ECLIPSE MANUF'G CO. V. ADKINS.

281

scope of the patent is the idea of ornamenting the upper or lower portion of the pipes of a radiator to a uniform height, so that it will present ornamented and plain parallelograms, in contrast. As to the clair;n that Prentice was not the first to conceive the idea of thus ornamenting a radiator, there is no proof on the part of the defendant which shows that any person had preceded him in this field. The proof upon which the defendant relies in support of this part of the defense is that one Dixon, who was a draughtsman or designer for Prentice, was the originator of the design, and that a Mr. Root, who was an architect in the city of Chicago at the time, made the design for the particular figures which were ado,pted by Prentice as his ornament. I have no doubt, from the proof, that Mr. Dixon made a draft of the radiator pipes, showing their form and size, and that after he had so done, Mr. Prentice informed or directed Mr. Root, as to the locality of the ornamentation which he proposed to put upon the radiator; and that Mr. Root drew the figures for the particular ornamentation which Mr. Prentice adopted in the radio ators which he manufactured and put upon the market. But it will be noticed that Mr. Prentice does not claim to have been the inventor of the radiator or the radiator pipes. He simply claims his patent for the idea of ornamenting a portion ofthe pipes, instead ofleaving them entirely with plain surfaces, and for putting this ornamentation of uniform height on each pipe, so that the radiator would show an ornamented parallelogram and a plain parallelogram, in contrast. The drawing of the pattern, or figure, from which the pipe itself was to be cast, showing its shape and may have general form, is not what is covered by the patent, and been the invention or product of Dixon's mind. So too, the particular style of scroll work which Mr. Prentice adopted for radiators, which he was himself to manufacture, under his patent does not imply that Root was the originator of the idea of ornamenting a radiator in parallelograms, as is shown and claimed by the patent. This class of patents is allowed by section 4929, Rev. St., which provides: "Any person who, by his own 'industry, geniUS, efforts, and expense, has invented and produced any new and original design for a manufacture, bust, statute, aUo-relievo, or bas-relief; anj' new and original design for the printing of wooleD, silk, cotton, or other fabrics; any new and original impression, ornament. patent (pattern) print, or picture to be printed, painted, cast, or otherwise placed on or worked into allY article of manufacture; or any new, useful, and original shape or configuration of any article of manufacture, the same not haVing been known or used by others before his invention or production thereof, or patented or described in any printed publication.may, upon payment of the fee prescribed, and other due proceedings had, the same as in cases of inventions or discoveries, obtain a patent therefor." I am of opinion that the design covered by this patent comes within the first clause of this section as a" manufacture," rather than within the third clause as an "original impression, ornament," etc., as is insisted by the complainant's counsel. The second clause requires, as I think, that there should be a description of the design which is to be "printed, painted, cast, or otherwise placed on or worked into any article of manufacture."

FEDEML REPORTER,

vol. 44.

For illustration, a chair is an old article of household furniture of which maflY forms are found and known, butH a person has invented or originated'· a new mode of ornamenting a chair by placing ornamentation of any kind upon a certain portion of the article, so that the ornamented portion will stand in contrast to the unornamented portion, it seems to me that it comes within the provision for a "design for a manufacture;" that is, a manufacture of radiators which shall be ornamented in a special way by ornamentation upon .a portion thereof. In this connection, I think the following paragraph from a recent decision of Judge COXE in Unterineye:r v. Freund, 37 Fed. Rep. 342, is pertinent: ..A design requires invention; but a different set of faculties ar? brought into actionfrolD those required to produce a new process or a new machine. In each case there must be novelty; but the design need not be useful in the popnlar sense. It must be beautiful. It must appeal to the eye. The distinction is a metaphysical one and difficult to Pllt into words. A graceful pattern _ the handle of a spoon or fork may attract many purchasers, and for yet it.cannot be said that the embodiment of these designs requires an exercise of the · intuitive faculty of the mind' in the sense that this facnlty is exercised in inventions like the telephone Qr the safety-lamp. The policy which protects a design is akin to that which protects the works of an artist, a sculptor, or a photographer, by copyright. It requires but little invention, in the sense above referred to, to paint a pleasing picture. and yet the picture is protected because it presents the personal characteristics of the artist. and because it is his. So with a design. If it presents a different impression upon the eye from anything which precedes it; if it proves to be pleasing, attractive. and popular; if it creates a demand for the goods of its originator, even though it be and does not show a wide departure from other designs, its use will be protected. II This my view of the scope and intention of the statute under which -the patent was granted, I am of opinion that the patent should be upheld, and there can be no doubt, from an inspection of the defendants' radiators, which are introduced in evidence, .that the defendants infringe the patent by ornamenting their radiators for a uniform distance from the top downward, so as to show an ornamented rectangular parallelogram t and an unornamented rectangular parallelogram, one above the other. A decree may be entered finding that defendants infringe, and directing an accounting of profits and damages, and a perpetual injunction against further infringement.

HAKE V. BROWN.

283

HAKE 11. BROWN

et ale

December 15, 1800.)

(CircuU Court, S. D. New

1.

PATENTS FOR INVENTIONS-BEVEL-EDGED CARDS-NOVELTY.

The first claim of letters patent No. 219,464, granted to Philip Hake, September 9, 1879, for a device for making and ornamenting bevel-edged' cards, is void, as it appears that the method of auch claim was known and practiced prior to plaintilt's discovery thereof. . In a suit for infringement of n patent not previously adjudicated upon, after a decree for complainant, defendant's motion to reopen the case and take further proofs will be granted on condition that defendant pay complainant's counsel fee for the previous argument, where the testimony sought appears to be newly discovered, material, and not merely cumulative, and defendants have not been guilty of great laches.

I. SAME-Bu)'rs FOR

In Equity. Suit by Philip Hake against George F. Brown and another for the infringement of a patent. A motion for rehearing was made in this case, and denied. Another motion was thereaftet made to reopen the CRISe, amend answer, and take further proofs. Arthur v. Briesen, for orator. Walter D. Edmonds, for defendants.
WHEELER, J. This cause has now been heard on motion of defendants for leave to amend the answer and to take further proofs. The testimony sought appears to be newly discovered, material, and not merely cumulative. The defendants do not appear to have used all due diligence, but their laches do not 8eem so great that they should be deprived of all relief in this direction. A motion for a rehearing has been before made and overruled, but this motion has not been belore made. 'rhis is the first adjudication upon this patent, and it should, if it can be consistently, made upon a full showing. Upon the whole, the motion is granted, without prejudice to the injunction now in force, upon the express condition that the defendants pay to the clerk of this court for the orator's counsel a reasonable counsel fee for the argument on final hearing already had, to be fixed by the clerk within 20 days, and in case the defendants finally prevail upon the evidence sought, the orator shall recover of the defendants the taxable costs of the cause hitherto as they would be taxed in ordinary cases where costs are recovered. ON REHEARING UPON ADDITIONAL PROOFS.

The new evidence in this case shows satisfactorily and beyond fair doubt that the method of making and ornamenting bevel-edged cards of the first claim of plaintiffs patent ,vas known to and practised by Thomas J. Mooney and others prior to the plaintiff's discovery thereof, as set up in the answer of the defl'ndants. The defendants are therefore entitled to a decree upon the terms imposed in granting the motion for a rehearing. Let a decree be entered dismissing the bill of-complaint, with costs to the plaintiff to the granting of the motion for rehearing, and with costS to the defendant subsequent thereto.