It is contended also that a machine made by Lechner on the lines of the patent in suit did not work successfully and was a failure. There is no contention that there was any defect in that machine on account of its principle. It appears that while Lechner was a great inventor he was a poor mechanic. The machine upon the construction of which the contention is made was not strong enough to do any work, and, irrespective of the holding device, it would have been unsatisfactory. The defendants have not shown that the failure was due to the holding device, and the burden was on them. The device of the complainant's patent can be put into proportions to make it successful, and this has been done by complainant. Moreover, the inventor is not required to bring his device into absolute perfection in order to make his patent good. (The Telephone Cases, C. D., 1888. 321; 43 O. G., 377; 126 U. S., 1.)

While this device is somewhat crude as compared with the improved style of trunk-fasteners now in use, it contains the underlying principle of all of them. In short, we find no difficulty in holding that there is a patentable novelty in the Taylor fastener, and that it is not anticipated by any of the devices put in evidence. (Sessions v. Romadka, C. D., 1892, 382; 59 O. G., 939; 145 U. S., 419.)

That the drawings of a patent need not be the working drawings or on an operative scale see Leather Co. v. American Tool Co. (4 Fish., 284.) That the patent is not limited to its exact form or dimension of parts see Winans v. Edwards (15 How., 330.)

With reference to infringement, defendants' device is within the scope of complainant's patent. It consists of a metal plate adapted to be permanently secured to the front end of the movable frame and provided with a series of cutting teeth or chisels which rise at one side of the plate, are successively of greater height, and always so arranged as to present a vertical face on the side which is to bear upon the channel cut by the teeth, and with clearance-slots on the opposite side between the teeth. It is constructed and it operates upon precisely the principle of complainant's device, excepting that the teeth are not independently reciprocated, which relieves against infringement of the second claim of complainant's patent, but not against infringement of the first claim. The contention that the holding function of their device is performed by the continuous engagement of the teeth of their cutters with the coal in front of them, and not by reason of their engagement with the side or wall of the channel, is not tenable. Their proposition that if their holder were reciprocated it would be worthless, just as if the complainant's cutter were made stationary, is fallacious for the reason that in fact and in operation it is shown by the evidence that defendants' cutter does act reciprocally, upon exactly the principle of the action of complainant's cutter.

Upon all the points considered the equity of this cause is with the complainant, and the decree will be accordingly.

[U. S. Circuit Court-Southern District of New York.]

AMERICAN GRAPHAPHONE COMPANY v. LEEDS et al.

Decided November 10, 1896.

78 O. G., 802.

PRELIMINARY INJUNCTION-ADJUDICATIONS IN OTHER CIRCUITS.

An adjudication sustaining a patent is not conclusive in favor of granting a preliminary injunction in a suit in another circuit where a decisive question raised in the latter suit was not contested in the former and it appears that in the former a motion for reargument for the purpose of raising this point has been entertained but not yet decided.

Mr. B. F. Lee for the motion.

Mr. R. N. Dyer opposed.

STATEMENT OF THE CASE.

This was a suit in equity by the American Graphaphone Company against Loring L. Leeds and others for alleged infringement of a patent. The cause was heard on a motion for preliminary injunction.

LACOMBE, J.:

same.

The only question really presented on this motion is whether the adjudication in support of the patent in the district of Illinois is to be taken as controlling as to validity and scope of the claims relied upon when application is made here for preliminary injunction. If there had been no adjudication, injunction would be refused, in view of the serious dispute as to material issues in the case. Had there been no proceedings subsequent to such adjudication, it might be that this court would not inquire with much particularity as to the issues raised and the evidence introduced in the earlier suit, when it is admitted, as it is here, that the alleged infringing machines are substantially the It appears, however, that in the earlier suit there was no serious contention but that the sound-record (of wax or some other material upon which the record was impressed) was the discovery and invention of Bell and Tainter; that the court in that case was convinced that Bell and Tainter were entitled to this invention; that such conviction lay at the basis of the court's conclusion, and that because of such conviction the court held the particular claims here relied upon to be valid as a combination containing this invention of the sound-record. It now appears that it is not only not conceded that this sound-record was the invention of Bell and Tainter, but, on the contrary, it is strenuously insisted that it was the invention of Edison. Upon that disputed point a mass of evidence has been produced which should not be passed upon on the hearing of a preliminary motion. And it further appears that when the attention of the court in the earlier case was called to this condition of affairs it entertained a motion for reargument, which has not yet been decided and which that court has

intimated it will not decide until the determination of this important issue of fact in the main case (in New Jersey.) Under these circumstances the case in Illinois must be considered as sub judice—a matter not yet decided-and therefore not entitling the complainant to a preliminary injunction as an adjudication sustaining the claims. relied on.

Motion denied.

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

CAMPBELL et al. v. RICHARDSON et al.

Decided October 16, 1896.

78 O. G., 1103.

1. DE LONG-GARMENT-HOOK-VALID-NOT INFRINGED.

Letters Patent No. 462,473, granted November 3, 1891, to Frank E. De Long for a garment-hook, construed and Held valid and not infringed.

2. CLAIM-CONSTRUCTION of.

The words "substantially as described" may be part of a claim and control its construction. They may not be omitted from the claim in order to give it a broader construction.

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

Mr. Geo. H. Christy and Mr. Wm. L. Pierce for the appellants. Messrs. Strawbridge & Taylor and Mr. Frederick P. Fish for the appellees.

