est in the monopoly. It is insisted, inasmuch as it is alleged in the bill that the respondent has been granted by the complainants a license to manufacture lime-glass chimneys, that it is estopped to say that they may not maintain a joint bill against it for manufacturing lead-glass chimneys without a license. The respondent, if estopped at all, cannot be estopped beyond its license. It may be that Dithridge & Co. have acquired such an exclusive right in the patented invention, so far as relates to the manufacture of lime glass chimneys, that the patentee could not grant to the respondent a license to manufacture that sort of glass chimneys without his licensees joining in it. This concession, however, would by no means prove that Dithridge & Co. had an excļusive license for the manufacture of lead-glass chimneys. Dithridge & Co. are not shown by the bill to have acquired, either by assignment or license, any exclusive right to practice the invention in the manufac ture of lead-glass chimneys. I have carefully examined all the cases cited by complainants' counsel, and I find none which lend support to the complaint. The complaint being a joint one by two parties, one of whom has no interest, it follows that the demurrer must be sustained. When two or more plaintiffs unite in bringing a joint action and the facts stated do not show a joint cause of action in them, a demurrer will lie upon the ground that the complaint does not state facts sufficient to constitute a cause of action. (Harris v. Harris, 61 Ind., 117, on page 129.) The bill may be amended, if counsel is so advised, within twenty days, upon payment of all costs to and including the filing of the amended bill; otherwise, at the expiration of twenty days, the bill shall stand dismissed, with costs, but without prejudice.

[U. S. Circuit Court of Appeals-Third Cirenit.]

AMERICAN HEAT INSULATING Co., Limited, ET AL. v. JOHNSTON & CO., LIMITED.

Decided October 20, 1892.

61 O. G., 1793.

PATENTS FOR INVENTIONS-REISSUE-ENLARGEMENT OF CLAIMS.

Letters Patent No. 171,425, issued December 21, 1875, to John C. Reed, for a non-conducting covering for "boilers, steam, water, and other pipes," claimed a covering composed of layers or wrappings of paper saturated with adhesive material and compressed while being formed into tubular sections "of a thickness of one-half inch or more," substantially as described. A reissue of the patent-No. 8,752, granted June 10, 1879-omitted from the claims the quoted words. Held, that this was an enlargement of the claim, rendering the reissue invalid, and that this effect could not be avoided on the theory that a covering of less than half an inch would not constitute the "thorough non-conductor" of the specification; for, while a less thickness might not be sufficient for boilers and steam-pipes, it manifestly would be for "water and other pipes." (48 Fed. Rep., 446, reversed.)

APPEAL from the Circuit Court of the United States for the Western District of Pennsylvania,

Bill by A. Johnston & Co., Limited, against the American Heat Insulating Company, Limited, and others, for infringement of reissued Letters Patent No. 8,752, granted June 10, 1879, to John C. Reed, upon original patent No. 171,425, issued to him December 21, 1875. The circuit court sustained the reissue and entered a decree in favor of complainant. (48 Fed. Rep., 446.) Defendant appealed. Reversed.

Mr. William L. Pierce for the appellants.

Mr. James I. Kay (W. Bakewell on the brief) for the appellee.

Before DALLAS, BUTLER, and GREEN, JJ.

BUTLER, J.:

The plaintiff sues as assignee of reissued Letters Patent No. 8,752, dated June 10, 1879, issued to John C. Reed, to recover for infringement. The invention is an improvement in non-conducting covers for steam-boilers, steam, water, and other pipes. The specifications say: The invention relates to that class of articles known as "boiler-coverings," or "non-conducting coverings for boilers, steam, water, and other pipes."

After describing the coverings and the process of manufacturing them, the claims are stated as follows:

1. A non-conducting covering for boilers, pipes, and other surfaces, composed of layers or wrappings of paper saturated or coated with suitable adhesive material and compressed while being formed into tubular sections, substantially as described. 2. As a new article of manufacture, a non-conducting covering for boilers, pipes, and other surfaces, composed of layers or wrappings of paper saturated or coated with suitable adhesive materials and compressed while being formed into tubular sections divided longitudinally, so as to be placed around the pipes or other surfaces to be covered, substantially as set forth.

The original specification and patent, issued December 21, 1875, stated the invention as follows:

My invention relates to that class of articles known as "boiler-coverings,” or "non-conducting coverings for boilers, steam, water, and other pipes ;" and it consists in a non-conducting covering composed of layers or wrappings of paper, preferably roofing-paper, saturated with adhesive material and compressed while being formed into tubular sections of one-half inch or more in thickness.

The claim was for—

a new article of manufacture, a non-conducting covering composed of layers or wrap pings of paper saturated with adhesive material and compressed while being formed into tubular sections of a thickness of one-half inch or more, substantially as shown and described.

A fuller statement of the facts is unnecessary to an understanding of our views of the case.

