A decree will, therefore, be entered in favor of the complainant for an injunction and an account.

As the case of Turrell v. Washington I. Snyder involves the same questions, and was submitted and argued upon the same testimony, a like decree is ordered in that case.

HALL & Co. v. JONES ET AL.

(O. G., vol. xiv, p. 378.)

Decided September 24, 1878.

Reissued Letters Patent No. 5,366, granted April 22, 1873, for hub for vehicles are for the same invention as the original letters (No. 61,900, granted Alma Warner, February 5, 1867), notwithstanding other and different things are described and claimed, and the invention is a patentable improvement over that of Sarven, which it has been heretofore declared to infringe. (9 Blatch., 524.)

NIXON, District Judge:

This suit is brought by the complainant, a joint-stock company, against the defendants, who are partners in business, for an injunction, account, profits and damages for infringement of certain reissued Letters Patent No. 5,366, granted to the complainant company April 22, 1873, for improvement in hubs of vehicles; the original letters patent, numbered 61,900, being granted to Alma Warner, February 5, 1867.

The answer of the defendants alleges:

1. That the reissue is void because it contains and claims other and different things than were described and claimed in the original patent. 2. That Warner was not the original and first inventor, and

3. That the defendants have not infringed any of the legal or equitable rights of the complainant.

The matter in controversy concerns the construction of wagon-wheels. The Warner invention is claimed by the complainant to be a patentable improvement upon the Sarven wheel, which may be briefly described to consist of a wooden hub, mortised to receive each alternate tenoned spoke, and the other alternate spokes being shaped at the base in the form of a wedge to fit between the alternate spokes first mentioned, the end of the wedge being cut off and a shallow corresponding notch being cut in the hub to receive it.

Circular angle-irons are then driven upon the hub, on each side of the plane of the spokes, and are fastened together with small bolts through the spokes. There is thus formed around the outside of the hub, by the arrangement of the spokes, a continuous belt of solid wood. Strength is given to the structure by the two radial bands arranged on each side of the spokes, flanged so as to rest upon the surface of the hub, and to bear against the face of the spokes, and firmly united together by the bolts through the spokes as aforesaid.

It is claimed that the complainant's patent, the Warner invention, differs from this in important particulars: It has the mortised central hub; it has the metallic ring surrounding it-not two rings held together by bolts, but a single ring with its flanges united by means of webs that form the tapering sockets, into which the shoulders of the spokes are driven.

The complainant insists that the annulus thus constructed produces a result which the rings of the Sarven patent are not capable of producing. The spokes that enter these tapering sockets do not rest upon the hub. The end support which they receive is not derived from the hub, but from the sockets, arising from their cuneform shape, and hence the strain caused by the use of the wheel is not transmitted to the hub, as it is in the Sarven invention. An equally strong wheel is thus obtained from a much smaller hub by the use of the Warner patent.

The Warner wheel is further claimed to be an improvement upon the Sarven patent, inasmuch as the web cast between the flanges of the ring separates the spokes and gives to each a firm metallic support, and, dispensing with the bolts, imparts to every spoke the capacity of self-tightening in case of the shrinkage of the wood.

I am not to decide whether the Warner patent in any respect infringes the Sarven. If that were the question I should not hesitate to follow the late Judge Woodruff, of the second circuit, who held that the second claim of the Sarven reissue was for a combination of three old devices, to wit, a wooden hub, tenoned spokes, and flanges on each of the spokes bolted together to assist in resisting lateral strain, and that the combination was infringed by the Warner wheel. But the question is, whether there is any peculiar patentable quality in the invention of the complainant, outside of the Sarven combination, which the defendants have infringed, and from the continued use of which they should be enjoined.

The case is not clear from difficulty, but the difficulty arises more in ascertaining the extent than the fact of the infringement.

In other words, it is not easy to decide in a controversy between other parties how much of the merits and value of the Warner wheel is due to the invention of Sarven and how much is due to the invention of WarThat matter, however, may be inquired into on the reference.

ner.

It would serve no useful purpose to exhibit in detail the reason for the conclusions to which I have arrived. Let it suffice, that I have given the testimony, the exhibits, and the very able arguments of the respective counsel an earnest consideration, and that I am of the opinion

1. That there is a distinct though, perhaps, narrow ground that the Warner patent may occupy, which is not covered by the Sarven invention.

2. That there is enough disclosed in the specifications,. drawings, and model of the original Warner patent to authorize and justify the claims of the second reissue.

3. That the structures manufactured and sold by the defendants infringe the first, second, and third claims of the said reissue.

4. That there should be a decree for the complainant for an injunction and an account, and it is ordered accordingly.

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

In re JAMES M. O'DONNELL.

(O. G., vol. xiv, p. 379.)

Decided September 19, 1878.

1. In the absence of any proper proof of the right or title of the applicants, and because the affidavit was lacking in that definiteness and particularity necessary to justify a search-warrant, relief by such process, under sec. 7, Trade-Mark Act of August 14, 1876, denied.

2. It is dangerous practice to issue search-warrants against several individuals not associated together, or against their premises, because a general sweeping affidavit is made.

[This was an application for search warrant made under section 7 of the penal act of August 14, 1876, in relation to trade-marks, upon affidavit of the alleged agent of the owners of the registered mark. The single affidavit specified several distinct parties, having different places of business, against whom process was desired.]

