Plaintiff relies on Brookings Bank v. Federal Reserve Bank (D. C.) 291 F. 659. This was an action at law, in which the stipulation was signed extending the time to answer and filed with the court, and an order was made by the court extending the time. Of course, this conduct amounted to a general appearance; but it is not authority to support plaintiff's contention in this Connor, District Judge, in Avent v. River Lumber Co. (C. C.) 174 F. quotes from Judge Dillon as follows:

case. Deep

298,

"In the first place, an extension of time by mere consent of the parties out of court -that is, by a stipulation, agreement, or understanding, not having the sanction of an order of court-will not extend the time for filing a petition for removal of the case. But, on the other hand, if the laws of the state and the established practice of its courts require that the defendant shall plead or answer within a certain limited time, "unless such time shall be extended by order of the court" (or words to that effect), then it seems that extension of the time granted by order of the court will correspondingly lengthen the time within which a petition may be filed.' Dillon on Removal, $ 156."

[2] The conduct of the parties is not sufficient to constitute a waiver, nor is it sufficient to amount to a general appearance on the part of the defendants.

The motion to strike out the service and to dismiss the suit is granted, and the plaintiff and the surety on his bond are adjudged to pay the costs.

ESKIMO PIE CORPORATION v. LEVOUS

et al.

A single purchase of candy wrappers, without knowledge that they bore any patent notice, does not constitute the purchaser a licensee by estoppel.

5. Trade-marks and trade-names and unfair competition 59(5)-Seller of "Big-5 Pie" held not to have infringed trade-mark "Eskimo Ple," or "Pie."

Defendant, selling "Big-5 Pie" to purchasers asking for "Eskimo Pie" held not to have infringed plaintiff's trade-mark "Eskimo Pie," or "Pie," if the latter is subject to appropriation.

BODINE, District Judge. This is an action for the infringement of United States letters patent No. 1,404,539, to Nelson, and also the registered trade-marks "Eskimo Pie," No. 155,844, and "Pie," No. 162,585. [1] The Nelson patent was applied for December 23, 1921, and is for a confection consisting of a block of ice cream coated with chocolate. The claims in suit are the first six.

The gist of the invention, if there be one, is in sealing a block of ice cream in a sustaining and self-retaining casing of chocolate. A rectangular piece of ice cream is coated with chocolate. The plaintiff has 1,960 licensees, and in 1926 through these licensees 181,000,000 "Pies" were sold. For the 10 months, inclusive of October, 1927, 210,000,000 "Pies" have been produced. The sole

It is obvious that chocolate-coated confections are old. In 1907, Val Miller published his booklet, entitled "Thirty-Six Years an Ice Cream Maker." In this booklet he describes the manufacture of "Ice Cream Cannon Balls" as follows:

"Mould some round balls extra hard as for individuals, then melt some sweet chocolate, thin it down with cocoa butter, let it cool until the most of the heat is off; now have two wire forks, drop a frozen ice cream ball into the chocolate, turn it upside down quick, and with your two forks set it out on

All that the patentee does is to take a small brick of ice cream and coat it with chocolate, just as candies are coated. Val Miller took a round ball of ice cream and coated it, just as candies are coated. In one case the ice cream is round in form, and in the other case it is rectangular. In both cases there is a sustaining and self-retaining casing, sealing the core of ice cream.

The Cannon Ball ice cream was, a few years ago, popularized as the Babe Ruth Baseballs, and sold quite as well as Eskimo Pie. The Babe Ruth Baseballs are said to have been eaten by hand, just as the Pie is eaten.

The Tobien German patent, No. 247,709, of 1913, is a complete anticipation. The liquid filling is first frozen and then chocolatecoated. Tobien's claim is as follows:

"A process for producing small, hollow bodies made of chocolate, cocoa, sugar, gelatine, albumen, or similar materials with fluid or pulpy contents, by first placing the liquid or pulpy contents in a container and freezing same, and after same is frozen into a solid body to coat this body in the usual way with chocolate, cocoa, sugar, gelatine, albumen, or similar materials, which are designed to remain as a covering for the contents, which may again assume their liquid form."

In view of the disclosure, there was nothing novel in coating a bar of ice cream with chocolate. Even the sustaining and self-retaining casing of chocolate covering a liquid was not novel. Tobien shows that the chocolate he used was designed as a covering for the contents when liquid. He does not limit his disclosure to candy or brandy filling. [2] Nelson did cover his "Pie" with tin foil, but he does not claim any invention in this. And he certainly could not, in view of the fact that yeast, confections, and other, edibles have been so covered for years. There was neither a new creation of elements by Nelson, nor a new resultant. Val Miller and Tobien had the same elements and the same resultant. There is no invention in form alone. Roberts on Patents, 169.

[3] Commercial success is not conclusive upon the question of invention. It merely shows here that the alleged patentee anticipated a desire for ice cream.

