along the shaft and comprises a handle and a pair of gear-wheels in mesh. One of the pair takes motion from the shaft and gives it to the other member of the pair, which other member engages one of the steps of the cone and thus gives motion to the feed-shaft and to the carriage containing the screw-cutter.

The fundamental organization, or generic combination comprising two series of speed varying gear-wheels, with a shifting connection, whereby the changes of the second series can be multiplied by the changes of the first series, was used in the prior art for the same purpose and in the same class of machines. The prior art upon which the defendant chiefly relies is found in the patents to Viles, No. 111,859, February 14, 1871; to Hyde, No. 247,764, October 4, 1881; to Humphreys, No. 83,774, November 3, 1868; to Bevier, No. 338,916, March 30, 1886; and to West, No. 296,491, April 8, 1884.

The patent in suit was before the Circuit Court for the Southern District of New York in Hendey Machine Co. et al. v. Prentiss Tool & Supply Co. (C. C.) 113 Fed. 592. The opinion of Judge Lacombe says (page 594):

“An examination of the prior state of the art, as disclosed in the proofs, shows that the patentee was not a pioneer. Indeed, it is not contended that he was. He has used old devices in a new combination (for there is no actual anticipation shown) to accomplish a particular result (rapidity of speed change), and a like result may be obtained by other combinations. The case is one, therefore, where the particular combination of parts and details which the patent secures to him is to be conformed to the self-imposed limitations which the patentee has inserted in the claims, and nothing can be an infringement which does not fall within the terms the patentee has chosen to express his invention.' McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. 76, 35 L. Ed. 800; Groth v. Supply Co., 9 C. C. A. 507, 61 Fed. 284. It will be noted that in every one of the claims above recited the series of gear wheels, of varying diameters, arranged step-like or in cone shape, is explicitly described as being located on the feed-shaft.' In the combination of defendant's lathe a similar step-like or cone-shape series of gears is found, but it is not located on the feed-shaft; but upon a countershaft arranged adjacent to, and parallel with, the feed-shaft. Defendant contends that this is an important improvement-a contention which complainant disputes, and which need not be decided. It would seem to be sufficient, under the authorities cited supra, that the steplike gears are not located where in eight separate claims the patentee distinctly asserted that they should be, to embody his invention.”

This seems to me a correct interpretation of the patent, and a decision which is directly applicable to the present case.

The defendant's machine may rightfully employ the generic combination. It does not use "a series of interchangeable gear-wheels," if we give that expression the same meaning given to it in the specification of the patent in suit, but employs a double cone system generally similar in function, it is true, to complainants' interchangeable gears, but also similar to Humphreys' device for the same purpose, though the defendant has improved upon Humphreys, and uses a cone grar system as the multiplier by which three different speeds are obtained without the necessity for shifting interchangeable gears. It does not secure what complainant calls “the unlimited capacity of interchangeable gears” (which might, perhaps, follow from the substitution of other gears rather than from an interchange of the gears shown), but limits the changes to the number possible with the fixed cone gears of the multiplier.

I am also of the opinion that the defendant's second series of cone gears is not arranged on the "feed-shaft” as the claims require. The "feed-shaft” of the patent in suit is a specific part-a threaded shaft which in screw-cutting gives motion to the carriage. Being so located, the complainants' cone gears are limited in function to providing changes for screw-cutting. The defendant has located its cone gears upon a separate shaft, or countershaft, upon which is a slip-pinion which can be shifted to engage either the threaded feed-shaft used for screw-cutting, or a second feed-rod which is used in turning. The advantages of this are said to be that a further system of feeds is obtained and the feed-shaft is employed only for cutting screw-threads. This matter is particularly referred to in the specification of the defendant's patent to Newton, page 2, lines 65 to 105.

The complainants seek to avoid the effect of Judge Lacombe's opinion by pointing out differences between the Lodge-Shipley device, there involved, and the defendant's device. It would not be profitable to discuss these differences. They do not affect the proposition that the patent in suit is of the class in which, as its specification states, “the invention consists in certain parts and details and combinations of the same.”

I am of the opinion that neither as a matter of function nor as a matter of nomenclature can it be said that the defendant has located its cone-gears on the feed-shaft. The superior convenience of Norton's location of the shifting lever, and of a “one hand lever movement,' and the preservation of the "unlimited capacity of interchangeable gears,” are insisted upon. The last feature the defendant does not have, and the other features would probably be insufficient to constitute a patentable improvement on the devices of the prior art. These matters, however, are outside the claims. I am of the opinion that the defendant does not infringe.

The bill will be dismissed.

RICHARDS et al. V. MEISSNER et al.

(Circuit Court, E. D. Missouri, E. D. June 19, 1907.)