The validity of the reissue is attacked on the allegation that its claims are broader than that of the original. Judged in the light of its terms alone, this allegation is certainly true. The limitation respecting thickness of the coverings, contained in the original, is omitted. The complainants contend, however, that in the light of the proofs the claims in each are in effect the same, because, as he asserts, a covering of less

than half an inch would not constitute "a thorough non conductor," such as the specifications describe, and consequently that the restrictive language of the original patent was inoperative in construing its claims. This view the circuit court adopted. Is it sound? It seems clear that the patentee did not think so when he took either of the patents. When applying for the original he objected to the limitation, as the proofs show, but was required by the Office to insert it; and his object in taking the issue seems, mainly, to have been to get rid of it. It cannot well be doubted that if a covering below the limit had been manufac tured and used subsequently to the reissue he would have objected to it as an infringement. If for no other purpose than to avoid uncertainty, the Office acted wisely in requiring a definite statement of the thickness of coverings sought to be embraced. The language "a thorough non-conductor," employed in the specification, is indefinite. What is or is not such a conductor is matter of individual judgment, about which experts will disagree. If a bare half-inch is such, it would be difficult to affirm that a trifle less is not. As much would depend upon the fineness and firmness of the texture and solidity of the covering as upon the difference in thickness. The terms of the original claim as amended left nothing to doubt. The patentee's rejection of them subsequently seems to be an emphatic declaration that the language is important and that he will not be so limited. His present attitude does not, therefore, commend itself very strongly to favorable consideration. The Court says:

If we were shut up to a comparison of what appears on the face of the original patent and the face of the reissue, it might seem that the omission from the latter of the words "of a thickness of one-half inch or more" was a material change, and one prejudicial to the public; but the proofs bring us to a different conclusion. It is shown that a covering of less thickness than half an inch would lack the necessary non-conducting property. A half-inch covering is too thin to retain the heat and prevent radiation.

We have carefully looked through the proofs and cannot so understand them. They probably show that a less thickness would be insufficient for boilers and steam-pipes, to which, doubtless, the coverings are most commonly applied. The reissue, however, plainly embraces coverings for hot-water, hot-air, gas, and all other pipes to which their use may be beneficially applied, and we do not find any evidence to justify the conclusion that a thickness of less than half an inch is insuflicient for such purposes. Manifestly, we think, the thinner coverings are sufficient for such uses. If not, the burden was on the complainants to prove it. We attach no importance to the complainants' suggestion that coverings of less than half an inch could not be "conveniently packed for transportation," as described in the specification.

The decree of the circuit court must therefore be reversed and the case remanded, with directions to dismiss the bill.

[Supreme Court of the United States.]

ROOT v. THIRD AVENUE RAILROAD COMPANY.

Decided November 21, 1892.

61 O. G., 1947.

1. PATENT-INFRINGEMENT-PUBLIC USE-CABLE RAILWAYS.

Letters Patent No. 262,126, to Henry Root, August 1, 1882, for an improvement in the construction of cable railways, are void by reason of public use of the invention by the patentee for more than two years prior to the filing of his application.

2. WHAT IS A PUBLIC USE.

Where an inventor disclosed his invention to a company which adopted it and put it into complete and practical operation in and for the ordinary purposes of trade and commerce, and where it appears that the inventor regarded his invention as complete at the time of its adoption by such company, such use for more than two years before application for patent is a public use within section 4886, Revised Statutes, and not one of experiment.

3. CASES DIStinguished.

Elizabeth v. Pavement Co. (97. U. S., 126) distinguished and Smith & Griggs Mfg. Co. v. Sprague (C. D. 1887, 616; 123 U. S., 249) and Hall v. Macneale (C. D. 1883, 191; 23, O. G. 937; 107 U. S., 90) cited and commented on.

APPEAL from the Circuit Court of the United States for the Southern District of New York.

Mr. F. R. Coudert for the appellant.

Mr. Edmund Wetmore and Mr. Herbert Knight for the appellee.

Mr. Justice BLATCHFORD delivered the opinion of the Court. This is a suit in equity, brought July 12, 1886, in the Circuit Court of the United States for the Southern District of New York, by Henry Root against the Third Avenue Railroad Company, founded on the alleged infringement of Letters Patent No. 262,126, granted August 1, 1882, to the plaintiff, for an "improvement in the construction of cable railways," on an application filed September 3, 1881.

The specification of the patent says:

My invention relates to cable railways; and it consists in the employment of a connecting-tie for the rails and supports for the slot-irons, by which both are rigidly supported from the tie and united to each other. In combination with this construction I employ a substratum of concrete or equivalent material, which will set or solidify and unite the whole into a continuous rigid structure, no part of which is liable to be displaced from its relation to the other, and also provide a support for the roadway.

Previous to my invention all cable railways had been constructed of iron ribs of the form of the tube, set at suitable intervals, to which the slot iron or timber, as the case may be, was bolted, and the spaces between these ribs filled with wood to form a continuous tube. Outside and independent of this tube the rails were laid supported on short ties or other foundations, and were connected horizontally with the iron ribs by short bolts or rods, but were liable to settle by the undermining of their foundation without regard to the tube or the other rail of the track. This

would frequently occur by the renewal of the paving outside of the track, the introduction of house-connections with the main sewer, or other disturbances of the street. This settling would cause great inconvenience, as the gripping apparatus, which is carried by the rail through the medium of the car or dummy, must travel in a fixed position in the tube, thus making a frequent adjustment of the rails to the tube necessary. The space between the rails and sides of the tube was filled with sand, which could not be securely confined, as the joints in the tube were liable to open by settling, so as to require a frequent relaying of the paving or planking, and making the whole insecure and expensive to maintain. In my invention the whole forms a single rigid structure.

The following are the drawings of the patent, Figure 1 being a crosssection and Fig. 2 a perspective view:

A is the main tie, bent so as to embrace the tube, and it has fastened to the ends suitably-formed plates or chairs B, to which the rails G are fastened; or, if stringers are used, they may be fastened directly to the ties. The ties may be of various shapes; but in this case I have used old T-rail turned bottom up, with but one curve or bend, as this requires but one heat, and is thus cheaper.

C are upright supports for the slot-irons, having one end secured to the tie at points at cach side of the bend, sufficiently separated to form the necessary width for the tube,