Roome, Hugh Dougherty, and William J. Craig, and as to them the appeal is dismissed for want of jurisdiction.

GRAY, J., was not present at the argument, and took no part in the decision.

(141 U. S. 437)

KNEELAND v. LUCE et al.

(November 2, 1891.)

REVIEW-MATTERS NOT APPARENT ON RECORDAPPEAL STIPULATIONS.

1. A decree rendered on an intervention filed after the foreclosure of a railroad mortgage, and directing the payment of interveners' claim for a vendor's lien, in the absence of the evidence on which it was based, must be affirmed, when the decree shows that the company purchased certain lands from interveners, and held them as part of its right of way, though no deeds were ever executed; that the vendor's lien was superior to the lien of the mortgage; and it further appears that the decree of foreclosure ordered the sale of all the company's right of way.

2. A stipulation of record that certain testimony, already taken and filed in a foreclosure suit, "may be used in any future litigation" touching the property, "with the same effect as though originally taken therein, each party to such future litigation reserving the right to take additional testimony," does not make such testimony available on appeal, when the record fails to show that any part of it was used on the hearing below.

3. The stipulation could not bind parties who came in as interveners after it was made, and who did not sign it.

Appeal from the circuit court of the United States for the district of Indiana.

Suit to foreclose a railroad mortgage. Intervention of Charles L. Luce and John T. Newton, asserting a lieu on part of the lands superior to that of the mortgage. Decree for payment of the claim. Sylvester H. Kneeland, the purchaser of the property, appeals. Affirmed.

R. G. Ingersoll and J. M. Butler, for appellant. Charles Pratt, for appellees.

BREWER, J. *This is an appeal from a decree in favor of Newton and Luce, as interveners in the foreclosure case of Central Trust Company of New York and others v. Toledo, Delphos & Burlington Railroad Company and others, entered in the circuit court of the United States for the district of Indiana; Kneeland, the appellant, being the purchaser at the foreclosure sale. The facts disclosed by the record, and by this record the case must be determined, are these: The foreclosure decree was entered on November 12, 1885. On January 8, 1886, interveners filed in the office of the clerk of the circuit court their claim, in the shape of a decree entered December 12, 1885, by the circuit court of the United States for the northern district of Ohio, in a case entitled Central Trust Company of New York and others v. Toledo, Delphos & Burlington Railroad Company and others, which decree finds that there is due to interveners the sum of eight thousand and twenty-eight dollars and ninety-six cents, for lands sold to the railroad company, and which amount thus found to be due is a lien upon the property mortgaged by the railroad company prior to that mortgage. This claim, with many others, was re

ferred to masters, who reported in favor of its allowance and priority, which report was approved by the court, and as decree entered accordingly, from which decree this appeal has been taken. It appears from the statements of counsel, and impliedly from the record, that the principal foreclosure proceedings were had in the Indiana court, but that ancillary proceedings were had in the circuit court of the United States for the northern district of Ohio, and in these ancillary proceedings the decree of December 12, 1885, was entered.

Without noticing other questions which were discussed by counsel, it is enough to say that this record is too meager for us to determine whether there was any error in this decree. The testimony taken before the masters is not preserved, nor do we find even the final report of the masters made March 10, 1887, and upon which the decree was entered. While two prior reports of the masters, made separately, are partially preserved in the record, yet in them is simply a reference to the claim of interveners, and a statement that it is based upon the decree rendered in the Ohio court. As the final report is omitted, we know not what showing of facts it contained; and as the testimony presented to the masters for consideration, and afterwards to the court, is not preserved, how can it be adjudged that there was any error in the decree? So far as respects the decree of December 12, 1885, in the Ohio court, it discloses a prima facie claim, at least, in the favor of the interveners; for, while it finds that no deed or deeds had been delivered, it also finds that the railroad company purchased and held the land under a contract set forth in paragraph 3 of the answer. But the answer is not in the record, nor that contract, so we know nothing of its terms, or what liabilities it cast upon the railroad company. The decree also finds that the property thus purchased and held by the railroad company is a part of that covered by the mortgage being foreclosed, and that such mortgage was a lien on the property, but a lien subordinate to the claim of interveners. And it further finds that the lands so purchased and held were a part of the right of way of the railroad company. As the final decree of foreclosure and sale entered in the Indiana court directed a sale of the entire right of way, these lands were apparently included in the property purchased by Kneeland. So far, then, as the facts are disclosed by this record, the ruling of the circuit court* was right in directing the payment of the balance due on the purchase of these lands.

