is valid. While such claim is broader than any claim of the original patent, it is within the invention therein stated, and the right to incorporate such claim was not lost by the delay of seven months after the issuance of the original patent before applying for the reissue as against another patent granted for a similar device in the meantime, but on an application filed before the issuance of the original patent to Painter. 9. SAME-INFRINGEMENT.

The Painter reissue, No. 11,685, for a bottle stopper (original No. 540,072), which consists of a cup-shaped disk of tin, or other metal having permanent flexion, which is inserted in the neck of the bottle, and then expanded into a groove in such neck in which a gasket has been placed, thus making a tight stopper, covers a pioneer invention, and is entitled to a liberal construction. Claims 1, 4, and 5 are infringed by stoppers made in accordance with the Hall patent, No. 541,203, which embody the Painter invention by using merely a modified, but mechanically equivalent, form of disk.

10. SAME EQUITABLE ESTOPPEL.

Within two weeks after the issuance of a patent to defendants they were notified by complainant of his claim that it was an infringement of a patent to him just previously issued. Within six months thereafter complainant applied for a reissue, which, after a contest by defendants, was granted. Held, that defendants were presumed to have knowledge of complainant's right under the law to a reissue, and, as they were also familiar with plaintiff's invention, they proceeded to manufacture under their patent at their peril, and could not claim that complainant was estopped to assert his rights under his reissued patent.

11. SAME-SUIT FOR INFRINGEMENT-EQUITY-JURISDICTION.

The jurisdiction of equity to entertain a suit to enjoin infringement and for an accounting is not defeated by the fact that claimant has not made use of his patent, where it was but recently granted, and the litigation was necessary to establish its validity, which was denied by defendants, so that no implication arises from such fact unfavorable to the complainant.

Appeal from the Circuit Court of the United States for the District of Maryland.

For opinion in court below, see 100 Fed. 849.

W. Cabell Bruce and Robert H. Parkinson (Wm. A. Fisher, on the brief), for appellant.

Albert H. Walker (W. E. Hoffman, on the brief) for appellees. Before GOFF and SIMONTON, Circuit Judges, and BRAWLEY, District Judge.

BRAWLEY, District Judge. Prior to the inventions hereinafter to be described, which are the subject-matter of this controversy, the common method of stopping bottles was with cork, wood, rubber, or some other resilient material inserted longitudinally into the neck of the bottle, and held there by its elastic lateral pressure in frictional contact with the circumference, supplemented, in cases where gaseous liquids caused internal pressure, by wire or twine on the outside of the bottle head. About the year 1876, William Painter, foreman of the machine shops of Murrell & Keizer, began experiments upon a device for bottle stoppers, which culminated years afterwards in patented inventions, the essential features of which lie in the forcible contact of a permanently expanded or flexed margin of a disk with the packing material held between the disk and bottle surface. A rough draught, purporting to show the original

conception, drawn from memory by William Fifer, a workman then employed in the shops, but who has long since ceased any connection therewith, has been offered in evidence. These preliminary experiments, according to Fifer, were not successful. Fifer tells us that Painter said to him, "George, we'll have to try something else, as we can't get these bottles blown near enough to use this kind of cap;" and that he was then directed by Painter to “lay all the parts and tools that he had used on the shelf until after a while." We have no direct testimony as to the later experiments. Fifer found other employment, and Painter has not testified in the case; the record showing that at the time the testimony was taken he was, and had been for a long time previous thereto, subject to nervous prostration, unable to stand the strain of business and the excitement incident to a long examination and cross-examination. Robert A. Hall entered into the service of Murrell & Keizer as an apprentice about the year 1873, and, with the exception of about six months in 1889, has been continuously engaged in the machine shops under the direction of Lewis R. Keizer, who conducts the business under the firm name; his partner, Murrell, having long since died, and Keizer being the sole owner thereof. Hall worked under the direction of Painter, whose first application for a patent for a bottle stopper was filed June 5, 1885, and letters patent No. 327,099 were issued September 29, 1885, to William Painter and Lewis R. Keizer, to whom a one-half interest was assigned. This patent, with No. 449,882, application for which was filed March 7, 1890, covers what are known and may be hereafter referred to as the "Rubber Seal Patents." On October 12, 1885, Painter filed an application for the patent out of which this controversy arises. The history of the proceedings in the patent office will be hereafter referred to. Patent No. 540,072 was issued May 28, 1895, application for reissue of the same was filed December 26, 1895, and July 26, 1898, it was reissued as No. 11,685. On November 5, 1889, June 16, 1890, and May 19, 1891, Painter filed applications for other patents, which were issued February 2, 1892,-No. 468,226, No. 468,258, and No. 468,259. These last named cover what are known as the "Crown Seal Patents." Robert A. Hall filed his application for a patent for a bottle-sealing device February 28, 1894, and letters patent No. 541,203, issued June 18, 1895. All of Painter's patents were assigned to the Bottle Seal Company, of Baltimore, to whose rights and business the complainant company, organized and incorporated under the laws of Maryland in 1892, succeeded. The defendant Keizer was one of the organizers of the Bottle Seal Company, the stock in which he subsequently sold, but continues to receive a roy alty of $2,000 or $3,000 a year from the complainant company on account of his interest in the rubber seal patent. All of the machinery for the making of the rubber seals and crown seals for the complainant company were manufactured in Keizer's shops under the direction of Hall from the date when those seals began to be used up to about the time of the obtaining of the Hall patent. This patent was assigned to the defendant company, a corporation organized under the laws of the state of Maryland, May 2, 1896. The

