function of securing the clasped binder upon the anvil, to hold it in position to allow the umbrella-case to be turned right side out in effecting its removal in a heated condition from the post, while such machine combines in its construction a tubular standard connecting with the holding-post and a suitable heater, through which the anvil-post and the standard heated water is made to circulate. The object of such heating-apparatus, in connection with the case-holder, is to allow the case to be withdrawn from the anvil-post without danger of cracking, defacing, or tearing the glazed case, as would result from its removal in a cold condition.

After describing the drawings which accompany the specifications, he then makes eight claims, with none of which we have anything to do in the present case except the fifth, which, complainant alleges, the defendant's machine infringes.

The claim is—

In a machine for clasping the metal binders to umbrella covers and cases, a hollow heated post or holder, E, for the umbrella-case, for the purpose stated.

The purpose is clearly stated in the specifications, and to these we are entitled to look for the construction of the claim. Thus interpreting it, I am inclined to hold, in accordance with the views of the counsel for the complainant, that the essence of the invention is the use of an iron anvil-post heated at its surface, which comes in contact with the glazed surface of the cloth, thereby softening it at the moment the ring is being clasped to the cloth at the top of the anvil-post, so that it can at once be stripped from the post, and turned right side out as soon as the ring has been compressed and secured by the hammer.

The sole question presented by the pleadings and evidence is: Does the defendant's machine infringe the complainant's?

His patent was taken out to accomplish the same results that were attempted in the Hurcombe invention. He calls it "an improvement in apparatus for attaching rings to umbrella-cases." He states that

The object of his invention is to provide a simple and efficient machine for expeditiously attaching grooved metallic binding-rings to the ends of umbrella-cases and the gores of umbrella-covers, and to allow of the umbrella-case, clamped at its ends by the binding-ring, being turned right side out and removed from its holding-post without tearing or cracking the material of which said case is composed.

He substitutes for the hollow, fixed, internally-heated iron post of the complainant's patent a solid removable and externally-heated iron post, over which the umbrella-case, having been drawn inside out, is drawn or passed. The metallic ring, which is to be affixed to the smaller end of the umbrella-case, is fitted over the end of the anvil-post, and then, instead of bringing down the hammer upon the post, he raises up the post by means of a treadle until it strikes an immovable case having a hollow, into which the top of the post enters, whereby the clasping of the ring to the umbrella-case is effected.

In the two machines there are a number of variations in the details of mechanical construction. But it seems to me that Gemmell has seized the principle of the complainant's patent and its mode of operation, and has studiously sought, by varying the instrumentalities, to avoid the charge of infringement.

The language of the late Justice McLean, in Pitt v. Edmonds (2 Fish., 57,) is pertinent here:

A patent, in calling for a specific mode, embraces in law all mechanical equivalents or modes which operate on the same principle; consequently all modes, however changed in form, but which act substantially on the same principle and effect the same end, are within the patent. If this were not so, a patent right would be of no value, as it might be avoided by any one who possessed ordinary mechanical skill.

The defendant's machine is more simple, cheaper, and possibly better. But its chief efficiency arises from the use of equivalents to the complainant's patent, and the law does not allow even so meritorious a class of men as inventors to appropriate the property of other people to their own use without making satisfactory compensation, or, at least, acknowledging their obligations.

The defendant has exhibited in his case a patent granted to one Shadrick H. Pierce in 1868, and his counsel on the argument laid much stress upon its specifications, claiming that they anticipated all the most valuable parts of the Hurcombe patent. But I have given no attention to it in considering this case, for the reason that the defendant is not allowed to surprise the patentee by evidence of a prior invention of which he has given no notice. See O'Reilly v. Morse, 15 How., 110.

