intentionally true, and not an incident, it does not really relieve from the charge of infringement. The mere fact of introducing some additional advantage, adding to it, ought not to relieve defendant from the charge of infringement.