olds'. The device is before us, and it is substantially identical with that of Reynolds. Of course if the witness is accurate the respondent's contention is sustained. This evidence is somewhat startling; and should not be accepted lightly. If a valuable patent might be overthrown in this manner by the testimony of an expert, without careful inquiry into and virtual demonstration of its correctness, the rights of patentees would rest upon the testimony of such witnesses rather than the judgment of the court. Of course, as before remarked, if Noble is entirely accurate there is no escape from his conclusion. We cannot, however, accept his statements, notwithstanding their positiveness. We do not mean to cast doubt on his honesty; but it seems manifest from the face of Lampe's patent that it does not describe such a device as that produced; that the witness has not adhered to its terms, either in letter or spirit, but has introduced the suggestions of his own mind. He is a trained mechanic and an intelligent expert, familiar with the art involved. It is difficult, at least, to believe that he was not aware of Reynolds' device, notwithstanding what he says on the subject. It cannot well be supposed that he was not abreast with the progress of this art; and being so it was quite natural that in duplicating Lampe's device he should unite the parts so as to make them co-operate and work as he knew they could be made to do. It is clear that if he did not follow Reynolds with knowledge of what Reynolds had done, he invented the parts which he has added to Lampe's device. Reynolds' lever, an essential element to his device, as well as other parts of his combination, shown in Noble's model, are not suggested in Lampe's patent; nor is any union, or means of uniting the duplications suggested. Of course it may justly be said that Lampe intended them to be united; bút he suggests no way of doing it. In the light of our present knowledge on the subject it is easy to see how it should be done; and it was this knowledge, we believe, that guided Noble, and induced him to follow Reynolds. If he had made his model before the date of Reynolds' patent it is improbable that the parts would be united as they are, and made to co-operate as they do. Skilled mechanics and inventors were then industriously working on the problem: how can the control of elevators be rendered more perfect? It was very imperfect, and the use of elevators was consequently unsafe; accidents were common and sometimes very serious. The most important step in solving the problem was that taken by Reynolds when he introduced the second cable and so connected it with the first that the two should combine, co-operate with, and counterbalance each other, in action, as he describes. Lampe's patent had been before the public for years, and yet no one of the numerous inventors engaged on the problem saw in it what Mr. Noble thinks he found.

What has been said applies as well to the subject of patentable novelty, as to priority.

It is urged, however, that the patent is invalidated by Reynolds' alleged arrangement with Smith; that he induced Smith to delay

application for patent No. 334,907 until he, Reynolds, had obtained his. A careful examination of the evidence has satisfied us that Smith's invention did not anticipate Reynolds' device, described in No. 334,907. He and Reynolds had conferences on the subject of their work, as both testify; that much is certain. Precisely what was said or done is uncertain. That Smith had sketched something seems clear, but what it was no one can tell; the sketches were evidently considered unimportant, for they were not even preserved. He has some ideas on this subject, but he certainly had not at the time perfected such an invention as is claimed. Reynolds' conduct was not an admission that he had. It may be that the latter feared litigation and delay in the patent office, because of something Smith said, and for this reason wanted Smith to delay his application. If he induced such delay it did not invalidate his patent. He was the original inventor and was lawfully entitled to the patent. His conduct was not fraudulent either as respects Smith or the public.

Patent No. 456,122 is for a subordinate improvement in the device covered by No. 317,202. Its novelty consists, substantially, in attaching the nonoperating ends of the cables to the sides of the car, instead of the movable weights described in the former patent. This is anticipated by Smith's patent No. 334,907. The complainant seeks to avoid this patent on the ground that Reynolds was the prior inventor of what it covers. The evidence does not, however, sustain the position. Smith's patent is prior in date, and we do not find anything sufficient to overcome the case thus established. deed Reynolds' participation in the application for this patent, and taking an interest under it, would seem to constitute a conclusive acknowledgment of Smith's priority. He thus confessed that Smith was and represented to be, the original inventor, with full knowledge of all the circumstances. Whether his conduct in this respect constituted an estoppel need not be considered.