I have been inclined to give a benign construction to the complainant's patent, not only because the court should not hasten to deprive patentees of the advantages of a real and meritorious invention on account of the awkward and clumsy manner in which their claims are stated, but also because the evidence strongly suggests, if it does not lead to the conviction, that the defense is a combination on the part of the defendant and his son-in-law, Gemmill, and the inventor, Hurcombe, to deprive the complainant, who has bought and paid liberally for the Hurcombe patent, from enjoying the fruits of his purchase.

Let a decree be entered for an injunction and an account.

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

INGERSOLL v. MUSGROVE ET AL.

INGERSOLL v. BENHAMET AL.

(O. G., vol. xiii, p. 966.)

1. The amount of profits and damages arising under infringement being questions of fact to be satisfactorily proven, and the master having based his report upon evidence merely in the nature of estimate, opinion, and conjecture, the exceptions thereto were sustained and nominal damages alone awarded.

2. Costs allowed the plaintiff, except as to the reference of the cases to the master and all the subsequent proceedings, with decree for the party in whose favor the difference in amount of opposing costs should exist.

Mr. Frederic H. Betts for the plaintiff.

Mr. Benjamin F. Lee, Mr. W. H. L. Lee, and Mr. John H. Miller for the defendants.

BLATCHFORD, J.:

The master reports that the defendants realized as profits from the sale of infringing cuspadores at least $300 in the first case on 1,003, and at least $275 in the second case on 2,225, but that he is unable, from the proofs, to report what amount of such profits to them is attributable to the distinctive patented feature of said cuspadores, "the business of the defendants being different from the complainant's in relation to these goods." The plaintiff does not except to this part of the report.

The plaintiff sold during the same time 90,554 of the patented cuspadores for a sum less by $10,325.84 than the sum for which they would have sold at rates which ruled prior to the commencement of the infringements. The master reports that such reduction in price was to a great extent occasioned by such infringements by the defendants and other parties; that the infringements by the defendants occasioned a loss to the plaintiff by the compulsory reduction of his prices of thirty per cent. of the $10,325.84, being $3,097.76; that such loss was occasioned by reason of the fact that the infringing articles contained the patented features of the plaintiff's patented cuspadores; and that one-half of such thirty per cent. of loss was occasioned by each set of defendants. The master attributes seventy per cent. of the reduction of prices to causes other than the infringements by the defendants. He therefore reports against each set of defendants damages for the above cause, amounting to $1,548.88.

He also reports that if the defendants in the first case had not sold the 1,003 infringing cuspadores the plaintiff would have sold 1,003 more of the patented cuspadores than he did sell, and would have made a profit on each of 79 cents, or, in all, $792.37; and that eighty-five per cent. of this, or $673.56, is the amount of such profit to be assigned to the distinctive patented feature of the cuspadores. He therefore reports that amount, $673.56, as additional damages against defendants in the first suit. The aggregate damages against them he reports at $2,118.94. The figures add up $2,222.44.

He also reports that it is not made to appear that if the defendants in the second case had not sold the 2,225 infringing cuspadores the plaintiff would have sold an equal number of the patented cuspadores to the persons who purchased from said defendants. He therefore reports against said defendants damages to the amount of $1,545.48, which should be $1,548.88.

I think it was a correct conclusion that the zinc cuspadores, with the bottom loaded with iron filings, was an infringement of the patent. It was composed of three metallic parts, formed and combined substantially as set forth in the Heath patent, with the excess of weight in the base.

Although the self-righting feature is found in the Topham patent, that patent does not show the combination covered by the Heath patent.

The question whether the prices which the plaintiff received for his cuspadores were less than those which he would have received but for the infringements by the defendants is a question of fact. Such also is the question as to the amount of the reduction, and as to how much of it was occasioned by the acts of the defendants, and as to how much of it was attributable to the fact that the infringing articles contained the patented feature of the plaintiff's patented cuspadores. Such also is the question as to whether, if the infringing cuspadores had not been sold, the plaintiff would have sold any greater number of the patented cuspadores than he did sell, and what profit he would have made on them, and what part of such profit is to be assigned to the defendants' patented feature of the cuspadores.

