The Alexander patent, No. 848,082, also is the same in principle of operation. In view of the fact that the opinion in the former case fails to show that the limitation to vertical boilers was sufficient to avoid the defense of anticipation by horizontal constructions, we are of the opinion that although the District Court did not assign that as a ground of decision it would have been a sufficient reason for refusing to regard the validity of the patent as established on a motion for preliminary injunction, and the result reached being right, there is no occasion for our considering the grounds on which the motion was denied. The defendant urges that the distinction between vertical and horizontal boilers is so obviously without merit, and that as every feature of the plaintiff's device appears in structures having horizontal tubes, we should apply the decision in Mast, Foos & Co. v. Stover Mfg. Co., 177 U. S. 485, 495, 20 Sup. Ct. 708, 44 L. Ed. 856, and dismiss the bill. See, also, Denver v. New York Trust Co., 229 U. S. 123, 136, 33 Sup. Ct. 657, 57 L. Ed. 1101. Were the case before us upon a final record presenting no more than the present record, we should feel compelled to hold that the patent is anticipated by the prior art structures using horizontal tubes, and did not involve patentable novelty. We are of the opinion that the appeal must be dismissed with costs. to the appellee. We are further of the opinion that, unless suggestion is made within 10 days that plaintiff desires to present in the District Court further and specified proofs to meet our present findings, our order should also direct the District Court to enter a final decree dismissing the bill, with costs to the defendant. PER CURIAM. Upon consideration of appellant's suggestion that it desires to present in the District Court further proofs to meet the findings in our opinion, we are of the opinion that we should not direct the District Court to dismiss the bill, but that questions of the rel evancy, weight, or sufficiency of the proofs suggested should be passed upon by that court in ordinary course. The appeal is dismissed, with costs to the appellees, and the case is remanded to the District Court for further proceedings in accordance with law. CROPP v. REED. (Circuit Court of Appeals, Seventh Circuit. November 22, 1918.) No. 2594. PATENTS 328-INFRINGEMENT-CONCRETE MIXER. The Reed patent, No. 939,629, for concrete mixer, claim 1, held ́infringed by a new machine made by defendant after decree adjudging infringement by prior structures. Claims 2 and 4 held not infringed. Appeal from the District Court of the United States for the Eastern Division of the Northern District of Illinois. Suit in equity by Matthew Howard Reed against Andrew J. Cropp. From a decree adjudging him in contempt, defendant appeals. Modified and affirmed. William N. Cromwell, of Chicago, Ill., for appellant. Before BAKER, ALSCHULER, and EVANS, Circuit Judges. EVAN A. EVANS, Circuit Judge. Pursuant to an opinion of this court (see 225 Fed. 764, 141 C. C. A. 90) a decree was entered holding claims 1, 2, and 4 of patent to Reed, No. 939,629, valid. Full discussion of the patent there appears. After the decree was thus entered, appellant made other machines, resulting in this motion to punish him for contempt. Upon the hearing he was found guilty of contempt. Appellant claims that the machine, the manufacture of which is alleged to constitute a violation of the decree aforementioned, does not in fact infringe claims 1, 2, or 4 of the patent. More precisely stated, appellant contends that claim 1 of the patent in suit should be restricted to a spring mechanism comprising a single spring and arcshaped link. While conceding that, read literally, claim 1 is not so limited, appellant urges that to sustain its validity this court in its former opinion referred to and differentiated the McKelvey and Abel patent by construing the element: "Having an operating lever, and spring mechanism connected with the drum and lever adapted to positively hold the lever, shaft, and deflecting element when thrown to the limit of movement in either direction, substantially as set forth" —in such manner as to call for a particular mechanism such as was disclosed in drawings of the patent. With this contention we cannot. agree. The opinion reads: "If successful challenge of validity depended upon the inventor's selection of spring mechanisms found in other arts, e. g., those used for closing rainwater pipes, door hinges, cabinet file covers, box covers, mowing machines, the proofs here would sustain the decree. But if notice be taken of the state For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes of the particular art involved, of the endeavors of others therein, or the advance made by the patented mechanism in suit, its conceded utility and etticiency in promoting expedition and economy in operation, we believe a different view must be entertained." In other words, it was the use of a spring as an element in a combination producing the result and reducing the amount of labor required to secure it, that furnished the reasons for the conclusions which the court reached. We quote further: "In view of the obvious and beneficially new result accomplished by Reed, the suggestion that Ransome did not 'detail a spring or yielding mechanism because he knew that any mechanic having any skill in the art would understand how to put in a spring handle, or a spring dog, on to hold the handle in adjusted position,' * * serve, not to detract from Reed's disclosure, but rather as criticisms of his predecessors in the art." It is unnecessary to describe in detail appellant's structure. Adopting the views quoted above, and construing this element in this combination as we do, infringement clearly appears. Appellee was not restricted to the particular kind or form of a spring mechanism disclosed in the drawings of the patent. One element of the combination was a spring mechanism-not necessarily the spring mechanism shown in the drawings-and this element as one of a combination must be given a fair construction. On the strength of the former opinion, and upon our present study of the patent, we conclude this claim should be construed so as to cover appellant's struc ture. As to claims 2 and 4, both narrower claims, we are satisfied that no infringement is disclosed by appellant's machine. By providing specifically for "the drum having an arc-shaped terminal engaging the lever * * "" appellee secured a very narrow claim. Both are obviously narrower than claim 1, but they furnish added reasons for the construction given to the first claim. * The decree of the court is modified, by limiting the finding of infringement to claim 1 of the patent. As modified, it is affirmed. Appellee to recover his costs in this court. MARTIN v. NEW TRINIDAD LAKE ASPHALT CO., Limited. (District Court, D. New Jersey. January 2, 1919.) 