In

Whether Reynolds' first patent might have been construed to cover the novelty embraced by the second, (as the respondent's expert testifies it should be,) we need not consider. The patentee as well as his assignee, did not so construe it; but took No. 456,122 to secure what the latter covers; and have relied upon this patent for that purpose, in this litigation. Furthermore Reynolds at least is not in a position to deny the validity of Smith's patent. His participation in obtaining it, above referred to, stands in his way. Whether his assignee is affected by this conduct need not be considered.

Patent No. 458,917 cannot be sustained. We agree with the circuit court that it covers nothing new. Belt tighteners, or tension devices, of similar character, were old, and there is nothing in Reynolds' application of this old device that shows invention.

We

Infringement is charged of the first claim of No. 317,202. have seen what this claim is; and we find it to be infringed by the respondent's device. The language of the claim should be construed with reasonable liberality. The respondent's expert Mr. Hunter, as

we have seen, construed it so broadly as to include all embraced in patent 456,122, and consequently held it to anticipate that patent. We think it should justly be construed to cover the respondent's device, except as respects the attachment of the nonoperating ends of the cable to the car. As we have seen, Reynolds and his assignee so construed it as to exclude this arrangement; and they should be held to that construction. With this exception we regard the difference between the respondent's device and that of the complainant, as immaterial; they are seeming rather than actual; whether so made to evade Reynolds' patent need not be considered.

The decree must therefore be modified to the extent indicated and the record remanded to the circuit court for further proceedings.

ROSE v. HIRSH et al.

(Circuit Court, E. D. Pennsylvania. January 24, 1896.)

No. 58.

1. EQUITY PLEADING-Patent InfringemENT SUITS-MULTIFARIOUSNESS. A single suit upon two patents is not multifarious, when the subject-matters are capable of conjoint use, and are in fact conjointly used.

2 PATENTS-INVENTION.

There is no invention in applying an old form of metal tube to the new use of forming the supporting rod or stick of an umbrella or parasol. 8. SAME-INFRINGEMENT.

A claim for an umbrella case consisting of a slitted leather tube having an internal socket at its lower end to receive the projecting end of the umbrella stick, and a ferrule applied to the lower end of the case, is not infringed by a case which has no internal socket, but in which the desired result of filling out the lower end of the case so as to give it the appearance of a walking stick is attained by placing a "false tip" upon the projecting end of the umbrella stick.

4 SAME-UMBRELLA CASES.

The Rose patent, No. 504,944, for improvements in umbrella sticks, is void as to both its claims, for want of invention.

5. SAME.

The Rose patent, No. 504,945, for an improvement in umbrella cases, construed, and held not infringed.

This was a bill in equity by John Rose against Hirsh & Bros. for alleged infringement of two patents for improvements in umbrellas. Henry E. Everding, for complainant. Strawbridge & Taylor, for defendants.

DALLAS, Circuit Judge. The defendants are charged with infringement of two patents which were issued to the plaintiff upon September 12, 1893. Their subject-matters are capable of conjoint use, and are in fact conjointly used. Therefore this single suit for the alleged infringement of both of them is not multifarious, but it is necessary to consider them separately.

v.71F.no.6-56

1. No. 504,944 contains four claims. Those involved in this case are as follows:

"(1) A tubular metal stick for umbrellas or parasols, said stick being drawn down near one end so that the tubular end portion of the stick is reduced in diameter and increased in thickness, as compared with the body of the stick, substantially as specified.

"(2) The combination of the tubular metal stick, drawn down near one end so that the tubular end portion of the stick is of less diameter than the body, with the notch applied to said reduced tubular portion of the stick, and the ribs hung to the notch and fitted snugly against the enlarged body of the stick, substantially as specified."

