is a waiver of the latter. St. Louis & S. F. Ry. Co. v. McBride, 141 U. S. 127, 11 Sup. Ct. 982, 35 L. Ed. 659; 3 Cyc. 511.

The judgment will be reversed, with costs, and the cause remanded, with directions to proceed to try the cause upon the issues joined on the second and third defenses presented by the answer of the defendant Moore.

JEFFERSON ELECTRIC LIGHT, HEAT & POWER CO. v. WESTINGHOUSE ELECTRIC & MFG. CO.

(Circuit Court of Appeals, Third Circuit. June 9, 1905.)

No. 36.

JUDGMENT-PATENTS-SUIT FOR INFRINGEMENT-RES JUDICATA.

In order that a decree adjudging the invalidity of a patent shall render that question res judicata as between the complainant and one not a party to the record, but who in fact conducted the defense at his own expense, he must have done so openly so that he would have been bound by the decree if it had sustained the patent.

[Ed. Note. For cases in point, see vol. 30, Cent. Dig. Judgment, §§ 11901193.]

Appeal from the Circuit Court of the United States for the Western District of Pennsylvania.

For opinion below, see 135 Fed. 365.

Arthur S. Keithley, for appellant.

Thomas W. Bakewell and George H. Christy, for appellee.
Before ACHESON, DALLAS, and GRAY, Circuit Judges.

ACHESON, Circuit Judge. This case was heretofore before this court on an appeal by the defendant below (the present appellant) from an order granting a preliminary injunction. That order we reversed because of the pendency of a plea of res adjudicata based upon a decree of the United States Circuit Court of Appeals of the Second Circuit in a suit brought by the complainant here against the Catskill Illuminating & Power Company (121 Fed. 831, 58 C. C. A. 167), adjudging each of the patents in suit to have been anticipated, and the incomplete and conflicting character of the preliminary proofs upon which the court granted the injunction (134 Fed. 392). In the opinion then delivered we said:

"The case, it is probable, will ultimately turn upon this defense of res adjudicata. The preliminary proofs relating thereto are very conflicting. The defendant is a mere user of these meters. No irreparable injury, or, indeed, any special injury to the complainant from the defendant's use of the meters is alleged or shown. Under the circumstances, then, we think that the court should have forborne to act until full proofs were before it. Without intending to intimate any opinion upon the merits of the case, we will reverse the order granting a preliminary injunction."

Thereafter the proofs under the plea of res adjudicata were com pleted, and the cause proceeded to hearing upon the plea and a renewed motion for a preliminary injunction, resulting in a decree

139 F.-25

overruling the plea and granting an injunction. From that decree the defendant appealed. The case has been argued before us entirely upon the defense raised by the plea, and the only question we are called on to discuss is whether the plea was sustained by the proofs. The plea avers that the issues in the Catskill case (mentioned above) and in this case are the same, and that the parties are the same, inasmuch as said Catskill case was, and this case is, defended by the Diamond Meter Company, which manufactured the alleged infringing devices in that case as well as in this, and that the complainant knew that the Diamond Meter Company was defending the Catskill case, and that the decree therein is res adjudicata of everything involved in this case.

Upon an attentive examination of the proofs we have reached the conclusion that the learned judge below was right in overruling the plea. Certain it is that the Diamond Meter Company did not avowedly or openly conduct the defense in the Catskill case. No doubt (as now appears) that company did carry on the defense at its own expense, but this was done with such secrecy as not to expose its connection with the litigation. The allegation that the complainant knew that the Diamond Meter Company was participating in the defense of the Catskill case is not sustained by the proofs. The counsel for the complainant, indeed, had reason to suspect that the Diamond Meter Company was conducting the defense in the Catskill suit, but we think the evidence fails to bring home to them any certain information on the subject. The proofs as a whole satisfy us that the purpose of the Diamond Meter Company was to maintain such an attitude with reference to the Catskill suit that it might have the indirect benefit of the decree if favorable to the defendant therein, and yet not be concluded should the decree be adverse to the defendant. But if the Diamond Meter Company desired that the decree in the Catskill suit should operate as an estoppel in its favor, it was bound by avowal or open action to place itself in such an unequivocal position that the decree would be mutually binding as res adjudicata upon itself and upon the complainant. Litchfield v. Goodnow's Adm'r, 123 U. S. 549, 8 Sup. Ct. 210, 31 L. Ed. 199; Andrews v. National Foundry & Pipe Works, 76 Fed. 166, 22 C. C. A. 110, 36 L. R. A. 139; Cramer v. Singer Mfg. Co., 93 Fed. 636, 35 C. C. A. 508; Lane v. Welds, 99 Fed. 286, 39 C. C. A. 528. Having concealed its connection with the Catskill suit while it was pending, it is too late now for the Diamond Meter Company to set up the final decree in that case as an estoppel against the complainant.