PATENTS-SUIT TO COMPEL ISSUANCE-ISSUES AND PROOFS.

The government is treated as a party to all actions in which the validity of a patent is involved, in order that it may protect the public against a monopoly granted to one who is not entitled thereto, and in a suit under Rev. St. § 4915 [U. S. Comp. St. 1901, p. 3392], to compel the issuance of a patent to complainant for an invention for which one was granted to the defendant, evidence is admissible to show that defendant's patent is void for anticipation, although no such issue is made by the pleadings, and although such evidence may defeat the action.

In Equity. On motion to require a witness before a commission to answer questions.

E. Hayward Fairbanks, for the motion.
Samuel E. Hibben, opposed.

TRIEBER, District Judge. This is a proceeding in equity under Rev. St. § 4915 [U. S. Comp. St. 1901, p. 3392], pending in the United States Circuit Court for the Western District of Missouri.

The complainants having completed their proofs, the defendants proceeded to take the testimony of the defendant Meissner, the patentee, before an examiner, under equity rule 67. Upon cross-examination, the witness was interrogated in relation to British patent 2,182 of 1875 to one Lake, for the purpose of proving that the invention patented to the witness had been anticipated by that British patent, and that, for this reason, there was no patentable novelty in the defendant's alleged invention. The effect of such proof would, of course, not only defeat the patent granted to the defendant, but also defeat this action of the complainants. Counsel for the defendants objected to this testimony upon the ground that the only issue raised by the bill in this cause is whether the Commissioner of Patents erred in refusing the application for a patent of the complainant on his intervention and granting it to the defendant. It is further urged that, had the complainants alleged in their bill that the British patent 2,182 of 1875 had anticipated the invention for which the complainants by this action seek to obtain a patent, the bill would have been dismissed on demurrer, and for this reason it is claimed that these questions are inadmissible. The complainants now ask for an order requiring the witness to answer the questions in relation to the British patent.

Ordinarily, no evidence is admissible in a suit in equity unless relevant and material to the issues as made up by the pleadings. As has been aptly said: “Proofs without allegations are no better than allegations without proof.” So far as the pleadings in this case show, there is no such issue as priority of the invention by a third party whose patent antedates the claims of both contestants, and necessarily none could be raised by the complainants in a proceeding under section 4915, Rev. St. But does this rule apply to proceedings of this nature? By virtue of the authority granted by the Constitution, Congress has provided for the granting to inventors of a patent whereby they are entitled to a monopoly of the products of an invention for a limited period as against the entire Nation. While this great privilege is intended as a reward for meritorious inventions, and to encourage them, still it is a monopoly, and, all monopolies being odious, the beneficiary will be held strictly to the terms of his grant.

In United States v. Bell Telephone Company, 128 U. S. 315–370, 9 Sup. Ct. 90, 98 (32 L. Ed. 450), the court say:

"The United States, by issuing the patents which are here sought to be annulled, has taken from the public rights of immense value and bestowed them upon the patentee. In this respect the government and its officers are acting as the agents of the people, and have, under the authority of law vested in them, taken from the people this valuable privilege and conferred it as an exclusive right upon the patentee. * * * This has been taken from the people, the public, and made the private property of the patentee by the action of one of the departments of the government acting under the the forms of law, but deceived and misled, as the bill alleges, by the patentee."

In divorce cases, it has been the practice in the ecclesiastical courts of England for the crown to be represented by its proctor in opposition to both parties, for the protection of society, and to prevent collusive actions. And in this country it has always been the rule for courts, in divorce proceedings, for the same reasons, not to consider themselves bound by the pleadings, but, on its own motion, examine witnesses and permit evidence on matters not put in issue by the pleadings, but which in the opinion of the court may tend to defeat the action or show collusion or condonation. 9 Am. & Eng. Encyc. (2 Ed.) p. 729.

