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February 10, 1904, and each of which paragraphs is described as a third paragraph of said amended answer, was a sufficient or adequate specification either for the axles or for the springs referred to, and neither of them was ever intended by the defendant to be so, and neither of them was ever accepted as such by the plaintiff.

"(9) That the plaintiff is entitled to recover as shown in the following:

"Judgment.

"Upon the facts hereinbefore ascertained and stated, it is considered and adjudged by the court that the plaintiff, the Hess Spring & Axle Company, recover of the defendant, the George Delker Company, the sum of twenty-one hundred and twenty-seven and 94/100 dollars, being the aggregate amount ascertained to be due from defendant to the plaintiff by reason of the defendant's breach of each of the two contracts sued on herein, together with the interest thereon from the 4th day of May, 1901, until paid, and also plaintiff's costs herein expended, and may have execution therefor."

The defendant brings the judgment to this court for review by a writ of

error.

George W. Jolly (Malcolm Yeaman, of counsel), for plaintiff in

error.

Ernst, Cassatt & McDougall and R. D. Hill, for defendant in

error.

Before LURTON and SEVERENS, Circuit Judges, and WANTY, District Judge.

WANTY, District Judge, after making the foregoing statement of the case, delivered the opinion of the court.

The defendant claims that the facts found by the judge below do not support the judgment rendered, because, first, the contracts are so indefinite as to lack mutuality; second, the plaintiff should have given notice of its election under the clause in the contracts giving it the option to consider the specifications sufficient, or that the neglect to specify might be considered a lawful tender of the undelivered goods and a refusal of acceptance; and, third, that the measure of damages should have been the difference between the contract price and the market price.

1. These contracts are definite as to the quantity of springs and axles, and as to the price and time of delivery, and nothing remained but the specification by the defendant of the sizes and varieties. A failure on the part of the defendant to keep its agreement to make these specifications as provided is the only way in which the contracts could be rendered uncertain; and it would be illogical to hold that by a breach of that part of the contracts the defendant could relieve itself of all the obligations it had assumed, and take the springs and axles only so long as the price of steel advanced, and, by failing to specify when the market declined, throw the loss upon the plaintiff. These were not options given to the defendant, but definite agreements by it for the purchase of the property mentioned, and the provisions for the specifications to be furnished did not make them so uncertain that an action did not lie for their breach. Hinckley v. Pittsburg Steel Co., 121 U. S. 264, 7 Sup. Ct. 875, 30 L. Ed. 967; Kimball Bros. v. Deere, Wells & Co., 108 Iowa, 676, 77 N. W. 1041; Ault v. Dustin, 100 Tenn. 366, 45 S. W. 981;

Minn. Lumber Co. v. Coal Co., 160 I11. 85, 43 N. E. 774, 31 L. R. A. 529. The defendant cites many cases which are claimed to sustain its view, but they lack the agreement to take a quantity of goods, which is made certain by the contract itself, or could be made certain by evidence; thereby differing from the contracts. here, where a definite quantity is fixed, and only its apportionment is to be made by the defendant.

2. We think that when the defendant refused to specify under the contract it became liable in an action for its breach, and that the clause providing that "any goods named in this contract for which the buyer shall neglect or refuse to specify, may, at the option of the seller, be regarded as sufficiently specified above, or at the option of the seller, such neglect or refusal to specify may be treated as a lawful tender of all undelivered goods, and a refusal to accept same by the buyer, but shall not be construed as a waiver of any rights by the seller," did not give any other or different remedy than the law, and therefore did not make notice of an election necessary. It only dispensed with the necessity of a tender, and by its terms this clause was not to be construed as a waiver of any rights the plaintiff had in its absence. This was not a case where the seller of the goods, after tender, elected to resell, and was obligated to give notice to the purchaser of such election.

