To succeed, therefore, the complainant must show that the implied and substantial part of the stipulation has been violated, and that the defendant has failed to exert itself in good faith to install his apparatus wherever in reason it was feasible. That covenant was the real inducement for the assignment of his patents, and it was from the royalties so arising that he was to be paid. In proof of such a default he instances the four buildings which have been mentioned in the statement of facts. There seem to have been good reasons in each case why the defendant should not have put in the complainant's elevators. In the case of the Ritz-Carleton Hotel, I do not think the defendant need have put in 18 or 20 elevators of a type which it had only tested in its factory. As I have said, that test in my judgment bound it to try the elevators practically, but it is one thing to make practical use and another to put in upon one contract a great bank of so many. In the case of the Metropolitan Tower, it cannot be said that Brown's letter which controlled the architect was the act of the defendant at all, and, even if it were, there were obviously good reasons which justified the defendant declining on such an extraordinary building to put in a device necessarily as yet somewhat experimental. In the case of the Beaver Building the needs of the customer were supplied at less expense, and certainly the defendant was required to do the work as economically as it reasonably could. There remains, therefore, the Park Row Building, and the complainant does not contradict the fact that the negotiations were still pending when he attempted to rescind the contract. This absolves the defendant. Upon the proofs, therefore, I do not think that the complainant has yet shown any such default as would justify his rescission. In saying this I am aware of the difficulties under which the complainant labors, which may be such as prevent him from obtaining justice even when the defendant is in fact doing him injustice. Those difficulties are, however, inherent in the position in which he has placed himself in giving over his patents to the defendant upon an undertaking which did not define the amount of "practical use," to which they must be put. In so doing he necessarily put himself in their control, and he cannot retreat from the position without some affirmative proof that they have abused that control. The degree to which they could in fact exploit his invention depends upon their business opportunities for its use, and, until he can show that they have failed substantially to avail themselves of some such opportunities, his difficulties necessarily arise from the fact that he has chosen unwisely. Therefore I shall be obliged to dismiss this bill. However, in view of the fact that in my judgment the defendant is in actual, although not serious default, and in view of the fact that a decree speaks from the time when it is filed, if the complainant so wishes, I will enter no decree but hold the suit open, and he may, if so advised, present further proofs at any time upon application to the court, which will show that the defendant's default is such as goes to the substance of the contract. Moreover, if the complainant sees fit to accept a dismissal, I will impose costs on the defendant. MARVEL BUCKLE CO. et al. v. ALMA MFG. CO. et al. (Circuit Court, D. Maryland. June 27, 1910.) 1. PATENTS (§ 141*)-REISSUE-IDENTITY OF INVENTION. A patentee is not entitled to claim in a reissue a feature of the device not claimed in the original patent as a part of his invention, although it was incidentally shown or indicated in the drawings. [Ed. Note.-For other cases, see Patents, Cent. Dig. §§ 206-213; Dec. Dig. § 141.*] 2. PATENTS (§ 328*)—VALIDITY OF REISSUE-BUCKLE. The Barabasz reissue patent, No. 12,855 (original No. 877,035), for a single piece sheet metal buckle, is void; the claims being for a different invention from that claimed in the original patent. In Equity. Suit by the Marvel Buckle Company and M. Barabasz against the Alma Manufacturing Company, H. Kerngood, president, I. Blum, vice president, M. Hecht, of J., secretary, and S. B. Sonneborn, treasurer. Decree for defendants. Morris A. Soper and A. V. Cushman, for complainants. Sylvan Hayes Lauchheimer, Livingston Gifford, and Charles F. Jones, for defendants. ROSE, District Judge. The individual complainant is the inventor to whom reissued letters patent 12,855 were granted September 22, 1908. He still owns them. The Marvel Buckle Company is a corporation. It holds an exclusive license under such patent. The bill says that the defendants infringe its second, fifth, and sixth claims. A number of defenses were set up. The original patent, 877,035, dated January 21, 1908, and its reissue in suit, are each for an improvement in single piece sheet metal buckles. The respondents have put in evidence 53 prior patents. Fortynine of these relate to single piece buckles. Numerous witnesses have told about buckles made and used before the application for the original of the patent in suit. Many