[4] The defendant does not appear to have been a licensee, although he did purchase wrappers from the Lehmaier-Schwartz Company. The single purchase of wrappers, without knowledge that they bore any patent notice, would hardly be sufficient to con

[5] As to the charge of unfair competition, the 2,000 Eskimo Pie wrappers, which the defendant Levous purchased, were used for a single customer, and these were purchased from a concern authorized by the complainant to sell wrappers. The defendant did have in his place of business in Newark a few wrappers around dummies, and when asked for Eskimo Pie said he did not have Eskimo Pie, but did sell a Big-5 Pie, telling the purchaser it was a Big-5 Pie. Certainly, "Big-5 Pie" does not infringe any trademark, such as "Eskimo Pie," or "Pie," if the word "Pie" is subject to pre-emption.

The bill will be dismissed, with costs.

MARINE EQUIPMENT CORPORATION v. AUTOMOBILE INS. CO. OF HART. FORD, CONN.

District Court, S. D. New York. June 23, 1927. 1. Insurance 150-Where terms of policy and rider are inconsistent, rider will prevail.

If the terms of a rider are inconsistent with the terms of the printed form of policy to which it is attached, the terms of the rider will prevail.

2. Insurance 402-Marine policy on tug held to cover injury to machinery from striking submerged obstruction, covered by rider, though excepted from risk in printed form of policy.

A policy on a tug, which in the printed form

specifically excepted from the risk damage from "breaking of machinery, unless caused by stress of weather, stranding, collision, or burning," but by a rider provided that it should cover loss or damage to hull or machinery, unless resulting from want of due diligence of owner, held to cover injury to machinery caused by striking a submerged obstruction.

In Admiralty. Suit by the Marine Equipment Corporation against the Automobile Insurance Company of Hartford, Conn., on a policy of marine insurance, to recover damage sustained by the steam tug Vigilant, resulting from striking a submerged obstruction to navigation in the East River. Decree for libelant.

Carter & Phillips, of New York City (Robert Phillips, of New York City, of counsel), for libelant.

Bigham, Englar & Jones, of New York City (George S. Brengle, of New York City, of counsel), for respondent.

THACHER, District Judge. The policy in suit was written upon a printed form, to which several riders were attached prior to delivery. The policy itself indemnifies the

PNEUMATIC SCALE CORPORATION, LIMITED, v. MAPL-FLAKE MILLS, Inc.

[1] The plaintiff opposes the motion to transfer, and objects to the admission of the affidavits as evidence thereon. I think the

No. 660.

1. Trial 11(3)-Mere allegations in answer are not ground for transferring cause to law docket.

Motion to transfer cause from equity to law docket cannot be maintained on mere allegations in the answer, nor are affidavits admissible in support of such allegations, which must be established under the usual rules of evidence. 2. Courts 347(3)-Defense pleaded in bar admits allegations of bill not put in issue by such defense (equity rule 29).

A defense pleaded in the answer, pursuant to equity rule 29, which, under the former practice, would have been presentable by plea in bar, like such plea, admits all allegations of the bill

not put in issue by the separate defense.

In Equity. Suit by the Pneumatic Scale Corporation, Limited, against the MaplFlake Mills, Inc. On motion by defendant

to transfer to law side. Denied.

Robert H. Richards and Aaron Finger, both of Wilmington, Del., and Eiffel B. Gale, of Yonkers, N. Y., for plaintiff.

Andrew C. Gray, of Wilmington, Del., and C. J. Merriam and Arthur M. Cox, both of Chicago, Ill., for defendant.

MORRIS, District Judge. Mapl-Flake Mills, Inc., defendant in this patent infringe ment suit, instituted against it in equity by Pneumatic Scale Corporation, Limited, to obtain the usual equitable relief, has set up in its answer that the alleged infringing machines were never owned by it, that prior to the filing of the bill of complaint, it returned the machines to their owner, and that it does not expect to use these or like machines at any time in the future. It denies that further infringement is threatened or can be reasonably apprehended. Asserting that injunction is not the appropriate remedy to procure relief for past injuries, and may be availed of only to prevent further injury actually threatened (High on Injunctions, § 23, Kennicott Water Softener Co. v. Bain, 185 F. 520 [C. C. A. 7]), and that an accounting for profits and damages can be here had only as incidental to the granting of an injunction (Root v. Railway Co., 105 U. S. 189, 26 L. Ed. 975), the defendant, standing upon equity rule 22, moves that the suit be forthwith transferred to the law side of the court. In support of its allegations that no further infringement is threatened or probable, the defendant now tenders at the hearing upon the motion numerous affidavits as evidence.

averment in the answer upon which the motion is based can be considered a defense formerly presentable by plea in bar (see equity rule 29), the truth of the allegations constituting that defense must be established in conformity with the usual rules of evidence. This was true under the earlier rules. Mitford & Tyler's Pl. & Pr. in Equity, p. 392; Farley v. Kittson, 120 U. S. 303, 7 S. Ct. 534, 30 L. Ed. 684; Daniels v. Benedict, 97 F. 367 (C. C. A. 8). It is likewise true under the present rules. Equity rule 46. But, if not in the nature of a plea in bar, the averments of the answer relied upon to support the motion to transfer go to the very heart of plaintiff's case; and their truthfulness can be ascertained only in the manner now required in all trials in equity. Equity rules 46 and 47.

