In the example shown the magnesia predominates the other elements by a percentage of 75 to 25. The combination produces a heat insulator which has marked advantages over the others previously in use. It is light, compact and has great nonconducting power; it is simple in construction and easy of application. There is nothing difficult or ambiguous about the patent, its language perfectly plain and simple. If this fact be kept in view many of the difficulties suggested by the defendants will disappear.

It will shorten the discussion if it be conceded at the outset that pipe coverings were old in 1885, with fossil-meal, lime putty, clay, plaster of paris and paper pulp as the nonconducting material and the properties of magnesia as a nonconductor were well known. The principal anticipations relied on are the Nagel patents, the Brigham patent, the earlier Hanmore patent and the patent and publications of Ordway. The prior art does not show the ingredients in the proportion shown in the patent in suit unless the alleged prior use by Andrews is established.

The English and United States patents to Nagel, of January, 1884, are for "improvements in the manufacture of fireproof and waterproof plates" intended to be used as roof coverings to prevent the danger of fire in theaters and other analogous purposes. The patents undoubtedly show a fire proof mass in which asbestus may be mixed with magnesia, but in different proportions and for entirely different purposes. It is thought that nothing contained therein would suggest to the skilled mechanic the steam pipe covering of the Hanmore patent.

The Brigham patent of May, 1884, is for an improved asbestus compound and articles made therefrom. It is intended to take the place of wood and iron in the arts, it is quite hard and is fire and water proof. The drawing shows it applied to the roof of a railway freight car, the "boards" being rabbeted and battened so as to create a water proof joint. The patentee says that “a car or other roof composed of boards, a, a, will be fire and water proof and very durable." The compound is made by incorporating with asbestus, alone or with other fiber, oxide of magnesia in about equal parts with the asbestus and thereafter applying chloride of magnesium to temper and bring the same into a plastic state.

The Hanmore patent of April 15, 1884, is for a "nonheatconducting vessel." The drawings show the invention as embodied in an ice-water cooler. The specification says:

"The invention is applicable to ice-water pitchers, as well as ice-water coolers, and to ice-cream freezers and vessels for carrying and delivering ice-cream, to ice boxes and refrigerators, and, generally, to all vessels the contents of which are artificially cooled."

The nonconducting material is composed of a layer of raw-silk waste wrapped around the vessel, a coating of calcined or carbonate of magnesia plastered on the outside of the silk waste, a superimposed layer of paper, a layer of felt applied outside the paper, a second layer of paper outside the felt and an inclosing case. It is only necessary to read the claims to perceive that this complicated combination is not the simple covering of the patent in suit.

The Ordway patent, of January, 1885, is for a nonconducting composition for refrigerators and safes, but it may be introduced into the floors and walls of buildings to deaden sound and it may be used also as a covering for pipes. When used for the latter purpose the composition, which consists of a combination of granulated cork and water glass, is molded into a pipe having a greater interior diameter than the exterior of the steam pipe to be covered. When the halves of the composition pipe are dry and hard the inner surface is plastered with fossil meal or magnesia made into a thick paste with water. In other words, there is a layer of magnesia or fossil meal next the steam pipe and outside of that another layer made of granulated cork and water glass. The Ordway publications add little to the controversy except that he recognized in 1885 the efficiency of magnesia as an incombustible nonconductor, but about this there is no dispute. Every chemist knew that magnesia was a nonconductor but the difficulty was to utilize and apply it as a practical covering for steam pipes.

The foregoing are unquestionably the defendants' best references and it is evident that none of them anticipates. Neither the fireproof and waterproof plates of Nagel, the roof boards of Brigham, the water-cooler lining of Hanmore, nor the magnesia plastered cork pipe of Ordway infringes the claims of the patent in suit. There is broad language in each which, interpreted in the light of subsequent events, may be said to include the Hanmore covering, but this is true in almost every patent litigation. Brigham, for instance, says:

"I do not desire to limit my invention to the exact proportion of asbestus and magnesium or of paper pulp as the same may be changed and produce articles of undoubted value as to durability and fire and water resisting qualities."

But a valuable patent cannot be invalidated and rights acquired under it destroyed by such general statements. As well might one attempt to anticipate the motor car of to-day by the statements found in the fourth verse of the second chapter of Nahum.

