tion. Giving to them the limited and reasonable construction to which they are probably entitled in view of the prior art, and there is invention, but no infringement. This court can reach no other conclusion, after a careful examination of the exhibits, the evidence, and the arguments of counsel. The court has not attempted to give more than a mere outline of the reasons that demand these conclusions. To do otherwise would lengthen this decision beyond all reason, and demand extensive quotations from the evidence and from the authorities.

I will call attention to a few of the decided cases which seem applicable and decisive. That (in such a case as this) infringement is an affirmative allegation, the cause of action, and that it must be proved, cannot be disputed as a question of law. It was so decided in Agawam Co. v. Jordan, 7 Wall. 583-609, 19 L. Ed. 177, and has not been questioned since. The difference in the fabric produced by two machines is evidence of importance-many times-as showing the difference in the mode of operation of the two machines. See Werner v. King, 96 U. S. 218, 230, 24 L. Ed. 613. In that case the court also said:

"It is not only necessary to an infringement that the arrangement which infringes should perform the same service, or produce the same effect, but, as Mr. Justice Nelson said in Sickles v. Borden, 3 Blatchf. 535 [Fed. Cas, No. 12,832], it must be done in substantially the same way. Burr v. Duryee, 1 Wall. 531 [17 L. Ed. 650, 660, 661].”

Claims 1, 3, 6, and 7 of the patent in suit end, "substantially as and for the purposes set forth." This language in these claims has sent the court back to the specifications for an explanation, and in one instance a qualification of the claim, and a description and qualification or limitation of the elements of which the combination or structure of the patent is composed. This is justified and required by the authorities. Brown v. Guild, 23 Wall. 181, 218, 23 L. Ed. 161; Brown v. Davis, 116 U. S. 237, 251, 6 Sup. Ct. 379, 29 L. Ed. 659; Westinghouse v. Boyden Power Brake Co., 170 U. S. 537, 558, 18 Sup. Ct. 707, 717, 42 L. Ed. 1136. In this last case it is said:

"The claim is for a triple valve device, etc., for admitting air from the main air pipe to the brake cylinder 'substantially as set forth.' These words have been uniformly held by us to import into the claim the particulars of the specification, or, as was said in Seymour v. Osborne, 11 Wall. 516, 547, 20 L. Ed. 33, 'where the claim immediately follows the description of the invention, it may be construed in connection with the explanations contained in the specification, and where it contains words referring back to the specification it cannot properly be construed in any other way.'"

It was wisely said in Western Electric Co. v. Western Tel. Constr. Co. (C. C.) 79 Fed. 959, 961, "The main purpose of the invention must control the scope of the claims." See, also, Snow v. L. S. & M. S. R. W. Co., 121 U. S. 617, 7 Sup. Ct. 1343, 30 L. Ed. 1004. It is quite true that a patentee is entitled to the benefit of all the good and beneficial results, his patented invention brings, even if some of them, even the most important, were not in his mind when he applied for and obtained his patent. But this rule does not entitle the patentee to say that another patented machine, or

139 F.-10

some machine not patented, is an infringement of his patent because it produces a fabric similar to his, one that may be used for the same purpose, one that may compete with his in the market, and also fill the same "long-felt want," unless the same elements of the one machine are used in the other, and operate therein in substantially the same way to produce the result. Two entirely different machines, different in elements, in combination of elements, and in operation, may produce the same result. Here the one does not infringe the other. If the results-the prod⚫ucts of the operation of two machines in the same art are different, this fact is not conclusive that there is no infringement. This result may be due to a different way or mode of operating the machines discovered by some person. But if the machines necessarily operate differently, and were intended to operate differently, and if one cannot do what the other does and was intended to do, there is no infringement, even when both belong to the same art. Such is this case.

There is another consideration entitled to some weight here. The complainants' patent did not go into practical use. We have seen why. Machines made in accordance with it and put in operation destroyed their products. It proved a boomerang. In view of this fact alone this court cannot give to the claims of the patent in suit the Bellis-the broad construction claimed; one that would include the defendants' machine, which was and is a success. On this subject, see Deering v. Winona Harvester Works, 155 U. S. 286, 295, 15 Sup. Ct. 118, 39 L. Ed. 153, and Bradford v. Belknap Motor Co. (C. C.) 105 Fed. 63. This court has not gone extensively into the questions whether, in any view, the complainants' patent discloses invention. Assuming that, properly constructed, as it reads, taken as a whole, and in view of the prior art, invention is disclosed, there has been no invasion of complainants' rights.

