The claims of the reissued patent are as follows: 1. In a machine for making counters or stiffeners for boots and shoes, a turning or revolving former, in combination with mechanism for holding and shaping the blank over it. 2. The revolving or turning counter-former A, in combination with a supporting roll or rolls for rolling, or for rolling and flanging blank stock into heel-stiffeners, substantially as shown and described. 3. The process described of forming the heel-seat of a counter by means of a former having a motion about a center, and which gives to the heel-seat a drawing or rubbing action against a flange or bearing-surface in addition to the rolling action. The infringement charged against the defendants was in the use by them of the device described in the reissued letters patent of Louis Coté, dated June 2, 1874. The specification of this patent declares: The invention or machine consists, mainly, of a rotary head of a spherical, spheroidal, or sphero-cylindrical shape, fixed upon and concentrically with a rotary shaft, in combination with a stationary mold correspondingly or approximately so concaved, whereby by the revolution of the said rotary head within the mold, a piece of leather of suitable form introduced between them may be drawn into and through the concavity of the mold, and receive a curved form lengthwise and withdrawn, and thereby be adapted for use as a stiffening for a boot or shoe. A clear idea of the contrivance covered by the Coté patent may be redived from the drawings which illustrated the specification. On final hearing of the cause the circuit court dismissed the bill and the complainant appealed. OPINION. Mr. Justice WOODS delivered the opinion of the Court. The evidence leaves no doubt in our minds that the first claim of Moffitt's reissued patent is broader than any claim of his original patent. The original patent covered an elongated heel-shaped former, set eccentrically upon its shaft. This was an essential part of the invention described in the original patent. The specification declares: I use a moving "former," A, devised by me, of a shape adapted to give the desired shape to the counter, and set eccentrically on a shaft, B. 棒 The "former" shown by the drawings is elongated and heel-shaped in cross-section. The specification further declares: The "former," as will be seen projects farther from its axis on one side than on the other, so as to conform nearly to the general form of the curves of the inside of a shaped counter. This gives a rolling action, in addition to the squeezing, over the whole body of the counter. The specification of the reissued patent omits both of these statements, and thus allows a "former" to be made, if desired, with a circular crosssection, and to be set concentrically on its shaft. It is, therefore, clear that it covers a contrivance essentially different from that described in the original specification and claims. The first claim of Moffitt's reissued patent differs materially from the specification and first claim of the original patent in another particular. The original specification thus describes the means by which the blank stock is pressed against the "former": Beneath this "former" I place a roller, C, having a profile, as shown, the converse of and conforming to that of the "former," the shaft of the roller having its bearings in the main frame D. It is also stated that "instead of a single roll a pair of auxuliary rolls may be used, as in figure 4, one on each side of the single one." In the first claim of the reissued patent the device of one or three rolls is expanded to cover "any mechanism for holding and shaping the blank over" the "former." It therefore appears that the specification and first claim of the original patent was intended to cover an elongated heelshaped former, eccentrically set upon its shaft, against which the material of which the counter was to be made was pressed by a revolving roller or rollers, and that the first claim of the reissued patent was expanded so that it might cover a "former" circular in cross-section, concentrically set, and revolving in the semi-circular groove of a stationary mold, by which the material was pressed against the former. The dif ference between the device covered by the specification and first claim of the original patent and the device which might be embraced by the specification and first claim of the reissued patent is essential and palpable. If the evidence proves any infringement, it is of the first claim only of complainant's reissued letters patent, and that such infringement is by the use of the machine covered by the Coté patent. The purpose of the complainant to cover by his reissued patent the invention described in the Coté patent is clear, and is not denied. It is that the Coté machine does not infringe the original patent of Moffitt. The "former," described in the original specification of Moffitt, being