In Seymour v. Osborne, 11 Wall, 516, 20 L. Ed. 33, the Supreme Court says, at page 555 of 11 Wall. [20 L. Ed., 33]:

"Mere vague and general representations will not support such a defense, as the knowledge supposed to be derived from the publication must be sufficient to enable those skilled in the art or science to understand the nature and operation of the invention, and to carry it into practical use."

Notwithstanding the specimens produced by the defendants it is thought that it is not possible to construct the pipe covering of the Hanmore patent by following the directions of the Brigham. specification, or, indeed, of any of the patents in evidence. Hanmore appears to have been the first to construct a nonconducting jacket for steam pipes and boilers, the major proportion being carbonate of or calcined magnesia. His covering at once became popular and a great business was built up under the patent. It is true that, tested by all the after-acquired knowledge, the forward step taken by Hanmore seems a simple one, but that it involved invention to take this step is made clear by an application of the rules

so often enunciated in similar cases. Cantrell v. Wallick, 117 U. S. 689, 695, 6 Sup. Ct. 970, 29 L. Ed. 1017; Potts v. Creager, 155 U. S. 597, 15 Sup. Ct. 194, 39 L. Ed. 275; Magowan v. Packing Co., 141 U. S. 332, 12 Sup. Ct. 71, 35 L. Ed. 781; Smith v. Vulcanite Co., 93 U. S. 486, 23 L. Ed. 952. But little need be said of the attempts to prove prior use. They are supported by testimony with which the courts having jurisdiction of patent causes, are exceedingly familiar. Of this testimony the Supreme Court says:

"In view of the unsatisfactory character of such testimony, arising from the forgetfulness of witnesses, their liability to mistakes, their proneness to recollect things as the party calling them would have them recollect them, aside from the temptation to actual perjury, courts have not only imposed upon defendants the burden of proving such devices, but have required that the proof shall be clear, satisfactory and beyond a reasonable doubt. Witnesses whose memories are prodded by the eagerness of interested parties to elicit testimony favorable to themselves are not usually to be depended upon for accurate information. The very fact, which courts as well as the public have not failed to recognize, that almost every important patent, from the cotton gin of Whitney to the one under consideration, has been attacked by the testimony of witnesses who imagined they had made similar discoveries long before the patentee had claimed to have invented his device, has tended to throw a certain amount of discredit upon all that class of evidence, and to demand that it be subjected to the closest scrutiny." Barbed Wire Patent, 143 U. S. 275, 284, 12 Sup. Ct. 443, 447, 36 L. Ed. 154.

It

The Andrews prior use, which depends largely upon the testimony of John Andrews, took place in Boston, in 1878, 25 years prior to the giving of his testimony. He was then engaged in the business of making boiler and steam pipe coverings, having begun the business the previous year. So, that, if his testimony is to be accepted as accurate, at the age of 32, and at the commencement of his business career as a manufacturer of steam pipe coverings, he had knowledge of the Hanmore combination. The question natrally arises, Is it likely that if he had this "potentiality of becoming rich" within reach he would have permitted it to slip from his grasp? No physical exhibit of the Andrews covering is shown. except a so-called sample, which, it is asserted, was placed in a drawer of Andrews' desk in 1878 and remained there until 1903. is unnecessary to attempt a minute analysis of this testimony. It presents the old situation which arises where human memory is relied upon to establish unimportant and trivial events and circumstances occurring a quarter of a century before. Andrews and the other witnesses, who agree with him in some more or less unimportant features, may be correct, but on the other hand they may be mistaken. The court is convinced that they are not willfully mistaken, but the inherent improbability of the testimony in its entirety, and the fact that Andrews' memory is shown to be exceedingly defective in other matters, compels the court to the conclusion that no impartial mind can be convinced of the truth of this testimony beyond reasonable doubt.

What has been said regarding the Andrews prior use applies with equal or greater force to the so-called Mills and Crabbs prior

use.

It is said that the patent as issued is for a different invention from 139 F.-37.

that for which application was made. Unquestionably the description and claims were changed to meet the criticisms and suggestions of the officials of the Patent Office, but this is true of a great majority of patents.

