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An examination of the patents put in evidence by the defendant, in connection with the testimony in regard to them, shows that the Claridge pavement was not a concrete pavement, and was not formed in detachable blocks, but was a continuous asphalt pavement; that the D'Harcourt pavement was not a concrete pavement laid in detached blocks or sections, nor could one section be removed without disturbing adjacent sections; that, the Russ patent shows a concrete foundation for a stone pavement, the pavement proper being constructed of granite or syenite placed on top of the concrete foundation, such concrete foundation not being formed in detachable blocks, but only being provided at certain places with removable panels, consisting of frames filled with concrete, to be lifted out to give access to water pipes or for other purposes; that the Chesneau pavement was not a concrete pavement laid in detached sections or blocks, but was a continuous pavement, provided with panels to give access in certain places to gas and water pipes, the panels being made of sections set in frames, which were removably inserted in the surrounding pavement, and there was no arrangement of tar-paper or its equivalent between adjoining blocks of concrete, for the purpose set forth in the Schillinger patent; that the Coignet patent did not show a concrete pavement, made in detachable blocks after the manner of Schillinger's, and built on the ground where it was to remain; that the De la Haichois pavement was not a concrete pavement laid in detachable blocks or sections, or having the arrangement of tar-paper or its equivalent between adjoining blocks of concrete, like that of Schillinger; and that the Van Camp patent showed only blocks formed in molds, and removable from the molds, or the pavement to be laid cemented in the molds, and it not being stated that the blocks should be formed on the spot where they were to remain, nor that they should be formed of cement and gravel or sand. It further appears that, in the Van Camp patent, when the blocks are made in molds, they are like bricks, or artificial stones, or wooden blocks, which are prepared and then brought to the place where they are to be laid and put down in the usual manner; and that, when the blocks remain in the molds and are thus laid, they do not present a uniform wearing-surface of concrete, or constitute a concrete pavement formed in detachable blocks by joints.

Other testimony as to prior public use was introduced in this case, taken from the record in the case of Schillinger v. Phillip Best Brewing Co., in the Circuit Court for the Eastern District of Wisconsin, which testimony was also introduced in the case against the Greenway Brewing Company, having been taken in November, 1882. In the decision in the latter case it was correctly said of that testimony:

So far as it refers to prior use in Germany, not shown in a patent or printed publication, it was duly objected to in this case and must be excluded. As to the cement malt-floor which Row laid in Baltimore twenty-five years ago, he shows that it was

not made in sections detachable by free joints. The testimony of Botzler as to a prior malt-floor laid by him in Chicago is too indefinite to amount to sufficient evidence to defeat a patent.

So far as that testimony related to a pavement used in Germany, it was objected to at the time it was introduced in this case, as incompetent. It was clearly inadmissable under section 4923 of the Revised Statutes, because it did not show anything that had been patented or described in a printed publication.

We do not think that the reissued patent, as it stood after the filing of the disclaimer, was open to the objection that it was not for the same invention as that of the original patent. Whatever there was of objectionable matter inserted in the specification or the first claim of the reissue, when it was granted, was removed by the disclaimer. The reissue was granted within ten months after the original. The single claim of the original patent was repeated in the reissue as the second claim of the latter, and the first claim of the reissue, as it stood after the disclaimer, did not expand beyond the claim of the original what was claimed in the reissue.

As to the amount of the decree, we think the court properly awarded the sum of 4 cents per square foot as the profits of the defendant, and that it was right to give to the plaintiffs the entire profits made by the defendant by the laying by him of his concrete flagging, in view of the testimony in the case. It clearly appears that the defendant's concrete flagging derived its entire value from the use of the plaintiffs' invention, and that if it had not been laid in that way it would not have been laid at all.

In Elizabeth v. Nicholson Pavement Co., (97 U. S., 126, 139,) it is said that" when the entire profit of a business or undertaking results from the use of the invention, the patentee will be entitled to recover the entire profits, if he elects that remedy." This language was quoted with approval in Root v. Railway Co., (105 U. S., 189, 203.) As in the case of the Nicholson patent, so in the case of the Schillinger patent, the pavement was a complete combination in itself, differing from every other pavement, and the profit made by the defendant was a single profit derived from the construction of the pavement as an entirety. (Callaghan v. Myers, 128 U. S., 617, 665, 666.)

Within the decision in Garretson v. Clark, (111 U. S., 120,) the proof in this case is satisfactory, that the entire value of the defendant's pave. ment, as a marketable article, was properly and legally attributable to invention of Schillinger.

The decree of the circuit court is affirmed.

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

1. HAKE-VISITING-CARDS.

HAKE v. BROWN ET AL.

Decided March 5, 1889.

47 O. G., 1071.

Letters Patent No. 219,364, granted September 9, 1879, to Philip Hake, for an improvement in visiting-cards, Held valid as to the first claim, which covers the process of arranging cards in oblique packs and beveling and ornamenting and finishing the sides and ends of the whole pack as though it were one card, but invalid as to the second claim, covering the product, which is old in the sense of the patent law.

2. DISCLAIMER-INFRINGEMENT.

The patent might be held to be invalid on account of its covering the product, of which the patentee is not the inventor, and which is a material and substantial part of the thing patented (R. S. 4920 ;) but regarding this as claimed through inadvertence, accident, or mistake, without any willful default or intent to defraud or mislead the public, the patentee may file a disclaimer to the second claim now, and thereupon have a decree for the infringement of the first claim, without costs.

Mr. Arthur v. Briesen for the complainant.

Mr. Walter D. Edmonds for the defendants.

