invention. This claim merely describes a form of construction, and it is obvious that the complete invention is embraced in a machine which does not have this extension.

The alleged incompleteness of the machine installed at Moodus relates to the feeder and draft pipe. The purchaser of that machine contemplated an enlargement of its mill, and the machine set up by Swain was of sufficient capacity to meet this new requirement. As a temporary matter, however, the machine was connected with the feeder and draft pipe of the old water wheel, which were too small to enable the new machine to operate in the best manner, or fully to test its efficiency. It was to this extent only that the Moodus machine was imperfect. It included, however, in its construction, the complete and completed invention of Swain. That invention consisted in a very simple addition to an old and well-known structure. The inventor, a man of large experience in this art, had at this time a full conception of his invention and of the way the machine should be built. He knew, of course, that the connecting pipes were too small. He told the purchaser that, while the machine would probably answer the purpose of running the old mill, there would be "disturbances" arising from the smallness of the draft tube. It is evident to any one that the draft tube, which is merely an extension of the educt, should be of the same diameter at the point where the two are joined, and that the water would not discharge so freely if there were an abrupt contraction of the outlet at this point.

As there is found in the Moodus machine the full and perfected invention of Swain, the circumstance that he connected the machine with a feeder and draft pipe of insufficient size is immaterial. If the machine, under the circumstances presented in this case, contained the invention in its finished form, the inventor cannot relieve himself from the consequences which follow by showing that it was installed by him with imperfect connections. This is not the case of an invention which had not reached a state of perfection or completion at the time the sale was made, but it is a case where the inventor intended to sell, and did, with a full knowledge and understanding of his invention, sell, a machine which embodied his whole invention, and then proceeded to set it up in such a way that it would not operate to the best advantage.

But it is insisted that the sale of the Moodus machine was for the purpose of experimental use, and this is the main ground on which the complainant seeks to avoid the statutory prohibition. We have seen that Swain's real invention, which is covered by claims 1 and 3 of the patent, consisted in placing a central partition in the common educt, and that this invention is found in the Moodus machine. The sale of this machine by the inventor was absolute, unconditional, and for a valuable consideration. As a general rule, a single unrestricted sale by the patentee of his patented device, embodying his completed invention, is a public use or sale, within section 4886 of the Revised Statutes. Egbert v. Lippmann, 104 U. S. 333, 336, 26 L. Ed. 755; Fruit-Jar Co. v. Wright, 94 U. S. 92, 94, 24 L. Ed. 68; Hall v. Macneale, 107 U. S. 90, 96, 97, 2 Sup. Ct. 73, 27 L. Ed. 367; Henry v. Soapstone Co. (C. C.) 2 Fed. 78, 80; Sinclair v. Backus (C.

C.) 4 Fed. 539, 543; Manufacturing Co. v. Mellon, 7 C. C. A. 439, 58 Fed. 705-707; Delemater v. Heath, 7 C. C. A. 279, 58 Fed. 414, 416, 417; Manufacturing Co. v. Sprague, 123 U. S. 249, 257, 8 Sup. Ct. 122, 31 L. Ed. 141.

There are undoubtedly cases where the strict application of this rule works great hardship. Some inventions are for large and costly structures, others require a long period of time to test their practical utility, and still others are for small devices which are attached to large machines. It follows that an inventor, from lack of means or other circumstances, may be forced to sell his patented device in order to test its utility or efficiency. For this reason the courts in some instances have declined to enforce the strict rule where the sale was attended by some exceptional circumstance. The following cases illustrate the exceptions to the general rule: Where the sale of the machine was for the purpose of trial, and the machine was warranted. Graham v. McCormick (C. C.) 11 Fed. 859, 862, and Same v. Manufacturing Co., Id. 138, 142. Where the patentee derived no profit from the sale, and the device was a mere appendage to a large machine sold by his employer. Harmon v. Struthers (C. C.) 57 Fed. 637. Where the sale was made at an under price, and without profit to the inventor, and for the purpose of securing a fair test of the invention. Innis v. Boiler Works (C. C.) 22 Fed. 780. Where an imperfect machine was sold, which did not embody the invention. Eastern Paper-Bag Co. v. Standard Paper-Bag Co. (C. C.) 30 Fed. 63, 66. Where the device sold did not embody the most complete and perfect form of the invention. Draper v. Wattles, 3 Ban. & A. 618, 620, Fed. Cas. No. 4,073.