It is for the plaintiff to establish by satisfactory evidence not only that a reduction of his prices was caused by the infringements, but how much such reduction was, and how much of it was occasioned by the acts of the defendants, and how much was due to the fact that the infringing articles contained the patented feature of the plaintiff's patented cuspadores.

I am not satisfied with the conclusions of the master on this subject. The evidence on which those conclusions were reached was in the shape of estimate, and conjecture, and opinion, and afforded no proper basis for a report of actual damages by a forced reduction of prices. The allotment of thirty per cent. of such reduction to the infringements by the defendants, and to the fact that the infringing articles contained the patented features of the plaintiff's patented cuspadores, and of seventy per cent. of such reduction to other causes, is founded only on the conjectures, estimates, and assertions of witnesses, and not on any sound and safe bases of calculation. Moreover, it does not appear that the master at all considered the question as to the weight to be given to the fact that the sales of the plaintiff were unquestionably increased in number by the reduction of prices by him, resulting in profit on the added sales, and counterbalancing to some extent, at least, diminution of profit on the rest of the sales.

So, also, it is for the plaintiff to establish, by satisfactory evidence, that he would have sold more of the patented cuspadores than he did sell if the infringing cuspadores had not been sold, and what profit he would have made on them, and what part of such profit is to be assigned to the distinctive patented feature of the cuspadores. I see no proper foundation in the evidence for the conclusion that, if the defendant in the first case had not sold the 1,003 infringing cuspadores, the plaintiff would have sold 1,003 more of the patented cuspadores than he did sell. The conclusion has no other basis than conjecture and speculation.

Only nominal damages should have been reported in each case. The

plaintiff is entitled to recover costs other than the costs of the references before the master, and of the reports and exceptions, and of the hearing thereon; and the defendants are entitled to recover the costs of the references before the master, and of the reports and exceptions and of the hearings thereon. The one set of costs in each case must be deducted from the other, and a decree be rendered for the difference for the party in whose favor it shall exist.

[Circuit Court of the United States-District of Rhode Island.]

THE AMERICAN COTTON TIE COMPANY v. SIMONS ET AL.

(O. G., vol. xiii, p. 967.)

June term, 1878.

1. A buckle or bale-tie sold for ordinary commercial use passes beyond the monopoly of the patent, and cannot be followed or controlled in its subsequent disposition. 2. Though the words "Licensed to use once only" were stamped upon the buckles, and words of like import were contained in the bill-heads and invoices, the nature of the article and of its use are such that there is an implied parting with the unrestricted title at the time of sale which is inconsistent with any such reservation or limitation.

SHEPLEY, J.:

The complainants are engaged in the manufacture and sale of a patented buckle for use in connection with an iron strap for a tie or fastening to cotton-bales. There can be no reasonable doubt that cotton-ties sold by defendants are covered by the patents under which complainants claim. Nor does the evidence in this case leave any reasonable doubt that the buckles sold by the defendants are the identical buckles made and sold by the complainants under their patent. The complainants contend that they sold the buckles under a restriction which limited them to one use, and did not convey an unrestricted title, and that the buckles never passed out of the monopoly of the patent. The facts are that the complainants sold the patented buckles with the words printed on them "Licensed to use once only," and that up to the season of 1876 on the bill-heads and invoices of all their agents were the words—

The cotton-ties sold by this invoice are licensed to be used only as baling-ties, and are sold and purchased subject to this restriction.

During the season of 1876 the following clause was printed on their bills:

The buckles accompanying these bands are the property of the American Cotton Tie Company, limited, and are licensed to be used for one season only, the company reserving the right after such use to recover possession of them wherever found.

The company clearly had the right, in selling a patented article, to put a restriction on its use or sale, and to convey only a restricted title, or license only a restricted use, and the purchaser under such a restricted