Counsel for appellant, however, refer us to the records in other cases which have come to this court, and insist that by the facts appearing in them it is clear that the interveners were not entitled to priority. It is enough to say that those facts are not before us. It is true that in this record, after the entry of the final decree of foreclosure, of November 12, 1885, there is found this stipulation: "It is hereby stipulated that the testimony heretofore taken and filed in this cause, under the reference to A. J. Ricks, special mas

ter, may be used in any future litigation touching Toledo terminal property, with the same effect as though originally taken therein, each party to such future litiga tion reserving the right to take additional testimony if so advised; and the purchaser at foreclosure sale shall take subject to this provision, and shall be deemed to have assented thereto." But that stipulation does not bring into this record all the testimony referred to, and which, as counsel say, may be found in the other records. What part of such testimony was used in the hearing of this intervention is not disclosed, nor whether any additional testimony was taken. The stipulation only gives permission to use such testimony. But how do we know that any of it was used? But, further, it is signed by no one, and in terms names no one, and so could, of course, be binding only upon the parties to the record, and those who in fact assented to it. While Luce and Newton, the interveners, were named in the amended bill of complaint in the Indiana court as parties defendant, there is nothing to show that they were ever served with process, or ever appeared or answered. More than that, by the final decree of foreclosure, entered November 12, 1885, Luce and Newton, with others, were dismissed from the case as parties defendant. So, summing this up, there is nothing to show that Luce and Newton were ever in fact parties to the litigation in the Indiana court. It appears affirmatively that, if they ever were served with process or appeared, they were dismissed before this stipulation was entered into, and that they did not sign it. Hence it was not binding upon them, nor could it be invoked as against them by Kneeland, the purchaser. The case, then, is one of a claim apparently good, sustained by the decree of the trial court, and brought here for review without any of the testimony introduced in the trial court, and upon which its decree was based. Of course, on such a record no error can be adjudged. The decree is affirmed.

The Chief Justice, and BRADLEY and GRAY, JJ., did not hear the argument nor take part in the decision of this case. (141 U. S. 459)

MCCREARY v. PENNSYLVANIA CANAL CO. (November 9, 1891.)

PATENTS FOR INVENTIONS-DAMAGES FOR INFRINGE

MENT.

1. Letters patent No. 125,684, granted April 16, 1872, to Elijah and John McCreary, were for an invention which consisted in "coupling two boats together by means of a chain or rope passing around a steering-wheel on one boat, and around a system of sheaves or pulleys, and attached to the other boat for the purpose of steering said boats as well as of coupling them, and in centering said boats together and forming a universal joint between them by means of an overhanging guard or bumper on the stern of the forward boat, with a central notch therein, into which the projecting stem or cut-water of the rear boat fitted." Letters patent No. 129,844, granted July 23, 1872, to John McCreary, were for an improvement on the prior patent, which consisted in "substituting for the projecting cutwater and notch, described in said patent for centering the boats together and forming a uni

versal joint, a chain attached at both ends to one boat, and at its center to a central point on the adjacent end of the other boat." Held, that the only damages recoverable for infringement of the second patent are the profits accruing from the use of this particular improvement, and not such as arise from the use of the whole combination described in the patent.

2. In a suit for the infringement of such second patent alone, the device described in the prior patent, of which plaintiff has become the sole owner, must be considered, on the assessment of damages, as one of those which it was open to defendant to use instead of that described in the patent sued on; for to hold otherwise would assume that the prior patent was owned by plaintiff, was valid, and that defendant had infringed it, which are questions that cannot be raised on the assessment of damages for the infringement of the second patent.

5 Fed. Rep. 367, affirmed.

Appeal from the circuit court of the United States for the eastern district of Pennsylvania.

Bill in equity by John McCreary against the Pennsylvania Canal Company. There was a decree for plaintiff, on a master's report, for costs only, from which he ap-> peals. Judgment affirmed.

STATEMENT BY BROWN, J. This was a bill in equity for the infringement of letters patent No. 129.844, issued July 23, 1872, and reissued as No. 5,630, October 28, 1873, to the appellant, John McCreary, for an "improvement in coupling and steering apparatus." In the specification of the reissue the patentee stated that his invention related "to certain improvements in devices for steering canal-boats," etc., described in letters patent granted to Elijah and John McCreary, April 16, 1872, No. 125,684, by means of which two boats are coupled together, and navigated and steered as one boat by means of a single steering-wheel. The invention described in said letters patent consisted principally "in coupling two boats together by means of a chain or rope passing around a steering-wheel on one boat, and around a system of sheaves or pulleys, and attached to the other boat, for the purposes of steering said boats as well as of coupling them; and in centering said boats together and forming a universal joint between them by means of an overhanging guard or bumper on the stern of the forward boat, with a central notch therein, into which the projecting stem or cut-water of the rear boat fitted." " My improvements," says the patentee, "consist-First, in coupling and centering said boats together and forming a universal joint between them by means of a chain, the two ends of which are fastened to opposite points on the stern of the forward boat, and the central part to the stem or cut-water or some central point on the bow of the rear boat, so as to hold its stem or cut-water against the overhanging guard or bumper of said forward boat, said chain serving to center the boats without the necessity of any notch in the overhanging guard for the stem of the rear boat to fit into, and at the same time coupling and holding the boats together and forming a universal joint between them; second, in attaching the ends of the coupling and steering chains to the boats by means of crow-foot claw-hooks, so as to render the chains

460

nection, that complainant was not entitled, upon the proois, to recover from the defendant as its profits from the use of his "improvement" the entire savings in freight accruing from the shipping of coal in the infringing coupled boats in place of single boats, but was restricted to such as were attributable solely to the improvement.

