The present controversy grows out of a difference between the parties as to the meaning of this clause. The plaintiff contends that the clause prohibits the defendants, not only from making pressed-metal truckframes and parts of such frames, but also from making out of pressed metal any part of a truck-frame of whatsoever kind the truck-frame may be. The defendants maintain that the prohibition is against the making of pressed-metal truck-frames and parts of a pressed-metal truck-frame. If the literal reading of the clause were determining, the plaintiff's construction might be entitled to preference; but in the interpretation of a particular clause of a contract the court is required to examine the entire instrument, and may also consider the relations of the parties, their connection with the subject-matter of the contract, and the circumstances under which it was made. (Rock Island Railway v. Rio Grande Railroad, 143 U. S., 596.) Moreover, the practical interpretation by the parties of an ambiguous clause of a contract is entitled to great if not controlling influence, (Topliff v. Topliff, C. D., 1892, 402; 59 O. G., 1257; 122 U. S., 121,) and such practical construction, though at variance with the literal meaning of the clause, will prevail. (District of Columbia v. Gallaher, 124 U. S., 505.) Let us apply these principles here and see with what result.

From an examination of the whole paper of October 10, 1891, it is very clear that its main purpose was to regulate the manufacture of center plates as between the parties. The clause in question is secondary and incidental. Its introduction at all into the paper would be inexplicable were it not that the plaintiff was engaged in the manufacture of pressed-metal truck-frames, as the contract itself discloses. That style of truck-frame was peculiar and was of comparatively recent origin and of limited use. The truck in ordinary use was and is the diamond truck, eighty-five or ninety per centum of all railroad freight cars in the United States being provided therewith. The diamond truck-frame and the pressed-metal truck-frame are entirely different constructions. The plaintiff was not engaged in the manufacture of diamond truck-frames. Its business was the manufacture of pressedmetal truck-frames. The plaintiff was thus interested to avoid rivalry in that particular branch of business-the manufacture of pressed-metal truck-frames and parts of such frames. The parties entered into the contract with the Fox pressed-steel truck-frame before them and with reference to the plaintiff's manufacture thereof. To the extent, then, that the restrictive clause secured the plaintiff freedom from competition in the manufacture of pressed-metal truck-frames and parts thereof, it may be regarded as having a basis in reason; but to carry the provision further would be unnecessary for the fair protection of the plaintiff and unreasonable.

Again, at the date of the contract the defendants were engaged in the manufacture of pressed-metal parts of diamond truck-frames, and thereafter the defendants continued such manufacture with the knowledge of the plaintiff's principal officials and without objection. This

course of manufacture by the defendants was acquiesced in by the plaintiff until about the time of the filing of this bill on April 18, 1895. It is significant that the bill states that up until February, 1895, the defendants had complied with the terms of the contract. The occasion for the filing of the bill was that in February, 1895, the defendants began making and selling a pressed-steel truck-bolster. Whether the truck-bolster is any part of a truck-frame is a contested point. Now, without discussing the evidence, it is enough for me to say that, influ enced by the weight of the testimony of the practical experts and from my inspection of the models, my conclusion is that the bolster is no part of a truck-frame. Moreover, no truck-bolster is used with a pressedmetal truck-frame. I am, then, quite unable to see how the plaintiff can justly claim that the manufacture of the bolster is within the prohibitory clause of this contract.

Upon the question of the proper construction of this clause my opinion, under all the circumstances of the case. accords with the view upon which the defendants insist.

