tires on the wheels it is the practice usually followed at present to turn the wheel-center and to bore the tire in a cylindrical form and to rely solely upon the contraction of the tire by cooling to retain it upon the wheel. A modification of this method is, that in place of having the wheel-center and tire to meet each other in a cylindrical joint, to have some kind of a flange, lip, or shoulder to project either from the circumference of the wheel-center or from the bore of the tire to fill a corresponding groove or recess in the opposite part, so that when the tire has been shrunk on the wheel-center it cannot be driven sideways off the wheel against the resistance of this flange. The wheels exhibited in the drawings of Mellon's patent belong to this latter case.

The right of the appellee to the relief prayed for in the bill depends in part upon the construction to be placed on his letters patent.

Counsel for appellee contend that his patent covers two things, which he claims are in substance set forth in his specification, as follows: first, in having the wheel, or the tire which is to be fitted on the same, provided with a single flange arranged in such a manner that said flange, in connection with the ordinary flange on the tire, will keep the latter on the wheel; second, in constructing the tire with a rounded edge at one side of its inner surface, in order to prevent said edge from indenting and sinking into the periphery of the wheel-a contingency which would otherwise occur in consequence of the tire being stretched by

use.

Conceding that the patent is to be construed according to the contention of the appellee, we are of opinion that he has not shown himself entitled to relief.

An inspection of the specifications and drawings which accompany the letters patent granted to Nehemiah Hodge under date of November 18, 1851, shows precisely the contrivance first described in the specifications of appellee's patent. The drawings, representing a central cross-section of a car-wheel, appended to Hodge's specifications, accurately illustrate the first alleged invention described in the specifications of appellee's patent. His patent cannot therefore be held to include that contrivance. So far as that part of his alleged invention is concerned, the defense for want of novelty is conclusively established. But there is another answer to this part of the appellee's case. The act of July 4, 1836 (sec. 6, 5 Stats at Large, 117), under which this patent was issued, requires that an applicant for a patent shall not only "deliver a written description of his invention or discovery," but " shall also particularly specify and point out the part, improvement, or combination which he claims as his own invention or discovery." This provision is substantially re-enacted in the act of July 8, 1870 (Rev. Stats., sec. 488), and remains in force. As a rule, therefore, the specifications filed with applications for letters patent contain a general description of the invention sought to be patented, which is followed by what is technically called the "claim." In reference to this latter part of the specifications, this court, speaking by Mr. Justice Bradley, has said:

1

It is well known that the terms of the claim are carefully scrutinized in the Patent Office. Over this part of the specification the chief contest generally arises. It defines what the Office, after a full examination of previous inventions and the state of the art, determines the applicant is entitled to." Burns v. Meyer, 100 U. S., 671. See, also, Keystone Bridge Co. v. Phænix Iron Co., 95 U. S., 278.

In view, therefore, of the statute, the practice of the Patent Office, and the decisions of this court, we think that the scope of letters patent should be limited to the invention covered by the claim, and that, though the claim may be illustrated, it cannot be enlarged by the language used in other parts of the specifications. We are therefore justified in looking at the claim with which the specifications of the appellee's invention conclude to determine what is covered by his letters patent. The claim, so far from covering an angular flange upon the wheel, expressly excludes such a flange and claims only a flange with a curved or rounded

corner.

In this case the description of the appellee's invention is much broader than his claim. It seems quite clear, from the present form of appellee's specifications, and from the fact that his application for a patent was twice rejected, that he was compelled by the Patent Office to narrow his claim to its présent limits before the Commissioner would grant him a patent. In doing this he neglected to amend the descriptive part of his specifications. He cannot go beyond what he has claimed and insist that his patent covers something not claimed, merely because it is to be found in the descriptive part of the specifications. The appellee is therefore precluded from claiming relief against the appellant for the use of a flange with a square corner. He is consequently driven to the second branch of his alleged invention, as set out in his bill of complaint, as the basis of any relief against appellant. This, as is clear from his claim, consists simply in rounding off that corner of the inner side of the tire which fits into the re-entrant corner made by the flange upon the rim of the wheel-center, so as to prevent the corner of the tire from indenting and sinking into the periphery of the wheel-center.

The charge in the bill of infringement of this part of appellee's alleged invention is not sustained by the proof. The answer, which is under oath, denies infringement. Infringement must therefore be shown by satisfactory proof; it cannot be presumed. The evidence for the appellee entirely fails to establish this part of his case. On the contrary, the proof adduced by the appellant is not only persuasive but conclusive to show that it never made or used the flange with the rounded corner.

We are of opinion, therefore, that the record discloses no case against the appellant. The decree of the circuit court must therefore be reversed and the cause remanded with instructions to dismiss the bill; and it is so ordered.

[United States Circuit Court-District of New Jersey.]

