great numbers of buttoners embodying the invention described and claimed by Goldthwait had been imported from England and France, and were in common use and on public sale in this country more than two years. Defendant in reply to the allegations in the bill in relation to the suit admits the commencement of the action, and the voluntary default, but avers that when the suit was brought the defendant was ignorant of the facts he now sets up in relation to the prior manufacture, use, and sale of the buttoners before Goldthwait's invention, and was ignorant of the law and not advised that those facts would constitute a defense. The averment in the answer of ignorance of the facts does not correspond with defendant's testimony in the case, from which it would appear that before the default he ascertained that the article had been imported many years, and that the patentee had stolen the patent from a French patent by simply reversing.

Defendant now relies for his defense upon the evidence tending to show an importation from France and Germany, and the public sale and common use in this country, more than two years before the application for the patent, of articles embodying the invention. The complainant, while contending that the evidence is not sufficient to establish prior invention and use, contends that it is not open to the defendant after the default in the action at law to interpose that defense in this proceeding in equity, and also that the defendant cannot in a court of equity deny the binding obligation upon him of the agreement.

The agreement not to make any more of the Goldthwait buttoners was founded upon a valuable consideration. It was a part of the arrangement between the parties for the purchase of the stock and materials Moorhouse had on hand. Such an agreement made with full knowledge of the facts, and not under duress, and with no evidence that it was unconscientious or unreasonable, a court of equity will en. force. In Sargent v. Larned (2 Curtis C. C., 340,) where the facts are very similar to the facts in this case, the court, Mr. Justice Curtis presiding, refused to allow such an agreement to be repudiated, and enforced its observance by injunction.

Nor will a court of equity ordinarily entertain jurisdiction of a matter which the person has had an opportunity of litigating in another court, and which had there been decided against him, unless it appears that circumstances beyond his control prevented his making the defense or trying the question. Le Guen v. Gouverneur et al., 1 Johns. Cas., 436; 3- Atk., 224; 1 Atk., 293; 7 Term Rep., 269; Baker v. Whitney, 1 Story, 218.

The defendant, both by the proceedings in the action at law and the agreement signed by him, is concluded from contesting the validity of the patent.

Decree for injunction and account according to the prayer in the bill.

[United States Circuit Court-Southern District of New York.]

HOE & Co. v. COLE & Co.

(O. G., vol. xiii, p. 500.)

October term, 1877.

A printer's galley in which the metal facing-strips are secured to the wooden rails without perforations or roughness in the smooth metal surface (Reissue Letters Patent No. 6,326) is infringed, although the patentee shows and describes the metal face-strips, with top and bottom flanges, having projecting ledges which engage with corresponding grooves in the wooden rails, while the defendant uses an L-shaped metal face, to which the wooden back or rail is secured by screws passing through the foot of the L.

Messrs. Munson & Philipp for complainants.

Messrs. Daily & Perry for defendants.

WHEELER, J.:

This cause has been heard on pleadings, proofs, and argument. The orators own a patent originally issued to Alexander T. De Puy, in Letters No. 60,151, dated December 4, 1866, and reissued to them in Letters No. 6,326, dated March 9, 1875, for an improvement in printers' galleys for holding type set up in them for use, which they claim the defendants infringe, and they pray appropriate relief for infringement. Among other defenses, the defendants allege that De Puy was not the original and first inventor of the device described in the patent, and that they do not infringe upon the patent. The issue made upon the pleadings and proofs, the decision of which is decisive of the case, is well stated in the concluding paragraph of the defendants' brief to be "Whether Alexander T. De Puy was the original and first inventor of improvements in printers' galleys, which were and are being made and sold by these defendants."

It appears that such galleys are oblong, of various sizes, with metal bottoms, and with ledges on each side and at one end, high enough to hold upright and in place set-up type. That it is necessary to make them strong, desirable to have them light, and essential to their convenient use that the inner surfaces of the ledges next to the type be smooth.

The earliest style shown was made with wooden ledges having metal facings, with screws or nails through the facings extending into the wood. This afforded lightness and strength, but the nail or screw heads and their sockets made the faces of the ledges rough and troublesome. The next style was a ledge of metal without wood. This obviated the roughness, but made them heavy.

In 1859 De Puy invented the style, described in his patent, of galleys with wooden ledges faced with metal, secured by fastenings back of, and not interfering with, the smooth faces of the ledges.

This afforded permanently smooth faces to the ledges, combined with lightness and strength as far as has been shown to be practicable.

This is the first, so far as has been made to appear, that any one has accomplished these combined results.

In the specification of the patent he described the mode of applying his invention and its advantages, and in doing so he stated:

It is obvious that this invention may be embodied in various forms without departing from the gist or spirit of it.

Then he described a particular method of fastening the metal face of the ledges to the wood by extending the metal back at the top and bottom, and turning flanges on the extensions to be forced into corresponding groves in the wooden rail; and added:

The ledges may be attached to the bed-plate in any well-known manner.

The first claim in the patent is for

The combination of the edge-rail and its metallic facing or lining by means which secure their union and leave the metallic facing or lining smooth or free from perforations or similar interruptions, substantially as and for the purpose set forth.

The defendants use an L -angle metal facing for ledges, with smooth unperforated face, supported by a wooden rail attached to it by screws through the bed-plate and the bottom part of the L.

This is a mode of fastening the metal face to the wooden rail different in form from that which De Puy specifically described in his patent, but his leading idea, as set forth in the patent, of fastening the face-plate to the rail by an attachment back of the plate without perforating the face, is followed.

