by these there was excepted and reserved to the patentee the right to construct and to enlarge canals wholly or in part within the said territory, and also to build therein, for such canal work, and for use outside of said territory, all the devices and inventions referred to in the agreement; and it was also provided that

"No machine or machines, or part or parts of a machine or machines, or

device or devices covered and protected by salters beaten and them, shall by the party of the second part [the plaintiff] be taken and used, or sold or leased to be taken and used, out of said territory; and no such machine, device, or invention shall be sold or leased by said party of the second part without a written proviso that the same shall not be taken, or leased or sold to be taken, outside of the territory hereinbefore specified, without the written consent of said Bowers, or his heirs or assigns."

That the whole patent was not assigned by this agreement is manifest, and therefore the only question is whether or not it granted the exclusive right to make, use, and vend throughout the specified territory. Waterman v. Mackenzie, 138 U. S. 252, 11 Sup. Ct. 334, 34 L. Ed. 923. Upon reading the agreement in its entirety (Chicago, R. I. & P. R. Co. y. Denver & R. G. R. Co., 143 U. S. 609, 12 Sup. Ct. 483, 36 L. Ed. 281), it plainly appears that, even as to the territory designated, the right granted was not an exclusive one. Though called an "exclusive license," yet, of course, its scope was confined within the boundaries which were plainly prescribed for it. The rights to make and to sell were, by the granting clause itself, limited to making or selling "for use * * *throughout the Atlantic Coast," etc.; and by the proviso the licensee was expressly precluded from either itself making and using, or selling or leasing to others for use, out of said territory. Hence it seems to be obvious that, while the sole right to use within that territory was (subject to what will presently be said about the reservations) acquired by the licensee, the right to make and to sell therein for use elsewhere was not transferred to it, but remained in the licensor. Furthermore, from the clauses which are designated in the agreement both as "exceptions" and "reservations," and it is unimportant which name be given to them (Chicago, R. I. & P. R. Co. v. Denver. & R. G. R. Co., 143 U. S. 609, 12 Sup. Ct. 483, 36 L. Ed. 281),—it appears that the exclusive right even to use within said territory did not pass to the licensee, but that, for certain purposes, the right to use therein was excepted out of the grant and reserved to the patentee. The view which I have taken of the effect of the writing under consideration goes to the root of the matter. If correct, it shows that the patentee still retains such an interest in the monopoly granted by his patent as renders any subversion of it, even within the territory covered by the license, an injury to him, as well as to the licensee; and from this it follows that he is a necessary party to any bill which seeks relief founded upon an allegation of infringement.

The third of the causes assigned by the defendants in support of their demurrer to the plaintiff's bill of complaint is sustained, and the others need not be considered. The demurrer is allowed.

BRICKILL et al. v. MAYOR, ETC., OF CITY OF NEW YORK et al.

(Circuit Court of Appeals, Second Circuit. October 30, 1901.)

No. 128.

1. PATENTS-INVENTION-WATER HEATER FOR FIRE ENGINES.

The Brickill patent, No. 81,132, for a feed water heater for steam fire engines, was not anticipated, and shows invention, which, although not of a high order, is sufficient to sustain its validity in view of the practical success of the invention.

2. SAME-INFRINGEMENT-PROFITS RECOVERABLE.

The only element of the apparatus shown in such patent, however, which discloses patentable novelty, is the supplemental tank with which the heating coil is connected when disconnected from the boiler of the fire engine, the purpose of which is to keep up the circulation of water through the coil, and preserve it from injury, when the engine is absent on duty, and the claim must be so construed as to include such tank and its connections; hence, in an accounting for damages and profits for infringement, the infringer can only be charged with the profits accruing from the use of such tank and its connections, and not for those accruing from the use of the heating coil itself, which, as an old and well-known device, was open to use by the public.

Appeal from the Circuit Court of the United States for the Southern District of New York.

See (C. C.) 98 Fed. 113.

John R. Bennett, for appellants.

Raphael J. Moses and J. A. Hudson, for appellees.

Before WALLACE, BROWN, and THOMAS, Circuit Judges.

WALLACE, Circuit Judge. The defendants have appealed from a decree awarding the complainants a recovery for $951,070 for the infringement of letters patent No. 81,132, granted August 18, 1868, to William A. Brickill, for "improvement in feed water heaters for steam fire engines." The assignments of error raise the questions of the novelty of the patented improvement, and of the amount recoverable as profits derived from its use by the defendants if the patent is adjudged valid.

