plainant, afterwards obtained letters patent No. 567,592 for said paint composition; that defendant, to induce complainant to disclose to him the invention of said paint, represented that complainant should not be deprived of the benefit of the invention, but that defendant would be a large purchaser of the paint, and that he would not disclose the invention to others; that since the issue of said letters patent defendant has made no purchases of said paint from the complainant, and has recently threatened to bring suit against other customers for infringement of letters patent, if they should make, use, or sell such paint without the license of defendant; that the defendant has derived large profits from said letters patent, and has made and sold large quantities of said paint, and sold licenses under said letters patent, and prays for a discovery, and that the defendant be decreed to be a trustee for the complainant of said letters patent, and to transfer the legal title thereof to the complainant, and to account for and pay over to complainant all consideration received from the sale of licenses and of the paint. Defendant demurred, and, after the argument and filing of briefs, complainant filed a further brief, in which he insists that, if he is not entitled to the relief prayed for, he is entitled to relief under the general prayer, and applies for leave to amend by adding four more prayers for specific relief, namely:

"(6) That defendant be decreed to account for and pay over to your orator all moneys and valuable considerations received by said defendant from the use by him of said invention, or from the sale by him of specimens of paint embodying the said invention, disclosed to him by your orator, together, also, with all moneys and valuable considerations received by said defendant from sales of licenses or permissions to others to make, use, or sell the same under said letters patent so fraudulently obtained by him. (7) That defendant be enjoined pendente lite from granting territorial or other rights, exclusive or nonexclusive, thereunder, to others, or otherwise employing the same to the prejudice of your orator's interests in the said invention, and that on the final hearing of this cause said defendant be so enjoined during the remainder of the term of said letters patent. (8) That the defendant be enjoined, restrained, and forbidden from representing himself as being the first or original inventor of the invention hereinbefore and in United States letters patent No. 567,592, dated September 15, 1896, described, and that he be enjoined, restrained, and forbidden from practicing said invention, or granting licenses authorizing others to practice said invention, and from making, vending, or selling, or authorizing others to make, vend, or sell, the same, and from interfering with the practicing of said invention, and the manufacture and sale of said invention, by this complainant, his customers, or licensees. (9) That it be adjudged and decreed that William A. Hall, the defendant herein, is not the first and original inventor of the invention described in United States letters patent No. 567,592, dated September 15. 1896, but that Edward Murjahn is such first and original inventor, and that said letters patent were obtained by fraud practiced by the defendant, William A. Hall, upon the United States patent office and upon the commissioner of patents of the United States, and are absolutely null, void, and of no effect, and that he be perpetually, and pending the final determination of this suit, enjoined, restrained, and forbidden from claiming any right, title, or interest in or to the invention described in said letters patent, or under said letters patent."

The defendant relies upon Kennedy v. Hazelton, 126 U. S. 667, 9 Sup. Ct. 202, 32 L. Ed. 576. The facts in that case are as follows:

"The defendant agreed in writing to assign to the plaintiff any patents that he might obtain for improvements in steam boilers. He did invent

such an improvement, and, with intent to evade his agreement and to defraud the plaintiff, procured a patent for this invention to be obtained upon the application under oath of a third person as the inventor, and to be issued to him as the assignee of that person, and has made profits by manufacturing and selling boilers embodying the improvement so patented. The plaintiff seeks by bill in equity to compel the defendant to assign the patent to him, and to account for the profits received under it."

The court held:

"As the patent, upon the plaintiff's own showing, conferred no title or right upon the defendant, a court of equity will not order him to assign it to the plaintiff, not only because that would be to decree a conveyance of property in which the defendant has, and can confer, no title, but also because its only possible value or use to the plaintiff would be to enable him to impose upon the public by asserting rights under a void patent."

The complainant in Kennedy v. Hazelton did not claim to have made the invention in question. Upon the facts submitted on demurrer in the case at bar, complainant had made an invention which he might legally keep secret, and thus secure the benefits to himself. Defendant obtained its disclosure by the representation that such disclosure would not deprive the complainant of the benefit of the invention, and that defendant would not disclose it to others, and would be a large purchaser of the paint; and, having learned it, he proceeded to use it to complainant's disadvantage and make large profits thereby. Upon those facts complainant should be entitled to an accounting and an injunction.