We should hesitate to lay down the broad proposition that a single sale of a patented device for experimental purposes works a forfeiture of the patent under the statute. We do not understand that it has ever been so expressly decided by the supreme court. It is certainly doubtful whether, under such circumstances, the device can be said to be "on sale," within the fair meaning of the statute. It does not follow that, because a machine has been sold, it has passed the experimental stage. In Hall v. Macneale, 107 U. S. 96, 97, 2 Sup. Ct. 73, 27 L. Ed. 367, it was assumed by the court that the experimental stage still existed, although there had been several sales. Instead of laying down a fixed rule, it seems to us that in each case the court should direct its attention to the fundamental inquiry: Under what circumstances and for what purpose did the public use or sale take place? And, where it appears that there has been a public use or sale more than two years before the application, the burden is thrown upon the patentee to establish, by full, clear, and convincing proofs, that such use or sale was principally and primarily for experimental purposes, and that such purposes were not merely incidental or subsidiary. Whatever expressions may be found in the opinions of the supreme court to the effect that a single sale comes within the statutory prohibition, we think a careful examination of the cases shows that the primary and governing consideration is the purpose and object of the inventor in making such sale.

In Fruit-Jar Co. v. Wright, 94 U. S. 94, 24 L. Ed. 69, where several of the patented articles were sold to get the money which they yielded, and to test their salability in the market, Mr. Justice Swain, speaking for the court, after discussing the statute and the authori ties, said:

"The result must always depend upon the purpose and incidents accompanying the act or acts relied upon."

In Egbert v. Lippmann, 104 U. S. 337, 26 L. Ed. 756, where the patentee gave away several pairs of the patented device, the court said:

"They were not presented for the purpose of experiment, nor to test their qualities. No such claim is set up in her testimony."

In Hall v. Macneale, 107 U. S. 96, 97, 2 Sup. Ct. 79, 27 L. Ed. 369, which was a case of sale by the patentee, the court observed:

"It is contended that the safes were experimental, and that the use was a use for experiment. But we are of opinion that this was not so."

In Elizabeth v. Pavement Co., 97 U. S. 126, 133, 24 L. Ed. 1000, 1004, Mr. Justice Bradley, speaking for the court, said:

"To determine this question [public use], it is necessary to examine the circumstances under which this pavement was put down, and the object and purpose that Nicholson had in view."

We think the true rule, whether it is a case of public use or sale by the patentee, is stated by the supreme court in Manufacturing Co. v. Sprague, 123 U. S. 256, 8 Sup. Ct. 126, 31 L. Ed. 143:

"A use by the inventor, for the purpose of testing the machine, in order by experiment to devise additional means for perfecting the success of its operation, is admissible; and where, as incident to such use, the product of its operation is disposed of by sale, such profit from its use does not change its character; but where the use is mainly for the purposes of trade and profit, and the experiment is merely incidental to that, the principal and not the incident must give character to the use. The thing implied as excepted out of the prohibition of the statute is a use which may be properly characterized as substantially for purposes of experiment. Where the substantial use is not for that purpose, but is otherwise public, and for more than two years prior to the application, it comes within the prohibition." "In considering the evidence as to the alleged prior use for more than two years of an invention, which, if established, will have the effect of invalidating the patent, and where the defense is met only by the allegation that the use was not a public use in the sense of the statute, because it was for the purpose of perfecting an incomplete invention by tests and experiments, the proof on the part of the patentee, the period covered by the use having been clearly established, should be full, unequivocal, and convincing." 123 U. S. 264, 8 Sup. Ct. 130, 31 L. Ed. 146.

"The proof falls far short of establishing that the main purpose in view in the use of the machine by the patentee prior to his application was to perfect its mechanism and improve its operation. On the contrary, it seems to us that it shows that the real purpose in the use was to conduct the business of the manufacture, the improvement and perfection of the machine being merely incidental and subsidiary." 123 U. S. 266, 8 Sup. Ct. 130, 31 L. Ed. 147.

In the case at bar the patentee has failed to show by the clear and convincing proofs required that the sale of the Moodus machine was for experimental use. The only evidence in support of such use is Swain's testimony. He says he told the purchaser at the time "that this was an experiment, and that [he] had been look

ing for a chance to try it." But the mere intention of the patentee is not sufficient. Experimental use or a sale for experimental purposes is a fact to be proved, and cannot reside in mere intention. If Swain had supplemented his testimony by showing that he at once proceeded, after the Moodus machine was installed, to test its efficiency as compared with outward-discharge machines, or inwarddischarge machines without his central partition; if he had made such experiments as he has conducted since this suit was begun, or the best tests he was able to under the circumstances,-the case would be different. The fact is, he made no tests at all. As Judge Lowell says in his opinion in the circuit court, "No experiment was ever made or attempted, and Swain made no attempt to induce Chaffee to alter the pipes." Further, the patentee knowingly set up the machine under such conditions that it was impossible to make such tests as would bring the case within the doctrine of experimental use. Swain knew his patented machine was operative. He was a man of large experience in this art, and he had devoted most of his life to the construction and improvement of turbine water wheels. The only experimental use which could have brought this case within the statutory exception would have been the testing of the efficiency of the patented wheel compared with existing outward or inward discharge wheels. But it does not appear that the patentee ever conducted any experiments to determine the comparative efficiency of the patented machine until after the beginning of the present suit, although subsequent to the sale of the Moodus machine he installed several other like machines. Under all the circumstances, there is a total failure of proof that the sale of the Moodus machine was for such experimental trial as the law contemplates, and which is sufficient to bring the case outside the statutory prohibition.