STATEMENT OF THE CASE.

This was a suit in equity by William Campbell and J. J. Smith against Thomas De Q. Richardson and others for alleged infringement of a patent for an improvement in garment-hooks. The Circuit Court sustained the patent and found that defendants had infringed, and decreed accordingly. (C. D., 1896, 192; 74 O. G., 807; 72 Fed. Rep., 525.) The defendants have appealed.

Before DALLAS, BUTLER, and WALES, Judges.

BUTLER, J.:

The bill charges infringement of the first claim of Letters Patent No. 462,473, dated November 3, 1891, for an invention of Frank E. De Long. The claim reads as follows:

1. A garment-hook consisting of a shank, a hook proper, and a tongue continuous of each other, said tongue being looped and normally closing the space between the shank and hook proper and having its free end returned to the rear of the shank, substantially as described.

The respondents' hook, which is charged to infringe, is similar in construction to the complainants', except that the free end of the wire of which it is formed is cut off near the rear of the shank.

The only question which need be considered is one arising upon the

construction of the claim. Looped or "humped" hooks were not invented by De Long, but were very old. He had taken out two patents for improvements in them, as the record shows, which are undistinguishable from that of his third patent, now involved, except in the single feature hereinafter noted. The free end of the wire in each of his former hooks were cut off forward and so bent as to avoid danger of injury to the garment on which it might be used. Of course it is unimportant whether the loop be formed by bending the wire upward or downward or whether it be placed in what the patent calls the "hook proper" or in the shank opposite, and it is equally unimportant whether the free end of the wire be carried to the rear or terminated sooner. If, therefore, the words "substantially as described" be omitted from the claim and the preceding language be taken literally, nothing new would be embraced, and the claim would consequently be invalid. This seems to be clear, for there would be nothing, as we have seen, to distinguish the hooks thus described from those of De Long's former patents, except the merely formal differences before stated, the end of the wire when cut off at the rear of the shank serving no purpose that is not as well served by cutting it farther forward, as provided for in the earlier patents. The words referred to cannot, however, be omitted. They are part of the claim and control its construction. The hook named therein is the one described in the specification and drawings. The claim expressly so declares. The only hook thus described, either in the specification or drawings, is one with the free end of the wire carried to "the rear of the shank, and there formed into an eye," giving to the hook three eyes by which to attach it instead of two, as formerly. The drawings show this peculiar hook and no other, and the specification describes it particularly, declaring it to be an "embodiment of the invention," and does not suggest any other. Indeed, the language of the specification seems to preclude the belief that any other was thought of. It is as follows:

The free end of the jaw is provided with an eye 8, which is adjacent to the eyes 4 and disconnected therefrom, it being noticed that the jaw is elastic in its nature and may yield when subjected to superior pressure, this being occasioned when the eye to be connected with the hook is presented to the jaw and forced past the same, so that said jaw opens and allows said eye to reach the bend 3, on the inuer side of which it is seated, the jaw then being closed and controlling said eye. The eye formed on the end of the jaw is secured in a manner similar to eyes 4 4, so that

the resiliency of said jaw is increased and the jaw more firmly sustained in its normal position. The eyes 4 and 8 provide means for connecting the hook with the garment or other place of service, said eye 8 also preventing the jaws from presenting an exposed edge.

It is thus seen that a special function is ascribed to the peculiar disposition made of the free end of the wire.

The suggestion that this construction leaves no distinction between the first and following claims has no force. The fault is not in the construction, but in the language of the claims and the specification and drawings. Such similarity in claims is not unfrequent in patents where several are founded on a single novel feature in a device. Patentees seem fond of multiplying claims, inspired probably by a fear that they may not otherwise get all they are entitled to. Here the first claim covers all the novelty to be found in either the specification or drawings.

With the claim thus construed the respondents' hook does not infringe. It is in all material respects similar to that of De Long's first patent.

The decree must be reversed and the bill dismissed, with costs.

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

MCDOWELL et al. v. KURTZ.

Decided October 26, 1896.

78 O. G., 1104.

1. KURTZ-Band for PROTECTING SCREW-THREADS OF PIPES-VALID. Letters Patent No. 440,168, granted November 11, 1890, to John A. Kurtz, for a band for protecting screw-threads of pipes, Held valid.

2. SAME-PUBLIC ACQUIESCENCE.

Where plaintiffs have manufactured and sold their device without opposition for upward of five years there is sufficient proof of public acquiescence, and it is immaterial that a large number of their devices were not marked "Patented" when it appears that enough were so marked to give general notice, of the patent.

3. INJUNCTION-DISTRICT JUDGE HOLding Circuit Court.

The authority of a district judge when holding a circuit court under Revised Statutes, section 609, is coextensive with that of any judge sitting in the same court, and the restrictions of Revised Statutes, section 719, relative to the granting of injunctions by district judges do not apply.

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

Mr. James C. Boyce for the appellants.
Mr. Wm. L. Pierce for the appellee.

STATEMENT OF THE CASE.

This was a suit in equity by Jacob H. Kurtz, trading as the National Manufacturing Company, against D. F. McDowell and others, trading as the Pittsburg Ring Company, to restrain the infringement of a patent. From an interlocutory order granting a preliminary injunction defendants appeal.

Before ACHESON, DALLAS, and WALES, Judges.