elongated in cross section and eccentrically set upon its shaft, could not have either a rotating or reciprocating movement in the semi-circular grooved mold of the Coté patent, and by no stretch of construction could the stationary grooved mold of the latter patent be considered the equivalent of the cylindrical revolving rollers of Moffitt's original pat ent. The specification and first claim of the reissued patent is a plain attempt to include a device which was not and could not be fairly covered by the original patent. That claim is therefore, for that reason, void. Gill v. Wells, 22 Wall., 1; The Wood Paper Patent, 23 Wall., 566; Powder Company v. Powder Works, 98 U. S., 126; Ball v. Langles, 102 U. S., 128; Miller v. Brass Company, 100 U. S., 350; James v. Campbell, Id., 356; Heald v. Rice, Id., 737; Bantz v. Frantz, 105 Id.; Johnson v. The Flushing and North Side Railroad Company, 105 U. S. And the evidence shows no infringement of any other claim of the reissued patent. The decree of the circuit court dismissing the bill was therefore right, and must be affirmed. [United States Circuit Court-Southern District of New York.] NEW YORK PHARMICAL ASSOCIATION v. TILDEN ET AL. Decided January 3, 1883. 23 O. G., 272. 1. ARTICLE NOT STAMPED "Patented"-DEFENDANT "DULY NOTIFIED," SECTION 4900 REVISED STATUTES. Patentees are required to give "sufficient notice to the public" that the article is patented, "together with the day and year the patent was granted," by stamping or labeling the article. Where this has not been done it is a fair interpretation to hold that when any equivalent notice has been given the defendant has been "duly notified" within the meaning of section 4900 Revised Statutes. 2. SAME-SUFFICIENT NOTICE. As the sufficient notice prescribed includes a specification of when the patent was granted, it is reasonable to conclude that any notice, verbal or written, that includes this information, will suffice. 3. ASSIGNMENTS-EXECUTION of, under NEW YORK STATutes. Under the statutes of New York assignments of patents duly acknowledged before a notary are sufficiently proved, and it is not incumbent upon the complainant to prove the signatures of the assignors. Mr. James A. Whitney for the complainant. WALLACE, J.: Assuming, as must be done upon the proofs, that the complainant is entitled to the most liberal construction of the claim of its patent consistent with the language of the specification, the claim is to be construed as one for a medical compound composed of the several ingredients combined in such proportions as to effectually co-operate in producing the desired effect. Upon this construction, reading the formula of the defendant's compound with the assistance of their trade-circular, which sets forth the properties of their ingredients and the virtues of their preparation, it sufficiently appears that there is a substantial identity between their compound and that described in the complainant's patent to establish infringement. The ingredients are the same, they are combined to produce the same result upon the same principle, and, although the proportions vary, the variation is slight. The complainant did not mark its preparation as patented, and the defendants insist upon this fact in their answer as a defense. It appears, however, that complainant gave verbal notice to the defendants in January, 1880, that its compound was patented, and exhibited to them a copy of the letters patent, and notified defendants that their compound was an infringement. The statute (Sec. 4900 U. S. Rev. Stats.) declares that when the patented article is not thus stamped In any suit for infringement by the party failing so to mark no damages shall be recovered by the plaintiff, except on proof that the defendant was duly notified of the infringement, and continued after such notice to make, use, or vend the article so patented. It was held in Goodyear v. Allyn (6 Blatchf., 33) that this statute only takes away the right of a plaintiff to recover damages, and does not affect the right to an injunction. It was also intimated in that case as doubtful whether the statute applied at all to actions in equity, as no damages were then recoverable, except in suits at law. The provision was re-enacted, however, and embodied in the revision and amendment of the statutes relating to patents of July 8, 1870. By that legislation, also, power was conferred upon the court in suits in equity to decree for damages as well as profits. The provision is therefore to be read as a part of the comprehensive legislation designed to cover the whole subject of the rights and remedies of inventors and as applicable to all suits in which damages are recoverable. The question has never been decided in any reported case brought to the attention of the court whether the notice contemplated by the statute is a written notice or whether a verbal notice is sufficient. Although there is