belqw!'\Vhlch was tbe usual oX)e sustaining the patent, finding infrill;gement. and dlrecturg'an injunction and' accounting. was neitber Ii final decree, nor an appllalablelnterlocutory decreeutlder section '7. It was beld, however, tbat the CQurt,b,ad and tbat tbe complainalJt, by submitting the its merits, had waiyed his rig1;1t to object to a full determination of tbecontroversy, and couldJ'lot thereafter question tbe jurisdiction on a motion for rehearing: . The court. nevertbeless, modified its former decree, so as merely to remand,tbeeause, and di'reet that the Injunction be dismissed. In,th!tmeantime the case of Richmond v,Atwood, 5 U. S.App. 1, 1 C. C. A. 144, nap 910, had been decided the first circuit, and there again the case. was apparently conslde'ted' on its merits without. question. The decree, however,'wasmerely to the effect that "the complall:ulDt is not. entitled to an .and tbe decree Qf tbll Circuit court is accordingly reversed." Thereafter a petition for a rellearlng was filed. and on the hearing tbereof the court itself rlLised the question as to the extent of its jurisdiction, and as to the form of its 'mandate. to wit. whetber·it should simply order that the decree for an IDjubeti:on be reversed, or should direct tbat the bill be dismissed. Briefs were file4 pn thill question, and,a,fterfull consideration, the court held substantially as foll6ws: . . (1) That a decree which is rendered Aiter a full hearing on. the merits, and which sustains ,the validity; of the. patent; declares infringement, and awards a perpetu1l;! injunction and"an,accounting, is an "Interlocutory decree" an injunction, from which will lie under section 7. (2). That. the terin "interlocutory order or decree" was used in its broadest sense in·sectlon '7, aDd .should be given full scope. to the end that a party by an order or decree granting an injunction at any stage of the procelldiq!i\1amay have a speeAyre,medy by appeal. ... . (3) That, on such an appe.al in a patent case, where the whole record is before the circuit court of' appeals',' and;,ln 'order'to determine the rlg4tfulness of the injnnntion;tbe.conrt necellsariIy'examines the whole case on its merits, and *el;eis no.jnrringement, It may not only reverse the decreE!, dissolve t4e ipjupctipn.but ma.v also vacate the order for an accounting:alid' order the bill dismissed: thus rendering such a decree as the lower court, 'sh'(!l;uld' haYe rendered on the whole case. . case·lllcVol'ving this question is that of Columbus Watch Co. v..RobJ;>il?-'s, 52 ;I.<'1ld. :decided II?-' the sixth circuit.., There th.e decre.e below was tb El same as In the Munger and Atwood Ca,es, and the paruesto the appeal joined' in an; applichition to the: court to and tlnJ1.lIy determine the cause on its'in&tits. The held, however. that It could not take jurisdiction, even. of the controversy; that the ap.pE$I'only brought lip for review \hat:partof th ll decreeI;elatipg to t.he injunction, that all other llatts"of those relating to the v\tlidity of the patent, its infringement, and the' que:sUonsthat may' arise on the accounting ordered to ascertain damages and profits-had not yet left the jutisdiction of the trial court; and that the only question presented for determination was whether the decree forap :iJ:l;il'lngemant was providently g-ranted, In the legal discretion of the trial couJ't, queation -iovol:Ved only incidentally the question of the validity of the patent, and the infringement complained of. In Its opinion the court referred to the first decision in the Atwood Case and to both decisions in the Munger Case. It considered that the last pecision In the Munger Case indicated an opinion thatt1;1e court had full jurisdiction on the merits, and. In view of thia differeocebetween the two cirCUits, certified the question to the supreme court for decision, under section 6 of the act creating the circuit cOllrt of appeals. This important question i.thus in a fairway to be soon settled by ultimate authority.
,EAGLE PENCIL CO. v. AMERICAN LEAD PENCIL CO. (Cir'Cuit S. D. New York. December 17, 1892.)
. Destgn patent No. 20,156, issued September 16, 189<1, to Chltrles W. BOmal:\:. for a fountain pen case, having a milled handle and a plain cap, both rouuded at the ends, with a bead around the handle at the end oJ: tAecap, is void for want of invention.
I. B.ulE-Po TIPa. . Design patent No. 2O,U1, Issued September 23, 1890, to Charles W. Boman for a pen tip, consisting of two cyllnden of d11ferent sizes, with a beveled connection between them, and a bead around the smaller one near the bevel, and an abrupt flare at the end of It, Is void for want of invention. B. SAME-PEN CAllES. Design patent No. 20,158, Issued to Charles W. Bomftn for a pen case, consisting substantially of the handle of his patent No. 20,156, made plain Instead of milled, and the pen tip of b1a patent No. 20,157, brought together, Is Toid for want of Invention.
In Equity. Suit by the Eagle Pencil Company against the Amer· ican Lead Pencil Company for infringement of certain design patents. Bill dismissed. Samuel A. Duncan and Robert H. Duncan, for plainti.1t Edmund Wetmore, for defendant. WHEELER, District Judge. This suit is brought upon three design patents granted to Charles W. Boman, assignor to the plaintiff, -No. 20,156, dated September 16, 1890, for a fountain pen case; No. 20,157, dated September 23, 1890, for a pen tip; and No. 20,158, dated September 23, 1890, for a pen case. The design of the first is of a milled handle and a plain cap, both rounded at the ends, with a bead around the handle at the end of the cap. That of the second is oftwo cylinders of different sizes, with a beveled connection between them, and a bead around the smaller one near the bevel, and an abrupt Hare at the other end of it. That of the third is really the handle of tJJe first,plain, and the tip of the second, brought together. Pen cases of various materials consisting of a handle and a cap, caps and'handles having rounded ends, milled handles, beads arpund handles to stop the caps, and around cyHnders for ornament, pen tips of cylinders of different sizes, and pen tips with flares at the end, were all old. What Boman really accomplished as to the first patent was to bring a milled handle and a plain cap togetherin a fountain pen case. What he accomplished as to the second was to put an abrupt flare to the end of a pen tip of two cylinders of different sizes. And what he accomplished as to the third was to make the handle of his first plain, and bring to it the tip of his second. These chang ll produced things not exactly known before, and in that sense new, but they seem to have been due more to good taste than inventive tlklll, and really too 8light to sustain either patent. Atlantic WorJ.. T. Brady, 107 tr. S. 192, 2 Sup. Ot. Rep.. 225. Let a decree be entered dismissing the bill, with costs.
BROWER v. BOULTON et at (Circuit Court, S. D. New York. December 17, 1892.)
TRADE· MARKS- VALIDITy-REGI<;TRATICN.
Plaintiff's predecessors In business. good will, and trade-marks used the words "La Venzolana" on five shipments of flour lil1873, three in 1885, one In 1886, severalln 1887, 188il, 1889, and 1890. Plaintiff used them on similar shipments thereafter, and caused same to be registered as a trade-mark No-