The screws through the L into the wood take the place of the lower flange and the upper one is dispensed with. The screws were wellknown substitutes for flanges in such fastenings, and that change was one of form and not of substance.

According to the rules of law relating to this subject, De Puy was the original and first inventor of the invention described in the patent, and of the device made use of by the defendants, and the question stated as being decisive of the case must be answered in the affirmative.

This makes it unnecessary to make any decision upon the questions made by the orator's counsel with reference to evidence bearing upon the question.

Let a decree be entered for a reference and accounting and an injunc tion, according to the prayer of the bill.

[Circuit Court of the United States-District of Massachusetts.]

WONSON v. PETERSON et al.

(O. G., vol. xiii, p. 548.)

1. An objection to the validity of a patent because of an insufficient specification, raised in argument, but, not set up as a defense in the answer, cannot be considered. Rubber Co. v. Goodyear, 2 Fisher, 509; 9 Wall., 793.

2. Letters Patent No. 4,599 (Reissue Division B), granted Tarr and Wonson October 17, 1871, are valid, and are for substantially the same invention as the original patent, viz: A marine paint composed of oxide of copper, an earthy or mineral basis, and a vehicle or medium.

3. The earthy or mineral base serves to retard the dissolution of the oxide of copper. It is not anticipated in function by the pulverized antimony with which the oxide is mixed in the Wetterstedt patent (No. 8,275, granted August 5, 1851). 4. Sulphuret of antimony comes within the description of the retarding earthy or mineral basis with which the copper oxide is mixed according to the terms of the patent, and its use is an infringement, nothwithstanding small quantities of the arsenite and the arsenate are added to the oxide of copper by defendants.

Mr. Causten Browne, Messrs Browne, Holmes & Browne for complainant. Mr. Chauncey Smith, Messrs. Shattuck, Holmes & Munroe for defendant. OPINION OF THE COURT.-March 11, 1878.

SHEPLEY, J.:

In the case of Tarr et al. v. Folsom (1 Holmes, 313,) this court decided that Division B of the reissued patent to Tarr and Wonson was not void by reason of describing an iuvention different from the one described and claimed in the original patent, because the original patent clearly suggested a marine paint composed of oxide of copper, an earthy or mineral base, and a vehicle or medium. A doubt was then entertained by the court, which it has since had occasion, on a motion in another case for a preliminary injunction, to express that Division A could not be sustained for a paint compounded of two only of the ingredients, viz: Oxide of copper and a vehicle or medium. But, after careful re-examnation in the light of the more elaborate discussion of the question in this case, the court adheres to the opinion that the invention substantially, though not accurately and fully described in the original patent, is the one more accurately and clearly described in the Reissue Division B. The object of the reissue was to correct this inadvertence in the original description. There is no ground to conclude that it was intended to embrace something not invented by or known to the patentee at the time of his original application. The marine paint he described and made and sold had the three ingredients described and claimed in Division B.

The substance he mixed with the vehicle or medium was a substance produced by roasting the pyritous friable ores, the exposure to air and heat converting the contained copper into an oxide, and the other mineral and earthy substances remaining after the roasting serving in the paint to interpose between the particles of oxide of copper, substances which dissolve in sea-water more slowly than they do.

An objection is raised in argument against the validity of the reissue on the ground that the patent does not contain a sufficient specification of the proportions of the ingredients to meet the requirements of the law. This defense is not set up in the answer and cannot be considered. Rubber Co. v. Goodyear, 2 Fisher, 509; 9 Wall., 793.

The defense of the anticipation of this patent by the Wetterstedt patent was fully considered in Tarr et al. v. Folsom. The disclaimer in in the Tarr and Wonson patent of such mixtures as are referred to in the Wetterstedt patent should be construed as the Wetterstedt patent itself is to be construed. That patent describes a ship's paint to be made of pulverized antimony and pure oxide of copper, in which a protective influence of the antimony upon the copper is incorrectly ascribed to a supposed galvanic action. The antimony in the Wetterstedt paint was not so used that it performed the function of a base retarding the dissolution of the copper by itself dissolving more slowly than the oxide of the copper.

The testimony of Brown and Gardner, when carefully considered, does not prove an anticipation of the Tarr and Wonson invention.

Sulphuret of antimony, used by defendants in their paint, is an earthy or mineral matter, which disolves in water more slowly than the oxide of copper. It comes within the description of the retarding earthy or mineral basis described in the Division B, and the use of it, in combination with oxide of copper and a suitable vehicle or medium, constitutes infringement, notwithstanding to the oxide of copper is added a small quantity of arsenite of copper or arsenate of copper, or both. Decree for injunction and account as prayed for in the bill.

[Circuit Court of the United States-District of Massachusetts.]

SNOW v. TAPLEY.

Decided February 4, 1878.

(O. G., vol. xiii, p. 548.)

In Equity.-No. 293.

1. Applying paste or other adhesive material to the cloth alone, by passing the cloth through or past the paste in the manner and by the instrumentalities described, is a material and essential step of the process disclosed in Letters Patent No. 134,105, granted December 17, 1872, to G. K. Snow, for continuously uniting paper and cloth.

2. This step being regarded as an essential, the process as a whole is novel in the art. 3. The invention disclosed by the letters patent is not anticipated by the English patent to Eugene Carless.

4. A machine temporarily disused under circumstances connected with the demand and supply of its product, and independent of the efficiency of the mechanism, is not an abandoned experiment.

5. On motion made before final argument, leave was given to amend the answer so as to set up the new defense of public use and sale. Interlocutory decree entered in accordance with the findings of the court, with leave to take testimony relating strictly to the new defense in event the amended answer was filed within a time limited.