Defendant insists that the validity of the patent can be determined in only three ways; i. e.: (1) An infringement suit, in which the validity of the patent is a defense; (2) a suit between rival patents under section 4918 of the Revised Statutes [U. S. Comp. St. 1901, P. 3394]; and (3) a suit by the government, brought to annul the patent on the ground that it was procured by fraud. No suggestion of any such rule is made a ground of decision in Kennedy v. Hazelton, supra, and the case of Ambler v. Whipple, 20 Wall. 546, 22 L. Ed. 403, in so far as it is not overruled in Kennedy v. Hazelton, seems to support defendant's position. No authority is cited by either party on this point.

The amendment is allowed, and the demurrer is overruled, on the ground that the allegations are sufficient to justify the sixth, seventh, eighth, and ninth prayers for relief. The question of injunction pendente lite will not be decided upon demurrer. No costs to either party.

HURLBUT v. UNITED STATES MAILING TUBE CO.

(Circuit Court, S. D. New York. October 28, 1902.)

PATENTS-INFRINGEMENT-PAFER TUBE.

The Hurlbut patent, No. 441,846, for a paper tube, discloses patentable novelty, and is valid, but is limited to a construction in which the cylindrical core has longitudinal seams, and is not infringed by a tube made according to the Denney patent, No. 444,233, in which the core consists of a spirally wound strip.

In Equity. Suit for infringement of letters patent No. 441,846, for a paper tube, granted to Daniel N. Hurlbut December 2, 1890. On final hearing.

Kneeland, La Fetra & Glaze, for complainant.

W. C. Hauff, for defendant.

TOWNSEND, Circuit Judge. Bill for infringement of patent No. 441,846, granted to complainant December 2, 1890, for paper tubes. Defendant contends that the patent is invalid, and denies infringement. The patent in suit covers a simple construction, only slightly differentiated from those used in the general field of the art of tube construction. The argument in its support rests upon the alleged functional results of the special construction of the inner core, with such abutting or overlapping edges as afford substantial resistance to lateral pressure. That the patented tube was intended to discharge such function is evident from the specification; that it accomplishes the result sought, when constructed, as shown in the drawings, with the edges of the core parallel to the axis of the tube, is admitted; and the prior art fails to show any tube so nearly like this construction, as thus limited, to rebut the presumption of novelty arising from the grant of the patent. The defendant does not use such an inner core, but constructs its tubes in accordance with the specifications of a later patent, No. 444,233, granted to Harmer Denney, wherein the patentee, criticising prior paper tubes having longitudinal seams as being always weakest along said longitudinal seam, differentiates his construction as follows:

"By making the core of a spirally-wound strip, the cross-section of all parts of the core will be a perfect and true circle, and each part of said core will be able to resist pressure equally and uniformly. By making the core with a long spiral,-that is, a spiral of great pitch,-the strength and rigidity of the tube are increased, as the long spiral presents greater resistance against bending or shearing strains."

Inasmuch as the complainant patentee nowhere limits himself in specification or claims to such a longitudinal seam, he contends that his invention should be construed to cover any form of inner core, whether a long spiral or longitudinal, which performs the strengthening function of his core, and that Denney's statement, above quoted, shows that he has appropriated such function, and therefore has infringed. This issue requires an examination of the prior art. The commonplace expedient for strengthening both rigid and pliable materials by rolling them in tubular shape, and confining them by means of an outer binding, has been developed in a variety of ways, and applied to all manner of structures from paper rolls to rubber hose and metal pipes. Thus Pearson, in 1854, patented a gun barrel composed of two strips of metal, the one wound spirally upon the other, and with abutting edges. And Stow, in his patent No. 110,399 of 1870, shows a pipe consisting of an inner core having abutting or overlapping edges running spirally, and spirally wrapped. In the patent in suit the patentee says, "I do not limit myself to a paper tubing, as metal might be used," etc. But the patent is especially designed to cover paper tubes, and the patent chiefly relied on by defendants to defeat the patent in suit is No. 374,133, granted in 1887

to C. S. Taintor for a paper cylinder for graphophonic records. This patent shows one tube consisting of a strip of paper wound in a spiral of very slow pitch, covered by another tube similarly constructed. The edges of each of the strips abut throughout, and may be wound either in opposite directions or in the same direction so as to break joints with each other. The object and effect of such windings is to strengthen the tube. Complainant contends that, "owing to the slow pitch of the inner layer of the Taintor tube, it results that the said inner layer does not perform in any wise the function of the core of the Hurlbut patent in suit." Defendant contends that it is "a direct and complete anticipation of the broad construction which has been placed upon the Hurlbut patent in suit." I am inclined to agree with both of these conclusions. The slow pitch of Taintor does not make as strong a tube as the greater pitch of Denney. But given the double-core paper construction with a pitch, the length of pitch was a mere matter of degree, a mere mechanical development of the original idea to meet the greater strength required for tubes to be used for electrical conduits or for mailing purposes. The contention of noninfringement is sustained.