defendant Keizer was the organizer and is the controlling stockholder and the active manager of this company, Hall being a stockholder therein. The complainant company manufactures and sells about 30,000,000 stoppers per annum; the defendant company, since its organization, has been engaged in manufacturing and selling its stoppers to a considerable extent, the two being the only companies engaged in supplying the market with the bottle-stopping devices which originated with the Painter inventions. The bill of complaint was filed November 12, 1898, in the circuit court of the United States for the district of Maryland, in equity, and prayed for an injunction restraining the defendants from infringement, and for an account, etc. The answer denied the infringement, alleged want of novelty and patentability, attacked the validity of the reissue, charged abandonment, fraud, and perjury, and set up an estoppel. The court below held that there was no infringement, and ordered the bill dismissed on this ground, and a decree was entered accordingly, and the appeal from this decree brings the case here. It is necessary, under the practice in this class of cases, for this court to ascertain and decide whether the decree appealed from should have been rendered for the complainants or for the defendants; for, if it should conclude that the court below erred on the question of infringement, that conclusion will not avail the appellant unless it should also decide all the other defenses against the appellees. It will be convenient to consider these defenses in the order in which they have been presented by the learned counsel for the defendants, and, like him, we will use the terms "complainant" and "defendants" instead of "appellant" and "appellees."

First. It is claimed that the original and reissued patent, No. 11,685, is void for want of utility. Utility being one of the qualities necessary to patentability, the granting of the patent is prima facie evidence of it; and this is not negatived by the fact that the device is susceptible of improvement, or that like inventions are so far superior to it that they may entirely supersede the use of it. Comparative utility between machines or processes is no criterion of infringement, and comparative superiority or inferiority does not necessarily import noninfringement; nor does it tend to avoid infringement if the defendant's device is simpler and produces better results, unless the cause is due to a difference in function or mode of operation or some essential change in character. Differences in utility do not necessarily import differences of invention. The burden is upon the defendant, in a case like this, to prove want of utility. He must show either that it is theoretically impossible for such a device to operate, or demonstrate by clear proof that a person skilled in the art to which the invention pertains has endeavored in good faith to make the patent work, and has been unable to do so; and it follows that such evidence is overthrown, or will be overthrown, if it is demonstrated by practical experiments of credible persons that they have succeeded in producing by the patent process the results claimed by the patent. The defendants have undertaken to show by the expert Lorenz that the patent is a failure; that, after experiments, he could not succeed in stopping

