elements, as well as the mode of operation of Ide's improvement, the throwing of oil by centrifugal force from the periphery of a revolving disk to a bearing which is constantly changing its local relation to the disk, are not found in the device of Jenkins, and for this reason this patent has no relevancy to the issue of the validity of the claim it is cited to anticipate, and it is here dismissed.

Claims 4 and 5 of the reissued patent No. 11,730 must fall with claim 3 of that patent,—the foundation claim upon which they rest. Claim 4 describes the combination of claim 3 plus an inclosed or tubular portion of the housing, a crosshead and connecting rod therein, and a passage to lead the oil thrown by the revolving disk upon the interior surface of the housing back into the reservoir beneath the disk. Claim 5 consists of the combination of claim 4 and a passage in the crosshead to conduct the oil from the interior of the tubular portion of the housing to the wrist pin. These claims were not a part of the original patent upon which the reissue is founded. They appeared for the first time in the application for the reissued patent which was filed on December 6, 1898. In so far as they describe the combination of claims 3 and 4 of patent No. 397,293 to automatically lubricate the bearing of the crosshead wrist pin, they are anticipated and rendered void by that patent, which was issued to the same inventor before the original patent on which this reissue is based was granted. National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co., 106 Fed. 693, 708-710, 45 C. C. A. 544, 559-562. In so far as these claims disclose any other combination, they are anticipated and avoided by the patents to Bachelder and others reviewed in an earlier part of this opinion, which proved so fatal to claim 3 of this patent.

Moreover, these claims are void because they expand the monopoly which the inventor secured by his original patent, and because there was unreasonable delay in making application for them. A specious argument is presented to sustain them on the ground that they do not expand, but, rather, restrict the monopolies which Ide attempted to protect by claims 2 and 3 of the original patent, because they consist of the combinations of those claims restricted by additional elements, and it is earnestly contended that they should be sustained upon this ground. Crown Cork & Seal Co. of Baltimore City v. Aluminum Stopper Co. of Baltimore City, 108 Fed. 845, 859, 860, 48 C. C. A. 72, 86, 87; Electrical Accumulator Co. v. New York & H. R. Co. (C. C.) 50 Fed. 81; Eames v. Andrews, 122 U. S. 40, 7 Sup. Ct. 1073, 30 L. Ed. 1064. But this argument is based on the assumption that claims 2 and 3 of the original patent describe patentable inventions,— an assumption, which, as we have seen, is not in accordance with the fact. The improvements which claims 2 and 3 attempt to describe were neither novel nor were they the product of the intuitive genius of the inventor. They secured no invention or discovery, and the result is that claims 4 and 5, which follow them, do not restrict the scope of the monopolies protected by the original patent, because no such monopolies were saved thereby; but they claim combinations no part of which was ever protected by the original patent upon which the reissue which contains them was based. Moreover, the record conclusively shows that when the patentee obtained his original patent he

not only did not claim, but he did not intend to claim, the combinations now described in these new claims of the reissued patent. The acts of congress require an inventor, before he procures his patent, to "point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery" (Rev. St. § 4888), and his specifications and claims constitute a dedication to the public of every invention they disclose but do not claim. Adams Electric Ry. Co. v. Lindell Ry. Co., 23 C. C. A. 223, 241, 242, 77 Fed. 432, 451, 452. Ide, therefore, in so far as he did not secure them by patent No. 397,293, issued about two months before, abandoned these combinations to the public in 1889, when he procured his original patent No. 400,682. On December 6, 1898, more than nine years thereafter, application was first made to secure a monopoly of the use of these improvements by means of this reissued patent. This delay might be excused by the litigation involving the original patent if it appeared that the patentee had intended to secure these improvements by that patent and had failed to do so by reason of a defective or insufficient specification, or by claiming as his invention more than he had a right to claim. Rev. St. § 4916. But the entire record, and especially the specifications and claims of the two patents 397,293 and 400,682, whose applications were pending in the patent office at the same time, leave no doubt that Ide never intended to claim or protect by the latter patent the improvements described in claims 4 and 5 of the reissued patent, and, because these claims describe inventions different from any which the patentee saved or sought to protect by his original patent, their insertion in the reissue was unauthorized by the law, and they are void. The introduction in a reissued patent of claims for inventions which are described, but which the patentee neither claimed nor intended to claim by the original patent, is unauthorized by the acts of congress, and such claims are void. Topliff v. Topliff, 145 U. S. 156, 166–171, 12 Sup. Ct. 825, 36 L. Ed. 658; Hubel v. Dick (C. C.) 28 Fed. 132, 137, 138; Carpenter Straw-Sewing Mach. Co. v. Searle, 60 Fed. 82, 84-86, 8 C. Č. A. 476, 478–480.

The sum of the whole matter concerning the validity of these claims is that claims 3, 4, and 5 of reissued patent No. 11,730 are void, and claims 3 and 4 of letters patent No. 397,293 are valid.

The next question for consideration is the measure of the recovery to which the complainants are entitled for the alleged infringement of the two valid claims. Counsel for the defendants insist that no relief can be granted to the complainants, because they have been guilty of laches in prosecuting their suit, and because the defendants are innocent of the charge of infringement. The charge of laches is conditioned by these facts: This patent was issued on February 5, 1889. The defendants in this case include the manufacturers of the engine which is alleged to infringe and a purchaser thereof. On May 23, 1894, Ide notified the manufacturers that they were infringing upon this patent. On July 14, 1899, the executors of Ide's will exhibited this bill. In the meantime a spirited litigation had been conducted between Ide and the manufacturers over the former's claims under other patents. The statute of limitations of the state of Illinois,-the state in which the defendants have committed their alleged trespasses,

bars the commencement of actions for the recovery of damages for infringement five years after the damages accrue. Hurd's Rev. St. Ill.

1899, p. 1119, § 15.

But there is no rule of law, of equity, or of morals that requires a patentee to sue infringers upon all the patents he owns at the same time, or that deprives him of the equitable relief to which he would otherwise be entitled because he has failed to do so. And while courts of equity usually apply the doctrine of laches by analogy to the statute of limitations of similar actions at law, that rule has no application to this suit, because the trespasses of the defendants for which the complainants now seek relief have been continuous and repeated, and are still continuing, and no bar to a recovery of all the damages which have resulted from them within five years of the commencement of this suit, or to the issue of an injunction to prevent their continuance, has arisen even under the statute of Illinois. The doctrine of laches is an equitable principle, which is applied to promote, but never to defeat, justice. Under ordinary circumstances a suit in equity will not be stayed before, and will be stayed after, the time fixed by the analogous statute of limitations at law. But if unusual conditions or extraordinary circumstances make it inequitable to allow the prosecution after a briefer, or to forbid its maintenance after a longer, period than that fixed by the statute, the chancellor will not be bound by the statute, but will determine the extraordinary case in accordance with the equities which condition it. Kelley v. Boettcher, 85 Fed. 55, 62, 29 C. C. A. 14, 21. There are no unusual circumstances or conditions in this case which appeal to a court of equity to stay this suit while a similar suit is not barred by the statutes of Illinois. Unreasonable delay and the deceitful acts or silence of a patentee which induce an infringer to incur expenses or to become liable to losses and damages which he would not otherwise have suffered may sometimes justly induce a court of equity to stay his suit for an infringement or for an accounting before the time fixed by the analogous statute of limitations has expired. But delay, unaccompanied by such deceitful acts or silence of the patentee, and by such facts and circumstances as practically amount to an equitable estoppel, will warrant no such action. It is no answer to an application for an injunction to restrain a defendant from committing waste by cutting trees upon the owner's land that, because the latter has taken no steps to prevent the wrongdoer from cutting one half of the trees, he has thereby acquired a right to cut the other half. Attorney General v. Eastlake, 11 Hare, 205, 228. And it is no defense to a suit for an injunction and an accounting on account of the continuing trespasses of an infringer that the latter has been trespassing on the rights of the patentee for years with impunity. Menendez v. Holt, 128 U. S. 514, 523, 9 Sup. Ct. 143, 32 L. Ed. 526; McLean v. Fleming, 96 U. S. 245, 253, 24 L. Ed. 828; Price v. Steel Co. (C. C.) 46 Fed. 107, 108; New York Grape Sugar Co. v. Buffalo Grape Sugar Co. (C. C.) 18 Fed. 638, 646; Gilmore v. Anderson, 38 Fed. 846, 848; Brush Electric Co. v. Electric Imp. Co. (C. C.) 45 Fed. 241, 243; Taylor v. Spindle Co., 22 C. C. A. 203, 206, 75 Fed. 301, 304; Bragg Mfg. Co. v. City of Hartford (C. C.) 56 Fed. 292,

Finally it is insisted that the engines of the defendants do not infringe upon the third and fourth claims of the patent under consideration. This contention is unworthy of extended consideration. Its only foundation is that the oil cup or receptacle in the upper end of the passage through the connecting head to the crosshead wrist pin bearing is a flaring tunnel-shaped cup, with its spout inserted in the passage, in the patent, while the defendants' substitute for it is a flaring tunnel-shaped mouth to the passage sunk in the connecting rod strap and in the connecting rod, and the "depending protection' of the patent over this oil cup is described as a pointed depending projection, while the substitute for it used by the defendants consists of the depending end of a bolt, with a nut upon it which not only performs the function of Ide's depending projection, but also accomplishes another purpose. These are distinctions without differences. A depressed oil cup used in the same place and accomplishing the same purpose as a raised oil cup,-the purpose of collecting and leading the oil to the same passage,-is the mechanical equivalent of, and the same thing as, the raised oil cup, in the view of the law of patents. And a depending projection consisting of the end of a bolt with a nut upon it used in the same place, and performing the same function, as the depending projection of the patent,-the function of gathering the oil from the surface above it and dropping it into the oil cup beneath it, is the mechanical equivalent of, and the same thing as, the patented projection, in the eyes of that law. Parties cannot escape infringement by such slight and useless variations in the forms of elements of patented combinations. Mere changes in the form of a device, or of some of the mechanical elements of a combination, will not avoid infringement, where the principle or mode of operation is adopted, except in those rare cases where the form of the improvement or of the element changed is the distinguishing characteristic of the invention. National Hollow Brake-Beam Co. v. Interchangeable Brake-Beam Co., 106 Fed. 693, 711, 45 C. C. A. 544, 562; Watch Co. v. Robbins, 64 Fed. 384, 396, 12 C. C. A. 174, 187; New Departure Bell Co. v. Bevin Bros. Mfg. Co. (C. C.) 64 Fed. 859.

The form of the elements which the defendants have changed was not the essence of this invention. Its principle was the application of the centrifugal force generated by a disk on a crank shaft revolving in a tank of oil to the automatic lubrication of the bearing of a crosshead wrist pin of an engine. The means which it secured to make this application consisted of a combination of the revolving disk secured to the crank shaft, the oil tank beneath it, the hollow crosshead, with the lower surface of its upper wall open to receive the lubricant thrown by the revolving disk, the depending projection upon this surface, the oil cup on the connecting rod, and the passage beneath it to lead the lubricant to the bearing of the wrist pin. This mode of operation and every element of the patented combination which Ide invented to utilize it the defendants have boldly appropriated, and they cannot be permitted to escape from the natural and legal effect of their acts.

The net result of this investigation is that the complainants succeed upon claims 3 and 4 of letters patent No. 397,293, and they fail upon

53 C.C.A.-23

claims 3, 4, and 5 of the reissued patent. Where a suit is brought upon several claims of one or more patents, and the complainants succeed in obtaining relief upon some of the claims, but fail to recover upon others, an equitable division of the costs, proportioned to the expense of litigating the respective claims, should be made, because the defendants are not justly liable for the costs of litigating those claims upon which the complainants were entitled to no relief. Wilcox & Gibbs Sewing Mach. Co. v. Merrow Mach. Co., 93 Fed. 206, 35 C. C. A. 269; Thomson-Houston Electric Co. v. Elmira & H. Ry. Co. (C. C.) 71 Fed. 886; Albany Steam Trap Co. v. Felthousen (C. C.) 20 Fed. 633, 640.

The decree below must be reversed, the appellants may recover one-half of their costs in this court, and the case must be remanded to the circuit court, with directions to dismiss the bill as to the three claims of the reissued patent No. 11,730, and to enter the usual decree for an injunction and an accounting upon claims 3 and 4 of letters patent No. 397,293, without costs to either of the parties to the suit up to the time of the entry of the decree; and it is so ordered.

(115 Fed. 150.)

LANYON ZINC CO. v. BROWN et al.

(Circuit Court of Appeals, Eighth Circuit. March 17, 1902.)

No. 1,586.

1. PATENTS-VALIDITY AND INFRINGEMENT-ORE-ROASTING FURNACE. The Brown patent, No. 471,264, for an ore-roasting furnace, claim 1, which covers a furnace in which the mechanism for operating the rabbles for stirring the ore is placed in a supplemental chamber for the purpose of protecting it from the action of the heat, dust, and fumes, was not anticipated by the Munroe patent, No. 227,818, and is valid. Such claim is also infringed by a furnace made in accordance with the Ropp patent, No. 523,013.

2. SAME ASSIGNMENTS-EVIDENCE OF EXECUTION.

Act March 3, 1897 (29 Stat. 693, c. 391) § 5, which provides that if an assignment of a patent is made before a notary public his certificate of acknowledgment shall be taken as prima facie evidence of its execution, is not limited in its operation to acknowledgments taken after its passage, but declares a rule of evidence applicable to all assignments so acknowledged.

3. SAME-SUIT FOR INFRINGEMENT-PRELIMINARY INJUNCTION.

A preliminary injunction against the use by defendant of machines which have been previously adjudged to infringe complainant's patent will not be denied on the ground of public policy, because it will result in great loss to defendant and inconvenience to the public, and especially where its operation has been suspended pending an appeal for a sufficient time to have enabled defendant to make such changes in the machines. as to avoid infringement, if it had so desired.

Appeal from the Circuit Court of the United States for the District of Kansas.

Albert H. Walker (John H. Atwood, on the brief), for appellant. Philip C. Dyrenforth, for appellees.

Before CALDWELL, SANBORN, and THAYER, Circuit Judges.