The record in the Peoria case has no determining effect. The bill there was filed against the Diamond Meter Company by the complainant after the decision in its favor by the Circuit Court in the Catskill case, and the bill did allege that the Diamond Meter Company defended that suit, and that all questions passed upon in that suit were res adjudicata as between the complainant and the Diamond Meter Company. But this the Diamond Meter Company in and by its answer denied. Thus the averment in the bill was fully met by a denial in the answer and the question was left open.

Upon consideration of the whole evidence we concur in the conclusion reached by the court below, and accordingly the decree overruling the plea and granting a preliminary injunction is affirmed.

LANGFELD et al. v. ALBRIGHT.

(Circuit Court of Appeals, Third Circuit.

No. 7.

June 29, 1905.)

PATENTS-INFRINGEMENT-COIN PURSE.

The Albright patent, No. 439,085, for a coin purse, construed narrowly, as it must be in view of the prior art, especially of the Rundlett patent, No. 201,201, held not infringed by a purse substantially the same in construction and the manner of its use as that of the Rundlett patent. Appeal from the Circuit Court of the United States for the Eastern District of Pennsylvania.

Ernest Howard Hunter, for appellants.

Edw. W. Magill, Andrew A. Leiser, and Walter F. Rogers, for appellee.

Before ACHESON, DALLAS, and GRAY, Circuit Judges.

ACHESON, Circuit Judge. The bill in this case charges infringement by the defendants of letters patent No. 439,085, dated October 28, 1890, granted to the complainant, Chester E. Albright, for "new and improved purse." The stated object of the invention is to provide a convenient receptacle for specie, which may be securely closed to prevent the escape of coin and readily opened to display. the contents and make them easily accessible, "so that any one piece of coin can be picked out from among the others with the greatest facility, and without handling any other than the piece wanted, as from off the bottom of a till." To accomplish this object, the patentee employs a stiff hinged-frame consisting of two members or parts, A, B, and two pieces of leather or other flexible material (D and F) fastened to the frame; the piece D to both parts of the frame on the outside thereof, and the piece F to the upper or inner side of one of the parts, so as to form a pocket opening to the other or uncovered part. The specification states:

"A and B constitute the frame of the purse, and are connected at C by hinges, and these hinges should be made with a stop to prevent A and B from opening farther than in a straight line, as in Fig. 3, or to any greater or less distance, as preferred, so as to prevent the side forming the till from dropping down and losing the coin when the side of the frame containing the receptacles only is held in the hand when the purse is open for the purpose of picking out coin. When open, the purse is surrounded and supported on all sides by this frame, and when shut on all sides but the one between the hinges, which must be left free and unobstructed, so the coin can readily slide, when the purse is open, from the side supported by A onto the side supported by B."

The claims of the patent alleged to be infringed are the first and sixth, which read as follows:

"(1) A purse having a stiff frame divided into two parts by hinges and flexible material attached to the frame, so as to form on one side of the

hinges one or more receptacles for coin and on the other side a till from which the coin can be picked when the purse is open, substantially as described."

"(6) In a purse, the combination of the frame, A and B, connected by hinges, and the flexible material, D and E, arranged and attached to the frame so as to form on one side of the hinges a receptacle for coin with its mouth opening toward the hinges and forming on the other side a till onto which the coin can freely slide when the purse is open, and which till will close the receptacle when the purse is closed, substantially as described.”

