the box under construction. And, by keeping the paste heated, it will become partly 'set' upon that side of the paper to which it is applied, and will not affect the face of the paper, and the strawboard of the box will absorb the moisture."

Claim 2, under which the infringement by defendants' devices is averred to fall, is as follows:

"The combination of the table-top, A, paper roll supporting frame, paste box, F, and adjustable scraper, k, with guide rolls and block, e, adapted to revolve, substantially as and for the purposes described."

I think I am precluded, by the decision of Judge Blodgett, from inquiring now into the validity of complainant's patent. Some new testimony, it is true, has been introduced, tending to show that some of the prior devices under review by Judge Blodgett, but regarded by him as impracticable, were in fact practicable and operative. But, in the conclusion to which I have come upon another branch of this case, I prefer not to pass upon the effect or conclusiveness of this new evidence.

If, in fact, the complainant's patent made practicable that which was previously impracticable, it was by virtue of that feature which kept the strip of paper, after passing through the paste box, away from the table, and in the atmosphere, until the paper wet with the paste was just sufficiently tempered to be laid smoothly upon the box under construction. Possibly, the deflections of the paper, under tension, first one way, and then another, over the several rollers of the complainant's machine, had much to do with this tempering. This feature of the complainant's device is in the nature of a discovery, and of the adaptation of mechanical means to make the discovery operative. The discovery that paper dampened with paste ought first to remain a certain space of time in the atmosphere, before being laid upon the box, is doubtless valuable, but is not patentable. Only the mechanical means used to adapt this discovery to actual use can be the subject of a patent. Neither can complainant's claim be so extended as to cover all kinds of mechanical means which have the effect of keeping the paper free from the table from the time it leaves the paste box until it reaches the box under construction. Those means pointed out in the complainant's patent are his property, and those only. Any one else is entitled to the benefit of the discovery, provided he does not use the complainant's means, or their equivalent. I cannot find that either of the devices under consideration employ the specific means used by the complainant to attain this end. They do not use the alternate deflections of the strip, obtained by the interposition of rollers or rods at intervals between the paste box and the construction frame; and they do not support the strip in mid-air, after the manner of complainant's device. Indeed, unless the complainant is entitled to every mechanical means that will make his discovery practicable,-which, in effect, would be a patent upon his discovery,-the defendants' devices are free from the charge of being an infringement. The bills will therefore be dismissed.

THOMSON-HOUSTON ELECTRIC CO. v. ELMIRA & H. RY. CO.
(Circuit Court, N. D. New York. June 29, 1895.)

1. COSTS IN PATENT SUITS.

No. 6,130.

Costs will not be awarded to complainant, where some of the claims sued on are withdrawn at the argument, and others are adjudged not infringed, although the decree is in his favor as to others still.

2. PRACTICE IN PATENT SUITS-WITHDRAWING CLAIMS.

The practice of withdrawing, at the hearing, claims of doubtful validity, is to be encouraged, as it simplifies the issues, relieves the court and counsel of tedious and inconsequential investigation, and relieves the defendant from liability thereon, as completely as if they were declared invalid.

This was a bill in equity by the Thomson-Houston Electric Company against the Elmira & Horseheads Railway Company for alleged infringement of the Van Depoele patent, No. 424,695, for improvements in suspended switches and traveling contacts for electric railways. A decision on the merits was heretofore rendered. 71 Fed. 396. The question now is as to the matter of costs, and whether complainant should be permitted to withdraw certain claims. It arises upon the settlement of the decree.

Samuel A. Duncan and Frederic H. Betts, for complainant.
Wm. A. Jenner and Thomas B. Kerr, for defendant.

COXE, District Judge. As to costs. Four of the claims were withdrawn at the argument on intimation by the court that the question of invention as to them was exceedingly doubtful. The court decided, as to three others, that the defendant did not infringe. Fourteen claims are not included in the decree, presumably for the reason, as to some of them at least, that they are thought to be for the same invention as those which are included. The defendant has been put to the trouble and expense of defending all of these claims, those withdrawn and not infringed equally with the others. In these circumstances the rule in this circuit is well settled that the complainant is not entitled to costs. Adams v. Howard, 22 Blatchf. 47, 19 Fed. 317; Hayes v. Bickelhoupt, 21 Fed. 566; Yale & G. Manuf'g Co. v. North, 5 Blatchf. 455, Fed. Cas. No. 18,123; Steam Trap Co. v. Felthousen, 20 Fed. 633; Tyler v. Galloway, 20 Blatchf. 445, 12 Fed. 567; Edison Electric Light Co. v. Electric Engineering & Supply Co., 60 Fed. 401; Electrical Accumulator Co. v. Julien Electric Co., 38 Fed. 117; Campbell Printing-Press & Manuf'g Co. v. Eames Vacuum Brake Co., 44 Fed. 64; Ballard v. McCluskey, 58 Fed. 880.

The question of costs having been determined in favor of the defendant, the court can see no reason for entering upon a discussion and analysis of the claims not included in the decree. Cui bono? The course adopted by the complainant in withdrawing these claims has frequently been pursued in other cases in this circuit.

thought that this practice should be encouraged in this cause particularly. As the decree now stands the air is cleared and the issue very much simplified by the withdrawal of these claims. The court and counsel are relieved from a tedious and inconsequential investigation which in no event could place the defendant in any better position than it now is. The complainant does not recover costs and the defendant is relieved from all liability on account of the withdrawn claims as fully as if they were declared invalid by the court.

