reference to the scallop machine, was intended to be and was so constructed that it might, by retention of all of the projections shown, be employed for making the plain stitch, and, by omitting all but one of them, be used for forming the scallop stitch. This was precisely understood by Stedman. He says, "I think this particular drawing was made in this way to show that it might be adapted to both kinds of work." I conclude that the drawing exhibited to William H. Stedman before the fire, and the reproduction thereof made after that event, did in fact disclose the new scallop machine, as distinguished from the old plain machine; and, upon all the evidence, I am satisfied that the complainant's date of invention, in the sense of the law, should be taken to be as of a few days prior to June 16, 1887. This disposes of the allegation of anticipation by the Cope-Morley machine, for there is nothing in the case which would warrant the finding of a date for it earlier than in July or August of the same year.

With reference to the alleged Munsing anticipation, the defendants rely upon certain conduct of the complainant as concluding him upon the question of priority. The points raised by the defendants under this head are thus stated in their supplemental brief:

"Defendants now assert that this conduct of the complainant amounts to (1) an admission against interest; and (2) that this admission rises from the rank of evidence to the rank of an estoppel in pais."

It is not necessary to extend this opinion by attempting to follow the long and interesting arguments of counsel upon this matter over the whole field of patent-office procedure in interference cases in general, or through all the details of the particular proceeding which they have especially discussed. I will content myself with stating what seem to me to be the only facts which are essential to a proper understanding of the points presented: An interference was declared upon three applications, one of Munsing, one of the defendants, and one of the complainant. Upon the latter the patent in suit was granted, under the circumstances hereafter to appear. The issue in this interference was thus stated:

"In a machine substantially such as described, for forming a scalloped or shell-like border upon the edges of fabrics, the combination of the following co-operating parts or mechanism: A stitch-forming mechanism having a thread carrier and a looper co-operating to form stitches around the edge of the fabric, a finger located adjacent to the edge of the fabric around which the stitches are formed, and a feeding mechanism operating upon the fabric to advance the latter after a series of stitches have been completed by the stitch-forming mechanism, whereby a series of stitches are formed from a given point around the edge of the fabric while the latter is stationary, and the fabric is then fed a suitable distance to draw or expand the series of stitches, and cause them to assume a shell-like form; being claim 2 of Merrow's application, and including claim 6 of the application of Holton and Malsch, [the defendants,] and also including claim 11 of Munsing's application."

There was an adjudication against the defendants, founded upon the insufficiency of their preliminary statement, and thereafter the case proceeded as between Munsing and the complainant only. The following paper, signed by their respective attorneys, was filed:

"It is hereby stipulated and agreed by and between the parties hereto that the sworn statement of George D. Munsing, executed on the 20th day of September, 1889, and filed for record in this cause September 24, 1889, be received and accepted as evidence in his behalf on the issues of priority of invention now pending between the parties hereto, with the same force and effect as though regularly taken upon notice, and duly filed in this case; that no further or additional evidence shall be taken or received; that the case shall be taken up and decided at the earliest possible moment by the examiner of interferences without argument, and upon the evidence contained in said sworn statement."

The "sworn statement" referred to in the foregoing stipulation is as follows:

"Preliminary Statement. Case B.

"State of Minnesota, county of Hennepin-ss.: George D. Munsing, being duly sworn, deposes and says that he is a party to the interference declared by the commissioner of patents between the application of George D. Munsing, filed October 17, 1888, (serial No. 288,301,) for improvements in crocheting machines, and the application of Joseph M. Merrow and Thomas J. Holton & Frank Malsch; that he conceived the invention set forth in the declaration of interference on or about the 1st day of December, 1882; that on or about the 1st day of June, 1883, he made drawings of the invention; that on about the 1st day of June, 1883, he first explained the invention to others; that on or about the 15th day of July, 1883, he began work on a full-sized machine embodying such invention, which machine was completed about the 10th day of November, 1884; and that on or about the 10th day of November, 1884, he successfully operated said machine, and that he has since built other machines embodying said invention, and has used the same; that he has made no models, except full-sized working machines."

Upon this deposition the examiner of interferences gave judg ment in favor of Munsing, and thereupon the complainant struck out of his application the claim involved. The patent in suit was then issued to him, and he accepted a license from Munsing for the only distinctive subject-matter of the canceled claim,-"a finger located adjacent to the edge of the fabric around which the stitches are formed."

