2. Adverse knowledge and use of the device claimed, prior to the patentees' invention thereof, on a machine which was never completed, the device itself not being patented or otherwise given or made accessible to the public until long after the issue of complainant's patent, will not invalidate the exclusive right of the patentees.

3. The grippers which operate, in conjunction with the sheath and knife, to seize and conduct forward the severed end of the paper web, form no part of the patented combination. That they are referred to in describing one of the purposes of the invention does not include them in it; hence, where other means in lieu of the grippers were employed to advance the web, infringement of the combination existed none the less.

4. Notwithstanding the use of the infringed combination was stopped upon suit brought, an injunction and account were decreed. The defendants have made no disclaimer of the right to use, nor does it appear that the previous use, though disadvantageous to themselves, was without damage to complainants. Moreover, there may be other evidence as to profits on an accounting.

Mr. B. F. Lee and Mr. F. C. Bowman for complainants.

Mr. Charles F. Blake for defendants.

WHEELER, J.:

Upon hearing this cause on bill, answer, replication, proof, and argument of counsel, it appears that the orator is the owner of Patent No. 38200, dated April 14, 1863, issued to William Bullock, Calvin Adams, and George S. Selden, for an improvement in printing-machines alleged to have been invented by Bullock. The foundation of the claim for relief in this suit is that part of the patent embraced in the ninth claim, and the corresponding part of the specification. The defendants resist the claim for relief on the ground that this part of the patent is invalid for the reason that, as they claim, Bullock is not the original and first inventor, and also for that, according to the construction of the patent that they insist upon, they have not infringed upon it.

They have set up in their answer, in support of their claim of prior knowledge and use by others, an English patent to one Cowper in 1828, a description of which was deposited in the Astor Library in New York; a patent to one Beaumont in 1853, to one Beach in 1857, to Hoe in 1859, and prior knowledge and use by Hoe and one Tucker. They have also put in evidence a provisional specification for a patent filed by one Green in 1853.

The specification in Beach's patent describes some devices as being such that may be used, which are more like those in the orator's patent in this respect than any of the others except Tucker's, and have been principally relied upon in the argument, with Tucker's, to show that Bullock was not the original and first inventor of this contrivance. This part of the orator's patent is for the employment of a yielding sheath in two strips, pressing outward, one on each side of a fixed knife in a revolving cylinder, for two purposes-one to hold the paper firmly against the edges of the groove for the knife in the opposite cylinder while the knife serves it, the other to hold the end of the web till it is

2

taken by other machinery and drawn along for the next operation. Beaumont's patent was for a knife moved by a lever and cam outward. Beach's was for an improvement on Beaumont's in respect to the method of moving the knife, and mentions such strips as compose this sheath in connection with an outward movement, but not with a fixed, knife. This patent is really for the combination of the sheath with the fixed knife in the same cylinder. The other combination is of a springing knife, with a sheath in the same or opposite cylinder, and is essentially different. The prior knowledge and use by Hoe and Tucker were the same, and rest upon the testimony of Tucker, not, however, in any wise controverted. Nor is it disputed that the device put together by them, as stated in his testimony, was substantially the same as that invented by Bullock. Nor is it claimed upon any evidence that Bullock in any way learned of this device from Hoe or Tucker, or from their invention, nor that he is not an original inventor of it, believing himself to be the first inventor, but only that in fact he was not the first inventor.

From the testimony of Tucker it appears that they made this device for a part of a machine to be called a perfecting-press, which they never completed, and that they kept this part of it so far to themselves that they did not give it to the public, nor suffer them to acquire it under a patent or otherwise until long after Bullock's invention.

The statutes on this subject, as embodied in sections 4886 and 4920 Rev. Stats. U. S., would defeat the patent and orator's right of recovery if the invention was known to or used by others in this country, or if Bullock is not only an original but also the first inventor of it.