not entire concurrence in the authorities, the rule may be deemed sanctioned by the adjudications that when a statute requires a notice to be given a written notice is meant; and without doubt, this is the rule where the notice required is one to be given in the course of a legal proceeding. The statute here requires proof that defendant "was duly notified," ⚫ and con tinued, "after such notice," to make, use, or vend the patented article, and therein differs from the statutes which have been the subject of judicial construction. Thus, in Gilbert v. Columbia Turn-pike Company (3 John., Cases, 107) the statute directed the notice "to be left" at the dwelling-house of the party. In Jenkins v. Wild (14 Wend., 539) a distinction was taken between a statute which required an appeal to be brought within fifteen days "after notice" of an order and a cognate statute which required "notice to be given," the last being held to mean a written notice. Not only does this statute not require in terms "notice to be given," but it also does not relate to a notice in the course of a legal proceeding. It is designed to protect innocent parties who are infringing without knowledge of the fact, and in this behalf to restrict the remedy of patentees who have failed to give that publicity to their ex. clusive title which the policy of the statute requires. Patentees are therefore required to give "sufficient notice to the public" that the article is patented, "together with the day and year the patent was granted," by stamping or labeling the article. It is a fair interpretation to hold that when any equivalent notice has been given the defendant has been "duly notified." As the sufficient notice prescribed includes a specification of the time when the patent was granted, it is reasonable to conclude that any notice, verbal or written, that includes this information, will suffice. Under the statute of this State the assignments of the patent duly acknowledged before a notary were sufficiently proved, and it was not incumbent upon the complainant to prove the signatures of the assignors. Houghton v. Jones, 1 Wall., 702. There will be a decree for the complainant for an injunction and accounting for profits and damages, the damages to be restricted to those accruing after February 1, 1880. [United States Circuit Court-District of Connecticut.] WALLACE v. NOYES ET AL. Decided August 7, 1882. NEW RESULT-OLD PROCESSES. 23 O. G., 435. Where the patentee attained the result of producing a new thing-a silverplated steel spoon-by a succession of old processes, which, though separately old, had not been practically grouped together in the order in which he used them, it is a patentable novelty in process. Mr. B. F. Thurston, Mr. John S. Beach, Mr. Charles E. Mitchell, and Mr. L. M. Hubbard for the plaintiff. Mr. E. N. Dickerson, Mr. Charles R. Ingersoll, and Mr. J. W. Towner for the defendants. SHIPMAN, J.: This is a bill in equity to restrain the defendants from the alleged in. fringement of letters patent to Robert Wallace, as inventor, No. 220,003, for improvements in the process of manufacturing spoons and forks, and also of letters patent to said Wallace, No. 220,002, for improvements in spoons and forks. The former patent was for the process of manufacturing silver-plated spoous and forks from homogoneous steel. The latter was for the product from such process. Each patent was dated September 23, 1879. The nature of the invention, as claimed by the patentee, and the precise thing for which letters patent were granted will be best understood by quoting his description in the specification of the process patent: This invention relates to an improved process for the manufacture of spoons and forks, consisting of inferior metal plated with precious metal, usually silver, the object being to produce spoons and forks which shall be of small initial cost, of great durability, and susceptible of a highly finished and ornamented surface. Spoons and forks resembling silver in their finish, ornamentation, and general appearance have ordinarily been made of an alloy largely composed of copper and zinc, known in the arts as "German silver," and of other metals or alloys of similar composition, which could be rolled and stamped with as much facility as silver. Sheet and cast iron have also been largely used in the manufacture of a cheap article of spoons and forks, and such articles of table-ware have usually been provided with a coating of tiu; but spoons and forks made of iron could not compete in their finish and appearance with spoons and forks made of German silver or similar alloys, and such articles form a distinct class of manufacture. I am also aware that spoons and forks have long been made, in whole or in part, of steel, and in some cases the articles have been plated with precious metal, and hence I make no broad claim to spoons or forks made either of iron or steel, as my invention |