3. The contention most strongly urged by the defendant is the failure of the trial judge to apply as a measure of damages the difference between the contract price and the market price, instead of the difference between the contract price and the cost of manufacture and delivery. The damages for the breach of these contracts is compensation, and, in arriving at what will accord compensation to the plaintiff, it is always necessary to look into the situation of the parties, as well as to all the provisions of the contract broken. If these were contracts of purchase and sale, as their opening clauses indicate, then the measure of damages contended for would be correct, and the recovery should have been on that basis, for, if it was contemplated by the parties that the plaintiff should have these springs and axles in stock, or go into the market and purchase them for delivery to the defendant, that would be the rule of compensation; but, if these goods were to be manufactured as the specifications were received, then such a rule would not be one which would afford compensation. The facts found by the trial judge indicate clearly that these were understood to be manufacturing contracts by the parties according to their former dealings, and the contracts themselves, when taken in their entirety, bear that interpretation. The provisions that specifications should be given from time to time, that strikes of workmen should excuse performance on the part of the plaintiff, that the plaintiff should purchase steel necessary for their manufacture, and defendant should take the full amount of springs and axles covered by the contracts, without rebate in price in event of a decline in the market, all point to a purpose of manufacturing the articles from time to time as specifications should be received from the defendant, and not to a sale of a manufactured product on hand, or to be purchased in the

market. If these were manufacturing contracts-and we agree with the court below, holding that they were then the measure of damages is the difference between the cost of manufacture and delivery and the contract price as applied by the Circuit_Court. Hinckley v. Pittsburg Steel Co., 121 U. S. 264, 7 Sup. Ct. 875, 30 L. Ed. 967; Kingman & Co. v. Western Mfg. Co., 92 Fed. 486, 34 C. C. A. 489.

The court below took those articles which could have been specified under the contracts upon which the plaintiff would have received the smallest profit, and therefore reduced the damages to the lowest amount compatible with the facts, of which course the defendant could not complain.

The judgment will be affirmed.

CAZIER v. MACKIE-LOVEJOY MFG. CO. et al.

(Circuit Court of Appeals, Seventh Circuit. April 11, 1905.)

No. 1,117.

1. PATENTS-INFRINGEMENT-SUBSTITUTION OF PARTS.

Where the real invention covered by a patent lies in one element of a combination, the others being old, and material only in putting into use that which is new, one who appropriates such novel feature cannot avoid infringement by substituting a different form of one of the nonessential parts.

2. SAME TROUSERS-HANGER.

The Cazier patent, No. 696,940, for a trousers-hanger having the clamping-jaws of spring metal arched so as to engage the fabric near the ends and stretch the same in closing together, discloses invention in such feature, and is valid. Claim 5, also, held infringed.

3. SAME-INFRINGEMENT BY CORPORATION-LIABILITY OF Officers.

Infringement by a corporation gives no right of action against one of its officers individually, unless he has acted beyond the ordinary scope of his office.

[Ed. Note. For cases in point, see vol. 38, Cent. Dig. Patents, § 459.] Appeal from the Circuit Court of the United States for the Northern Division of the Northern District of Illinois.

Appellant failed in his suit to enjoin infringement of letters patent No. 696,940, issued to him on April 8, 1902, for a trousers-hanger.

The claim said to be infringed is the fifth, as follows:

"“(5) A trousers-hanger comprising two opposed elongated clamping-jaws formed of spring-metal strips, arched from end to end so as to engage the interposed fabric near their ends, said jaws being adapted in closing together to stretch the fabric in the direction of the length of the jaws, a V-shaped suspending-spring, upon the ends of which said clamping-jaws are mounted, a hook at the apex of the suspending-spring, and a link or clasp adapted to slide over the arms of the suspending-spring to confine the same and hold the jaws closed upon the fabric."

The record contains the following prior patents: No. 36,100, August, 1862, to Meacham; No. 233,964, November, 1885, to Bear; No. 422,059, February, 1890, to Nichols; British No. 6.866, to Killick, 1889; British No. 453, to Burden, 1890; British No. 8,670, to White, 1896; and Swiss No. 3,253, to Schweizer, 1891.

Other facts are stated in the opinion.

*Rehearing denied May 11, 1905.

De Witt C. Tanner, for appellant.
Thomas F. Sheridan, for appellees.

Before JENKINS, GROSSCUP, and BAKER, Circuit Judges.