Hanmore did not change his invention; he simply made his description more definite and narrowed the scope of his claims to meet the references cited by the examiner. He was clearly within his rights in making these changes. Few patents could survive if the courts should adopt the rule contended for by the defendants. The changes here made are of the same general character that appear in fully half the patents granted. An applicant has a right to alter and amend his specification to conform to the art as the facts are developed in the Patent Office so long as he does not by enlarging the scope of his claims appropriate prior inventions or that which has in the meantime gone into public use. In the present case there were no intervening rights. An amendment to the claims suggested by the specification and drawings is permissible. Hobbs v. Beach, 180 U. S. 383, 396, 21 Sup. Ct. 409, 45 L. Ed. 586.

Other criticisms and objections urged by the defendants have been examined, but in view of what has been already said it is thought that further discussion is unnecessary.

Infringement by the defendants, the Philip Carey Manufacturing Company and the American Magnesia Covering Company, is abundantly proved.

It was stated at the argument by the court that as to the other defendants the bill would be dismissed unless complainant's counsel referred the court to some evidence that they had personally infringed or had, in their individual capacity, promoted the infringement of the two corporations named. No such evidence has been furnished and as to all the other defendants the bill is dismissed with costs in each instance, consisting of the usual docket fee and such legal disbursements as were necessarily incurred by each defendant respectively in presenting his defense. Hutter v. De Q. Bottle Stopper Co., 128 Fed. 283, 286, 62 C. C. A. 652.

The complainant is entitled to a decree for an accounting upon all the claims of the Hanmore patent against the two corporations above named, with costs.

COLUMBIA WIRE CO. v. KOKOMO STEEL & WIRE CO.

(Circuit Court, D. Indiana. March 22, 1904.)

No. 10,108.

1. PATENTS-INFRINGEMENT-IDENTITY OF COMBINATON.

A patent for a combination in a machine of three wheels, each of which is indispensable to the operativeness of the machine, is not infringed by a machine, also having three wheels, but one of which is an idler, and can be dispensed with at pleasure without affecting the working of the machine; such machine being in effect a two-wheel combination.

[Ed. Note. For cases in point, see vol. 38, Cent. Dig. Patents, § 370–373.]

2. SAME.

The Bates patent, No. 365,723, for a wire barbing machine, construed, and held not infringed.

In Equity. Suit for infringement of letters patent No. 365,723, for a wire-barbing machine, granted to Albert J. Bates June 28, 1887. On final hearing.

John R. Bennett and Bakewell & Byrnes, for complainant. Thomas A. Banning (Ephraim Banning, Samuel W. Banning, Walker Banning, and C. C. Shirley, of counsel), for defendant.

ANDERSON, District Judge. Complainant alleges infringement of a combination patent. It consists of a combination of three butterfly wheels, each one of which is indispensable to the effective working of the combination. No one of the elements of the combination is new. Two of the wheels, in arrangement and function, are found in machines prior to the complainant's patent. The novelty in complainant's patent, if there be any patentable novelty in it, consists in adding to these two former wheels a third butterfly wheel, so arranged on a yielding arm as to serve the double function of turning the direction and indicating the tension of the wire. Defendant's contrivance also consists of a combination of three butterfly wheels, so arranged as to accomplish the same result as complainant's and also to work automatically. It is shown by the proofs, and it was demonstrated by an exhibition of one of the defendant's machines in operation on the hearing, that defendant's contrivance would work as rapidly and effectually when one of its butterfly wheels, the middle wheel, is omitted. This middle. wheel is an idler, and, as shown upon the hearing, is not indispensable to the proper and effectual work of defendant's contrivance.

Complainant's counsel, on the hearing, freely and frankly admitted that defendant's contrivance, when operated without the middle wheel, is not an infringement of the complainant's patent. The question, then, is: Is a combination of three wheels, one of which is entirely dispensable, an infringement of a patent on a three-wheel combination, no one of which can be dispensed with? Or, in other words, is a three-wheel arrangement, one of the wheels of which may be omitted at will without affecting the working principle or effectiveness of the combination, in reality a two or three wheel combination? I am of the opinion that such a contrivance is really a two-wheel combination, and must be so considered, and that it does not infringe complainant's patent.

The bill should be dismissed for want of equity, and it is so ordered,

RYAN v. METROPOLITAN JOCKEY CLUB et al.

(Circuit Court, E. D. New York. June 11, 1904.)

PATENTS-INFRINGEMENT-STARTER'S GATE FOR RACE TRACKS.

The Ryan patent, No. 553,740, for a starter's gate for race tracks, claim 1, construed in the light of amendments made when before the patent office, and held not infringed.