It may, upon the proofs, be confidently said that metal tubes were old, that drawing them down at one end was not new, and that the ordinary and probably inevitable result of that operation has always been to reduce their diameter, and incidentally to thicken the walls of the reduced portion. Consequently, if there was patentable novelty in the device of the first claim, it must have been due to the use or adaptation of such a tube for an umbrella stick. Irrespective of the several patents which have been adduced by the defendants, which it is not necessary to consider, it may be assumed, without so deciding, that the specific metal tubes described in the patent were first applied to umbrellas or parasols by the patentee. But conceding that the idea of so applying them was his, and was a good one, still, in carrying it out, he invented nothing. All that he did was to transfer a well-known thing from other branches of industry. It is true that those other industries are not analogous to umbrella making, but it is also true that, at least as to some of the instances testified to, metallic tubes were commercially well known which were substantially identical with those of the patent, and which required not even the exercise of mechanical ingenuity to adapt them to the new use. This claim, being essentially for a form of metal tube which was old, is not aided by calling that tube a "stick," and by suggesting its employment as the supporting rod of an umbrella or parasol. The second claim falls with the first. The complainant's brief admits that, "if claim 1 is invalid, then claim 2, of necessity, is void."

2. Of patent No. 504,945, the only claim in question is as follows: "(1) The within-described umbrella case, the same consisting of a tube of leather slitted and provided with fastening devices at the upper end, and having at the lower end an internal socket extending throughout the length of the projecting end of the umbrella stick, and fitting snugly thereto, and a ferrule applied to the lower end of said stick, substantially as specified."

Umbrella cases, consisting of a tube of leather slitted and provided with fastenings at the upper end, were unquestionably old. The only novel feature of the device claimed is its internal socket; and this, without according to the claim a breadth of construction to which it is not entitled, the defendants cannot be found to have appropriated. The statement that there is "a ferrule applied to the lower end of said stick," is, in the absence of explanation, meaningless. Upon the argument the learned counsel for the complainant

suggested that there should be substituted for the language used, the words, "and, in addition to a ferrule on the stick, a ferrule on the case." Nothing, however, respecting an umbrella stick, can thus be imported into a claim for an umbrella case. Still, I do think it fair, and perhaps not inadmissible, to substitute for the word. "stick" the word "case"; and the phrase will accordingly be so read, in order to render it, with the least possible change, consistent with the context, and expressive of the manifest intent of the draftsman. We have, then, a socket at the lower end of the case, which is described as being internal, and extending throughout the length of the projecting end of the umbrella stick, and fitting snugly thereto, and as having a ferrule applied to the lower end of said case. Such is the complainant's device. The respondents' contrivance is different, in that it does not at all consist of a socket within the case. They place a "false tip" upon the projecting end of their umbrella stick, and by so doing they render any socket within the case unnecessary. The plaintiff's socket in the case, and the defendants' false tip to the umbrella, attain the same end. They both cause the lower end of the case, when it is in use, to be completely filled, and so to have, as a whole, the desired appearance of a walking stick, but the means employed are not identical. The patented arrange ment provides for uniformity of outline where the diameter of the protruding end of the umbrella stick is less than that of the leather cover, but by the alleged infringement that result is accomplished by making the end of the stick of the umbrella itself so large as to fill a cover which is not provided with any socket whatever. In short, the defendants do not need the plaintiff's case. One of the old style answers their purpose, and they use no other. It is possible that, if false tips had never before been used, the defendants' resort to them might have justified the imputation that their employment amounted to nothing but a mere reversal of parts, and an attempt to avoid responsibility for infringement by changing the form, while still adopting the principle, of a patented invention; but the evidence respecting the prior state of the art requires that Rose should be limited, as against these defendants, to the specific construction which he has described and claimed. False tips were well known long before his patent was issued, and it did not, and could not, confer upon him any right to prevent their use by any one, though they should be made of such size and shape as to conform them to the contour of an ordinary umbrella case. The bill is dismissed, with costs.