Defendants have not infringed, and in each of the cases there will be a decree dismissing the bill of complaint, with costs.

DE LONG HOOK & EYE CO. v. FRANCIS HOOK & EYE & FASTENER CO. (Circuit Court, W. D. New York. June 26, 1905.)

1. UNLAWFUL COMPETITION-EQUITY-MISLEADING MISREPRESENTATIONS.

Where the printing on the back of complainant's card containing hooks and eyes did not claim that the hump feature was patented, but merely directed attention to complainant's articles by referring thereto as the "De Long Patent Hook and Eye," and contained a sketch thereof, with an index line pointing significantly to the hump or a spring tongue of the hook, such reference to a patent, which had been held invalid except as to the triple band of spring wire to strengthen the hook, did not constitute such a deception of the public as precluded complainant from relief in a court of equity against unfair competition.

2. SAME DRESS OF GOODS-CARDS--SIMILARITY.

Where cards used by complainant and defendant, containing competing hooks and eyes, which were attached thereto by thread, were substantially the same in size, color, and form, and, though the words printed on defend

ant's card were different, the style, printing, spacing, etc., were made to simulate complainant's card as closely as possible, and defendant later simulated complainant's mode of fastening the invisible eyes to the card, though stitched in a different manner, defendant was guilty of unfair competition.

[Ed. Note. For cases in point, see vol. 46, Cent. Dig. Trade-Marks and Trade-Names, § 81.]

See 118 Fed. 938.

Stern & Rushmore (Charles E. Rushmore and William C. Strawbridge, of counsel), for complainant.

Macomber & Ellis (Tracy C. Becker, of counsel), for defendant.

HAZEL, District Judge. This action is brought to enjoin the defendant from selling and exposing for sale hooks and eyes stitched upon cards together with what are known as "invisible eyes," and which cards bear letters, words, and pictures arranged in simulation of complainant's previously adopted method of introducing its commodity to the trade. Complainant claims that the defendant placed its merchandise upon the market in a form calculated to mislead the ordinary purchaser into the belief that its goods were those of complainant. Although complainant also used upon its cards the registered trade-mark, "See that Hump," in connection with thei name "De Long," this action is simply for unfair competition in trade. The defendant challenges complainant's asserted exclusive right to use the style of dress adopted for its commodity, denies. an intention to defraud, and alleges that complainant has persistently practiced a deception and fraud upon the public by falsely advertising its ownership of the patent upon a hook which has a socalled spring tongue or hump. In other words, the defendant claims that the complainant falsely and fraudulently advertised in newspapers, periodicals, and show cards in such manner as insiduously to mislead the public into believing that the hump feature of the hook (hereinafter referred to with more particularity) was a patentable invention conceived by complainant's predecessor. The rule is invoked that he who seeks the aid of a court of equity in trade-mark cases to enjoin infringement must not himself be guilty of false or misleading representations in respect to such trade-mark, or the business which is the subject thereof. Hilson Co. v. Foster (C. C.) 80 Fed. 896; Dadirrian v. Yacubian et al., 98 Fed. 872, 39 C. C. A. 321; Allan B. Wrisley Co. v. Iowa Soap Co. (C. C.) 104 Fed. 548. In this connection the evidence shows that complainant's predecessor obtained a patent on October 1, 1889, for the hump feature of the hook. The validity of the patent was sustained in Richardson v. Shepard et al. (C. C.) 60 Fed. 273. Afterwards, however, the patent was limited to a triple bend or spring wire to strengthen the hook. Richardson v. American Pin Co. (C. C.) 73 Fed. 476. The printing upon the back of complainant's card does not claim that the hump feature is patented, as contended by the defendant, but merely directs attention to complainant's vendible articles by referring thereto as the "De Long Patent Hook and Eye," and contains a sketch thereof, with an in

dex line pointing significantly to the hump or spring tongue of the hook. This trivial reference to a patent for the hook and eye may not have been strictly accurate, but I am not convinced that it worked a deception upon the public, or wrongfully induced the sale of complainant's merchandise. Hence the evidence in support thereof must be deemed wholly immaterial.