For like reasons Congress and the courts treat the government as a party to all actions in which the validity of a patent is involved, in order that it may protect the public against a monopoly granted to one who may not be entitled thereto. It is upon this ground that patents, when granted by the government after all the issues of facts have been determined by one of the departments of the government; are still subject to attack and defeat in a collateral proceeding (section 4920, Rev. St. [U. S. Comp. St. 1901, p. 3394]), although in all other matters it is the well-settled rule that the determination of facts intrusted by law to one of the departments of the government is conclusive, unless there has been a misconstruction of the legal effect of the statute under which the department is acting, or fraud or mistake. Johnson v. Towsley, 13 Wall. 72, 20 L. Ed. 485; Lee v. Johnson, 116 U. S. 48, 6 Sup. Ct. 249, 29 L. Ed. 570; Passavant v. United States, 148 U. S. 214, 13 Sup. Ct. 572, 37 L. Ed. 426; Burfenning v. Ry. Co., 163 U. S. 321, 16 Sup. Ct. 1018, 41 L. Ed. 175; The Japanese Immigration Case, 189 U. S. 86, 23 Sup. Ct. 611, 47 L. Ed. 721; American School of Magnetic Healing v. McAnnulty, 187 U. S. 94, 23 Sup. Ct. 33, 47 L. Ed. 90; Houghton v. Payne, 194 U. S. 88, 24 Sup. Ct. 590, 48 L. Ed. 888; United States v. Ju Toy, 198 U. S. 253, 25 Sup. Ct. 644, 49 L. Ed. 1040; Harris v. Rosenberger, 145 Fed. 449, 76 C. C. A. 225; Lewis Publishing Company v. Wyman (C. C.) 152 Fed. 787.

But whatever doubt may have existed on that point has been removed by what was decided in Hill v. Wooster, 132 U. S. 693–700, 10 Sup. Ct. 228, 33 L. Ed. 502. That was a suit under the same section as is this case, and the contention of counsel, as stated by the court, was:

"That no question is made in the answer but that one party or the other is entitled to a patent, and that therefore evidence which does not tend to show which party is entitled to the patent is irrelevant and should be sup pressed."

But the court overruled this contention, and held :

"This court, however, has repeatedly held that, under the Constitution and the acts of Congress, a person, to be entitled to a patent, must have invented or discovered some new and useful art, machine, manufacture, or composition of matter, or some new and useful improvement thereof, and that it is not enough that a thing shall be new, in the sense that in the shape or form in which it is produced it shall not have been before known, and that it shall be useful; but it must, under the Constitution and the statute, amount to an invention or discovery."

In Leslie v. Tracy (C. C.) 100 Fed. 475, the same question was before the court, and it was held, quoting from the headnote:

“In a suit brought under Rev. St. $ 4915, to require the issuance of a patent to the complainant, where the controversy is between two claimants to priurity of invention, there can be no adjudication in favor of either, unless the alleged invention is patentable.” Davis v. Garrett (C. C.) 152 Fed. 723.

In the case at bar, it may be true that this proof may defeat the action of the complainants by showing that they were not entitled to a patent; but, at the same time, it may also show that the defendants are not entitled to a patent, and thus relieve the public from the monopoly created by the granting of the patent to the defendants.

For these reasons, I am of the opinion that the questions in relation to a prior patent covering the claims of the defendants to the patent herein involved should be answered, subject, however, to the right of counsel to note their objections thereto, in order that, upon a final hearing, the trial court may pass upon the admissibility of the evidence without prejudice to anything decided herein.

UNDERWOOD TYPEWRITER CO. V. GRAVES TYPEWRITER CO. et al.

(Circuit Court, S. D. New York. June 10, 1907.) PATENTS-INFRINGEMENT-TABULATING ATTACHMENT FOR TYPEWRITERS.

The Gathright patent, No. 436,916, for a tabulating attachment for typewriters, as previously construed by the Circuit Court of Appeals, held infringed, on motion for a preliminary injunction. In Equity. Suit for infringement of letters patent Nos. 436,916 and 452,268, both for improvements in typewriters, granted to Josiah B. Gathright; the first September 23, 1890, and the second May 12, 1890. On motion for preliminary injunction.

Briesen & Knauth, for complainant.
Fred. Chappell, for defendants.

LACOMBE, Circuit Judge. The question whether the devices complained of infringe the second Gathright patent will have to be decided at final hearing

As to validity and construction of the first Gathright patent, a careful examination of the patents which have been introduced here, but which were not in the record filed in prior suit of Wagner Typewriter Company v. Wyckoff, Seamans & Benedict, 138 Fed. 108, 151 Fed. 585, leads to the conclusion that their introduction in such prior suit would not have induced that court to modify its opinion. These patents are understood to be Morgan, 191,149, of 1877; Ritty and Birch, 271,363, of 1883; Kaley, 317,375, of 1885; Thomson (English), 7,269, of 1888 (same as Jenne [U. S.], 548,553, of 1895). The court may be in error in this enumeration, since counsel have failed to furnish the list asked for at oral argument, and an independent search has been made through the earlier record. No consideration is given to any patents subsequent to December 28, 1887, the date of invention found for Gathright by the Court of Appeals.

As the fourth and fifth claims are construed by that court, infringement seems entirely clear. The circumstance that prior to that decision the Patent Office granted a patent to defendant's assignor without citing Gathright's patent against him is not important. Non constat that such grant would have been made, had the decision of the Circuit Court of Appeals been before the examiner.