The patentee, a machinist, while in the employ of the fire department of the city of New York as an engineer in charge of one of the steam fire engines, devised the apparatus described in the patent as a substitute for the contrivances which had previously been used by the department for maintaining hot water in the boilers of its steam fire engines without keeping the engines fired up while they were standing in the engine houses awaiting service calls. After the reorganization of the department in the fall of 1865, the board of commissioners deemed it important that the engines be constantly ready upon receiving an alarm call to get up steam enough in the boiler to operate the pumps by the time of reaching the place of fire. It was quite expensive, and undesirable for other reasons, to keep them fired up all the time they were idle, and it took six or seven minutes to get up steam with cold water in the boiler after starting the fire in the fire box. Within the five or six months fol

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lowing the reorganization the board tried various means for keeping the water in the boilers heated to about the boiling point without keeping the engines fired up. One contrivance used, called the "ring burner," was a coil of iron pipe connected by a flexible tube with the gas supply of the engine house, and having apertures in its upper side. It was placed beneath the boiler, resting upon the fuel in the fire box. When the engine was awaiting a call, the gas was kept burning in the coil, and when a call was received the gas was turned off, the coil removed, and the fuel lighted. Subsequently more elaborate contrivances were used. These consisted of a coil or cluster of iron pipe (in some instances a coil and in some a cluster), inclosed in a sheet-iron casing, secured to the side or the rear of the boiler of the engine, and fed with water from the boiler, the water being heated by gas by means of burners placed beneath the coils and connected with the gas supply, as the earlier coils had been. A pipe led from the upper end of the coil or cluster into the boiler at or near the water line, and another from the lower end led into the boiler near the bottom, and at a point seven or eight inches beneath the other. The coils and clusters were permanently attached to the boiler, and went with the engine upon service calls. When the engines were awaiting calls, the gas was kept burning, and when a call was received the gas supply was disconnected. This contrivance heated the water by the well-known circulating system. It proved sufficiently satisfactory to lead to the equipment of many of the engines with it. But a greater consumption of gas was required for heating than by the ring burner, and the latter was still used with some of the engines. Brickill conceived the practicability of heating the coil used on his engine by a coal fire, and obtained permission from the board to construct and try his apparatus. He proposed to place the coil on the grate of a stove, and connect it with the boiler by detachable couplings. His apparatus was constructed and tested. A contrivance known as the "Dinham Boiler" was then tried upon one of the engines. This was a cylinder set up in the engine house near the engine, and heated by a coal fire. It had a pipe leading to the boiler of the engine, and another connecting it with the Croton water supply. When it was heated sufficiently, steam was generated, and entered the boiler at the bottom, thereby heating the cold water. Upon receiving a call, the pipe was disconnected from the engine boiler, and the Croton water turned into the cylinder. The apparatus injected steam into the water of the engine boiler, thereby increasing the quantity of water in the boiler, and necessitating the drawing off of the water from time to time to maintain it at its proper level. The board's committee on apparatus, after examining Brickill's and also the Dinham apparatus, reported that they found both to supply a highly important and economical arrangement for preserving hot water in the boilers, and recommended that the superintendent of repairs equip the boilers with the necessary apparatus, leaving it to him to select which one he saw fit. The superintendent concluded to adopt Brickill's apparatus. Thereupon all the steam fire engines were equipped with it, or with apparatus embodying its most valuable parts, and there

after it was used on them throughout the life of the patent. Brickill remained as an employé of the department until the fall of 1868, in the meantime having obtained a patent for his apparatus. In October, 1870, he made a formal demand upon the department for compensation for the use of his apparatus, representing that upon the 37 engines with which it had been used there had been effected an annual saving in the expense for fuel of $14,923.40. No definite action upon this demand was ever taken by the department.

The following are the material parts of the specification of the letters patent:

"The nature of the present invention consists in combining with a steam fire engine a water heater, so constructed and connected to the boiler of the steam fire engine that the water in the same is made to pass through the heater and become heated, so that steam may be more rapidly generated than if my invention were not used in connection with the engine. To enable those skilled in the arts to make and use my invention, I will describe the construction and operation of the same. A shows a box or receptacle for the heater, B, and having within it a grate to support the first. C and C2 are water pipes leading from the heater, B, to a water tank, D, as hereinafter described; and E and E2 are branch pipes connected with and running from the pipes C and C2 to the rubber pipes or tubes, F, which are intended to form the connection between the boiler of the engine and the heater, B."