bottles by following the directions of the patent; and the expert Hall, being the person heretofore referred to, has undertaken to show theoretically that it is a failure. Lorenz was admittedly not familiar with the art, in that he had had no practical experience in connection with bottle stoppers, and his experiments were conducted during a few hours on two separate days. It cannot be said that they proved any more than that a person not skilled in the art, and without the special tools which presumably would be devised for the purpose, was unable to accomplish practical results. The complainant's experts, Spear and Hawkins, testified that they had successfully sealed bottles in accordance with the patent, and the results of those experiments have been produced before the court. One of the reasons for the failure of the experiments of Lorenz and Hall may be found in the fact that they followed closely the directions in the drawing of the Painter patent as to the dimensions of the devices shown therein. The object of the drawings filed in the patent office is attained if they clearly exhibit the principles involved, and, in a case like this, rigid adherence to the dimensions thus exhibited is not required or expected, and, if an intelligent mechanic would so proportion the dimensions as to secure practical results, inutility is not demonstrated by experiments with material identical in form and proportion of parts with the drawings in the patent. The special reason assigned for lack of utility consists in the shortness of the flange of the cup which constitutes the bottle stopper, and increase in the length of the flange would cure the defect. That is so obvious that no inventive faculty need be invoked to suggest it, and the learned counsel for the defendants admits in his argument that the bottle stopper of Fig. 6 in the Painter patent can be made useful by sufficiently increasing the length of its flange so as to increase the depth of the cup. We cannot think that a decision adverse to the utility and operativeness of this invention could safely rest on the ill success of experiments made by those who were not specially skilled in the art, and where it is not obvious that they were specially desirous of making their experiments succeed. Another ground upon which the learned counsel for the defendants relies is the failure of Fifer's experiments under Painter's directions in 1876. It is a novel contention that admitted failures during the preliminary stage of experiments should be adduced as evidence of want of utility in the perfected invention. Some stress is laid upon the fact that the complainant has never done anything towards introducing either of the forms of bottle stoppers described in this patent, and the learned judge below seems to regard it as somewhat significant. This circumstance would seem to be entitled to some weight as tending to show that the patent was useless; but inasmuch as title to this patent was not finally secured until July 26, 1898, and the validity of it, in view of the contest made by the defendants, would have to be settled by litigation, common prudence would suggest delay in incurring the expense of providing the machinery and other appliances that would be necessary in order to put it upon the market; and as the complainant was and is supplying the market for this

character of stoppers with sealing devices belonging to the same general class, some of them later in date of invention, and containing certain improvements and advantages that have popularity and which have created a demand that complainant is fully supplying, all of these considerations are adequate reasons for any delay in the manufacturing of sealing devices under this particular patent, and no implication of lack of practical operativeness or utility in the invention can be drawn from such delay.

The second ground of defense is abandonment. Undoubtedly, an inventor may give to the public the benefits of his ingenuity as persons may give away any other kind of property, and such relinquishment may be either direct or it may be inferred from circumstances. Where there is an entire abandonment of all expectation of succeeding in an invention and securing a patent under circumstances that justifies the formation of the expectation that the ideas of the inventor will be always free to the public, and the inventor clearly manifests his intentions to relinquish any rights thereto, the inchoate right to the patent thus abandoned cannot be resumed. But the law does not favor forfeiture, and, it being a question of fact whether there has been abandonment, all reasonable doubts must be solved in favor of the patent. There may be abandonment before application or thereafter. Under the first head, the sole reliance of the defendants is the testimony of Fifer, already cited, wherein it appears that the early experiments were unsuccessful, in that they only succeeded in getting one bottle to stand about 40 pounds pressure, that bottle being the only one of the proper size. Whether nonsuccess was due to the packing used in this experiment, which was of paper felt, or whether delay in consummating the work was due to inability then to procure suitable bottles, or whether further tests with better tools or more accurate workmen were required, or whether modification of the device in other ways was contemplated, or whether Painter, who was then a poor man, could not give the time necessary to perfect this invention, being engaged in developing his other patents, which have since proved valuable, is left to conjecture. But, whatever may have been the cause or causes of the delay, there is an entire absence of proof either that he abandoned the hope of success, or that he intended to abandon the invention to the public. His assistant was directed to "lay all parts and tools on the shelf until after awhile." This manifests an intention to resume experiments "after awhile," and results show that he did so resume, and later experiments enabled him to so far perfect his invention that his patent was applied for before any adverse rights accrued. There is no proof or suggestion even that there was any public use or sale, or that any person except Fifer was informed of the abortive experiments. Experimental use for the purpose of testing the qualities of an invention is never public use, nor is there any proof that the delay operated to mislead others into taking up the invention and with greater diligence perfecting it. The case would be presented in a different aspect if another inventor had entered the field, induced by the supposed abandonment and misled by the delay. It is of no advantage to