HARDWICK v. MASLAND et al.

(Circuit Court, E. D. Pennsylvania. December 26, 1895.)

No. 32.

1. PATENTS-INFRINGEMENT-Presumption FROM SUBSEQUent Patent.

The granting of a subsequent patent is not prima facie proof of a patentable difference, where the question is one of infringement, and the later patent is manifestly for a mere improvement on the earlier one.

2. SAME-INSPECTION AND COMPARISON BY THE COURT.

Where defendant denies infringement, and avers that the alleged in. fringing article was made under a later patent than that sued on, the court may, in a plain case, determine the question of infringement by inspection and comparison of the two patents.

8. SAME-CARPET FABRICS.

The Hardwick patent, No. 382,157, for a two-ply ingrain carpet fabric, having the weft threads divided into sets of five, of which three are in on ply and two in the other, is infringed by a fabric made according to the Acheson patent, No. 497,294.

This was a suit in equity by Harry Hardwick against Morris H. Masland and Frank E. Masland, trading as C. H. Masland & Sons, for alleged infringement of a patent for a carpet fabric.

Harding & Harding, for complainant.
Henry E. Everding, for respondents.

DALLAS, Circuit Judge. This is a suit upon letters patent No. 382,157, dated May 1, 1888, to Harry Hardwick, for "carpet fabric." The only claim involved is as follows:

"(1) A two-ply ingrain carpet fabric, having the weft threads divided into sets of five, of which three are in one-ply, and two in the other, all substantially as set forth."

The controversy as to infringement, which is the only one, is presented in an unusual, but not unprecedented, manner. The answer denies, in general terms, that the defendants have infringed, but specifically admits

"That they have manufactured a fabric according to the invention as set forth and described, or contained and patented, in and by the letters patent

No. 497,294, granted and issued to one Samuel J. Acheson, of Plainfield, N. J., under date of May 16, 1893, for an improvement in ingrain carpet fabrics."

If this specific admission conflicts with the general denial, the former controls and nullifies the latter. Hence two questions arise: (1) As matter of fact, does manufacture under the Acheson patent involve use of the invention covered by the first claim of the Hardwick patent? (2) As matter of law, may the court determine the preceding inquiry by its own unaided comparison of the two patents?

1. Comparative examination of the Acheson and the Hardwick patents makes it quite evident that the fabric described in the former embodies the invention covered by the first claim of the latter. the specification of the Hardwick patent it is stated:

In

"One object of my invention is to provide for greater variety than usual in the coloring of a two-ply ingrain carpet fabric, and another object is to attain this result without unduly increasing the expense of the fabric. I attain the first of these objects by increasing the number of weft or filling threads in the set from four to five; two threads of the set appearing in oneply, and three in the other ply. In the diagram, Fig. 1, W, R, O, D, and B, represent five weft or filling threads, colored, say, white, red, olive, drab, and black, respectively. *

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"One of the advantages of my invention is shown in Fig. 2; the pattern there illustrated having a groundwork of solid color, with figure containing a spot of ordinary ground of two colors, the effect of solid color being obtained by using an extra weft of the same color as one of the regular groundwefts of the fabric. Solid colors in the figure may, as will be evident, be obtained by using an extra weft thread of the same color as one of the regular figuring wefts. In Fig. 1 the sets of threads are separated by dotted lines, and it should be understood that the arrangement of threads in any set may be repeated any desired number of times in a pattern; the diagram simply showing different ways in which the threads can be combined, without any attempt being made to show the actual succession of threads in a definite pattern."

These extracts relate to, and make perfectly clear, that object of the Hardwick patent which is the subject of its first claim; and to its "second object," which is the subject of a claim not sued upon, no reference need be made. Neither is it necessary to recapitulate all that is contained in the Acheson patent, from which it appears that it, also, proposes "a two-ply ingrain carpet fabric, having the weft threads divided into sets of five, of which three are in one ply, and two in the other, substantially as set forth" in the Hardwick patent. It will suffice to mention that, in the Acheson specification, it is said, in describing one of the figures representative of his alleged in vention, that "each set comprises five wefts, whereof two are in the face ply, or weft plane, and three whereof are in the back ply, or weft plane." This language is substantially the same as that of the claim in suit. That it describes the same thing cannot be doubted.

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*

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2. The point more strenously urged on behalf of the defendants is that "the fact that defendants' fabric is patented is prima facie proof that it does not infringe complainant's patent," and that, therefore, it is not competent for the court, upon inspection of the patents alone, to adjudge infringement. This contention might be sustained in some cases, but it cannot be in this one. In this case, each of the two patents is not for a specific and distinct addition to the art as it existed before either of them was granted. The patent set up by the defendants is manifestly for an alleged improvement upon the Hardwick invention, the use of which it necessarily involves. Therefore the authorities cited by the learned counsel of the defendants are inapplicable; the precise question in this instance being, not whether the defendants' patent is invalid, but whether they, by reason of their ownership of that patent, can lawfully use the invention of Hardwick without his consent. And to this question both reason and authority call for a negative answer. Cantrell v. Wallick, 117 U. S. 689, 694, 6 Sup. Ct. 970.

The defendants' avowal that they have manufactured according to the Acheson patent challenges a comparison of that patent with the one in suit, and I am at a loss to perceive why that comparison may not, in so plain a case, be made by the court, unaided by experts. Their opinions would not be conclusive, and, if favorable to the defendants, could not prevail against the convincing testimony of the