[2] But the pending motion has an infirmity that lies deeper, I think, than the failure of the defendant to prove its underlying averments true in fact, in conformity with the prevailing rules of evidence and modes of procedure. The bill of complaint sets up a cause of action cognizable in equity. For the cause of action there pleaded, a court of law affords no plain, complete, and adequate remedy. Under the former rules and practice, a plea in bar was deemed to admit all allegations of the bill not controverted by the plea. Dan. Ch. Pr. (6th Am. Ed.) p. 837. Every defense now made in the answer pursuant to equity rule 29, which under the former practice was presentable by plea in bar, must, upon a separate hearing, be held constructively to admit the truth of the allegations of the bill not put in issue by the separate defense. Past infringement by the defendant is, consequently, here conceded, for the purposes of the pending motion. But past infringement is some evidence tending to establish a threat or a probability of future invasion of plaintiff's rights. So it cannot now be said that plaintiff's averments of threats or future injury by the defendant are wholly colorable and made merely for the purpose of conferring, without justification, jurisdiction in equity. Under such circumstances, I think Judge Bradford was right when he said: "The dominant factor in determining the question of jurisdiction is to be found in the general scope and nature of the case as made by the bill. Wright v. Barnard (D. C.) 233 F. 329, 331. A valid defense is without efficacy to de

RHINELANDER REFRIGERATOR CO. v. ROTHENBERG et al.

District Court, E. D. Michigan, S. D.

No. 8227.

1. Pleading 319-Bill of particulars granted to furnish information as to defendant's expenses from plaintiff's invasion of his sales territory, but not to specify persons to whom

defendant was prevented from selling.

A defendant, filing a counterclaim for general damages caused by invasion of his trade territory by plaintiff, in violation of contract, and for expenses incurred in preparing for the trade, may be required by bill of particulars to furnish information as to the expenses, but not to specify persons to whom he was prevented from making sales.

2. Pleading 320-Bill of particulars will not be granted to require information within knowledge of movant.

Bill of particulars will not be granted to re

ness.

tiff, in the city of Detroit, and used in apartment houses. The claim is for alleged profits which defendants would have made, and for expenses incurred in preparing to do busiThey claim that the plaintiff, after making this agreement, itself invaded this territory and sold the same class of refrigerators to such an extent as to practically destroy the business of defendants. They pray for judgment for sums aggregating several thousand dollars as the profits which would have been made and for the expenses incurred.

[1] Plaintiff has moved for a bill of par ticulars, and asked that defendants be compelled to give the dates, amounts, and persons with whom the sales could have been made in detail.

In reply, defendants say that it is impossible in the nature of things for them to be more specific; that the claim is one for general damages, and under the practice of the state of Michigan they do not have to furnish particulars in support of such claims, but are permitted to recover such amounts as they are able to prove. Plaintiff contends that the action is one for special damages and must be specific. My conclusion is that, in so far as the claim for expenses incurred in preparing to do business, the defendants will have to furnish a bill of particulars, for they certainly should know what amounts have been expended on that account.

party.

At Law. Action by the Rhinelander Refrigerator Company against Max Rothenberg and others. On motion by plaintiff for bill of particulars as to counterclaim. Granted in part.

Finkelston, Lovejoy & Chilson, of Detroit, Mich., for plaintiff.

Geo. E. Brand, of Detroit, Mich., for defendants.

DAWKINS, District Judge. Plaintiff brought this suit upon account as for goods and merchandise sold and delivered to defendants. In their answer, in addition to certain special defenses, defendants claim that plaintiff is indebted to them by way of set-off and recoupment in a large sum, greatly exceeding that of plaintiff's demand.

The basis of the claim for damages is that plaintiff had entered into a contract with defendants, by which the latter were given the exclusive right to sell refrigerators, of a certain class manufactured by the plain

ants to show specifically in a business of this kind what particular customers could have been had, but for the entering of the field by plaintiff, as alleged. However, this would not preclude them from recovering damages, provided their proof could be made sufficiently clear that they had previously been doing a good business, and that the same had been reduced or injured by plaintiff's conduct. If the contract is binding, and plaintiff has sold the same class of refrigerators, which defendants allege they had the exclusive right to handle, then it would seem that they are entitled to whatever profits were made thereon, if they can show that they would have reasonably done this same business. [2] I think it scarcely necessary to suggest that plaintiff needs no information from defendants to determine what it has done in this direction, or the number of refrigerators it has sold, for the reason that the facts are all in its possession and a part of its own records. The purpose of a bill of particulars is to give the one demanding it sufficient