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The form and style of the ornamentation may be varied without affecting the general appearance of the whole design.

I claim as my invention the design for a jewelry-pin herein shown and described, the same consisting of a plate having the shape of a spoon, with the outline edge of the plate turned backward at a nearly uniform distance from its front, and the surface of the handle of the spoon showing an embossed or engraved ornamentation.

The corresponding parts of the specification of the second patent differ only in substituting "table-fork" for "spoon" in the body of the specification and in the claim. Upon the filing of the bill the district judge granted a temporary injunction and delivered an opinion reported in 23 Federal Reporter, 400. The case has now been heard upon pleadings and proofs. There is some conflict in the testimony. Taking the whole evidence as favorably as possible for the plaintiff, the material. facts appear to be as follows: Before either of these patents was applied for common spoons and forks, as well as jewelry-pins in other shapes than spoons or forks, had been made with the edges turned over as described in these patents; but jewelry-pins in the shape of spoons and forks had never been made with the edges so turned, and the plaintiff's pins, by reason of their peculiar form and appearance, resulting from the turning of the edges, were easily distinguishable from such pins of other manufacturers and had a readier and larger sale. Under section 4886 of the Revised Statutes, authorizing a patent to be granted toany person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvement thereof, not known or used by others in this country, and not patented and described in any printed publication in this or any foreign country, before his invention or discovery thereof,

it is well settled that the application of an old process or machine to a new or analogous subject (although of very different size or material,) with no change in the manner of application, and accomplishing no result substantially different in its nature, will not sustain a patent. (Pennsylvania R. Co. v. Locomotive Safety Truck Co., C. D., 1884, 168; 110 U. S., 490; 4 Sup. Ct. Rep., 220, and cases cited; Peters v. Manufacturing Co., C. D., 1889, 473; 129 U. S., 530; 9 Sup. Ct. Rep., 389; Peters v. Hanson, C. D., 1889, 444; 129 U. S., 541; 9 Sup. Ct. Rep., 393.) Under section 4929 a patent for a design can only be granted toany person who by his own industry, genius, efforts, and expense has invented and produced any new and original design for a manufacture

or other thing mentioned in this section

or any new, useful, and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication.

A patent under this section, indeed, is for the design which is the product of the invention, and not for the process or the means by which it is produced, and has less regard to the utility of the product than to the novelty and originality of its appearance; but in order 782 c P-20

to support a patent for a design, as for any other subject, under the acts passed by Congress in the exercise of its constitutional power to secure to inventors the exclusive right to their discoveries, there must be some invention, and not a mere application to a new material of something already known. The design must be new and original and not a copy or an imitation. This is required by the clear words of the section and has been constantly recognized in the judicial decisions under it. (Clark v. Bousfield, 10 Wall., 133, 139; Gorham Co. v. White, 14 Wall., 511, 524, 525; Wooster v. Crane, 5 Blatchf., 282, 2 Fish. Pat. Cas., 583; Niedringhaus's Appeal, C. D., 1875, 22; 8 O. G., 279; Northrup v. Adams, 2 Ban. & Ard., 567; Theberath v. Harness Co., C. D., 1883, 205; 15 Fed. Rep., 246.) The decisions under the corresponding provision of the English patent act are to the same effect. (Mulloney v. Stevens, 10 Law T., N. S., 190; Lazarus v. Charles, L. R., 16 Eq., 117; Windover v. Smith, 32 Beav., 200; Adams v. Clementson, 12 Ch. Div., 714; Dicks v. Brooks, 15 Ch. Div., 22, 34; Le May v. Welch, 28 Ch. Div., 24; In re Bach's Design, 42 Ch. Div., 661.) In the light of the words of the statute, and of the uniform course of decision upon the subject, we can have no doubt that a design for a piece of metal in the shape of a spoon or fork two inches long, precisely similar in appearance, both generally and in form of edge, to common spoons or forks six inches long, lacks the novelty necessary to support a patent.

Bill dismissed with costs.

[U. S. Circuit Court-Eastern District of Wisconsin.]

