pickled, cleaned, and restamped. He annealed in a muffle or oven made air-tight in some way. The annealing boxes or pans were filled with alternate layers of blanks and a mixture of charcoal dust or saw dust, coke-dust, and Cumberland ore. The peculiarities of the Wallace process-scouring the blanks and dipping in turpentine and annealing in boxes simply made air-tight by cementing the joints-are not given by Cutler. The defendants also attacked the theory of patentable novelty by the following line of argument, which had great force. The methods of treating cold refractory metal so as to subject it to the rolling operation, and the methods of annealing steel or iron so as to prevent oxidation, were all well known in 1876–77. There was no mystery in the way in which metal-workers treated steel and iron. At this time the steelmanufacturers of the country began to manufacture soft or decarbonized or homogeneous steel for very many purposes, and conceived the idea that it could be used to advantage by the spoon makers of Connecticut. Ely & Williams, of Philadelphia, introduced the article in 1876 to the different prominent Connecticut manufacturers, who all tried it. Some, like Hall, Elton & Co., and Mr. Boardman, gave it up because they preferred to devote themselves exclusively to German silver, and did not want to procure separate sets of dies and rolls. Others, like Mr. Mix, found the steel too refractory to exhaust time upon. Mr. Wallace had both patience and a disposition to use time in the employment of old and well-known processes for the manipulation of this article, which was represented to possess advantages over wrought-iron. There was no invention. There was an application of familiar ideas, and a general mechanical improvement, and there was business skill and energy. There was the employment of the same qualities of mind which have made his brother manufacturers of the Connecticut and Naugatuck Valley ssuccessful in the departments of table-ware manufacture to which they have devoted themselves, but there was no striking out a new path in the field of invention. He did just what other people had done, but he exercised patience and energy to make his work a commercial success. On the other hand, the plaintiff says an attractive, cheap, and durable silver-plated steel spoon was a thing practically unknown in the art. It was wanted. When produced the manufacturers knew that it would fill an empty space in the market. They desired to produce it, and the skillful and prosperous mechanics of the neighborhood set them. selves with more or less energy to accomplish this result. Nobody but the plaintiff succeeded. He produced a new thing, a silver plated steel spoon which was cheap, durable, beautiful, and useful. Having done that, having accomplished what other men tried to do and wanted to do, but did not do, and having shown that he attained the result by a succession of old processes, which, though separately old, had not been practically grouped together in the order in which he used them, the only fair conclusion is that there must have been patentable novelty in the process. The plaintiff's argument seems to me to have the greater weight. The first claim of the process patent and the various claims of the product patent are found to be valid, but the second claim of the process patent does not possess patentable novelty by reason of the prior use of turpentine upon German silver blanks before they are rolled. The question of infringement only remains. The defendants, after blanking, anneal the blank, pickle it to remove the scale, tumble it in sawdust to clean and dry it, then apply the turpentine and cold-roll it, and when the second annealing process is to be done they anneal in airtight boxes. They do not use pumice-stone or anything which scours the blank, but after annealing they subject the blank to such cleaning as to make it clean and bright. The smooth and slippery character of the steel is removed by the tumbling, which is practiced long enough to thoroughly clean the surface of the blank. The process which the plaintiff pointed out has been substantially adopted. Let there be a decree for the plaintiff upon the first claim of the process patent, and upon the product patent for an injunction and an ac counting. [United States Circuit Court-Northern District of New York.] BARKER v. TODD. Decided November 29, 1882. 23 O. G., 438. 1. ANNULMENT OF DECREE-COLLUSION: It being made to appear to the court by the petition of strangers to the record, that a decree was obtained by collusion between complainant and defendant, it is annulled and the cause dismissed. 2. BARKER'S PATENT FOR CHAIN-PUMPS -VACATION OF JUDGMENT. Judgment in favor of Reissue Letters Patent No. 6,531, granted July 6, 1875, to W. C. Barker, for an improvement in buckets for chain-pumps (reported in 22 O. G., 1448), set aside. Messrs. Parkinson & Parkinson for L. M. Rumsey Manufacturing Company. Mr. R. H. Duell for Barker. WALLACE, J.: This cause having been heard upon the petition of the L. M. Rumsey Manufacturing Company et al. to vacate and annul the decree heretofore entered herein, and upon affidavits and arguments of counsel in behalf of the said petitioners and the said complainant Barker, and it appearing to the court that the proceedings herein were procured by collusion between the complainant Barker and the defendant Todd, and that there was no real controversy between them, it is hereby ordered, adjudged, and decreed that the said decree, to wit, the decree entered on or about the 12th day of September, 1882, be, and the same is hereby, vacated and anuulled, and that this cause be dismissed. It is further ordered that said Barker pay the disbursements incurred in the said application for vacation of said decree. [United States Circuit Court-Southern District of New York.] HARDY ET AL. v. MARBLE. Decided February 11, 1882. REISSUE NO. 7,729 CONSTRUED. 23 O. G., 438. Reissue Letters Patent No. 7,729, granted June 12, 1877, to C. Judson, for an improvement in corset-springs, construed and second claim limited. Mr. F. P. Fish and Mr. J. 8. Van Wyck for the plantiffs. Mr. E. Wetmore for the defendant. BLATCHFORD, J.: I am not prepared to hold on this motion for a preliminary injunction that the second claim of Reissue No. 7,729 can, in view of the text of the specification and of the language of the claim and of the state of the art, be held to extend to anything less than the wide steel or busk marked a with studs on it, placed near the edge of it-that is, farther from that side of it from which the fastening-spring approaches the studs the fastening-spring lying upon the wide steel, substantially "near its center or farther edge," for the purpose set forth in the text. The absence of the wide steel in this view from the defendant's two forms of clasp-the three steel and the four steel-makes the question of infringement so doubtful as to make it improper to grant a preliminary injunction. The Bradford corset-clasp and the Cohn corset-clasp, both of them, had the wide steel and the other features above men. tioned. [Supreme Court of the United States.] HAYWARD v. ANDREWS ET AL. Decided October Term, 1882. Affirmed, with costs, January, 15, 1883. 