WHEELER, J.:

This cause rests upon Patent No. 219,464, dated September 9, 1879, and granted to the orator for an improvement in visiting-cards. The patent describes a method of making beveled-edged cards and of ornamenting the edges by piling them obliquely, first, so that the slope of the pack will correspond with the desired bevel, compressing them to hold them in that position, beveling and ornamenting and finishing the whole pack on the sloping edge, which will bevel, ornament, and finish that edge of each separate card by each operation, and of successively treating the other sides and ends of the pack in the same manner, by which means the whole pack is treated as readily as one card. The first claim is for the method of treating cards in this manner, and the second is for a card so treated. The defenses are want of novelty, want of patentability, and lack of proof of infringement.

According to the evidence bevel-edged cards were not new at the date of the orator's invention; neither was beveling in packs new; but arranging cards in oblique packs and treating one side or end till all the cards were complete on that side or end, as if they were one card, and treating the other side and ends successively in the same manner does not appear to have been known before. By this process the packs can be grooved or embossed and ornamented in a manner to present beveled designs upon the edges of such cards, which could not be produced by treating cards separately, and the making of beveled-edged cards of any design is greatly facilitated. This method seems to be ingenious and useful. Such an arrangement of mechanical operations that pro

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duces a new and useful result, or an old result in an easier or better manner, is understood to be patentable. (Cochrane v. Deener, 94 U. S., 789; Telephone Cases, 126 U. S., 1.) The first claim of the patent, therefore, appears to be good and valid for the method described.

There is nothing new about the bevel-edged cards produced by this process except that they are made in this way. They do not differ from those made in any other way, unless they do in design. The process does not inhere to the product so that it differs from any like product made in any other way, as was the case with Cummings's invention of rubber plates and teeth, in Smith v. Goodyear Dental Vulcanite Co., (93 U. S., 486,) or the driven well, in Eames v. Andrews (122 U. S., 40.) The product itself here is old, in the sense of the patent law, and there can be no patent for it, although produced in this new way. (McCloskey v. Du Bois, 9 Fed. Rep., 38; 8 Fed. Rep., 710; McCloskey v. Hamill, 15 Fed. Rep., 750.) The second claim of this patent, therefore, appears to be invalid. The plaintiff's evidence tends directly to show that the defendants use this process, and the defendants do not in testimony deny that they do, nor dispute or meet this testimony. Upon this state of the evidence the infringement is found, as a fact, to exist of first claim.

The patent might be held to be invalid on account of its covering the product, of which the patentee is not the inventor, and which is a material and substantial part of the thing patented. (Rev. Stat., sec. 4920, sub-div. Fourth.) But when such material or substantial part has been claimed through inadvertence, accident, or mistake, without any willful default or intent to defraud or mislead the public, a recovery may be had for the infringement of any part which is bona fide the inventor's own—that is, a material and substantial part of the thing patented and definitely distinguishable from the part claimed without right, but without costs, unless a disclaimer is filed before suit brought. (Section 4922.) The benefits of the provisions of this section are to be denied if the entry of a disclaimer has been unreasonably neglected or delayed; but waiting to take the judgment of a court is allowable. (Burdett v. Esty, 15 Blatchf., 349; 3 Fed. Rep., 566.) No such willful default or intent to defraud or mislead appears or is claimed to exist thus far in this case. The orator therefore appears to be entitled to file a disclaimer of the second claim now, and thereupon to have a decree as to the first claim without costs.

Upon the filing of a duly attested copy from the Patent Office of a disclaimer of the second claim let a decree be entered that the first claim is valid, and for an injunction and account accordingly, but without costs.

[United States Circuit Court-Southern District of Ohio, Western Division.]

THE SEIBERT Cylinder Oil Cup COMPANY v. THE WILLIAM POWELL COMPANY.

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The defendant is a licensee of the Detroit Lubricating Company under a license which is limited upon its face to patents owned by that company. The Detroit Lubricating Company is the licensee of the complainant under a contract which does not grant an exclusive license for the manufacture or use of the Gates patent owned by the complainant, and which is infringed, Held that the defendant was not protected by its license in the manufacture of articles under the Gates patent.

Mr. Edmund Wetmore, Mr. J. H. Raymond, and Messrs. Peck & Rector for the complainant.

Mr. George J. Murray for the defendant.

SAGE, J.:

The complainant sues as assignee for infringement of Patent No. 138,243, granted to John Gates 29th of April, 1873, for improvements in lubricators for steam-engines. The validity of the patent, although denied in the answer, is not contested. The lubricators manufactured and sold by the defendant contain the complainant's invention. T defense rests solely upon the following facts: December 1, 1883, complainant and the Detroit Lubricator Company (which was the owner of patents claimed to anticipate complainant's) entered into a contract that neither party should sue the other, or directly or indirectly authorize suit against the other or its agents or vendees, under any of the patents then or thereafter to be owned by it; that neither should imitate the styles or shapes of lubricators made by the other, and that, whereas the Seibert Company was the owner in whole or in part of certain Letters Patent granted to Nicholas Seibert for improvements in lubricators, and the Seibert Company claimed and the Detroit Company denied that the Detroit Company had infringed and was infringing the same, the Detroit Company should thereafter pay royalties, as specified in the agreement, to the Seibert Company so long as the Seibert Company should perform its covenants and stipulations and during the life of the agreement, which was to continue in force until the expiration of the Seibert patents, and in consideration thereof the Seibert Company agreed not to molest the Detroit Company, its agents or vendees, by suit or otherwise, for any alleged infringements of said Nicholas Seibert patents outside of the New England States. The Seibert Company also agreed not to authorize the use of the Nicholas Seibert patent outside of the New England States except as above. This agreement amounted to a license to the Detroit Company, and it included the Gates patent. (Seibert Co. v. Detroit Co., 34 Fed. Rep., 216.)

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