And because the expert testimony satisfactorily proves that the parts of the museum cops which are in suit so fully show their construction that any mechanic ordinarily skilled in the art could make the patented cops therefrom without invention, and because they appear to be and would more naturally be uniform throughout, I am constrained to find, whether they are or are not thus uniform, that there could be no creative conception and no patentable ingenuity or invention in a cop made up of layers arranged alike throughout in the pattern disclosed by the museum cops. It is significant in this connection that in the one hundred and twenty-three pages of rebuttal testimony of the learned and skillful expert for complainant, Charles E. Foster, he nowhere denies the testimony of defendant's expert that a person skilled in the art could have supplied any supposed omission or arranged any supposed variations in the museum cops so as to make the cops of the patent. This patent is void by reason of lack of patentable novelty.

In view of these circumstances the additional defense against the process patent, No. 480,158, on the ground that it covers merely the function of a machine, will not be discussed. The conclusion reached is that in view of the state of the prior art there was no patentable novelty in said process.

Let a decree be entered dismissing the bill.

[U. S. Circuit Court-District of Massachusetts.]

GREEN v. CITY OF LYNN.

Decided April 28, 1897.

80 O. G., 1480.

1. SUITS FOR INFRINGEMENT-JOINDER OF SUITS ON DIFFERENT PATENTS-RULES AS TO COSTS.

The joinder in one suit of claims for infringement of two patents relating to the same subject-matter is in the interest of the public as well as of private litigants and should not be discouraged by too stringent rules as to costs or otherwise.

2. SAME-SAME-APPORTIONMENT OF COSTS.

Where two patents relating to the same subject-matter were sued on in the same suit and a decree was entered for complainant on one of them and for defendant in respect to the other, the costs disbursed in regard to the patent adjudged against the complainant were not, under the circumstances, adjudged in favor of either party.

Mr. Harvey N. Pratt for the complainant.

Messrs. Fish, Richardson & Storrow and Mr. Guy Cunningham for the defendant.

STATEMENT OF THE CASE.

This was a suit in equity by Nelson W. Green against the city of Lynn for alleged infringement of two patents. The cause was heard upon complainant's claim in respect to the taxation of costs.

PUTNAM, J.:

The complainant brought a bill in equity for alleged infringements of two patents relating to the same subject-matter and therefore very properly included in the same suit. A consolidation of this character within reasonable limits is for the interest of the public as well as of private litigants and should not be discouraged by too stringent rules as to costs or otherwise.

One patent was sustained, but the other contained three claims, of which two were found invalid by reason of not covering a patentable invention, and the third was not infringed. The final decree, so far as this patent is concerned, was against the complainant. The complainant disbursed for the taking and printing of proofs with reference to the patent on which the judgment of the court was against him $544.50, and he now claims that this sum should be taxed in his costs against the respondent. That under circumstances of this character costs may be equitably apportioned is too well settled to require any special observations. Numerous cases illustrating the practical application of this equitable discretion in patent suits will be found in the notes to Robinson on Patents, section 1162. Some of the decisions there cited and elsewhere found seem to us too severe as against complainants, aud, moreover, where the amounts are small or the issues much complicated there may not be sufficient involved or the apportionment may not be capable of being made with sufficient clearness to appeal to the equity powers of the court. Yet some practical method of preventing substantial injustice can always be found.

On the one hand, the advantages to come from the consolidation of several claims made in good faith, which we have already spoken of, and the analogy of the common law where a plaintiff who recovers only a portion of his demands is ordinarily entitled to all his costs are not to be overlooked, while, on the other hand, the apparent injustice of saddling respondents with substantial costs of issues which are easily distinguished and severed, and which they have successfully defended, and the necessity of warning complainants in equity that considerable additions to the record which prove unnecessary may be at their own risk, demand the exercise of a sound discretion with reference to questious like that now before us. We do not think that there are any such exigencies as require us to award the respondent costs on account of the issues raised with reference to the patent which was adjudged against the complainant, but the amount which the complainant claims

in that behalf is so substantial and is so easily severable from the rest of the cause that we think it would be inequitable to allow it in his behalf under the circumstances of the case.

The respondent urges on us the statutory provisions with reference to costs in suits where claims are found invalid which have not been disclaimed, but as the complainant is entitled to recover costs generally these provisions do not apply, unless possibly by analogy. Our conclusion gives them full effect in that aspect.

It is ordered that the clerk disallow the amount of $544.50 claimed in complainant's bill of costs.

[U.S. Circuit Court-District of Massachusetts.]

HUNT v. ARCHIBALD et al.

Decided May 29, 1897.

HUNT-FIRE-Cracker-INVALID.

