prevent bias and interest in his public capacity; when that ceases, the interdict is removed. The law in 1867 was, that the Commissioner should be disqualified and interdicted from acquiring or taking, except by inheritance, during the period for which he should hold his appointment, any right or interest, directly or indirectly, in any patent “which has been (that is, before the date of the statute) or may hereafter be granted." Stat. Mar. 3, 1836, 5 Stats., 118. This provision is now found in Revised Statutes, section 480, somewhat simplified, but with the same meaning, that the Commissioner shall not voluntarily acquire any interest in any patent during his term; but he no more loses his right to take out a patent after he becomes a private citizen than he forfeits one which he already held before his appointment; and there is no more objection to giving his invention its true date in his case than in any other. The only question of fact which has been made is, whether either of the four patents exhibited by the defendants anticipates the plaintiff's invention. Two of them are dated in 1870, after the time at which, as is now admitted, the complainant had completed his discovery. The third, that of Cook, is for a device entirely different in its mode of operation from that of the plaintiff, and is not much relied on by the defendants. The fourth is that of Butterfield, No. 57,247, granted in August, 1866, for an improved fastening for shoe-lacings, which the inventor says will hold the lacings of a shoe, corset, or other article, so as to prevent the lacing from working loose in the eyelets. It describes a thin plate of metal, to be inserted in the upper part of the shoe where the lacing ends; it is to be of elliptical or other suitable form, with a slot with converging sides, and an eye through which the lacing may enter, and the patentee says that, as the lacing is drawn toward the point or angle of the slot, it becomes pinched by the opposite converg ing sides so as effectually to hold the lacing. He says in another pas sage that the friction of the sides of the slot will suffice to hold the lacing firmly, and prevent it from getting loose. Here is, undoubtedly, a device very closely resembling the plaintiff's holder. The doubt insisted on by the plaintiff in his argument seems to us to have much force. It is that, though the patentee is described as living in Boston, no evi. dence is produced that his mode of fastening proved to be practicable, as applied to the lacing of a shoe, and that the absence of such evidence, in a place where the trade in shoes is so largely carried on, is noticeable. Upon inspection of Butterfield's specification and drawings, and of a specimen shoe introduced in argument, we are led to doubt whether this mode of fastening would answer the purpose. The strain is quite differently applied in a shoe from what it is in a grainbag, and it is not clear to us that the friction of the sides of the slot would hold the lacing firmly. It may be that the difficulty, if it be a real one, arises from the plate being made of sheet metal instead of wire. If the result is attained by the plate, a mere change of material would be unimportant; but-when the question is, Who first completed a working device?-a change of material by which the result is for the first time obtained is very important. The point is a narrow one, but on the whole we think it well taken, and that the defendant has failed to prove that Butterfield's invention did, in fact, anticipate the holder of the plaintiff in the sense of the patent law. Interlocutory decree for the complainant. SNOW v. TAYLOR. (O. G., vol. xiv, p. 861.) Decided October 9, 1879. Before CLIFFORD and LOWELL, JJ. Patent No. 132,547, to G. K. Snow, for the method of cutting out collars from paper or other suitable material, independent of the means of cutting, in such a way as to bring the wide parts of one series opposite the narrow parts of the adjoining series: Held to be void, in view of the fact that linen collars had been cut in this mode by hand long before the date of this invention, and that in various branches of manufacture material had been cut in such a way as to bring the wide part of one article against the narrow part of the next, so as to save material. Even had the limitation contended for been adapted to collars cut from a stock precisely wide enough for his collars, the method would only be a neat application of a wellknown operation, and would not be patentable. Mr. Chauncey Smith and Mr. William W. Swan for complainant, LOWELL, J.: This suit was brought for the infringement of two patents; but as to one of them no evidence was taken, and it is not now under consideration. Patent No. 132,547, which is the one in controversy, was issued to the complainant in October, 1872. It states the saving of material which is obtained by cutting out collars in such a way as to bring the wide parts of one series opposite the narrow parts of the adjoining series, and gives several illustrative figures or patterns of collars cut in this mode from a strip of paper. The claim is for The method of cutting two or more series of collars, side by side, from a strip of paper, or other suitable material, in such a manner that the wide parts of the collar of one series shall come opposite to the narrow parts of the adjoining series, substantially as described. That linen collars had been cut in this mode, by hand, long before the date of the invention is admitted. It is further a matter of common knowledge, and is mentioned by some of the witnesses, that in various branches of manufacture material has been cut in such a way as to bring the wide part of one article of the manufacture against the narrow part of the next, so as to save material. In this state of facts, it is clear that a patent for this mode of using material for collars is not patentable. See Milligan & Higgins Glue Co. v. Upton, decided in this district October, 1874, and the cases cited in the opinion of Clifford, J. That decision has lately been affirmed by the Supreme Court. See also case decided at the same term of this court, in which the appeal was not prosecuted and the decree was affirmed, Needham v. Washburn, 7 OFFICIAL GAZETTE, 649; and Brown v. Piper, 91 Mass., 37. The complainant contends that his claim may be limited to collars cut from a strip precisely wide enough for two collars, or two series of collars, and for cutting such a strip so that each edge of the strip shall form an edge of each collar. If such a limitation were adopted, we think the method described would only be a neat application of a well-known operation; that is to say, the only improvement would be in cutting a strip of precisely the proper width for two collars, and would not be patentable. But the patentee, by his description, his drawings, and his claim distinctly refuses to be thus limited. As he is not content with claiming whatever of machinery or other means he may have invented for cutting collarsand it is understood that he has patents for these-but attempts to monopolize a well-known mode of cutting generally, independently of means, we must pronounce his patent void. Bill dismissed with costs. [United States Circuit Court-District of Massachusetts.] ISAACS v. ABRAMS. (O. G., vol. xiv, p. 861.) Decided October 9, 1878. 