and that the case is one for the application of the rules that an infringer cannot escape liability by diminishing or impairing the advantages and functions of the patented device, if he retains the substantial form, function, and manner of operation, nor by forming in one part two elements of a patented device, if the part thus formed secures the same result, in substantially the same way, as the two elements.

But the pivotal question is whether the case presented is merely that of making in one part that which before was made in two parts, the integral structure continuing to perform all the functions of the former two-part device, and in substantially the same way, or whether it falls within the rule that a combination claim is not infringed if one of its elements is omitted without the substitution of an equivalent. Were plaintiff's invention a broad or primary one, it might be held that defendant has merely made integral what before was made in separate parts. But the patent claims, and their range of equivalents, are narrow. There was nothing new in concealing the heads of the screws, nor in the use of a round central strip. The inventor's only contribution to the art was in the form and manner of accomplishing this old result, viz, by—

a channeled filling strip occupying [and closing] the channel of the front plate. Defendant has but one of these elements. If this element is a front plate at all, there is no "channeled filling strip," and for the sufficient reason that there was no occasion for one. Defendant thus has not, as we view it, merely removed the bottom part of plaintiff's channeled front plate, nor has he impaired the function of that plate, nor retained the substantial function and operation of plaintiff's device, nor secured its result in substantially the same way. It is very clear that what defendant has done is so to construct his front plate as wholly to dispense with the necessity of the function performed by a filling-strip, and so with the filling-strip itself. In other words, there was no occasion for a filling-strip, either to provide a finish, or to prevent tampering with the bolts, or otherwise. There was thus no infringement. (Union Paper Bag Mach. Co. v. Advance Bag Co., C. C. A. 6; 194 Fed. Rep., 126; 114 C. C. A., 204 et seq.; Proudfit Co. v. Kalamazoo Co., C. C. A., 6; 230 Fed. Rep., 120; 144 C. C. A., 418.)

This conclusion is not weakened by the fact that in some of its constructions defendant passes the heads of the bolts through washers which grip the edges of the channel of the face-plate and prevent their spreading. The function of the washers is entirely different from that of the "filling strip" of the patent. It also seems not without pertinency that neither defendant's channeled front plate nor its washers are

84150°-1921

adapted to be slipped into the channel of the face plate from one end of the latter before the face plate is secured in position, but after the bolts have been slipped through it.

Such a method of assembling defendant's structure is impossible. It follows that so much of the decree of the district court as found the second patent infringed must be reversed.

(4, 5) 3. Unfair Competition.-The basis of this charge, broadly speaking, is that plaintiff and its predecessor were the first to make an all-metal store-front construction, the nearest approach in the prior art being metal-covered wood; that the all-metal construction is lighter, more artistic, and more easily set, and furnishes greater assurance of protection against breakage of the glass, while securing ventilation, drainage, and other desirable features; that for its product plaintiff adopted new, original, and artistic designs, also standardizing sizes-featuring in its advertising the all-metal character; that plaintiff's manufactures were received by the trade with great favor and have established a high reputation; that defendant has unnecessarily and intentionally copied plaintiff's designs, as respects non-functional features, not only in sash-rails, division and corner bars, and other parts of a store-front, but also the store-front as a whole, to such an extent as to make it impossible for the ordinary purchaser to distinguish between plaintiff's and defendant's manufacture, both as to completed structure and separate parts; that defendant is using the word "Almetal" as a trade-name for its product, and that, while defendant's name is placed on entire corner and division bars as manufactured, it does not appear often enough to be always found on shorter pieces sold to the trade. The decree, as respects unfair competition, restrains defendant

from making, selling, or in any manner using defendant's "Almetal" store front constructions, or parts thereof, or any other construction which in its shape, design, external appearance, and distinctive features, or details are like those heretofore sold by the plaintiff [illustrated by its catalogue "Model of Complete Construction"], or so similar to said construction that the ordinary purchaser would be likely to be deceived into purchasing store front constructions, or parts thereof, of the defendant's manufacture as for those of the plaintiff, and from advertising the same in any way, either directly or indirectly, and from advertising or using as a trade-mark, trade-name, or distinctive feature the word "Almetal," or any word of similar or like import, in connection with the sale of store front constructions or parts thereof. (Italics ours.)

Appellant challenges jurisdiction over this branch of the case because of the lack of diversity of citizenship and the fact that the suit for unfair competition is not of a Federal nature. While the authorities are not uniform, we have held1 that, where a patent has been held

1 Citing Leschen Rope Co. v. Broderick (201 U. S., 166; 26 Sup. Ct., 425;) Ludwigs v. Payson Mfg. Co. (C. D., 1913, 501; 196 O. G., 1052; C. C. A. 7; 206 Fed. Rep. 60,) and other cases.

valid and infringed, the unfair competition feature arising out of that infringement may be included in an accounting for profits and damages, although the parties are citizens of the same district. (K-W Ignition Co. v. Temco Co., 243 Fed. Rep., 588; 156 C. C. A., 286.) The court below, having found both patents valid and infringed, had jurisdiction to consider the question of unfair competition as directly incident thereto; we think jurisdiction still exists with respect to the sash-rail patent which we have held valid and infringed. But as to defendant's sash-rail construction, considering it now independently and not as a part of a complete window-front structure, we think it not the subject of damages for unfair competition; that is, of damages beyond those resulting from the mere fact of infringement, and because of the apparent lack of unnecessary and intentional imitation of plaintiff's design. Defendant's gutter-rail is not ornamental; its features are merely those of utility. It seems to us no more like plaintiff's than consistent with efficiency of function alone. The retaining-strip of both plaintiff and defendant takes the form of moldings in common use. The types of moldings are, however, noticeably different; in other words, we find no closer imitation than would naturally be involved in the construction of the sash-rail in such a way as to appropriate plaintiff's patent thereon.

(6-8) We think, also, that no sufficient basis appears for restraining. the use of defendant's trade-name "Almetal" (not trade-marked) as upplied to the sash-rail, considering it independently, and not as a part of a complete store-front structure. The name itself is purely descripive; it does not of itself indicate origin. Plaintiff would not origially have been entitled to protection had it adopted it. In fact, it vas never formally adopted by plaintiff as either a trade-mark or a rade-name. Plaintiff is thus not entitled to protection, unless the name has been so used as to have acquired a secondary meaning, as ndicating plaintiff's product. (Kellogg Co. v. Quaker Oats Co., C. C. A. 6; 235 Fed. Rep., 657; 149 C. C. A., 77, and cases cited.) But uch, we think, is not fairly shown to be the case here, at least as aplied to the sash-rail treated by itself. True, in plaintiff's earlier pubcations considerable stress was laid upon the fact that its construction as all metal. That was at least one of its attractive features; and hile in the later catalogues the fact of the construction being all etal is mentioned, it has been made less prominent. The testimony at the trade regards the words "Kawneer" and "all metal" as nonymous comes only from interested witnesses, and so fas as it aplies to the sash-rails, considered by themselves, is not persuasive, pecially in view of the manufacture of all-metal sash-rails for seval years past by others than plaintiff. The district judge did not gard the use of the word "Almetal " as infringing any trade-mark

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.