or more properly speaking, by the use of a new material in a new way, he produced new results of a useful quality measured by the increased comfort they afforded and the popular demand they created. Simple as it may seem, the elastic knit crotch piece produced results desired by those who wear the garment and the payment of large tribute by those who manufacture it. When the question of invention is close, as it usually is when the thing done is simple, the thing achieved, its recognition by the art, and the demand for it by those who use it, are matters properly to be put in the scale and weigh in favor of invention. Neill v. Kinney, 239 Fed. 309–314, 152 C. C. A. 297. We find the patent valid.

Upon the issue of infringement, the District Judge found that the defendant did not infringe, unless the claim of the patent be construed so broadly, that an undergarment made up of any combination of elements into which the idea of a knitted elastic gusset enters as an element, would be an infringment. He declined to construe the patent thus broadly. We do not think that, to find infringement, the claim must be thus broadly construed. Clarke's patent is not for an elastic knit gusset alone. It is for a combination containing such a gusset as an element, and the rule of the patent law, that the omission of one element of a claim for a combination avoids the charge of infringement, applies to this patent as to any other. The question of infringement in this case, therefore, is not whether the claim of the patent may be infringed by the use of an elastic knit gusset in any combination of elements, but whether the defendants infringe by making the garment here charged as infringing, because it embraces all the elements of the claim of the patent. They are (1) the body of the union suit, (2) the presence, location and adjustment of flaps, and (3) the elastic knit gusset. The mere inspection of the two garments determines the question of infringement. In looking at them and comparing them in the light of the testimony, we cannot escape the conclusion that the garment of the defendants corresponds precisely in elements and substantially in detail with the claims of the patent. The parts are the same, they are in the same positions and relation, are intended for the same uses, perform the same functions and operate exactly as disclosed by the patent,-with one exception. This is found on the under or inside flap of the defendant's garment, which is a continuous piece extending from the under arm seam across to its inner edge. In the patent, this flap is described as "stitched to the opposite side of the garment and extending under the first named flap." The second or inside flap of the patent, in the position disclosed, is the element of the patent, not the mere stitching of the flap. The defendants' second or inside flap, being in the same place and performing the same function, though made in a continuous piece from the arm seam, is a full equivalent of this element; and the extension of the second flap from the arm seam without stitching does not constitute an omission by the defendants of one of the elements of the patent claim whereby they avoid infringement.

We find that the patent is valid and infringed, and direct that a decree be entered in accordance with this opinion.

(248 Fed. 609)

BUTTE & SUPERIOR COPPER CO. v. CLARK-MONTANA REALTY

CO. et al.

(Circuit Court of Appeals, Ninth Circuit. February 18, 1918.

Denied April 1, 1918.)

No. 2939.

1. COURTS 365-FEDERAL COURTS-PRECEDENTS.

Rehearing

Decisions of the Montana state court as to the validity of mining locations are not precedents binding on the federal courts in a suit involving the validity of locations in that state made prior to the rendition of such decisions of the Montana court.

2. MINES AND MINERALS

22-LOCATION-VALIDITY.

Though locator of a mining claim did not comply with the Montana statute in force at time, declaring that within 20 days after discovery the locator should file for record with the county recorder a declaratory statement in writing, verified by oath, describing the location, yet, as the statute made no provision for forfeiture for failure to record, the location is valid, though not recorded.

3. MINES AND MINERALS

44-PATENTS-CONCLUSIVENESS.

As the action of the Land Department in issuing patents is the judgment of a special tribunal, not assailable, except by direct proceedings for annulment, the invalidity in a mining location is cured by a subsequent issuance of a patent.

4. MINES AND MINERALS 43-LOCATION-CURE OF DEFECTS.

Rev. Codes Mont. 1907, § 2292, bearing the caption "Validating Locations Heretofore Made," and declares that all mining locations made and recorded under the laws of the state heretofore in force, that in any respect have failed to conform to the requirement of such laws, shall, in the absence of the rights of third persons, be valid, if the making and recording of such locations conform to the act; while section 2294 declares that the issuance of United States patent for a mining claim shall be deemed conclusive that the requirements of the laws of the state relative to location and record of such claims have been duly complied with. While the caption was inserted by the compiler of the Codes, yet the Codes, after they were framed, were enacted. Held that, though section 6213 declares that no part of the Codes is retroactive, unless so expressly declared, such sections must be deemed to have a retroactive effect, and a failure to comply with the Montana laws as to the recordation of locations is cured by subsequent issuance of a patent.

5. MINES AND MINERALS 41-ISSUANCE OF PATENT-FAILURE TO ADVERSESURFACE RIGHTS.

Where a prior locator, who was already extracting ores from his claim, did not file any adverse against the application of an adjacent locator for a patent, although there was a surface conflict between the two claims, the prior locator did not, the patent being issued, lose his priority as to extralateral rights, as they could not have been determined in the course of the patent proceedings; issuance of the patent affecting only the surface.