Recurring now to the defendants' statement of their position with reference to these proceedings, the first question is whether the complainant did, by his stipulation that Munsing's preliminary statement should be "received and accepted as evidence in his be half on the issues of priority of invention;" "that no further or additional evidence should be taken or received;" and that the case should be decided "without argument, and upon the evidence contained in said sworn statement,"-do that which amounted to an admission of the fact of priority of invention, in conflict with the position which he now claims to occupy. He certainly made no express admission; and as it seems to me, in what he did do, he meant to, and did, guard against any possible implication that an admission of any character was involved. Nothing could have been simpler than a direct acknowledgment by the complainant of the priority of Munsing, but he carefully avoided making such acknowledgment. The course pursued could have had no other object. That he abandoned the contest, and this under an agreement that upon adjudication in favor of Munsing-which was, of course, contemplated-the complainant would become Munsing's

licensee, is indisputable. But forbearance of litigation, though coupled with a compact of peace, does not necessarily imply an admission of the facts asserted by the party to whom concession is made, and in this instance, though the complainant "did have some apprehension at the time that Munsing might turn out to be the prior inventor," it nowhere appears that the complainant ever stated that such was the fact, or that he ever conducted himself in such manner as would justify an inference that it was; and the evidence is, to my mind, conclusive that he was induced to relinquish the interference proceedings by business considerations which outweighed, in his estimation, any advantage to be derived from pursuing them, even if their determination should ultimately be in his favor.

The defendants insist that the course pursued by the patent office in connection with this whole matter worked injustice to them; but they do not suggest what was done, if anything, which requires, or would entitle, this court to declare that the patent which was issued to the complainant is invalid. I do not understand that fraud upon the office is imputed to the complainant, and I perceive no ground upon which such an imputation, if made, could rest. The defendants disclaim any intention to assert that the preliminary statement of Munsing in the interference case should be received "as in itself a deposition in this suit," or "that the decision by the patent office has the effect per se of res adjudicata." The whole contention, therefore, seems to amount to this: That in the interference case the complainant did something which estops him from setting up a patent which, apart from this supposed operation of the doctrine of estoppel in pais, is at least prima faicie valid. That he did not, in advance of its issue, acknowledge the invalidity of his grant by admítting lack of priority in invention, has already been shown. What, then, did he do or say, or, in violation of any legal duty, abstain from doing or saying, by which he intentionally caused the defendants or the public to believe that his invention had been anticipated by Munsing; and what action, or abstention from action, on the part of the defendants, or of any other person or persons, was occasioned by such belief, if existent, and caused by the conduct of the complainant? He merely withdrew from contention in a litigated proceeding, and permitted it to be decided upon the sworn statement of the other party to it. This was all he did, and in this there certainly was nothing intended which, when related to the circumstances, was calculated to induce belief that the Munsing invention was anticipatory of his own; and I find nothing in the evidence to indicate that any person was misled by it, or took or refrained from taking any action in consequence of

The complainant's settlement of the interference proceeding affected no one but himself. It left his patent, subsequently issued, still open to attack on the ground of anticipation; but on that issue the burden rests upon him who assails it, and the defendants, who concede that the Munsing preliminary statement is not competent evidence of the truth of the facts stated in it, have wholly failed to discharge themselves of that burden.

The defense of noninfringement is based upon certain differences between corresponding parts of the feed mechanism of the defendants and of the complainant. The defendants' expert refers to and explains these differences as follows:

"In the complainant's machine there is a reciprocating feed dog, with a toothed or serrated upper surface to engage the cloth, which reciprocates, in the intervals between each stitch, horizontally, but does not engage in the fabric or cloth, but remains below it until it is lifted by a cam attached to a wheel, which rotates but once during several rotations of the main shaft of the machine, and an equal number of reciprocations horizontally of the feed dog. So there are several ineffectual and useless reciprocations of the feed dog horizontally between a single and usefully operative reciprocation thereof in engagement with the fabric. In the exhibit marked 'Complainant's Exhibit Defendants' Infringing Machine,' there is no horizontal reciprocation of the feed dog by a cam on the main shaft of the machine, but all of the functions of the feed dog, both of horizontal reciprocation and vertical motion to engage and disengage it from the fabric, are performed by cams, or a cam and roller, turning upon a wheel propelled by a pinion and spur wheel, with but one rotation during the formation of the cluster of loops which form a single scallop. The action of this cam is continuous, whereas the action of the cam upon the complainant's machine is intermittent, and there are no useless reciprocations of the feed dog in the Exhibit Defendants' Infringing Machine. 58 Q. Are these differences material ones? A. They are, to my mind, material. 59 Q. Why? A. I consider them material because they are less complicated, involve less wear of parts, and fewer parts, avoid the quick action of a cam, whose whole work occurs during a small portion of its revolution, and permit of a convenient and compact form of machine."

