company can dictate how long they are to enjoy the use of their machines.

Such a rule of infringement as is adopted by the majority opinion, not only extends the monopoly of the patent owner to an unprecedented extent, but is subversive of the right of a purchaser of the patented thing to realize its fair measure of usefulness by making necessary reparations or changes by way of improvement.

McCUNE v. BALTIMORE & O. R. CO.

(Circuit Court of Appeals, Third Circuit. May 6, 1907.)

No. 21.

PATENTS-ACTION AT LAW FOR INFRINGEMENT-PROOF OF DAMAGES.

In an action at law to recover damages for the infringement of a patent, where there is no established market value or license fee, general evidence is admissible to show the extent of the plaintiff's damages from the infringement, and he is entitled to show the utility and advantages of the invention over old devices, as a basis from which the jury may estimate the extent of his loss.

[Ed. Note.-For cases in point, see Cent. Dig: vol. 38, Patents, §§ 420, 421.]

In Error to Circuit Court of the United States for the Western District of Pennsylvania.

J. M. Martin, for plaintiff in error.

Robert J. Fisher, for defendant in error.

Before DALLAS, GRAY, and BUFFINGTON, Circuit Judges.

BUFFINGTON, Circuit Judge. In the court below James B. McCune, the plaintiff in error, brought an action at law against the Baltimore & Ohio Railroad Company to recover damages for infringement of a patent granted to him May 18, 1886, for a locomotive ashpan. The patent had expired before suit brought. McCune had never granted a license, established a royalty, or manufactured and sold the patented device. There was testimony tending to prove the defendant infringed the patent. Thereupon the plaintiff offered to prove the utility and advantages of his patented device, that it had been appropriated and used by a number of other railroads, and that this use, being without his consent, prevented the establishment of a market value therefor. This offer the court rejected, and directed a verdict for the plaintiff for nominal damages. Whereupon the plaintiff sued out this writ and assigned for error the rejection of this testimony. It is clear to us the rejected testimony was in substance the same as that admitted in Suffolk Co. v. Hayden, 70 U. S. 318, 18 L. Ed. 76. There "no sales had been made of the patent right by the plaintiff or of licenses for the use of it, so as to establish a patent or license fee as a criterion by which to ascertain the measure of damages." The court below admitted evidence as to the uses and advantages of this improvement over previous methods of cleaning cotton. In affirming this action Justice Nelson said:

"There being no established patent or license fee in the case, in order to get at a fair measure of damages, or even an approximation to it, general evidence must necessarily be resorted to. And what evidence could be more appropriate and pertinent than that of the utility and advantage of the invention over the old modes or devices that have been used for working out similar results? With a knowledge of these benefits to the persons who have used the invention, and the extent of the use by the infringer, a jury will be in possession of material and controlling facts that may enable them. In the exercise of a sound judgment, to ascertain the damages, or, in other words. the loss to the patentee or owner by the piracy, instead of the purchase, of the use of the invention."

The statute of July 8, 1870 (Rev. St. § 4919 [U. S. Comp. St. 1901, p. 3394]), made no change in the rule of damages in actions at law thus established. In Birdsall v. Coolidge, 93 U. S. 69, 23 L. Ed. 802, where Suffolk Co. v. Hayden, supra, was cited with approval, Justice Clifford, referring to the act of 1870 says:

"Where the suit is at law, the measure of damages remains unchanged to the present time; the rule still being that the verdict of the jury must be for the actual damages sustained by the plaintiff."

In Root v. Railway Co., 105 U. S. 198, 26 L. Ed. 975, Justice Matthews made an exhaustive review of the patent statutes and decisions and cited Suffolk Co. v. Hayden as deciding that “in case where there is no established patent or license fee in the case, or even an approxi mation to it, general evidence must necessarily be resorted to"; and in Tilghman v. Proctor, 125 U. S. 143, 8 Sup. Ct. 894, 31 L. Ed. 661, it was again cited, in a full review of the patent cases bearing on damages, for the proposition that license fees and royalties are generally, "though not always, taken as the measure of damages."