There is no doubt of the general principle that in estimating the profits the defendant has made by the use of the plaintiff's device, where such device is a mere improvement upon what was known before, and was open to the defendant to use, the plaintiff is limited to such profits as have arisen from the use of the improvement over what the defendant might have made by the use of that or other devices without such improvements. This is a familiar doctrine, announced by this court in a number of cases. Seymour v. McCormick, 16 How. 480; Mowry v. Whitney, 14 Wall. 620; Littlefield v. Perry, 21 Wall. 205; Elizabeth v. Pavement Co., 97 U. S. 126; Garretson v. Clark, 111 U. S. 120, 4 Sup. Ct. Rep. 291.

The important question in this connection is whether, in considering what was already known, and open to the defendant to use, we are to include the device shown in patent numbered 125,684, issued to Elijah and John McCreary about three months before the patent in suit. There were other methods of connecting vessels in train, such as were disclosed in the British patent to Taylor of 1846; the British patent to Bourne *of 1857; the patent to McCreary of 1860, constructed and put into use upon a coupled boat called "The Experiment;" the British patent to Bartholomew of 1862; and the American patent to Stackpole of 1866; but none of these seem to have been adapted to defendant's use with any advantage over single boats, because, as the master found, "their construction was such that a rudder could not be applied to the forward boat." He found, further, that "these prior boats were in other respects inferior to the machines of complainant's patent, but their fatal defect for defendant's purposes was this inability to apply a rudder to the forward boat, which was therefore unmanageable when separated from its mate.'

There is nothing, however, to show that the device described in the patent of April 16, 1872, to the McCrearys was not an operative device, and, if it were open to the defendant to use, the plaintiff, in this action, would be limited in his recovery to the profits which the defendant made by the use of the improvement described in the second patent over the device shown in the earlier patent. This improvement, as before stated, consisted principally in substituting for the projecting cut-water and notch described in the earlier patent a chain attached at both ends to one boat, and at its center to a central point upon the adjacent end of the other boat. No attempt was made to distinguish or separate the profits arising from this improvement, the testimony being directed only to showing the profits defendant made by the use of coupled boats in the place of single boats. There was evidence tending

strongly to show that the transportation of coal in double boats was more economically effected than in single boats, but none that the second patent was superior to the first. Indeed, the plaintiff admitted in his argument that the patent of April 16th described a plan of coupling and steering very little inferior to that described in the patent sued upon, and that, if defendant had pirated that invention instead of this, the same result in profits or savings would have been realized. Plaintiff, however, contended in this connection that in determining the state of the art, or what was open to the defendant to use, the invention disclosed in the earlier patent to the McCrearys should not have been considered, as this patent was also owned by John McCreary, the plaintiff, by assignment of Elijah's interest to him before the reissue sued upon was granted; and hence that defendant had no more right to use this invention than the other. Had this earlier patent also been made the basis of suit in this case, this position would have been impregnable; but the question here is not whether the defendant had in fact the right to use this patent, but whether, so far as this particular case is concerned, it had not that right. To hold that it had not is to assume that the plaintiff owned the earlier patent, that it was a valid patent, and that defendant had infringed it. This was a question that could not be raised upon an assessment of damages in this case. It is true, the plaintiff claims to be the sole owner of this patent, that it described an invention both novel and useful, and that defendant had appropriated this device as well as the one set forth in the patent in suit; but these were issues which could only be determined upon a bill framed for this purpose, and could not be made the subject of contest in a collateral proceeding. For the purposes of this suit the master was bound to assume that this patent was open to the defendant, otherwise he might be led into inquiries entirely foreign to the subject of his investigation.

Suppose, for example, this patent had belonged to another person, and the plaintiff, foreseeing that the defendant would, upon this hearing, claim that it was open to him, had purchased it, and taken an assignment of all claims for past infringements, could he in this way forestall such defense? Clearly not. In such case the defendant might justly reply: "I was summoned here to answer a charge of infringing your patent, and, in case it is established, to pay such damages as may be awarded for such infringement; but I could not anticipate that you would purchase another patent, and set it up in aggravation of such damages." But if this could not be done pending the suit, it is difficult to see how it could be done before suit brought, if such patent be not made the basis of the suit. Had the defendant attempted to justify by setting up a device obtained subsequent to the date of the plaintiff's patent, a different question would have arisen. This question was considered by Mr. Justice HARLAN in Turrill v. Railroad Co., 20 Fed. Rep. 912, in which he held that in estimating the prof