specimens of such buckles have been filed as exhibits. The respondents say that, in view of the prior state of the art thus shown, there was no invention in anything which Mr. Barabasz claims to have done. They assert that all the new things in his buckles are both obvious and trivial. is agreed that at the time of his application the buckle art was already overcrowded. I am inclined to believe that Mr. Barabasz's changes and adaptations are not inventions. It is, however, not necessary so to decide, nor indeed to consider, more than one of the defenses relied on. It The invention set forth in the claims in suit, if it be an invention. at all, is in my opinion a different invention from that of the original patent. If I am right, the bill must be dismissed. I shall briefly state the reasons which lead me to this conclusion. In the original patent Mr. Barabasz stated that he had invented two things-a peculiarly shaped buckle tooth for the purpose of lessening the wear on the strap used with the buckle; second, a depressed crossbar in For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes the buckle, the object of which was to prevent a hump in the strap when passed through the buckle. The patent gives no hint that the inventor had anything else in mind. Such a shaped tooth was not new. A depressed crossbar was not new. It is admitted that the respondents never have used the peculiar Barabasz tooth. Indeed, the inventor and his licensee do not appear themselves ever to have used it in the buckles made by them for sale. They certainly no longer use it. Some of the defendants' buckles which the complainants say infringe have neither the peculiar tooth nor the depressed crossbar. In those buckles the teeth still tear the strap. The strap still forms a hump. The complainants say that such buckles infringe their rights because the real invention is to be found neither in the tooth nor in the bar, but in something else and different. In their brief they assert that Mr. Barabasz had been trying for years to produce a buckle which could be blanked and formed from sheet metal in a single piece, and of such construction that the buckle would "stand the work of finishing in manufacture (tumbling in a rumble); and, second, the action of the power pressing iron such as is used by wholesale clothing manufacturers, without such percentage of breakage as would render their manufacture and use an uncertain commercial venture." Mr. Barabasz, who is a priest of the Roman Catholic Church and the rector of the Church of the Holy Rosary in Baltimore City, has for years, it is true, been working on buckles. The original of the patent in suit is the fifth buckle patent which has been granted him. In not one of the five is there a hint or suggestion that he was seeking a buckle that would withstand the rough usage of the rumble and the pressing iron. This purpose first appears in the application for the reissued patent in suit. Mr. Barabasz then, and not until then, told the Patent Office that a material part of his original invention was a discovery that a buckle could be made in which the tooth and crossbar or bars were all housed within the ends and side bars and within the inturned flanges of such ends and side bars. It is true that in the buckle shown in the drawings of the original patent the teeth and crossbar were housed within the end and side bars and their inturned flanges, but, so far as the patent shows, no importance was attached by the inventor to that detail of the construction. In the reissued patent this feature is made an element of each of the three claims in suit. Before the application for the reissue, the respondents had put on the market buckles which were very similar to the buckles shown in the original Barabasz patent 877,035, except that none of these buckles had the peculiarly shaped teeth of that patent. Respondents called one of these buckles the "Wonder." As always in this class of cases, they assert that the name was chosen without thought that it was a synonym for "Marvel." Quite as naturally the complainants believed and believe that the name was selected with that thought and none other. For the purposes of this case it may be assumed that the complainants are right in this matter. It does not follow that a reissued patent can be sustained merely because the alleged infringers have done things inconsistent with the maintenance of a highly ethical standard of conduct. If the fact be that much they have done is open to criticism in a forum of morals, this case in that, as in other respects, much resembles Parker & Whipple Co. v. Yale Clock Co., 123 U. S. 87, 8 Sup. Ct. 38, 31 L. Ed. 100. There, as here, the drawings of the original patent showed the feature upon which were based the new claims first appearing in the reissued patent. There the infringer was the very corporation which had been employed by the owner of the original patent to manufacture the patented clocks. No alleged infringer could well have put itself in a position less likely to appeal to the sympathies of the court. It was, however, held: "That what was suggested or indicated in the original specifications, drawing, or Patent Office model is not to be considered as a part of the invention intended to have been covered by the original patent unless it can be seen from a comparison of the two patents that the invention which the original patent was intended to cover embraced the things thus suggested or indicated in the original specifications, drawings, or Patent Office model, and unless the original specifications indicated that those things were embraced in the invention intended to have been secured by the original patent." That case is decisive of this. The subsequent case of Topliff v. Topliff, 145 U. S. 170, 12 Sup. Ct. 825, 36 L. Ed. 658, quite as distinctly declares that a reissue must be for the same invention as the original patent, as such invention appears from the specifications and claims of such original. In this case each of the three claims in suit contain an element which from the specifications and claims of the original patent cannot be said to have formed a part of the invention there described and claimed. I will sign a decree dismissing the bill of complaint. CHADELOID CHEMICAL CO. v. DAXE VARNISH CO. et al. (Circuit Court, E. D. New York. August 2, 1910.) PATENTS (§ 328*)-INFRINGEMENT. A preliminary injunction granted against infringement of the Ellis patent, No. 714,880, for paint remover. In Equity. Suit by the Chadeloid Chemical Company against the Daxe Varnish Company and Mayer Daxe, alias Mayer Goldstein. On motion for preliminary injunction. Motion granted. Duncan & Duncan (Harry L. Duncan, of counsel), for complainant. Herman R. Elias, for defendants. CHATFIELD, District Judge. I see no reason why an injunction should not issue. The Ellis patent has been frequently adjudicated valid in terms broad enough to cover the defendants' composition and process. Infringement seems to be clear, and the only defenses. are prior use (which is not satisfactorily shown) and a slightly different composition procured by the use of petroleum jelly and kerosene. *For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep'r Indexes These latter ingredients are within the general terms of the Ellis claims as previously held valid, and also within the specified materials of the Ellis patent. The Daxe patent, No. 948,814, of February 8, 1910, seems to have been granted for the particular formula used, with petroleum jelly and kerosene in exact quantities or proportions. The kerosene is claimed to be an additional or new element over the Ellis formula, but is in such slight proportion and so plainly indicated in the composition of the Ellis patent as to make no new product, but merely an equivalent variation of the complainant's preparation. The injunction pendente lite may be issued. UNITED STATES v. BUTLER BROS. (Circuit Court, N. D. Illinois. May 27, 1910.) CUSTOMS DUTIES (§ 37*)-CLASSIFICATION-"DOLLS"-BATH BABIES-POSITION Bath babies and position babies are "dolls," within the meaning of Tariff Act July 24, 1897, c. 11, § 1, Schedule N, par. 418, 30 Stat. 191 (U. S. Comp. St. 1901, p. 1674), and are dutiable as such, rather than as china toys, under Schedule B, par. 95, 30 Stat. 156 (U. S. Comp. St. 1901, p. 1633). [Ed. Note. For other cases, see Customs Duties, Dec. Dig. § 37.*] On Application for Review of a Decision by the Board of United States General Appraisers. The Board of General Appraisers in the decision below sustained the importers' protests against the assessment of duty by the collector of customs at the port of Chicago. The assessment was under Tariff Act July 24, 1897, c. 11, § 1, Schedule B, par. 95, while the importers contended for classification under Schedule N, par. 418, the pertinent provisions of which read as follows: "95. China ware, including or ornamented in any manner." toys decorated "418. Dolls, doll heads, toy marbles of whatever materials composed, and all other toys not composed of not specially provided for in this act." china, The opinion filed by the Board of General Appraisers reads in part as follows: "HAY, General Appraiser. The appraiser returned the merchandise in question as 'position babies' and 'bath babies.' The samples in the case at bar make it perfectly clear that the merchandise in question must be classifled as dolls, to come under the toy paragraph, as they are composed of china or bisque, and toys composed of these materials are expressly excepted from the operation of that paragraph. From the testimony in the case, however, and an examination of the samples, we are convinced that the merchandise in question falls within the definition of the word 'dolls.' In the Century Dictionary it is said that a doll is a 'puppet representing a child, usually a little girl (but also sometimes a boy or a man, as a soldier, etc.), used as a toy by children, especially by girls.' The articles in question, we think, respond to this definition, and the testimony in the case at bar reinforces this conclusion. For other cases see same topic & § NUMBER in Dec. & Am. Digs. 1907 to date, & Rep't Indexes |