6. MINES AND MINERALS 55(2)—QUITCLAIM DEED-OPERATION.

A quitclaim to an undivided one-fourth interest in a mining claim, executed by the owner of an adjacent claim which was first located, carries with it only the interest covered by the patent to the claim conveyed, and does not work an estoppel by deed barring the grantor from asserting extralateral rights to any vein or ores in his claim extending beneath the surface of the claim conveyed.

7. APPEAL AND ERROR

1011(1)-REVIEW-FINDINGS.

Findings of fact by the trial court on conflicting testimony are conclusive on appeal.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

8. MINES AND MINERALS

38(14)—DISPUTE BURDEN OF PROOF.

In a suit involving a dispute over extralateral rights asserted by the owners of adjacent mining claims, defendant, whose location was last, has the burden of proving that it has priority throughout its entire depth as to a vein apparently joining one having its apex in complainant's claim. 9. MINES AND MINERALS 38(25)—MINING CLAIMS-ADJUDICATION.

In suit between owners of adjacent mining claims, involving a dispute over extralateral rights, the court properly declined to quiet title to claims resting on an undeveloped or possible junction of veins at great depths beneath the surface.

Appeal from the District Court of the United States for the District of Montana; George M. Bourquin, Judge.

Suit by the Clark-Montana Realty Company, a corporation, and the Elm Orlu Mining Company, a corporation, against the Butte & Superior Copper Company, a corporation. From a decree for complainants (233 Fed. 547), defendant appeals. Affirmed.

W. H. Dickson and A. C. Ellis, Jr., both of Salt Lake City, Utah, Kremer, Sanders & Kremer, J. Bruce Kremer, L. P. Sanders, and Alf C. Kremer, all of Butte, Mont., William Scallon, of Helena, Mont., and Russell G. Schulder, of Salt Lake City, Utah, for appellant.

John P. Gray, of Coeur d'Alene, Idaho, J. L. Templeman and George F. Shelton, both of Butte, Mont., Myron A. Folsom and Rufus Thayer, both of San Francisco, Cal., and W. A. Clark, Jr., of Butte, Mont., for appellees.

Before GILBERT and HUNT, Circuit Judges, and WOLVERTON, District Judge.

GILBERT, Circuit Judge. The Clark-Montana Realty Company, hereinafter called the appellee, as the owner of the Elm Orlu lode mining claim, together with the Elm Orlu Mining Company, its lessee, brought this suit against the appellant, the owner of the Black Rock lode mining claim, to quiet title and to obtain an accounting for ores alleged to have been taken by the appellant from the appellee's mine. The court below, upon the issues and the testimony, found the following facts:

(1) That the Elm Orlu claim was located before the Black Rock claim was located.

(2) That the north wall of the Rainbow vein apex crosses the common side line between said claims 190 feet from the southwest corner of the Black Rock claim, and that the south wall of said vein apex so crosses 301 feet from said corner.

(3) That the Pyle strand of the Rainbow vein diverges from the south side of the latter vein in the Elm Orlu claim, and there and for some indefinite distance easterly has its apex in the Elm Orlu claim.

(4) That the Jersey Blue vein apexes in the Black Rock claim, does not unite with the Rainbow vein, and crosses on strike and dip the Rainbow vein, on strike east of the Rainbow apex crossing of the common side line.

(5) That the Creden vein diverges from the north side of the Rainbow vein in the Elm Orlu claim, and has its apex in both the Elm Orlu and Black Rock claims.

(6) That the apex of the easterly strand of the Rainbow vein in the Black Rock claim terminates at a point within said claim east of the Elm Orlu east end line projected and about 250 feet west of the Black Rock east end line.

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

(7) That, prior to the Black Rock location and patent entry, both the Rainbow vein and the Jersey Blue vein at their apices were discovered and known within the Black Rock claim, and at their apices appeared as a continuous east-west vein.

(8) That each party has mined the ore bodies of the other in the claims involved.

From the findings the court deduced the following conclusions of law:

(1) That plaintiff owns all ore bodies in the Rainbow vein between the Elm Orlu west end line and a parallel line projected from where the south wall apex of said vein crosses the common side line, or about 980 feet of said vein.

(2) That the defendant owns all ore bodies in the Rainbow vein between the projected Elm Orlu end line at the south wall apex crossing of the common side line by said vein and the east end line of the Black Rock claim, or about 1,200 feet of said vein.

(3) That plaintiff owns all ore bodies in the Pyle strand from its divergence at its west end from the Rainbow vein in the Elm Orlu claim easterly as far as the apex of said strand is within said claim, and between Elm Orlu end lines projected, and defendant owns all thereof east of the projected east end line last aforesaid.