In Gayler v. Wilder (10 How., 491,) Taney, Ch. J., delivering the opinion of a majority of the court upon the effect of these statute provisions in connection with others bearing upon their construction, said that "by knowledge and use the legislature meant knowledge and use existing in a manner accessible to the public." That when the means of obtaining the knowledge would not be within their reach, as far as other interest was concerned, it would be the same as if the improvement had never been discovered. And when an inventor by the efforts of his own genius brings an invention to them and places it in their possession, the law regards him as the original and first inventor, and protects his patent, although the improvement had been invented before and used by others. Upon this construction of the law, Bullock, although not literally the first, is in law the first inventor of this improvement, and the knowledge and use of it by Hoe and Tucker, as stated, do not invalidate the patent.

It further appears, that when this suit was brought the defendants were using a yielding sheath composed of strips, one on each side of the knife, as described in the orator's patent, but not grippers to seize and conduct forward the end of the web. The patent, as to this part of it, is for a new combination and arrangement of known parts, and not for any of the parts by themselves. If the true construction of the language

of the patent is, that the grippers are a part of the combination patented, as has been urged for the defendants, the combination used by them may be so different from that patented in the orator's patent that the use by the defendants is not an infringement. But the grippers are not mentioned in the claim as any part of the device for which the patent was claimed. They are referred to in describing one of the purposes of the invention, but not as a part of the invention itself. It is not considered that this reference to them included them in the combination patented. So it appears that the defendants were using the device patented, and infringing the patent. After the suit was brought they stopped using it, and commenced using something else, according to the testimony, of equal advantage to them. It is suggested that because they have stopped using it there should be no decree for injunction, and that there can have been no profits, and for that reason there is no occasion for an account.

But the defendants have not disclaimed the right to use the invention, nor does it appear that the use which was an infringement may not have occasioned damage to the orator, although not advantageous to the defendants, and, besides, there may be other evidence as to profits on an accounting. It is ordered hereupon that a decree be entered for an injunction and account, with costs to the orator:

[United States Circuit Court-Eastern District of Pennsylvania.]

PENNOCK V. BEALE.

(O. G., vol. xiii, p. 125.)

Decided January 17, 1878.

Letters Patent No. 153110, granted to Joseph L. Peunock, July 14, 1874, for “Improvement in Puddling-Furnaces," declared valid.

Mr. Charles Howson, for complainant.

Mr. N. Sharpless, for defendant.

MCKENNAN, Cir. J.:

And now, to wit, this 17th day of January, 1878

This cause having been brought to final hearing upon the pleadings and proofs, and counsel for the parties respectively having been heard thereupon, and the same having been duly considered by this court, it is found and hereby ordered, adjudged, and decreed, that the letters patent numbered 153110, granted to Joseph L. Pennock, July 14, 1874, for improvement in puddling furnaces, and set forth in the bill of complaint filed, are good and valid, and that the title thereto is duly vested in the complainant.

And it is further ordered, adjudged, and decreed that the defendant has disturbed, violated, and infringed the exclusive right of the complainant under the said letters patent as in said bill set forth.

And it is further ordered, adjudged, and decreed that the complainant do recover of the defendant the profits, gains, savings, and advantages made by the said defendant in consequence of the said infringement and violation of the exclusive rights of the complainant under the said letters patent, together with the damages the complainant has sustained thereby, and the cost, charges, and disbursements in this suit to be taxed.

And it is further ordered, adjudged, and decreed that it be referred to John Cadwalader, jr., esq., as master, to ascertain and take, and state and report to the court, an account of the gains, profits, savings, and advantages which the said defendant has received, or which have arisen or accrued to him from infringing the said exclusive rights of the said complainant under the said letters patent, as well as of the damages the complainant has sustained thereby.

And it is further ordered, adjudged, and decreed that the complainant in such accounting have the right to cause an examination of said defendant, ore tenus or otherwise, and also the production of the books, vouchers, and documents of defendant, and that the said defendant attend for such purpose before said John Cadwalader, jr., esq., master, from time to time, as said master shall direct.