But, finally, if, as the plaintiff contends, this clause really interdicts the defendants' manufacture out of pressed metal of any part of a diamond truck-frame, then the clause, in my judgment, is in unreasonable restraint of trade and not enforcible. (Oregon Steam Navigation Co. v. Winsor, 20 Wall., 64; Gibbs v. Baltimore Gas Co., 130 U. S., 396, 409.) The public interest is much promoted by the use of pressedmetal parts in the repair or improvement of diamond truck-frames. Now, the plaintiff's business is the manufacture of pressed-metal truckframes, and the evidence shows that its manufacturing capacity is fully taxed to meet the demand for that class of truck-frames. This prohibitory clause, it will be observed, is without limit as respects place. To enforce it by the injunction here sought would be to deprive the public of the defendants' needed industry, and this, too, without reasonable benefit to the plaintiff. The covenants in restraint of trade hitherto sustained have been those connected with the sale or purchase of a business and its good-will or some analogous subject-matter where the restraint was no more extensive than was reasonably necessary for the protection of the covenantee. (Nester v. Continental Brewing Co., . 161 Pa., 473, 481.) Here, however, there was no sale or purchase of any business relating to the manufacture of truck-frames and no circumstances existed to justify so sweeping a restriction as the plaintiff claims.

Let a decree be drawn dismissing the bill, with costs.

[U.S. Circuit Court of Appeals-Third Circuit.]

ROSE v. HIRSH et al.

Decided November 9, 1896.

78 O. G., 481.

1. ROSE-TUBULAR UMBRELLA-STICK-VALID-INFRINGED.

Letters Patent No. 504,944, issued September 12, 1893, to John Rose, for improvements in tubular umbrella-sticks, Held to be valid and infringed.

2. SAME-UMBRELLA-CASE-NOT INFRINGED.

Letters Patent No. 504,945, issued September 12, 1893, to John Rose, for improvements in umbrella-cases, construed and Held not infringed.

3. SAME-DISSENTING OPINION.

Acheson, J., dissented from the conclusion which the majority of the court reached with respect to patent No. 504,945.

APPEAL from the Circuit Court of the United States for the Eastern District of Pennsylvania.

Before ACHESON, BUTLER, and WALES, Judges.

Mr. Arthur v. Briesen and Mr. Henry E. Everding for the appellant. Messrs. Strawbridge & Taylor for the appellees.

BUTLER, J.:

The suit is for infringement of the first and second claims of Letters Patent No. 504,944, granted to John Rose, and of the first claim of Letters Patent No. 504,945, granted to Johu Rose.

Claims 1 and 2 of the first of these patents read as follows:

1. A tubular metal stick for umbrellas or parasols, said stick being drawn down near one end so that the tubular end portion of the stick is reduced in diameter and increased in thickness as compared with the body of the stick substantially as specified.

2. The combination of the tubular metal stick drawn down near one end so that the tubular end portion of the stick is of less diameter than the body, with the notch applied to said reduced tubular portion of the stick, and the ribs hung to the notch and fitted snugly against the enlarged body of the stick, substantially as specified.

The second claim covers nothing new; the first embraces the entire invention. The "stick" is for use in an umbrella, and consequently the claim covers its combination with the other parts of the structurethe circular "notch," ribs, and canvas top. The "notch" is fitted to the reduced circumference of this "stick," just as it was previously fitted to the sticks formerly used. The second claim does not, therefore, add anything to the scope of the first.

The infringement of the latter is proved beyond doubt. The defense urged rests on a denial of its validity.

Is this defense sound?

We do not think the allegation that metal tubes with tapering ends, containing an equal quantity of metal throughout their length, thus having an increased thickness of walls in the tapering ends, is satisfactorily proved. That metal tubes with tapering ends were old may be conceded; but that the walls of the ends were so thickened is not