1. Patent No. 180,717, to M. C. Isaacs, in which the claim is for “a railway-track broom, constructed with a brush of uneven face-that is, one portion of the brush longer than the other"-sustained. 2. It is not invention to change one well-known material for another, or to apply a well-known process, without some adaptation, more than every skilled mechanic could apply to a new art or subject; but a change in the form of a machine or instrument, though slight, if it works a successful result, not before accomplished in a similar way in the art to which it is applied, or in any other, is patentable. Mr. Causten Browne and Mr. Jabez S. Holmes for complainant. LOWELL, J.: In August, 1876, the complainant obtained a patent, No. 180,717, for an improvement in railway-track brooms. He declares in his specifica tion that "heretofore brushes for cleaning railroad-tracks have been made with a broom of even face—that is, the brush of the broom, of whatever material made, has been of uniform length." He describes his improvement to consist of making the brush of unequal lengths; one part adapted to brushing the surface of the rail, and the other longer part to clearing either side of the rail, according to its construction. The claim is for A railway-track broom, constructed with a brush of uneven face—that is, one portion of the brush longer than the other--substantially as and for the purpose set forth. The defendant has argued that brushes with a uniform surface being well known, no invention was required to construct one with an uneven surface. We cannot take this view of the case. It is not invention to change one well-known material for another, or to apply a well-known process, without some adaptation, more than every skilled mechanic could apply, to a new art or subject; but a change in the form of a machine or instrument, though slight, if it works a successful result, not before accomplished in a similar way in the art to which it is applied, or in any other, is patentable. There is evidence that this improvement did accomplish such a result, and that it was accepted and adopted by the trade and went into general use. The question of fact is, whether the patentee was the first inventor of this improvement. He carries his invention back, by a fair preponderance of proof, to October, 1874. The defendant alleges that he had made similar brooms many years before 1874, and that the plaintiff, when he did make the new kind of broom, stole it from one of the witnesses in the case. We have examined the evidence, which it would be unprofitable to recapitulate. We are satisfied not only that the defendant has failed to rebut the presumption afforded by the patent, but that the plaintiff has proved that he was the first and true inventor of the improvement. Interlocutory decree for the complainant. [United States Circuit Court-District of California.] KNOX et al. v. THE GREAT WESTERN QUICKSILVER MINING COM PANY. (O. G., vol. xiv, p. 897.) Decided November 18, 1878. 1. PATENTS.-Profits Recoverable in Equity.—In a suit in equity for the infringement of a patent by the use of the patented invention, the patentee is entitled to recover the profits resulting to the infringer from the use of the invention. 2. SAME.-Royalty.-In such case the patentee is not limited in his recovery in equity to the amount of the royalty established by him for the use of his invention. 3. PROFITS DEFINED.-The profits which the patentee is entitled to recover in equity from the infringer by use of the patented invention are not the profits of the business, but the value of the advantages derived by the infringer from the use of the invention over what he would have by the use of other machines then known and open to the public, and adequate to produce an equally beneficial result. 4. SAME.-The fact that the general result of the business is unprofitable does not affect the recovery. The question is, What advantage in the reduction of cost, &c., has been derived from the use of the invention? 5. ACCOUNT EXTENDS TO TIME OF TAKING.-The account should be extended to the time of the taking, including the profits resulting from the use of the invention, whether by means of the particular machine in use at the time of the commencement of the suit, or of others subsequently constructed and used. 6. INVENTION COMPARED WITH EXISTING MACHINES.-For the purposes of an account of profits, the comparison of the invention should be made with other machines in existence, or known, and open to public use at the time of the infringement complained of, and not with machines subsequently invented, or for the first time constructed or known, or machines not open to public use. 7. EVASION-Change of Location of Part.-A change of location of a part in a patented combination, where there is no new function performed by the changed member in its new location, will not evade a patent. Mr. M. A. Wheaton for complainants. Messrs. Estee & Boalt, Cope & Boyd, and Garber & Thornton for defendant. SAWYER, C. J.: To discuss all that is said by counsel in support of the exceptions to the master's report would be to re-examine the questions tried and determined in the action at law now in the Supreme Court on writ of error, and again considered on the original hearing of this case. cover. 1. It is earnestly urged that the master adopted an erroneous principle in estimating the profits which the complainant is entitled to reThat it being shown that complainant had established a royalty of $6,000 for each furnace of twenty tons capacity for the use of his invention, the amount of the royalty is the utmost limit of the amount he is entitled to recover in equity, as well as at law. But the statute and the rule established by the decisions of the Supreme Court are other. wise. The statute provides that, "upon a decree being rendered in any such case for an infringement, the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained." Rev. Stats., § 4921. This is an express statutory recognition of the different measures of recovery in suits in equity and actions at law; and it not only expressly authorizes the recovery in equity of the profits resulting from the use of the invention, but in addition thereto the damages which the complainant would be entitled to recover at law; and the latter, in the discretion of the court, may also be trebled. The established royalty might be the measure of the mere damages, but it constitutes no element affecting the profits derived by the defendant from the use of the invention unless it is paid, and if paid there would be no occasion for an account. In Packet |