INTERNATIONAL TOOTH CROWN COMPANY v. CARMICHAEL.

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The purpose of a cross-bill is to obtain discovery of facts in aid of the defense to the original bill, or to obtain full relief to all parties touching the matter of the original bill.

2. SAME-NOT FOR INDEPENDENT UNLAWFUL Act.

The defendant in an equity suit for infringement of patent cannot file a crossbill to enjoin the complainant from publishing, the fact of infringement, and thus interfering with his trade or business. In such case, the fact sought to be presented by cross-bill being at most merely an independent unlawful act by the complainant, would neither throw light upon the subject, nor avail to defeat the patent or justify an infringement of it, if valid.

3. ORIGINAL BILL-PUBLICATIONS INJURIOUS TO BUSINESS NOT ENJOINABLE.

It is more than doubtful if an original bill will lie to enjoin publications injurious to one's trade or business; and this upon the ground that the injured party has a complete remedy at law.

Mr. Charles K. Offield for the complainant.

Mr. Ephraim Banning for the defendant.

JENKINS, J.:

The original bill in this cause was filed to restrain the alleged infringement of Letters Patent No. 238,940, issued March 15, 1881, to James E. Low for an improvement in the dental art

whereby artificial dental surfaces may be permanently fixed in the mouth in place of lost teeth without the use of plates or other means of deriving support from the gum beneath the artificial dentition.

This patent was passed upon and sustained in the case of International Tooth Crown Co. v. Richmond et al., (C. D., 1887, 425; 30 Fed. Rep., 775;) but the answer here asserts that full proofs were not presented upon the hearing of that case.

The defendant now moves for leave to file a cross-bill charging anticipation of the alleged invention; that the patent, if valid, cannot be construed to cover all practical forms of artificial dentures commonly known as "crown and bridge work," and that with a view to hinder and harass the complainant in the cross-bill in his dental business and to divert patronage from his business to dentists licensed under the Low patent, the International Tooth Crown Company has heretofore, and presumably since the filing of the original bill, caused to be published in newspapers and circular letters, and caused to be circulated throughout the United States and within this district, certain threats and warnings embodied in a notice specifying certain dentists as the only licensees of the company in the city of Milwaukee; that the patents of the company are. construed to cover all practical forms of artificial dentures now commonly known as "crown" or "bridge" work; warning all persons against obtaining such artificial dentures from the complainant in the cross-bill, and that the full legal penalty will be exacted of all infringers, patients as well as dentists, and offering a reward for information of the performance of any bridge work of one, two, or more crowns or bridges prepared by any dentist not licensed by the company. This notice and threat is charged to divert patronage and to seriously interfere with the business of the cross-complainant. An injunction is prayed restraining the publication and circulation of such notices and threats, and a decree is sought for the damages sustained for such alleged wrongful publications.

All matters contained in the cross-bill attacking the validity of the patent, or limiting its scope, can be presented by answer to the original bill. No cross-bill is necessary for that purpose. The interference with the business of the cross-complainant by reason of the publication of the notice and threats charged is the only matter not pertinent as a defense to the original bill. If the publication be construed as a mere notification of the rights claimed by the company under the Low patent, it would not be unwarranted unless the patent was invalid, and possibly not in that event. If, as is claimed, it is a malicious and unwarranted threat, even if the Low patent be held valid, the act done would not avail as a defense for infringement of the Letters Patent. It would

in such case be an unwarranted attack on the business of the crosscomplainant, independently of the validity or non-validity of the Low patent, for which he has appropriate remedy. Such matter, as I conceive, is not proper subject-matter of a cross-bill. The purpose of such a bill is to obtain discovery of facts in aid of the defense to the original bill, or to obtain full relief to all parties touching the matter of the original bill. The matter sought to be charged does not respond by way of defense to the original bill. Every matter in dispute touching the validity or infringement of the patent can be contested under the original bill, full proofs made, and complete decree rendered touching its validity and scope upon the pleadings thereto without the aid of the cross-bill. The facts charged by the proposed pleading would neither throw light upon the subject nor avail to defeat the patent or justify an infringement of it if valid. The cross-bill merely charges an independent unlawful act by the owner of the patent.