1. PATENTS 129 LICENSE CONTRACT-SUIT FOR ROYALTIES-ESTOPPEL. A licensee under an apparently valid patent, when sued for royalties, may not set up its invalidity as a defense, unless prior to the period for which royalties are claimed he gave the licensor such unequivocal notice of repudiation as would render him liable for infringement thereafter if the patent is held valid. 2. PATENTS 212(1)-LICENSE CONTRACT CONSTRUCTION. In the absence of an agreement by the licensor, in a contract granting a license under a patent to protect the licensee from infringements by others he is under no obligation to do so. At Law. Action by William D. Martin against the New Trinidad Lake Asphalt Company, Limited. On motion to strike out parts of answer. Motion granted. Condict, Condict & Boardman, of Jersey City, N. J., and Henry B. Johnson, of New York City, for plaintiff. Edwin F. Smith, of Jersey City, N. J., and L. Laflin Kellogg, of New York City, for defendant. HAIGHT, District Judge. Although the notice of the motion is addressed to the whole of defendant's second amended answer, I have considered that the motion is really to strike out only the seventh and eighth separate defenses, both because they were the only parts of the answer which were referred on the argument, and because a reply and a rejoinder have been filed to the other parts. In the seventh defense it is alleged that the patented processes, which were the subject-matter of the contract sued on, and of which the defendant was to have the exclusive use, were, subsequent to the making of the contract, used generally by others, whereby the defendant was deprived of the profits which it would otherwise have made, had such general use not been permitted; that it called upon the plaintiff to protect the defendant "in its right to exclusive use," but that the plaintiff failed to do so; that thereupon the defendant repudiated "all obligations under said contract and stood out from under the protection thereof, and refused to pay the royalties provided for therein, and so duly notified the plaintiff." In the eighth defense it is alleged that patents were invalid; that by reason thereof it repudiated all obligations under the contract, etc., and so duly notified the plaintiff. The notice of repudiation referred to in each defense is that alleged to be contained in the answer interposed by the present defendant in the suit instituted against it by the present plaintiff, in the Supreme Court of the State of New York based on the same contract as is this suit, which action will hereafter be referred to, as it has been by counsel, as action No. 1. [1] The controlling question which is applicable to both defenses is whether that notice was sufficient. So far as the eighth defense is concerned, the rule pertinent to the question thus presented, which For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes may be deduced from the reported decisions and which is supported by reason, is this: A licensee under a license agreement, such as that upon which this suit is based, when sued for royalites payable under the agreement, where the patent which is the subject-matter of the license, is apparently valid and in force (where it has not been declared invalid by a court of competent jurisdiction or revoked by the Patent Office before the royalties have accrued), may not set up the supposed invalidity of the patent and the consequent failure of consideration of the agreement, unless, prior to the period for which the royalties are sought to be recovered, he has given to the licensor a distinct, definite, and unequivocal notice to the effect that he no longer recognizes the binding force of the agreement, and that he will thereafter manufacture or use the article covered by the patent under a claim of right, founded upon the alleged invalidity of the patent, and in hostility to and defiance of the authority of the patent and the license, so that the licensor can thereafter proceed against him for an infringement of the patent, if he choose so to do. Lawes v. Purser, 6 Ellis & Blackburn, 930; Martin v. New Trinidad Lake Asphalt Co., Ltd., 182 App. Div. 719, 170 N. Y. Supp. 234 (App. Div., 1st Dept. N. Y. Sup. Ct.); Skinner v. Walter A. Wood Mowing & Reaping Mach. Co., 140 N. Y. 217, 35 N. E. 491, 37 Am. St. Rep. 540; Hyatt v. Dale Tile Mfg. Co., 106 N. Y. 651, 12 N. E. 705 (quoted in full in 125 U. S. at 49, 8 Sup. Ct. 756, 31 L. Ed. 683; Marston v. Swett, 82 N. Y. 526; Skidmore v. Fahys Watch-Case Co., 28 App. Div. 94, 50 N. Y. Supp. 1016 (App. Div. N. Y. Sup. Ct., 1st Dept.); White v. Lee (C. C. Mass.) 3 Fed. 222; Brown v. Lapham (C. C. S. D. N. Y.) 27 Fed. 79; Mudgett v. Thomas (C. C. S. D. Ohio) 55 Fed. 645, 648; Holmes, etc., v. McGill, 108 Fed. 238, 244, 47 C. C. A. 296 (C. C. A. 2d Cir.); Macon Knitting Co. v. Leicester Mills Co., 65 N. J. Eq. 139, 152, 55 Atl. 401. The decision of Judge Kirkpatrick in this district, in Moore v. National Water-Tube Boiler Co. (C. C.) 84 Fed. 346, did not deal with. the question of notice, because, apparently, no notice of repudiation had been given, but it did hold, in the absence of notice, that in a suit for royalties the licensee cannot set up the invalidity of the patent as a defense. Lawes v. Purser, supra, and Marston v. Swett, 82 N. Y. 528, were cited as authorities for that proposition. See, also, American Street Car Advertising Co. v. Jones (C. C. N. D. N. Y.) 122 Fed. 803, 808. While some of the above-cited cases define the character of the necessary notice more definitely than do the others, none differ as to the requirement of the notice or as to the fact that it must absolutely repudiate the license agreement, and all rights conferred and obligations imposed thereby, so that the licensee may thereafter be treated as an infringer at the option of the licensor. They are therefore all alike in principle. There is every reason for requiring such. a notice to be a definite and unequivocal repudiation, for as was said in the Skinner Case: "The licensor is not to be left in a doubtful or uncertain position. He must not be exposed to the double danger of being defeated in a suit for infringe |