And it is also further ordered, adjudged, and decreed that a perpetual injunction be issued in this suit against the said defendant, according to the prayer of the bill.

[Supreme Court of the United States.]

WERNER, APPELLANT, v. KING.

(O. G., vol. xiii, p. 176.)

1. A device for puffing fluted fabric, consisting of a double-plated segment of a hollow cylinder, with its arch upward, between the guide-plates of which the material passes to the ordinary grooved fluting-rolls beyond (Reissue Letters Patent No. 3,000, G. E. King, June 23, 1868), is not infringed by a spring-pressed detent or finger operating above and in conjunction with a smooth, flat plate, over which the material is fed to the rolls. (Letters Patent No. 134621, R. Werner, January 7, 1873.)

2. It appears that in the first device (the complainant's), the cross-section curve of the arched guide-plates being greater in length than the rolls, a redundant width of material is constantly fed to the latter, which excess causes the material to rise in irregular puffs between the fluting lines; in the second, the spring-finger momentarily detains the central portions of the fabric intermediate to the fluting-lines, and thereby produces the crinkles: Held—

3. The difference is more than one of form. With complainant the puffing is due entirely to the curved guide, and unless a guide in some manner gives an arch or curve to the material on passing into the rolls, it is not within the scope of his patent. The result produced must not only be the same, but it must be done in substantially the same way.

4. The devices operate on different principles. The arched guide invariably feeds the same amount of redundant material, irrespective of the elasticity or rigidity of the fabric, while the detention of the finger, and consequently the puffing, will vary with the resisting strength of the fabric and the power of the pressed spring.

5. With the arched guide the puffing results from a pressure which is uniform over the entire surface of the fabric; with the detent or finger the pressure varies.

6. The two devices are in no sense mechanical equivalents, unless complainant claims every method by which a redundancy of material is presented to the rolls for puffing. This he does not do, and, if he did, the claim would be fatal.

APPEAL from the Circuit Court of the United States for the southern district of New York.

Mr. Arthur v. Briesen for appellant.

Mr. Frederick H. Betts for appellee.

MILLER, J.:

There was issued to George E. King, on the 26th February, 1867, letters patent for a new and useful improvement in fluting-machines. This patent he surrendered, and on the 23d June, 1868, had two patents granted him as reissues of the original. The first of these (No. 3,000) was for the machine by which the article of fluting and puffing described in the patent was made, and the other (No. 3,001) was for the article made as described. The record before us is that of a suit in chancery, brought by King against Robert Werner for an infringement of both these patents. Werner defended on the ground that the patents were void for want of novelty, and also by denying the infringement. The circuit court held that the defense was sustained as to the patent for the article produced, on the ground that it was not new, but rendered a decree in favor of plaintiff as to the reissued patent (No. 3,000) for the machine. The defendant, Werner, alone appeals, and seeks a reversal of the decree on both the grounds urged below.

We will examine the question of infringement first, for if the appellant has not infringed the patent of appellee, he can very well leave to others the task of contesting its validity.

The defendant is also patentee of a machine for crimping and fluting, which produces an article similar to that of plaintiff, and parts of the machine by which the purpose is effected are substantially the same as his. If on looking at the machine in detail there is such substantial identity in all its parts, the appellant must be held to be an infringer, for his patent bears a date more than four years subsequent to that of plaintiff.

Appellee's schedule declares that his invention is designed for making puffing applicable to shirt-bosoms, trimming, or other purposes of dress, in which the article as it issues from the machine is (without having recourse to laundering) delivered in a complete form, either singly or in two or more series or rows, composed of flattened borders with flutes running along their inner edges, and puffed or wrinkled surfaces between the flutes.

The fabric to be fluted and puffed is drawn between a pair of rollers moved by a crank, the rollers, where they approach each other, having flutes or grooves, so arranged as, by their pressure on the fabric as it