It is more than doubtful if an original bill in equity would lie upon the matter charged in the proposed cross-bill, and this upon the ground that complete remedy at law is at the command of the injured party for the injury done. The cases of Ide v. Ball Engine Co. (C. D., 1887, 644; 31 Fed. Rep., 901) and Emack v. Kane (34 Fed. Rep., 46) uphold the right to maintain such an action. The latter case certainly presents a strong assertion by Judge Blodgett of the right of a court of equity to interfere in such a case as here presented, and is sought to be distinguished from the cases of Kidd v. Horry (28 Fed. Rep., 773) and Wheel Co. v. Bemis et al., (C. D., 1887, 226; 29 Fed. Rep., 95,) opposed. The connection seems, however, be be authoritatively settled by the case of Francis v. Flinn, (118 U. S., 385,) and I am unable to distinguish the latter case from that here presented.

The motion to file the cross-bill is denied.

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[U.S. Circuit Court-Southern District of New York.]

AM ENDE v. SEABURY & JOHNSON.

Decided August 6, 1890.

54 O. G., 1268.

1. EXCEPTIONS TO MASTER'S REPORT-LIABILITY OF INFRINGER FOR PROFITS. The infringing corporation held liable for whatever profit is derived from the manufacture and sale of the chemical preparation of plaintiff's patent, notwithstanding it might have made and sold the ingredients of said preparation if it had chosen to do so, and at the same or even larger profits.

2. SAME

CALCULATION OF PROFITS-"FACTORY COST."

The master held to have properly refused to allow the defendant corporation, as an element of the "factory cost of the article infringed, interest on its capital invested in the business.

3. SAME-SAME-SAME.

The master held to have properly disallowed a certain sum for salary of the president of the defendant as an element of cost, it not being shown that the president was a salaried officer.

4. SAME-SAME-SAME.

The master properly found that the percentage for selling expenses, which should be added to the factory cost of all the goods sold by the defendant, exclusive of certain goods named, was twenty-nine per cent.

5. SAME-INFRINGEMENT-Damages.

The loss entailed upon plaintiff by reason of his being compelled to reduce his price in consequence of the reduction of price made by the defendant, who was the only competitor of the plaintiff in the market, was a proper item of damages. Mr. Arthur v. Briesen and Mr. Antonio Knauth for the complainant. Mr. Norman T. Melliss for the defendant.

WALLACE, J.:

None of the exceptions filed by the defendant to the master's report are well taken.

First. The corporation defendant manufactured and sold the borated cotton of the complainant's patent, and it was properly held liable for the profits derived from the manufacture and sale of that article, notwithstanding it might have made and sold the cotton, boracic acid, and glycerine, which are the ingredients of borated cotton, if it had chosen to do so, and at the same or even a larger profit. Instead of selling those ingredients, however, the defendant preferred to convert them into the new chemical composition invented by the complainant, and whatever profit it derived accrued by reason of appropriating the patented invention.

Second. The master properly refused to allow the defendant, as an element of the "factory cost" of the borated cotton, interest on the capital of the corporation invested in its business. As the Supreme Court say, in disallowing a similar item in Rubber Co. v. Goodyear, (9 Wall., 804,) in ascertaining profits—

The calculation is to be made as a manufacturer calculates the profits of his business. In calculating profits, manufacturers customarily treat as items of expense interest paid out on money borrowed for the use of the business, as well as rent paid for the use of property in the business; but it is not customary to charge against profits interest upon the capital embarked by the owners in the enterprise or rent paid for the use of property owned by them. There is nothing inconsistent with this conclusion in the opinion in Gould's Manufacturing Co. v. Cowing, (C. D., 1882, 202; 105 U. S., 353,) because, for all that appears in that case, the "use of tools, machinery, and power," for which it was said an allowance should be made to the defendant, may have been a hired use.

Third. The master properly disallowed the item of fifteen thousand dollars per annum for salary of the president of the defendant as an element of cost, because it was not shown that the president was a sal

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