It will thus be seen that Suffolk Co. v. Hayden has been approvingly cited and considered as authority for the principle, therein enunciated. that, in the absence of license fee or royalty, other proof can in an action at law be resorted to, to show the damage done to the owner of the patent. The law thus announced is conclusive of the case before us, unless Suffolk Co. v. Hayden was overruled by the Supreme Court in Coupe v. Royer, 155 U. S. 567, 15 Sup. Ct. 199, 39 L. Ed. 263. Assuredly the case is not overruled by name, and the question there involved and decided does not require a reversal by implication. In that case, which was an action at law, the court below had held "that whatever value has been received by the defendants through the use of this invention, so much has been taken from the plaintiffs, and they are entitled to have it restored to them." The Supreme Court, however, after stating the rule in equity was that the gains and profits of the infringer could be recovered, says:

"At law the plaintiff is entitled to recover, as damages, compensation for the pecuniary loss he has suffered from infringement, without regard to the question whether the defendant has gained or lost by his unlawful acts; the measure of recovery in such cases being, not what the defendant has gained, but what plaintiff has lost."

It was accordingly said:

"It is evident, therefore, that the learned judge applied the wrong standard in instructing the jury that they should find what the defendants might be shown to have gained from the use of the patented invention."

It will thus be seen the court below had followed in an action at law the rule of damages applicable only in a case in equity. The Supreme Court reversed on that question. It made no change in the established rule in equity cases for it expressly approved Tilghman v. Proctor. It announced no purpose to change or modify the rule in law cases, and therefore in them Suffolk Co. v. Hayden stands as the settled rule of damages.

Stress is laid, however, upon the extract from the opinion that:

"The evidence disclosing the existence of no license fee, no impairment of the plaintiff's market, in short, no damages of any kind, we think the court should have instructed the jury, if they found for the plaintiffs at all, to find nominal damages only."

We cannot regard this language as at variance with the rule, laid down in the Suffolk Case, that, in the absence of license and royalty fees, other evidence may be received. Indeed, it seems to us it is a recognition of the doctrine of that case, that other evidence may be resorted to in the absence of established royalty and license fees. And that this is the case is shown by the syllabus, which summarizes the decision in the language:

"In an action at law,

when the evidence discloses the existence of no license fee, no impairment of the plaintiff's market, no damages of any kind, the jury should be instructed, if they find for the plaintiff, to find nominal damages only."

Holding, then, as we do, that Suffolk Co. v. Hayden is unreversed and unqualified by Coupe v. Royer, it follows the court below erred, its judgment must be reversed, and the case remanded, with directions to grant a new trial.

RUMFORD CHEMICAL WORKS v. HYGIENIC CHEMICAL CO.

(Circuit Court of Appeals, Third Circuit. April 26, 1907.)

No. 18.

PATENTS-SUIT FOR INFRINGEMENT EVIDence.

Evidence in a suit for infringement of a patent held insufficient to show that the defendant was privy to a prior suit brought by complainant against others so as to render a deposition taken therein admissible against defendant.

Appeal from the Circuit Court of the United States for the District of New Jersey.

For opinion below, see 148 Fed. 862.

Philip Mauro and C. A. L. Massie, for appellant.

Whitridge, Butler & Rice (Willard Parker Butler and Edwin T. Rice, of counsel), for appellee.

Before DALLAS, GRAY, and BUFFINGTON, Circuit Judges.

BUFFINGTON, Circuit Judge. This is an appeal from a decree entered by the Circuit Court for the District of New Jersey dismissing, for noninfringement, a bill in equity filed by the Rumford Chemical

154 F.-5

Works which charged the Hygienic Chemical Company of New Jersey with infringement of a patent. The court below held there was no proof of infringement, and there is no error in its so holding, if the testimony of one Clotworthy was rightfully excluded. This excluded deposition of Clotworthy, now deceased, was taken in a suit in the Circuit Court for the Southern District of New York (125 Fed. 231 and 134 Fed. 385, 67 C. C. A. 367), wherein the Rumford Chemical Works, the present appellant, was complainant, and the New York Baking Powder Company et al., respondents. It is alleged the respondent in the present case aided in, and contributed to, the defense of that case. On that point, however, the proofs fail. There is no proof that the present respondent, the Hygienic Chemical Cornpany of New Jersey contributed to the expense of the New York suit or bore the relation of privy or party to that litigation. While the Hygienic Chemical Company of New York did contribute to the defense, and one Heller, who was President of both companies, was a witness in that case, there is no sufficient proof to connect the present respondent with the defense of that case. We are therefore of opinion the court below rightly excluded Clotworthy's testimony. The decree of the court is affirmed.