BAKER, Circuit Judge. The hook, the suspending spring, and the locking link, in combination with clamping jaws for trousershangers, were all old. The novelty of this claim, if any exists, must be found in the particular clamping jaws. Schweizer and Killick are the strongest references. Schweizer used wooden clamping jaws, arched or hollowed out in the middle, for the purpose of accommodating the seams of the trousers. Killick disclosed clamping jaws of sheet metal-straight strips except for a rectangular recess at the center for accommodating the seams. He also claimed wooden jaws with the same recess. Neither of these patents mentions any spring action. It is manifest that, if the arch of these reference jaws were flattened by pressure at the center, the ends would spread apart. The clamping jaws of the claim in suit are required to be of spring metal, arched from end to end so as to engage the interposed fabric near their ends. As the arch is flattened, the bearing surface is gradually increased, and the elongation of the jaws smooths out the ends of the trousers legs. The construction was new; the result was new; and the claim evinces, we think, an original idea, neither a plagiarism nor a mere selecting and combining of others' thoughts.

Appellees' expert denies the utility of clamping jaws "adapted, in closing together, to stretch the fabric in the direction of the length of the jaws." Overstretching would be injurious, but the amount performed by appellant's device, we are satisfied, is advantageous. The record shows a large and prosperous business built up on appellant's invention. And the appellee company, failing to use any of the older forms of clamping jaws, and seizing upon appellant's success, is hardly in a position to question the utility of the novel feature.

We have carefully examined the file wrapper and contents, and find nothing therein to limit the claim to less than its obvious reading. Acquiescence in the rejection of "arched clamping jaws" is no graver than the concession in appellant's specification that "the arched form of the clamping jaws is not broadly new." Both were required by the prior art. But that could not prevent appellant from making a narrower claim. And there is no occasion for appellant to seek to enlarge the claim in suit or to invoke the doctrine of equivalents with respect to the clamping jaws, for the appellee company has them identically.

At first the appellee company made and sold an exact copy of appellant's device in all of its parts. Before suit was brought, a change was made; and it is contended that this change obviates infringement. Instead of appellant's V-shaped suspending spring, the appellee company uses V-shaped suspending arms, hinged at their apex. In Killick's patent, both forms of suspending arms are shown. In the operation of a trousers-hanger both perform

these essential services: At their apex they unite with the hook by which the whole device, with the trousers, is hung up; at their lower ends they sustain the clamping-jaws within which the trousers legs are grasped; and along their diverging sides works the locking link by which the jaws are held firmly closed. Killick disclosed an incidental superiority in having at the apex a spring instead of a hinge, namely, that the spring "keeps the jaws open for the reception of the trousers."

In claim 5, appellant's whole invention lay, it must be remembered, in the novel form and function of his clamping jaws. Having devised them, he could go to Killick, say, for the other elements of the combination, the hook, the suspending arms, and the locking link-old elements that were material only to the putting into use of the real invention. Appellant took Killick's preferred form of suspending arms-those with a spring instead of a hinge. May the appellee company appropriate the novel clamping jaws by using with them the less desirable form of suspending arms? We think not; most decidedly not. To hold otherwise would be to rob an inventor by a blind literalism.

The case is quite similar in this aspect to that of Adam v. Folger, 120 Fed. 260, 56 C. C. A. 540. One element in Folger's combination was "a supplemental regulating valve arranged in the plug of the main valve." Folger's invention lay in conceiving and putting into workable form "the idea of regulating separately the flow of the water while preserving the unity of action of the supply valves for water and gas." The real invention could be put to use, but in a less desirable way, by arranging the supplemental regulating valve (which was essential) outside of the plug of the main valve. But we held that such a change did not avoid infringement, saying:

"It is well settled that there is no infringement if any one of the material parts of the combination is omitted, and that a patentee will not be heard to deny the materiality of any element included in his combination claim. But form, location, and sequence of elements are all immaterial, unless form or location or sequence is essential to the result, or indispensable, by reason of the state of the art, to the novelty of the claim."

Here, the invention consists not at all in the form of the suspending arms, and can be utilized with either form. See also King Ax Co. v. Hubbard, 97 Fed. 795, 38 C. C. A. 423.

The appellee company, a corporation, can act only through its officers and agents. We find nothing in the record to show that the appellee Deknatel acted beyond the ordinary scope of his office. No cause of action against him is made out. United Nickel Co. v. Worthington (C. C.) 13 Fed. 392; Hose Co. v. Star Rubber Co. (C. C.) 40 Fed. 168; Hutter v. De Q. Bottle Stopper Co., 128 Fed. 283, 62 C. C. A. 652.

As to the appellee company the decree is reversed, with the direction to enter a decree in appellant's favor for an injunction and an accounting.

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