80 O. G., 1761.

Letters Patent No. 547,921, granted to Edmond S. Hunt, October 15, 1895, for an improvement in fire-crackers, in which the fuse is held in place by a portion of the tube forced in and down to form ridges extending toward the fuse and forming a rosette, with the fuse projecting from the center, Held to be void for want of novelty, in view of the prior state of the art.

Messrs. Maynadier & Mitchell for the complainant.
Mr. George O. G. Coale for the defendants.

ON FINAL hearing.

COLT, J.:

This is a bill in equity brought for the infringement of Letters Patent No. 547,921, granted to the complainant October 15, 1895, for an improved firecracker. The specification describes the invention as follows:

My invention relates to closing the paper case or tube about the fuse or igniting device; and it consists in a fire-cracker in which the fuse is held in place by a portion of the tube forced in and down to form ridges, which extend toward the fuse and cause the portion bent in to form a rosette, with the fuse projecting from its center, as will be plain from the drawings, which show a rosette formed by crimping in the inner portion of the tube A along six radial lines a, these lines slanting upward and meeting at their inner ends about the fuse B.

The drawings show a tool for making a rosette, and the specification further declares that

my invention is the fuse held firmly by a rosette formed by forcing a portion of the tube inwardly and downwardly to form radial tapering grooves deepest at their outer ends.

Figure 2 below is a perspective view of the Hunt firecracker with a portion cut away, and Fig. 5 is a perspective view of the tool or crimper for securing the fuse in place.

1. Tube A, and fuse B, combined by means of the rosette formed of portions of the tube crimped in by radial tapering grooves; substantially as set forth.

2. Tube A with its outer portion cylindrical at and near the fuse end but with its inner portion at that end forced in to form a rosette as described, combined with fuse B extending through and held by that rosette; substantially as and for the purposes specified.

The defendants contend that the patent is void for want of patentable novelty, and this is the most serious question in the case. prior patent, granted to the complainant October 14, 1890, we find described the identical tool for crimping in portions of the tube of a fire-cracker in the form of a rosette with radial tapering grooves, which is set out in the patent in suit, the only difference being that in the latter there is a central or axial hole in the tool for the insertion of the fuse. This earlier tool was designed to close the butt-end of the cracker. The Masten fire-cracker patent of July 7, 1885, describes an anvil with a hole through its center to hold the fuse during the operation of plugging. In this device a clay plug is used. In the old Brown cracker the fuse is retained in place by tamping or driving down the inner portion of the end of the tube-in other words, the fuse is held by a plug integral with the tube. We find, therefore, that at the date of the Hunt invention in suit the rosette plug for closing the end of the tube was 15377-41

old, that a hole in the center of the tool to hold the fuse was old, and that the holding of the fuse by pressing down and around it the inner portion of the end of the tube was old.

Assuming that Hunt had before him his prior tool for making a rosette-plug, the old Brown cracker in which the fuse was firmly held by crushing down the layers of paper composing the inner portion of the tube, and the Masten anvil with a central or axial hole, it does not seem to me that there was any invention in the combination of the tube, fuse, and rosette-plug, which constitutes the patent in suit, or, to state the proposition in another form, there is no invention in the application of the old Hunt rosette-plug to the fuse end of a fire-cracker. Indeed, Hunt himself says that he made the first crackers like that described in the patent in suit with his old tool. His testimony on this point is:

I used the same tool that I used previously in making the cracker before. I placed the case over the mandrel; then I put my fuse in, and drove the choking-tool down upon it, and found that that closed the end of the case. The tool that I used for this occasion was a solid tool; a tool that I had.

In view of the prior state of the art the patent in suit is held to be void for want of patentable novelty.

Bill dismissed, with costs.

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

MITCHELL v. EWART MANUFACTURING COMPANY.

Decided June 1, 1897.

80 O. G., 1762.

1. DODGE-Chain Cable-VALID-INFRINGED.

Letters Patent No. 264, 139, granted to James M. Dodge, September 12, 1882, for an improvement in chain cables, consisting in inserting between the links of an ordinary chain cable metal blocks of such conformation as to seat the adjacent end portions of the end chain-links laterally in grooved channels in planes transverse to each other on its exterior, so as to prevent twisting of the metal, Held to be valid and infringed.

2. CONSTRUCTION OF CLAIMS-MATERIAL ADVANCE IN THE ART.

Where an invention consists of great merit and is a substantial advance over mechanical constructions heretofore used in the art to which it appertains, the claims of the patent should have such a construction as will give the patentee the full benefit of the mechanical advance which he has contributed to the mechanical arts and claimed.

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

Before ACHESON, BUTLER, and BUFFINGTON, Judges.

Mr. Francis T. Chambers for the appellant.

Mr. Charles Howson for the appellee.