(4) That defendant owns all ore bodies in the Jersey Blue vein between the points where the apex departs from defendant's premises across end lines as laid or projected, throughout depth save at its intersection or crossing of the Rainbow vein between Elm Orlu end lines as laid and projected.

(4-2) That plaintiff owns all ore bodies in the Creden vein from its divergence at its east end from the Rainbow vein westerly as far as the Creden apex is within the Elm Orlu claim between Elm Orlu end lines there projected, and defendant owns all thereof west of the projected west end line last aforesaid.

(5) That accounting in damages be had.

The appellant assigns error to the finding of the court below that the Elm Orlu claim was located before the Black Rock claim was located. If the Elm Orlu has priority, the appellee is entitled to all of the Rainbow vein lying between the westerly end line of that claim, and a line parallel thereto running south from a point on the north side. of said claim 301 feet easterly from the southwest corner of the Black Rock claim, where as the court found, the foot wall of the Rainbow vein crosses the common side line, and is also entitled to all ores within the intersection spaces of that vein with the Jersey Blue vein and the Creden vein; but, if the Black Rock has priority, then the eastern plane of the appellee's rights in the Rainbow vein would be upon a line parallel to the west line of the claim and running from a point on the north side of the claim 190 feet easterly from the southwest corner of the Black Rock claim, where, as the court found, the northerly wall of the Rainbow crosses the common side line. Discovery and location was made of the Elm Orlu claim on April 18, 1875, and the declaratory statement of the locators was recorded on April 22, 1875, and continuous possession was had by the locators and their successors down to January 1, 1884, the date of the issuance of the patent, for which final entry had been made on February 20, 1882. The Black Rock claim was located November 6, 1875, and the declaratory statement was recorded a week later. Patent was issued on February 15, 1882, final entry having been made on November 24, 1880.

[1, 2] Notwithstanding that the location of the Elm Orlu was prior

in time, the appellant contends that the respective mining rights of the parties hereto are fixed and determined by the dates of the issuance of the patents, and this for the reason that the locators of both the said lode claims failed to comply with the statute of Montana in force in the year 1875, which required that within 20 days after discovery the locator should file for record with the county recorder a declaratory statement in writing on oath before some person authorized by law to administer oaths, describing such location in the manner provided by the laws of the United States; the Supreme Court of Montana having held that declaratory statements substantially in the form of those which were filed by the locators of these two mining claims were void. McBurney v. Berry, 5 Mont. 300, 5 Pac. 867; O'Donnell v. Glenn, 8 Mont. 248, 19 Pac. 302; Hickey v. Anaconda Copper Min. Co., 33 Mont. 46, 81 Pac. 806. It is true that the Montana courts so held, but, in view of the harshness of the rule so established, the Legislature at its session next following the decision in the Hickey Case enacted that the issuance of a patent for a mining claim shall be deemed conclusive that the requirements of the laws of the state relative to location and record have been duly complied with, and it validated all mining locations under the laws of the state "heretofore made that in any respect have failed to conform to the requirements of such laws, except as against one who has located the same ground in good faith and without notice." The court below declined to follow the rule of the Montana decisions, for the reason that the locations of the parties to the present suit had been made prior to the date of those decisions, and they were therefore not binding upon a federal court, and for the further reason that the Montana statute had not provided that failure to record a notice which complied in all respects with the statute of the territory should work a forfeiture of a claim; the court holding that the better rule has always been that, if the recordation law does not expressly provide for a forfeiture for failure to record, the location is valid, though not recorded, citing Last Chance M. Co. v. Bunker Hill & S. M. Co., 131 Fed. 586, 66 C. Č. A. 299, and Yosemite Mining Co. v. Emerson, 208 U. S. 25, 28 Sup. Ct. 196, 52 L. Ed. 374. In so holding we think the court below committed no error. Vogel v. Warsing, 146 Fed. 949, 77 C. C. A. 199; Sturtevant v. Vogel, 167 Fed. 448, 93 C. C. A. 84. In the Yosemite Case the question was whether a locator with knowledge of the existence of a mining claim could take advantage of the prior locator's failure to post two notices required by local rules, he having posted but one. The local rule provided for no forfeiture in case of failure to post two notices. The court said:

"To hold that the want of notice under such circumstances would work a forfeiture would be to permit the rule to work gross injustice, and to subvert the very purpose for which it was enacted."

[3] Again, we are of the opinion that if there was invalidity in the original certificate of location of the Elm Orlu lode claim, it was cured by the issuance of the patent. In Steel v. Smelting Co., 106 U. S. 447, 1 Sup. Ct. 389, 27 L. Ed. 226, referring to the powers and functions of the Land Department in issuing patents the court said: