placement, and to relieve the end portions of the neckband when tied into a bow of the strain required to hold the tie intact on the collar. To accomplish this result, the patentee provided connection pieces secured to the neckband and small rings or loops at their ends to fit over the collar button.

The specification states:

"The connections, C, C, consist of small pieces of elastic which are secured firmly to the neckband, A, in suitable positions and are provided in the forward end with small rings or loops, C', C', which are adapted to fit over the collar button, D."

The defenses are that the patent is invalid, and, if valid, that its scope must be limited to the precise arrangement shown, and, generally, that the defendant does not infringe. Complainant claims that the features relating to the material composing the connection pieces and the rings at their ends are nonessential; the scope of the claim being broad enough to include the substitution of inelastic bands or tab with buttonholes at their ends. In other words, that the essential element of the combination consists of the short pieces or connecting portions which are stitched or attached to the inner portion of the neckband at the point where the free ends are looped to form a tie, which connecting pieces are provided with an eye or loop for fastening to the collar button.

The theory of the defendant is that the prior art and the action of the Patent Office, as disclosed by the file wrapper, indubitably show a patent (assuming invention) that is narrow and limited to the precise construction described in the specification and in the drawing attached thereto. This contention renders necessary an examination of the proceedings in the Patent Office upon the initial application of the patentee and also as to the prior state of the art. The original claims were repeatedly rejected by the Commissioner of Patents for indefiniteness, and upon the ground that the connection pieces were not located or sufficiently described in the proposed claims, and the suggestion by the Patent Office of the single claim in suit was finally accepted by the patentee. The record shows that at the date of the invention in suit it was old to construct a cravat in which the ends thereof were left free from strain, so that they could be tied into a bow. In the patent to Graves, No. 294,869, dated March 11, 1884. a method is shown to prevent neckties from rising over a standing collar by using a looped wire fastener, with extending arms, which fitted over the collar button and hooked into the cravat, holding it firmly in place and relieving the bow from strain. In the Gerber patent, No. 276,023, the tabs of the turndown collar described in the specification were also constructed to relieve the free ends of the tie from the strain. In the Bartlett patent, No. 460,259 another method was shown which also operated to accomplish a similar result. In that patent the neckband was divided at the back and the ends of the elastic material were provided with a hook and eye, together with a sliding buckle for fastening and adjustment. In the prior patent to Davies, No. 586,284, the connection piece of the necktie is made at the rear in precisely the same way as in the Bartlett patent, while

at the front there is sewn on the inner side of the neckband a connection piece, which according to the patent may be either elastic or inelastic, and which functionally operated to remove the strain from the free ends of the band. In the later Davies patent, No. 615,813, application filed July 12, 1897, is also shown a method to divert the strain from the knot and to adjust the connection piece which has a ring at its ends under the front collar button. To enable such adjustment a hook is attached at the inner side of the band at the point adjacent to the front collar button which engages the ring. An important reference is the Hirschfield patent, No. 507,401, dated July 23, 1889, which discloses, I think, nearly all the essential elements of the patent in suit, and, moreover, the precise function is achieved therein by equivalent means. True the article of apparel is an outing belt, yet it is analogous to the patent in suit, and practically belongs to the same art. The principle by which the free ends of the sash in the Hirschfield patent are relieved from strain is thought to be practically the same as that adopted by the patentee.

Now, what has the patentee accomplished by his improvement? It may be conceded that he has produced a better functional result, but whether, by attaching the short connections to the inner face of the neckband and by providing rings at their ends which fit over the front collar button thereby diverting the strain from the knot, he has exercised invention, is to my mind doubtful. Assuming, however, the patentability of the Davies invention, I think the scope of the claim m view of the prior art, to which attention has been directed, and the action of the Patent Office, is exceedingly narrow. The rule enunciated in the case of Lehigh Valley R. Co. v. Kearney, 158 U. S. 461, 15 Sup. Ct. 871, 39 L. Ed. 1055, is thought applicable. It was substantally held in that case that, if a patentee acquiesces in the limitations suggested by the Patent Office and the essential elements of the claim are alluded to by reference letters indicating that the Patent Office inended to restrict the claim to the particular device described, a claim to a broader scope cannot be maintained. Knapp v. Morss, 150 U. S. 21, 14 Sup. Ct. 81, 37 L. Ed. 1059.

In the defendant's cravat the means for securing the same to the front collar button differ from the fastening device of the Davies atent in that the cravat has an inner or supplemental band which is tegral with the outer neckband and is adapted to button to the front and back collar buttons. The cravat proper and supplemental band are cut or stamped out simultaneously from the same material and sitably folded over constituting a combination of an inner and outer sand. The inner band has buttonholes at its ends for buttoning to the front collar button. It may be doubted whether making the cravat and supplemental band with buttoning arrangement in one piece would escape the charge of infringement, yet to my mind the defendant's necktie is more like the Hirschfield belt hereinabove mentioned than the construction in suit. In short, the defendant's article of manufacture is without connection pieces, unless its supplemental band with buttonholed ends would be considered an equivalent of the complainant's fastening device, but in view of the prior art, as already stated.

the patent in suit must be limited to the arrangement described in the patent; that is, to connections secured to the inner face of the tie adjacent to each end portion thereof. The bill is dismissed.

MERRELL-SOULE CO. v. STAR CO.

(Circuit Court, S. D. New York. March 28, 1907.J

PATENTS-INFRINGEMENT MASKS.

No. 8,953.

The Merrell patent, No. 727,173, for a mask, is limited to a mask made from a blank of "pasteboard or similar flexible material." As so constru ed, held not infringed.

In Equity. On final rehearing.

Wm. Raimond Baird and Howard P. Dennison, for complainant.
H. Albertus West, for defendant.

PLATT, District Judge. This is a bill in equity for an injunction and accounting, based upon letters patent granted to complainant, No. 727,173, dated May 5, 1903, in which claims 1 and 5 are at issue:

"1. A mask having ears and provided on the inner and outer sides of each ear with interlocking flaps whereby the top portion of the mask is held down. substantially as set forth."

"5. A mask provided at its top with ears and with interlocking top flaps holding the top portion down, and having at its lower end interlocking muz zle-flaps, substantially as set forth."

The unfair way in which the defendant treated the complainant and its patent appeals most vigorously to the conscience of a court of equity. It impels one to grant the prayer of the bill, if such action is from any reasonable view of the matter, warranted by the facts What in another case might smack of injustice would here be excus able. But this is a patent suit, and the scope for relief is therefor somewhat limited.

It is our duty to discover what the patentee's inventive conception was, and what he claimed under it. Having found that, it may no be so very difficult to decide whether or not the defendant has tres passed upon forbidden ground. He teaches the public how to take flat blank of pasteboard, or some similar flexible substance, and t provide such material at suitable places with interlocking flaps, so tha the blank can be shaped into a mask at the point where the flaps ar applied. He then claims a mask (not a mask blank, it is true), bu he claims such a mask as he has described, and that is a mask made ou of a certain kind of blank, and, unless a blank of the kind specifie is used, the mask made from it will not be the mask claimed in th patent. Lines 12 and 13 of the specification tell us that the blan is to be made of "pasteboard or similar flexible material." (A italics in this opinion are mine.)

He makes plainer what he thought he had invented by showing how a tuck-flap, i, can be introduced into a transverse slit, k, between the eye openings, so that the mask can be bent more easily into the desired shape. All through the specification one finds that he is directed to select for his blank a material with enough strength and pliability so that it can be bent into certain shapes, and, having been so bent, will be likely to stay where it has been put. With such a construction, there is probably some invention in the patent over and beyond a gauze mask, or the ordinary stiff masks to which we are accustomed. The patentee has found and explained a cheap and easy way to produce a mask, which, to a certain extent, takes the place of the more expensive kinds, and affords an agreeable pastime for children. When we construe the patent in this way, it is impossible to discover the slightest trace of infringement in the alleged infringing devices.

A moment's examination of two exhibits, viz., "complainant's exhibit, defendant's bear mask uncut," and "complainant's exhibit, defendant's bear mask made up," and a comparison of them with other exhibits, ought to settle the entire controversy. With considerable ingenuity, these two exhibits have been given substance and form by pastng the original devices upon cloth, but the original devices themselves are made of cheap newspaper stock. If the uncut device is taken as an entirety and cut out according to directions, one obtains a flimsy cap: and, if the parts which are necessary to form such a cap are removed, the remainder cannot be tortured into an infringement. Understanding the "mask" of the claims at issue to be the kind of mask which has been above suggested, the language in claim 1, provided on the inner and outer sides of each ear with interlocking flaps," becomes intelligible and means something. The defendant has no such construction.

Counsel for complainant call attention to the fact that the patented masks were put out upon a superior quality of paper, which made it an attractive novelty, but that the defendant has prostituted the vention by putting it upon paper of the most inferior quality, which can hardly endure the necessary manipulation. It is hoped that, upon reflection, they will see that the complainant practiced its invention when it used the "superior quality of paper," and that, instead of prostituting the invention," the defendant avoided it in toto, by sing such paper as it did use.

Let the bill be dismissed.

BEACH v. HATCH.

(Circuit Court, D. Massachusetts. May 15, 1907.)

No. 63.

PATENTS SUITS FOR INFRINGEMENT ACCOUNTING.

On an accounting for infringement of a patent under Rev. St. § 4921 [U. 8. Comp. St. 1901, p. 3395], the defendant's profits and complainant's damages are distinct from and independent of each other and are governed

by different principles, and one is not the measure of the other, and hence
both should be found, so that complainant may elect between thein.
[Ed. Note. For cases in point, see Cent. Dig. vol. 38, Patents, § 569.
Accounting by infringer for profits, see note to 50 C. C. A. 8.]

In Equity. On exceptions to master's report.

John Dane, Jr., for complainant.

Wetmore & Jenner and John Gilbert Hill, for defendant.

COLT, Circuit Judge. This suit was brought for infringement of the Beach patent, and a decree was entered in the usual form for an injunction and reference to a master. The case is now before the court on exceptions to the master's report. The fundamental question raised by the exceptions is whether the ruling of the master on the question of accounting under section 4921 of the Revised Statutes [U. S. Comp. St. 1901, p. 3395] was correct.

In the decree the master was directed to take and report to the court an account of the profits which the said defendant has received or which have arisen or accrued to him from the infringement of the patented invention by unlawfully making, using, or vending the same as alleged in the bill, and to ascertain and report the damages, if any, in addition to the profits which the complainant has sustained thereby since the 26th day of May, A. D. 1891, by reason of the use of the combinations set forth in the first, second, and third claims of said reissued patent.

The master found that the complainant's firm was prepared at all times during the accounting period to supply to customers the Beach machine, embodying the invention described and claimed in the patent in suit, and that the defendant could have purchased in the market two noninfringing Beach machines in place of the two infringing machines used by him during the accounting period. The master further found that the manufacturer's profit which the complainant's firm would have made upon two such machines, if they had been purchased and used by the defendant in place of the two infringing machines, amounted to $529.20. The master then ruled that the complainant was entitled to recover from the defendant this amount. In support of this ruling the master says:

"Where an inventor embodies his invention in working machines and supplies the market with such machines, he is limited in, an accounting for profits to an amount equal to the profits which he would have made if the infringer had purchased such machines from him and used them in place of infringing machines. Such use of an invention by an inventor establishes its money value in an accounting for profits and limits a recovery of profits as effectu ally as an established license fee does. The profits being so limited, and the damages being determined, it is unnecessary to consider the details of profits or their amount, as they can, in no event, exceed the damages which are re coverable."

Under section 4921 and the decree entered in this case the master should have proceeded, first, to ascertain defendant's profits; and second, complainant's damages. The complainant could then elect to have a decree entered for either profits or damages. Tilghman v Proctor, 125 U. S. 136, 142–150, 8 Sup. Ct. 894, 31 L. Ed. 664.