The decree of the circuit court is affirmed, with costs.

(109 Fed. 164.)

THE MINNIE E. KELTON.

(Circuit Court of Appeals, Sixth Circuit. June 15, 1901.)

No. 923.

1. SHIPPING-BREACH OF CHARTER-EVIDENCE CONSIDERED.

The master of a steamer, which was required by the terms of a verbal charter to load as much of a cargo of lumber at the charterer's dock as she could safely, with the privilege of completing her cargo at another port, held to have been justified in leaving the charterer's dock with about one-third of a full cargo, where the weather was stormy, the dock exposed to the seas, and the water so shallow that the steamer began pounding on the bottom before she ceased loading, and the master, after leaving the dock, waited from 5 o'clock in the evening until 11:30 the next day, before leaving, during which time there were no signs of better weather.

2. SAME-FAILURE TO DELIVER CARGO-EVIDENCE OF SHORtage.

Where the testimony of the officers and crew of a steamer concurred that all the lumber loaded by a charterer was delivered at the end of a

voyage, a shortage cannot be established by testimony on behalf of the charterer as to the quantity loaded, based entirely on an estimate of the total quantity on the dock, from which the witnesses deducted the quantity carried by two other vessels.

In Admiralty. Libel for breach of charter party, and cross libel for freight.

The following is the opinion of the district court (SWAN, District Judge):

"The original libel alleges that Godkin, in September, 1894, made a verbal contract of affreightment with the claimants and cross libelants, who are the owners of the steamer Minnie E. Kelton, whereby claimants agreed to send said steamer to libelant's mill at Millekokia, at the north end of Lake Michigan, there to lade a cargo of lumber for Tonawanda, and 'that the captain of said vessel and crew should take the lumber for the load of said vessel at the rail, and stow it in the hold, and load said vessel with a full load of 700,000 feet of lumber if the depth of water was sufficient to load the vessel to that capacity, and should thereafter carry and deliver said lumber so loaded at Tonawanda, in the state of New York, at the price of $1.87%1⁄2 per thousand feet, this agreement covering only one cargo of lumber'; that libelant was prepared to deliver said lumber as stipulated, and was ready to perform his part of said agreement on the 4th day of October, 1894, but that the vessel did not arrive at the port of lading until the morning of October 9th, on which day her loading was begun, and continued until five o'clock p. m., when, having laden but 316,000 feet, she went out into the bay, and there remained until 11:30 a. m. the next day, when she left for Cheboygan, Michigan, and proceeded from thence, after completing her loading there, to Tonawanda; that a full load for said steamer would have been about 390,000 feet in addition to the amount that was actually loaded at Millekokia; that said vessel, although her owner and captain were requested so to do, did not finish out her load, or carry any more lumber from libelant's mill to Tonawanda; that at the time of loading the lumber taken on board said vessel at Millekokia, and for some time thereafter, much more than a sufficient time to complete said load to the full capacity of said vessel,-the weather was fine, and the depth of water in front of libelant's dock was sufficient to enable said vessel to be loaded to her full capacity, and 'libelant at great expense had procured and had sufficient men to handle and deliver said lumber on the rail of said vessel, so there was no difficulty and no reason why said vessel was not loaded to her full capacity, except the action of the master of said vessel in thus refusing to fully load her'; that because of the failure to load and carry lumber to Tonawanda pursuant to said agreement libelant lost the opportunity to sell the same at that place, was deprived of the use of the lumber and of the money invested therein, and of the shipment and sale thereof, for the reason that the same could not be shipped after the default of said vessel before June, 1895, lost the use of his dock for piling other lumber, and was put to the expense of caring for the lumber refused by said vessel, and by reason of said several matters suffered damages in not less than $600. Another item of damage claimed as a consequence of the alleged default of the vessel is a general average charge upon the lumber taken from libelant's dock arising from the grounding of the Minnie E. Kelton near Cheboygan. The amount of this claim is $29.22. Libelant further claims that, pursuant to said contract of affreightment, he hired men to assist in loading the Kelton at Millekokia, and paid them $42.59. A fourth element of damages asserted in the libel is that the steamer failed to deliver at Tonawanda 48,000 feet of libelant's lumber, worth at Tonawanda $18 per thousand. The aggregate of these several claims is about $1,440, for which, with interest, libelant claims a lien upon the Kelton. The respondents deny the several averments of the libel respecting the charter party and the items of damages claimed to have been suffered by libelant, excepting the payment by libelant for the hire of the stevedores at Millekokia. The testimony on the part of the claimants to the terms of