TREAT, J.:

An application has been made to me, based on an affidavit, for the issue of a search-warrant under the provisions of the United States statutes concerning "trade-marks." Such application, by the terms of the statutes, may be made to any United States circuit court, or district judge, or United States commissioner. I have no time, under the press of business, to enter upon an extended examination of the questions necessarily arising in this ex parte matter; nor should many of the grave propositions involved be ignored or decided without full hearing. It is supposed by the applicant that a simple presentation of an affidavit, together with the certificate of the Commissioner of Patents as to the registered trade-mark, entitles him to the writ. The act of Congress says said officers "may, within their respective jurisdiction, proceed under the law relating to search-warrants." To what law is reference made? As there is no general law by United States statutes on that subject, and constitutional provisions exist founded on known controversies in England on the subject-matter, it must be held that the general laws to which the Constitution refers were intended.

Without passing upon the grave question as to the validity of the act of 1876, or discussing the points involved in the act of 1870, reproduced in the United States Revised Statutes so far as trade-marks are con

cerned, I refuse the application made, on the ground that the known requirements as to search-warrants, with respect to definiteness and particularity, have not been observed; and also that there is no proper proof that assignment of any supposed or alleged right to such trademarks has been made to the applicants.

It is a dangerous doctrine that "searches and seizures" which, if unreasonable, are forbidden by the United States Constitution, should be issued against several persons not associated together, or their premises, in one warrant, because a general and sweeping affidavit is made. Such practice would soon bring about the very evils involved in the English controversies concerning general warrants, and provided against by the United States Constitution.

Writ refused.

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

ANILIN ET AL. v. HIGGIN ET AL.

(O. G., vol. xiv, p. 414.)

Decided September 25, 1878.

1. Although the original patent may contain a satisfactory specification of invention, yet if the specification of claim be inadequate to proper protection, the defect is within the language of the reissue section (4916 Rev. Stats.) and may be remedied. 2. So far as the claim is wanting in rightful scope, the patent is inoperative. To reissue the patent, that a claim to fully cover the invention may be entered, is warranted by the statute.

3. The patent being for a new dye product, the article is protected without regard to any one method of manufacture; hence the claim which included not only the particular processes practiced by the inventors, but " any other method which will produce a like result," is no broader than the actual invention.

4. Nor does it in effect monopolize a result. The term "result" as used in the claim, taken in connection with the other words, simply means to include any other method than that of the patent, which will obtain a like product resulting. It is something tangible, and not a mere idea.

5. Artificial alizarine differs essentially from the chemically pure alizarine of the laboratory, and from the alizarine of the madder plant. Additional coloring principles of distinctive character are contained which render the composite product a novel

one.

6. Reissued Letters Patent No. 4,321 (Div. B), granted Graebe and Liebermann for improvement in dyes or coloring matters from anthracene, April 4, 1871, are for the same invention as the original patent, and are valid.

Mr. George Gifford and Mr. J. Santvoord for complainants.
Mr. G. M. Plympton for defendants.

WHEELER, J.:

This suit is brought for relief against an alleged infringement of Divis ion B of reissued Letters Patent No. 4,321, to Charles Graebe and Charles Liebermann, for an improvement in dyes and coloring matters from anthracene, dated April 4, 1871, and now owned by the plaintiff.

The defenses set up are that the reissue of the patent was unauthorized by law, and void because the original patent was not inoperative nor invalid, by reason of a defective or insufficient specification, nor by reason of the patentees claiming therein, as their own invention or discovery, more than they had a right to claim, and because the reissue covers alleged inventions not shown at all in the original; that the patent is void for want of novelty of invention, and because it is not for any invention that by law is patentable; and that the defendants do not infringe.

The original patent describes two processes by which a substance is produced, and some other processes by which one of the substances from which it may be derived is produced, and claims:

The within-described process for the production of alizarine by first preparing bibromanthrakinon or bichloranthrakinon, and then converting those substances into alizarine, substantially as above set forth.

The reissued patent, Division B, describes precisely the same process producing the same substance, and claims:

Artificial alizarine produced from anthracene, or its derivatives, by either of the methods herein described, or by any other method which will produce a like result.

The difference between the original and the whole reissue is that the reissue, in this division, claims the product which the original did not claim. Whether the circumstances dehors the patent required by the statute to authorize a reissue existed or not was a matter to be determined by the Patent Office, and, having been determined there, is not open here. Whether the reissue is for the same invention that the original was, and is such as was warranted upon that original, is open. Russell v. Dodge, 93 U. S., 460. Nothing is seen to show that the original was not valid for what it claimed. There was nothing defective or insufficient about the specification of the invention. If the statute, by specification, meant that and no more, then, on the patents themselves, it would appear that there was no ground for the reissue. But the word seems to be used in a broader sense, and to be intended to cover the specification of the claim as well. In that sense, there was a defective specification of the invention as patented, and the patent was inoperative and invalid for that part of the invention not covered by the claim. The invention specified in each is precisely the same. The original did not cover the whole of it, and so was inoperative as to.part. The reissues do cover the whole. They seem to fall exactly within the intention of the statute in this particular. Seymour v. Osborne, 11 Wall., 516.

It is said that the reissue attempts to cover more, and is, therefore, void, because it not only claims the substance produced by those processes, but proceeds to claim it if produced by any other method which will produce a like result. If these words enlarge the scope of the claim at all, it does seem that they claim as much as there is of the enlargement that was not in the original, and which, in fact, neither those nor any other inventors had then invented.