"G and G2 show cocks upon the pipes C and C2, which cocks may be opened or closed, as desired, by the elongated socket wrenches H and H2, operated in turn by the flat wrenches, I, placed on their upper ends."

"D is a water tank, through the bottom of which the end of the pipe C2 enters, while the end of the pipe, &, enters the same about centrally, or a little above the center of the tank D."

"Such being the construction, the operation is as follows:

"The heater may be connected with the boiler of a steam fire engine by inserting the ends of the rubber tubes in the boiler of the engine, one a short distance above the other, so that one shall receive the cold water from the boiler, and convey it to the heater or coil, B, while the other shall receive and conduct the water, when heated, from the heater to the boiler of the engine, thus establishing and maintaining a free circulation between the heater and the boiler."

"The elastic nature of the pipes or tubes, F, allows the engine to be placed in any desired position in the engine house, or to be moved in any desired direction to a certain extent, without the necessity of disengaging the heater from the engine."

"The connection between the tubes and the boiler may be made in any convenient manner, generally a coupling for connecting the two being preferred, which at any moment may be readily detached, and allow the connection between the tubes and the boiler to be instantly broken."

"As soon as an alarm of fire is given, the engine is detached from the heater, and proceeds to the fire. During the absence of the engine communication between the water tank, D, and the heater, B, is established by opening the cocks G and G2 upon the pipes C and C2, by which the heater is supplied with water from the tank, D, which, when heated, is returned to the tank, as in the case of the boiler; the object being to preserve the coil or heater."

"I am well aware that the form of heater used, as well as of supplying water to the same after the engine has been detached therefrom, may be varied without changing the nature of my invention, which, as already set forth, consists in connecting to or combining with a steam fire engine a heating apparatus, so that water heated to nearly the boiling point may be supplied to the boiler of the engine, that steam may be more rapidly generated; and consequently I do not wish to be understood as intending to claim any peculiar arrangement of heating apparatus herein shown."

The claim of the patent is as follows:

"The combination with a steam fire engine of a heating apparatus, constructed substantially as described, for the purposes fully set forth."

It will be seen that the specification describes a heating apparatus in which the ends of the coil, which is the receptacle for heating the water, lead into the engine boiler in substantially the same relations as did those of the permanently attached coils which had been used by the department. Brickill in effect transferred one of these coils to the grate of a stove, elongated the tubes leading from the lower and upper ends to the boiler so as to connect them with a boiler located some distance from the coil, using rubber a part of the distance, and inserted coupling devices for readily coupling and uncoupling the connections; and he also incorporated into his apparatus a tank with water pipes leading to it from the heater coil, and connections between those pipes and the pipes leading to the boiler, so that the communication between the water tank and the heater coil could be established when communication between the heater coil and the boiler was discontinued, the object being to preserve the coil and connecting pipes from being injured by the fire when the heater was not receiving water from the boiler by supplying it with water from a tank. Such an apparatus is adapted for the use of coal or wood as fuel, and obviously can be operated more economically than one requiring the use of gas.

It is insisted for the appellants that the patent is void for want of novelty, and that Brickill's apparatus merely required the exercise of ordinary mechanical skill in adapting for use with a steam fire engine well-known devices for heating water in a boiler by maintaining circulation between it and the water in a heater, and for furnishing the water supply and coupling and disconnecting the parts, and did not involve invention. The expert witness for the complainant was of the opinion that the novel features of the apparatus consisted in the flexible connections between the heater and the boiler and the means for readily coupling and uncoupling them, and also in the tank and means for transferring the circulation of water from the coil and boiler to the coil and tank, and vice versa. Apparatus in a variety of forms was old for heating water in a boiler by heating water in a separate reservoir and establishing circulation between two bodies of water. In such apparatus it was customary to connect a reservoir with the water space of a heater by tubes or pipes so arranged that one of the pipes would receive the cold water from the reservoir and convey it to the heater space, and the other would convey the water when heated to the reservoir. It was essential in every such heating apparatus that one of the tubes should enter the reservoir at some little distance below the other, as otherwise no circulation would be established, and this was uniformly the arrangement. The common kitchen range or stove is a familiar example. That was a feed heater in which the water was conveyed from the boiler to the water back by a pipe leading from its lower part to the lower part of the water back, was heated by the fire surrounding the water back, and then was conveyed back to the boiler by a pipe leading to the upper part of the