23 O. G., 533. 1. LICENSES-Right to MANUFACTURE AND SELL. Au instrument conveying the exclusive right to manufacture and sell the patented article is a mere license, and does not authorize the licensee to maintain an action for damages against infringers who are not infringing the patent in those respects. 2. SAME-ALTERNATIVE TITLES. The fact that the plaintiff sets out such a title with another title derived from a different source does not present such a case of alternative and inconsistent titles as is made one of the grounds for claiming a resort to equity. 3. BILL IN EQUITY-ASSIGNEE CANNOT MAINTAIN BY VIRTUE OF HIS EQUITABLE TI TLE. An assignee of a chose in action-as a patent right-cannot proceed by bill in equity to enforce for his own use the legal right of his assignor merely because he cannot sue at law in his own name. 4. ROOT V. RAILROAD COMPANY CONSTRUED. The meaning of the passage in Root v. Railroad Company that the bill in equity may be maintained "where the title of the complainant is equitable merely" is to limit the exception to cases where the purpose and necessity of the resort to a court of chancery are to enforce the peculiar equity personal to the complainant, and not merely the legal right of which he is a beneficial owner. APPEAL from the Circuit Court of the United States for the Northern District of Illinois. Mr. G. M. Speir, Jr., Mr. Fphraim Banning, and Mr. Thos. A. Banning for the appellant. Mr. L. L. Bond and Mr. E. A. West for the appellees. Mr. Justice MATTHEWS delivered the opinion of the Court. This appeal brings into review the decree of the circuit court sustaining a general demurrer to the amended bill of the complaint, and dismissing the bill for want of equity. The case made by the amended bill and exhibits is this: Aaron H. Allen was the owner of Reissue Patent No. 1,126, granted to him upon the surrender of original Patent No. 12,017, dated December 5, 1854, for a new and useful improvement in seats for public buildings, which was extended for seven years from December 5, 1868, and which consesequently expired by limitation December 4, 1875. The complainant claimed to be the sole and exclusive owner in equity of all claims for damages arising out of or occasioned by infringements of said reissued letters patent committed after September 18, 1869, and of all claims for gains and profits derived by others by reason of such infringements, by virtue of certain written instruments set out as exhibits to the bill. The first of these is an instrument, dated September 18, 1869, by which Allen grants to J. W. Schermerhorn & Co., "the sole right and privilege of manufacturing and selling school-furniture made according to" the reissued patent "for a tilting seat on the lever principle," subject to the terms and conditions of an indenture between the parties, which, however, is not set out. On April 22, 1881, John H. Platt, an assignee of James W. Schermerhorn, George M. Kendall, and George Munger, bankrupts, transfers to the complainant all the interest of the bankrupts in the Allen patent and all causes of action arising to him, as assignee of the bankrupts, by reason of his interest in the said patent, and especially his claim in a certain suit then pending, brought by Allen, in the Circuit Court of the United States for the Southern Dis trict of New York, against the city of New York. The second and only other instrument of title exhibited is an assignment from Allen, the patentee, to the complainant, dated March 8, 1880, whereby Allen transfers to him and to his assigns all his right and interest in the suit mentioned in the assignment from Platt against the city of New York, "together with all claims for damages arising since the 18th day of September, 1869, against any persons, firms, or corporations by reason of infringements of letters patent of the United States for a tilting seat supported on the lever principle," being the reissued patent specified in the bill. And the complainant is thereby further constituted the attorney in fact of Allen, irrevocably, in his name, to demand and recover all such damages for his own use, paying all expenses, but accounting for thirty per cent. of all sums recovered to Allen until the latter shall have received six thousand six hundred dollars, and no longer. It is alleged in the amended bill that in the suit against the city of New York a decision was reached sustaining the validity of the patent, but no final decree therein has been entered; and that, owing to the delays incident to that litigation, while waiting for a decision upon the validity of the patent, neither Allen nor complainant have been in a situation to prosecute other infringers or sooner to file this bill. It is also alleged in the amended bill that the defendants have infringed the said letters patent since September 18, 1869, and until the expiration thereof, and, in violation thereof, "have manufactured, sold, and used the said invention for improvements in seats for public buildings, patented as aforesaid, whereby great injury resulted to your orator and great gains and profits accrued to the said defendants," for which accordingly, an account is prayed and a decree for the amount thereof and for damages. The original bill was filed December 1, 1881, Allen being a co-complainant, and the amended bill on May 25, 1882, the original bill having been dismissed as to Allen. It is manifest that the right claimed by the complainant receives no support from any title derived from Allen through J. W. Schermerhorn & Co., for the right of the latter under the instrument of September 18, 1869, was that of mere licensees. They could maintain no action for damages or profits against infringers, for they had no interest in the patent, nor was there any assignment to them of any right of action accrued or to accrue to Allen. In addition to this, the license itself only extended to the manufacture and sale of school furniture, and there is no allegation in the amended bill that the defendants had infringed the patent in that respect. That brauch, therefore, of the complainant's bill is removed from the case, and he is relieved from the embarrassment which, it is alleged in argument, is occasioned by the uncertainty produced by alternative and inconsistent titles, and which is made one of the grounds for claiming the right to resort to equity. The case, then, is left to stand upon the right derived under the contract between Allen and the complainant of March 8, 1880, and the single question |