The next point is whether the defendant imitated the complainant's dress for its merchandise in such manner as to practice a fraud and deception upon the ultimate purchaser. A description of the cards upon which the hooks and eyes are stitched is necessary to a proper consideration of the controverted question. The cards of the complainant and defendant containing the hooks and eyes and the invisible eyes, which are attached thereto by thread, were substantially the same in size, color, and form. The exact description of the complainant's slightly modified card adopted in 1893 may be taken from the complainant's brief. The card has printed upon its face the words "See that," printed in the upper panel, and the word "Hump" in the lower panel, and on the bottom space were printed the words "United States and Foreign Countries." On the upper horizontal column were the words, in shaded type, "The De Long Hook and Eye, No. 4." In the upper panel the words "See that." In the middle horizontal column the words "Easy adjustment; Security; Durability." In the second or lower panel the word "hump?" On the bottom horizontal panel, in the left-hand margin, in a heavily shaded space, were the words “Pat. Oct. 1, 1889." The color of the card is white. The type and shading is in black. On the back of the card was a white label, upon which was printed in plain black type the names of the foreign houses where the hooks and eyes could be purchased. The label also contained a sketch of a hook and eye, with a dotted line running to the spring tongue. To the left of the sketch are the words "See that Hump?" the word "Hump" being printed in large black type. The later cards of the complainant have also the words "See that Hump?" printed diagonally across the label, and on its face, between the rows of hooks, is a narrow label containing the words in red, "See that Hump?" The label just mentioned is pasted upon that portion of the card upon which appeared the words "Easy adjustment; Security; Durability" of the earlier cards of complain

ant.

The proofs show that the "Adelaide" card of the defendant was introduced to the trade in 1898, and was a marked change from its earlier card. The words "The Adelaide Hook and Eye No. 4" are prominently printed upon the upper portion of the card. Running through the upper panel between the hooks, and easily discernible, is the word "Security." In the central horizontal space are the words "Easy Working Self Acting Spring." The type is plain black upon a white background, and it will be noted that the initial letter "S" of the word in the upper panel is the same as that of the word in the same panel of complainant's card, and also that the initial word "Easy" in the central space is the first word used by complainant in the same portion of its card. The word "Comfort"

is printed between the hooks and eyes in the bottom row, in apparent simulation of the word "Hump," printed in the same portion of complainant's card. In the left-hand corner at the bottom is a heavily shaded space containing the words "Rust Proof," and upon the bottom margin of the card are the words "Made in the United States." The shaded space and the words last mentioned are in resemblance of the lower portion of complainant's card. Defendant also has a label on the back of its card, upon which is prominently printed, in plain black type, the word "Adelaide," in simulation of the words "See that Hump?" in complainant's cards. Reference is also made thereon to various houses where defendant's commodities may be purchased, and a sketch of a spring tongue hook is contained in the right-hand corner, with dotted lines indicating the hump of the hook, as in complainant's design.

I have no hesitation in determining that, owing to the general characteristics of the cards, namely the color, style of type, shading, and other details, the arrangement of the hooks and eyes and invisible eyes thereon, and the label, as heretofore indicated, the cards of the defendant are an evident resemblance of those of complainant. The evidence shows that the complainant in March, 1890, placed its hooks and eyes upon the market; and, with some trifling modifications, they have ever since been carded as herein set forth. The method of fastening the invisible eyes upon the cards was adopted by the complainant in 1900. Soon afterwards hooks and eyes carded with an invisible eye of defendant's manufacture appeared on the market. Although the witness Francis testified that the defendant corporation carded the invisible eyes in the form. mentioned early in 1901, yet it sufficiently appears that the cards of the complainant with its invisible eyes were then upon the market. Much evidence was given by defendant tending to show that a number of the elements of complainant's cards were old, and were in prior use for a similar purpose. It is insisted that the method of sewing the hooks and eyes on the cards, the arrangement of printing thereon, the use of shaded type, the custom of pasting labels on the reverse side of the cards, and the practice of using a picture of the hook and eye, with an index line pointing to the hump of the hook, were familiarly known, and that complainant was not the first to use the elements mentioned. True, some of the elements may have been old, but it is not required that the separate details must have been original with a complainant seeking relief from infringement. The question is whether the adoption of the collocated features of the complainant's card and style of dress disclosed a differentiation from that previously adopted, and by which the public has come to recognize the product of complainant. Did the complainant, by its adoption and presentation of the hooks and eyes in connection with the invisible eye, popularize its merchandise and aptly designate it, so that the same became distinctively known? If the complainant had assembled known features without creating a dissimilarity, then no unfairness would be apparent in defendant's adoption of a like dress for its product. That complainant has distinguished its merchandise from that of others engaged in a similar