SAWYER v. KELLOGG.

Decided November 19, 1881.

20 O. G., 1893.

[The rule in the United States in respect of the effect of an acquies. cence in the infringement of a trade-mark is less stringent than in England. The decisions of the two countries differ essentially. In one acquiescence bars all relief. In the other it perhaps never prevents the issuance of an injunction, and does not preclude an accounting unless the delay has been unreasonable.]

1. INFRINGEMENT-Knowledge of.

Defendant commenced to use the infringing mark early in 1878. Suit was instituted in June, 1879. There was no proof that complainant actually knew of the use by defendant of the infringing mark until a short time before the bill was filed. Held that complainant was entitled to an accounting and to such damages as he could show, with costs of the suit.

2. SAME-DAMAGES-PACKING GOODS FOR MARKET CONSTITUTES LIABILITY ·FOR. It appeared that defendant had used the false label on goods which had been packed by him for a single firm, and that he had not sold the goods in the open market. Held that he was none the less liable for profits and damages according to the accepted rule.

3. SAME-COSTS-DEMAND.

A demand before suit is not usually necessary to entitle a complainant to costs. ON MOTION to amend decree.

TRADE-MARK,

Mr. George Putnam Smith for the motion.

Mr. Rowland Cox, contra.

NIXON, J:

This is a motion to strike from the decree entered in the above case the clauses which direct an accounting and the payment of costs.

First, as to the accounting. The counsel for the defendant rests his application to strike out on two grounds: First, because the proofs show that the defendant is not the person liable to account to the com. plainant. The evidence is that the defendant was largely engaged in packing blues on his own account and for others in the trade; that all the blues covered by the infringing trade-mark were put up by him for the firm of James S. Barron & Co., dealers in wooden-ware, rope, and cordage in New York, who placed the same upon the market; that he made no sales to any one of the articles thus packed, but received pay from his employers solely for the work and labor of packing. The bill of complaint prays for an injunction and for profits and damages. Having been adjudged an infringer of the trade-mark of the complaiuant, an injunction has been issued against him. Under the above state of facts, should he be compelled to account for profits and damages!

We have no doubt about the propriety of the reference or of the liabil ity of the defendant, if it can be shown on the accounting that profits were made by his work and labor or that damages resulted to the com. plainant therefrom. If he did not sell, the profits on the sales are not chargeable to him; but if any profits came to him for preparing the article for those who did sell, they belong to the complainant, and the object of the accounting is to ascertain that fact. And if the defendant has damaged the complainant by the unlawful use of his trade-mark, the nature and extent of the damage is a proper subject of inquiry. Second, because the complainant has forfeited his right to an account by laches in bringing his suit. In England the rule is stringent in trade-mark cases that lack of diligence in suing deprives the complainant in equity of the right either to an injunction or an account. Our courts are more liberal in this respect. A long lapse of time will not deprive the owner of a trade-mark of an injunction against an infringer, but a reasonable diligence is required of a complainant in asserting his rights, if he would hold a wrong-doer to an account for profits, and damages. This rule, however, applies only to those cases where there has been an acquiescence after a knowledge of the infringement is brought home to the complainant. Such is not the present case. Although the defendant began the packing of bluing in the packages complained of early in the year 1878, there is no evidence that the complainant knew it until a short time before the suit was brought.

Second, as to the matter of costs. We find nothing in this case to take it out of the ordinary rule that a decree for an infringement and au injunction carries costs. The only reason suggested by the counsel for the defendant was that no demand was made before suit that the defendant should cease to use the label. We have never understood that in such cases a demand was necessary, nor that an infringer who stoutly contests the suit to the end, should be relieved from the payment of the costs which have been incurred in consequence of his wrong-doing and his litigation.

The motion to strike out is overruled, but, under the circumstances, without costs, on the motion, to the complainants.

[United States Circuit Court-Eastern District of Pennsylvania.]

PAILLAIRD v. GAUTSCHI.

20 O. G., 1893.

INVENTION PATENTED ABROAD-LIMITATION OF THE GRANT-SECTION 4887. Domestic patent not so limited as to expire with foreign patent of same inventor held to be invalid.

Mr. Henry Baldwin for the defendant.

MCKENNAN, J.:

STATEMENT OF THE CASE.

[No opinion was rendered in this case, but it appears from the plead

ings that defendant entered a special plea to the validity of complainant's patent, upon which the plaintiff joined issue. The plea set forth that complainant's patent was null and void under the provisions of section 4887, Revised Statutes, by reason of the fact that the alleged invention contained therein having been first patented or caused to be patented in a foreign country, the domestic patent was not and should have been so limited as to expire at the same time with said foreign patent.]

Proofs were taken and argument had, and a decree was entered sustaining the plea and dismissing the bill.