Obviously the stiff frame divided into two parts connected by hinges is a material feature of Albright's invention, and enters into each of the two claims in question. As shown in the patent, the hinges are constituted by metal pintals which pass through eyes in the metal frame. Now, it may be conceded that Albright shows a patentable invention, although his advance upon the prior art is very slight; but his claims here in suit must be strictly construed to save them in view of the prior art, particularly the patent No. 201,201, dated March 12, 1878, granted to James C. Rundlett. The specification of Rundlett's patent contains the following description: "The object of my invention is to provide a compact and convenient receptacle for specie, which may be easily opened to display the specie, and may be readily and securely closed, so as to prevent the escape of coin. Referring to the drawing, A is the back piece of the purse, which, in the present case, is oblong, with one end a little wider than the other. To the smaller end of the back piece a front piece is stitched, forming a pocket, B, for the reception of coin. A front piece is stitched to the larger end of the back piece, forming a shallow pocket, C, for receiving the opposite end of the purse when the purse is folded together. A strip of the material of which the front of the larger pocket is made extends along each edge of the back piece, forming lips of flaps, a, which prevent the coin from escaping when the purse is opened, and the coin is allowed to drop out of the pocket B into the open space between the pockets B, C. The pocket B is provided with a narrow flap, b, which stiffens the front piece, and facilitates the return of the coin to the pocket. When the pocket B is tucked into the pocket C, the coin is prevented from escaping. The purse is preferably made of leather, and has no metallic parts. It is soft and flexible, and easily carried in the pocket. I do not limit or confine myself to any particular mode of manufacture, nor to any special material or form, as these may be varied without departing from my invention."

Rundlett's patent shows a purse made of a piece of leather folded at the middle, having on one side of the fold a coin pocket and on the other side an open space upon which the coin may slide from the pocket when the piece of leather forming the base is laid out flat, and around the edge of the open space is a strip of leather forming a lip or rim to prevent the coin from falling off. Rundlett's object was the same Albright sought, and the exposure of the coin upon the open space is effected in the same way in both instances. There is no difference between these two purses either in principle. or method of manipulation. If there is any patentable distinction between them it lies in Albright's described frame composed of two parts, A and B, connected by hinges, which hinges, as we have seen, Albright specifies should be made "with a stop to prevent A and B from opening farther than in a straight line," etc. The defendants' purse has no hinged frame. It is made of leather, and consists of a back-piece folded at the middle, and having on each side of the fold

a U-shaped projecting rim of leather re-enforced by an inclosed piece of cardboard and a top piece of leather secured at its edges to the projecting rim on one side of the fold, and forming a coin pocket which opens to the uncovered portion of the leather back-piece on the other side of the fold. It operates precisely as does Rundlett's purse. We perceive no patentable difference between Rundlett's purse and the defendants' purse. If the defendants infringe the Albright purse, Rundlett anticipated Albright. The defendants' purse does not embody the distinguishing feature of Albright's purse, namely, his frame divided into two parts connected by hinges. We are, then, of opinion that infringement by the defendants was

not shown.

Therefore the decree of the circuit court is reversed, and the case is remanded to that court, with direction to enter a decree dismissing the bill, with costs.

AMERICAN CARRIAGE CO. v. WYETH.

(Circuit Court of Appeals, Sixth Circuit. July 20, 1905.)

1. PATENTS-ANTICIPATION.

No. 1,419.

The effect of a device as an anticipation is not altered by the fact that it was made to serve a purpose additional to that for which it was used in the second case, where, so far as the latter goes, the two are equivalents.

[Ed. Note.-For cases in point, see vol. 38, Cent. Dig. Patents, § 89.]

2. SAME SLEIGH RUNNERS.

The Wyeth patent, No. 400,381, for a sleigh runner for wheeled vehicles, claim 12, the essential feature of which is the use of side plates of iron or steel to fasten the rave and knees together, instead of making a mortise and tenon connection, is void for anticipation and lack of patentable invention.

Appeal from the Circuit Court of the United States for the Western District of Michigan.

Wm. G. Howard, for appellant.

H. L. Dodson and A. C. Denison, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

SEVERENS, Circuit Judge. Claiming as assignee the rights secured by letters patent Nos. 400,381, granted to David G. Wyeth March 26, 1898, and 444,405, to the same grantee, the complainant (now appellee) filed this bill complaining of infringement, and praying for an injunction and for an accounting for profits and damages. Upon the bill and several affidavits filed therewith he moved for a preliminary injunction. The defendant answered, and filed opposing affidavits, and the complainant filed affidavits in reply. Upon the hearing of the motion the court sustained the motion, and granted an injunction, but only in respect to the twelfth claim of patent No. 400,381. This appeal therefore presents only the merits of that claim and the question of the infringement of it.