clear. The uses for which these tubes were designed did not require such strengthening of the ends, and the surplus metal used to produce the thickened walls would be simply wasted. If any such tubes were previously manufactured, it must have resulted as an unintentional incident of the method employed in their manufacture and not from design. Granting, however, that such tubes were previously made, the fact does not seem important. They did not constitute umbrella-sticks nor suggest adaptability to this use. What Rose did was to invent and construct a metal umbrella-stick having a new and useful featurea tapering end so drawn down as to diminish the diameter of the tip and part to which the "notch" is attached, without diminution of the metal, thus allowing the ribs and canvas to be folded closer than formerly, and materially increasing the strength of the "stick" where the strain upon it is greatest. We think this is more deserving of a patent than much that has been adjudged patentable. If metal tubes such as the defendants' witnesses describe existed, they did not, as before stated, suggest the conception embraced in this "stick." At most they only assisted in embodying it. The invention exists in the conception and its embodiment. The existence of the old tube might have aided in the latter certainly nothing more-and that would be unimportant. The evidence shows, however, that it did not do this; that Rose had no knowledge of the existence of such tubes, but accomplished the construction of those he required through experiment. For the reasons stated we cannot doubt the validity of the patent. The defendants did not doubt it, but admitted it by the purchase and sale of umbrellas under the patent until dissatisfaction and dispute arose respecting the prices they should pay. The admission is not, of course, an estoppel; but in view of the defendants' presumed familiarity with the art such an expression of judgment is evidence, and worthy, probably, of as much weight as that now expressed by their experts.

Claim 1 of the second patent reads as follows:

1. The within-described umbrella-case, the same consisting of a tube of leather slitted and provided with fastening devices at the upper end and having at the lower end an internal socket extending throughout the length of the projecting end of the umbrella-stick, and fitting snugly thereto, and a ferrule applied to the lower end of said stick, substantially as specified.

"Umbrella-cases consisting of a tube" constructed of various kinds of material, "slitted and provided with fastening devices" at the upper end, were old at the date of the patent. Whether the "socket" and "ferrule" described were also old need not be decided. The device covers these three elements. Whether the patent is valid or not, it is not infringed by the defendants' case, from which the "socket" is omitted.

The object of this element in Rose's case is to increase its circumference over the tip, and thus make it correspond there with the circumference at the "notch," rendering the case uniform and smooth throughout. The defendants' case is intended for their own peculiar umbrella, the tip of which is covered permanently with wood, so as to

make its circumference correspond with that of the "notch," thus dispensing with the necessity for a socket within the case. This wooden cover is not an equivalent for the omitted element in Rose's case, for it is not a part of the case, but of the peculiar umbrella manufactured by the defendants. The defendants' case cannot be substituted for Rose's. It can only be employed advantageously on the peculiar umbrella described. It thus appears that the two cases are entirely dissimilar in the respect stated; that the one cannot be used advantageously where the other is applicable. The defendants no doubt employ the wooden covers on their tip to dispense with the necessity of using Rose's case. That they thus do it to avoid his monopoly does not, however, afford just grounds of complaint. They have a right to increase the size of their tip in this manner or any other and thus dispense with the use of his case. If Rose had taken a patent for his umbrella and case combined, a different question would be presented. He did not do this, however, but took a separate patent for the case, because he desired and intended to obtain a monopoly in cases, not simply for the peculiar umbrella manufactured under his previous patent, but for all others to which it could be applied. The effort now made to read the patents together and to treat them substantially as one, covering the umbrella and case combined, is, of course, unjus tifiable. The patent for the case must stand alone, as issued, and so considered it clearly does not cover any case from which either of its essential elements is omitted. The plaintiff's argument in this respect, if sustained, would prohibit any modification in the form of the old umbrella which served to make the old cover fit it smoothly and tightly from end to end, as the plaintiff's fits upon those to which it is applicable.

The decree is reversed and the record remitted to the Circuit Court, with directions to enter a decree in accordance with this opinion.

DISSENTING OPINION.

ACHESON, J., (concurring in part and dissenting in part:)

I concur in the opinion of the court so far as it relates to the Patent No. 504, 944 for the tubular umbrella-stick.

I am, however, constrained to express a dissent from the conclusion which the majority of the court has reached with respect to the umbrella-case patent, No. 504,945. In determining the question of infringement here we ought not to lose sight of the fact that the object of this invention is to convert an umbrella, when the cover is applied thereto, into an operative and useful cane. The function of the "internal sccket" is thus stated in the specification:

The socket B completely fills the space between the casing A and the projecting stick and ferrule of the umbrella so as to render the end portion of the case perfectly rigid, as is necessary in order to properly simulate a cane.