With this statement accepted, it would not necessarily follow that the two feeding mechanisms are substantially different, in the sense of the patent law. Nor is the true test of the materiality of differences that which is suggested by this witness in his answer just quoted, for it cannot benefit the defendants that their mode of operating the feed dog is better than the complainant's, as that cannot give them any right to make, use, or vend what is patented to another. The avoidance of useless horizontal reciprocations of the feed dog, which seems to be the principal advantage claimed to be secured by the defendants' arrangement, does not affect its performance of the function assigned it in both machines, -of advancing the fabric only after a group of stitches has been formed. The cams and other driving or lifting parts of the respective machines, separately considered, are not identical; but this is unimportant, because they have the same purpose in the combination, to intermittingly advance the fabric,-and this purpose they accomplish in substantially the same manner. With regard to the combination, which is comprised in both machines, the corresponding parts of the mechanism, though not, individually, exactly the same, are equivalents. Marsh v. Seymour, 97 U. S. 359; National Cash-Register Co. v. American Cash-Register Co., 3 U. S. App. 357, 3 C. C. A. 559, 53 Fed. 367. Moreover, the complainant is the person who first succeeded in producing an automatic machine for forming a border of the kind in question upon fabrics, and therefore he is entitled to a liberal construction of the claims of his patent. "He was not a mere improver upon a prior machine capable of accomplishing the same general results,

in which case his claims would properly receive a narrower interpretation." Sewing-Mach. Co. v. Lancaster, 129 U. S. 273, 9 Sup. Ct. 299.

Counsel have united in the statement that as to the defendants Wallace H. Jenkins, John Grist, and John Grist, Jr., who compose the Belmont Knitting Mills, Limited, the bill should be dismissed. Therefore, as to those defendants, a decree will be entered accordingly; but against the remaining defendants a decree in favor of the complainant, in the usual form, may be prepared and submitted.

LEWIS v. PENNSYLVANIA STEEL CO.

(Circuit Court of Appeals, Third Circuit. November 21, 1893.)

No. 19.

1. PATENTS-INFRINGEMENT-ROLLING MILLS.

A patent for a turn-over device for use in rolling mills, consisting of a combination, with a set of stationary abutments, of laterally adjustable carriages, having a tilting support arranged transversely to the same, and provided on their under sides with a bulge or projection, adapted to be struck by the abutments when the carriage is shifted, for the purpose of turning over the rail, being a mere improvement in the art, the claim of which is by its terms confined to the particular construction operating in the defined way, is not infringed by a turn-over device, mounted on vertically moving tables, without tilting support, the rail being sustained entirely by the table rolls, the grooves of which act as a stop to prevent lateral movement, and in which the turn-over finger is positively controlled and actuated at all times through an intermediary sway bar. 55 Fed. 877, affirmed.

2. SAME.

The fourth claim of patent No. 247,665, for a turn-over device for continuous rolling mills, construed, and held not to be infringed.

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

55

In Equity. Suit by Christopher Lewis against the Pennsylvania' Steel Company for infringement of a patent. Bill dismissed. Fed. 877. Complainant appeals. Affirmed.

Henry N. Paul, Jr., for appellant.

Philip T. Dodge, for appellee.

Before ACHESON, Circuit Judge, and BUTLER and GREEN, District Judges.

The

ACHESON, Circuit Judge. This was a suit in equity, brought by Christopher Lewis, here the appellant, against the Pennsylvania Steel Company, for the alleged infringement of letters patent No. 247,665, dated September 27, 1881, granted to the plaintiff for an improvement in mills for rolling rails, girders, plates, etc. invention described in the specification contemplates the taking of the bloom from the furnace, and entering it between the first pair of rolls, whence it proceeds on through the machine without handling, and comes out a perfect rail. The improvement consists in a series of two-high rolls, arranged alongside of each other, v.59F.no.1-9