Let the bill be dismissed.

HUTTER V. DE Q. BOTTLE STOPPER CO. et al.

(Circuit Court, S. D. New York. October 7, 1902.)

Where a patent sued on is intelligible without evidence, but defendant introduces expert testimony, it is proper for complainant to introduce the same kind of testimony in rebuttal.

2. SAME.

Where defendant has not denied under oath the making and selling of the articles offered in evidence by complainant to prove infringement, evidence which establishes a strong probability of such fact is sufficient to make a prima facie case.

3. SAME-BOTTLE STOPPERS.

The Hutter patent, No. 491,113, for a bottle stopper, held valid and infringed.

4. SAME DESIGN FOR BOTTLE STOPPERS.

The Hutter design patent, No. 25,435, for a design for a bottle stopper, held valid and infringed.

In Equity.

Briesen & Knauth, for complainant.
Henry Schmitt, for defendants.

TOWNSEND, Circuit Judge. Suit for infringement of patent No. 491,113, granted February 7, 1893, to Karl Hutter, for a bottle stopper, and patent No. 25,435, granted April 28, 1896, to Karl Hutter, for a design for a bottle stopper. All of the issues in this case, so far as they concern the validity of the patents, have been considered, upon practically the same evidence as to the same infringing devices, and with the same expert testimony, by the circuit court in the Third circuit, in the case of Hutter v. Broome, 114 Fed. 655.

After a careful examination of the patents, defendants' evidence, and the opinion of Judge Gray, which states the situation of the matters in issue fully and clearly, this court feels constrained to adopt his conclusions.

Defendants claim that certain expert testimony produced on rebuttal should have been taken in chief, and is not proper rebuttal testimony. The patent was intelligible without the aid of evidence. But inasmuch as defendants saw fit to introduce expert testimony, I think complainant's further evidence was proper in rebuttal, and that, in the circumstances, defendants' claim that it was not taken in time should not prevail.

The defense now seriously urged is that there is no sufficient evidence that the defendants made or sold the articles offered in evi

dence by complainant to prove infringement. Defendants have offered no denial that such is the fact, but they insist that the evidence offered by complainant was not sufficient to put them upon their proofs. This is a case where the evidence of the facts, if they exist, is peculiarly within the knowledge of the defendants, and where it would have been a very slight matter for defendants to have proved noninfringement, if it really existed. The evidence offered by complainant, while it might not be sufficient to overcome a denial under oath, is sufficient, in the absence of any such denial, to establish a very strong probability of the existence of the facts claimed, and to make a prima facie case. Municipal Signal Co. v. National Electrical Mfg. Co. (C. C.) 97 Fed. 810, 813; Id., 46 C. C. A. 270, 107 Fed. 284. Let a decree be entered for an injunction and an accounting.

BARNSDALL v. BOLEY et al.

(Circuit Court, N. D. West Virginia. December 3, 1902.)

1. OIL LEASE-UNAUTHORIZED ALTERATION-WAIVER OF OBJECTION.

After the execution of an oil lease for the term of five years, covering a number of tracts of land, the lessee discovered that certain heirs owned an interest in one of the tracts, and secured their signatures to the lease by making an interlineation therein giving them the right to receive their share of the royalty. The original lessor had no knowledge of the interlineation at the time, but was shortly thereafter advised of it, and made no objection, but throughout the term insisted on the performance of the contract by the lessee, and accepted the royalties thereunder. Held, that he thereby waived the right to insist on the invalidity of the lease because of the alteration.

2. SAME-PARTIES-PERSONS NOT NAMED IN BODY OF INSTRUMENT.

Under the law of West Virginia a person whose name is not mentioned in the body of a lease is not a party thereto, nor bound thereby as a grantor, although he signs and acknowledges it as his deed.

8. SAME-POWER TO GRANT-TENANT BY THE CURTESY.

A tenant by the curtesy cannot convey the right to a lessee to extract oil from the land, and a lease executed by him purporting to convey such right is void.

4. SAME RIGHT OF LESSEE TO EXTENSION OF TERM-FAILURE TO DEVELOP PROPERTY.

Defendant executed to complainant's assignor an oil and gas lease on royalty covering 74 acres of land, which was to run for the term of five 1. See Alteration of Instruments, vol. 2, Cent. Dig. §§ 94, 105.