HOGAN v. WESTMORELAND SPECIALTY CO. et al.

(Circuit Court of Appeals, Third Circuit. April 26, 1907.).

No. 12.

1. PATENTS-INVENTION-ADJUDICATION OF INVALIDITY ON DEMURRER. A patent should be adjudged void on demurrer for lack of patentable invention apparent on its face only in exceptional cases, where the question is free from doubt.

2. SAME-DREDGE FOR SALT OR PEPPER.

The Hogan patent, No. 752,903, for a dredge for salt or pepper, is not so manifestly devoid of invention on its face as to warrant its being de clared void on demurrer to a bill for its infringement.

Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

For opinion below, see 145 Fed. 199.

E. M. Marble, for appellant.

Howard P. Denison and William A. Jones, for appellees.

Before GRAY and BUFFINGTON, Circuit Judges, and LANNING, District Judge.

BUFFINGTON, Circuit Judge. The court below sustained a demurrer to the bill on the ground the patent was on its face void for lack of patentable novelty. While such decree may be entered where a case is clear from doubt, we are of opinion the present was not one of that character. It resembles the cases of Caldwell v. Powell, 73 Fed. 488, 19 C. C. A. 592, and Chinnock v. Paterson, 112 Fed. 531. 50 C. C. A. 384. Following our decisions in those cases, we here

hold the demurrer should be overruled, and the questions involved decided on final hearing.

The decree of the lower court is therefore reversed, and the case remanded to the Circuit Court, with instruction to allow the appellees time within which to answer.

SHAW STOCKING CO. v. WEIERMAN & SARFERT.

(Circuit Court, E. D. Pennsylvania. June 6, 1907.)

No. 10, October Session, 1904.

PATENTS VALIDITY AND INFRINGEMENT STOCKING.

The Shaw patent, No. 460,037, for an improved stocking and method of making the same, the product being a split-foot seamless stocking having the top and bottom of the foot knit of different yarns and the edges of the parts joined by interlooping stiches, was not anticipated, and discloses novelty and patentable invention; also held infringed.

In Equity. Suit for infringement of letters patent No. 460,037, for an improved stocking and method of making the same, granted to B. F. Shaw September 22, 1891. On final hearing.

A. D. Salinger and W. K. Richardson, for complainant.
Henry N. Paul, Jr., and Joseph C. Fraley, for defendants.

1

ARCHBALD, District Judge. The patent in suit is for a stocking of a certain designated structure, produced, as it is said, by a novel method of knitting; the claim which is relied on being as follows: "2. A stocking having the top or upper part of its foot composed of one yarn or set of yarns and the bottom or sole part of the foot composed of another and distinct yarn or set of yarns, the said upper and sole parts being united in the form of a tube by the reciprocal interloopment of the loops of the opposed edges of said upper and sole at the sides of the foot, substantially as described."

The usual defenses are made that the device has been anticipated and that it is not infringed. It is also suggested that there is nothing patentably inventive in it, but apparently not with the same confidence. Among the things to be desired in a stocking is that it shall be, seamless, so as to avoid a ridge or wale to press upon and chafe the foot. This is easy to arrange by hand, but no machine has yet been devised to do so; the best that can be accomplished being to reduce the seam to a minimum. Machine-made stockings, therefore, are either knit in a flat web, the edges of which are afterwards sewed or crocheted together their full length; or in a tube with pouches or pockets at proper distances for heels and toes, the tube being cut into lengths and sewed in various ways; or, sometimes, as in the "English cut" stocking, there is a straight tube, without more, reliance being had for the heels and toes on the way it is cut and sewed. The advantage of a flat web is that it can be shaped to conform to the leg or foot, and the finest grade of imported German or French foot stock* Specially assigned.