By dissenting in this case, I do not wish to have it understood that I claim that the decree of the federal court is not binding on this court. On the contrary, I have no doubt but that that decree, as to the questions covered by it, is conclusive upon the parties to this action. In fact, 1 so suggested on the argument, and have no reason to change my mind. But, in my judgment, that decree does not cover the question involved in this action. That action was commenced by Mr. Seott in the federal court January 28, 1898. It was an ordinary bill in equity to restrain Teehtonius from manufacturing and selling the “ Tecktonius lug,” so called, on the ground that it was an *452infringement of tbe patent issued to Scott October 16, 1888, and numbered 891,340. Tecktonius answered by way of denying such infringement, and also by way of alleging that such patent so issued to Scott was invalid on the ground that he was not the original and first inventor of the device therein described, but that the same was covered by one or more of the prior patents therein alleged. The issues so joined were tried in the federal court, and an interlocutory decree entered therein July 24, 1899, wherein it was adjudged, in effect, that the patent so issued to Scott October 16, 1888, was valid; that the manufacture and sale of the “ Tecktonius lug ” by Tecktonius was an infringement of that patent; that Scott was entitled to recover the gains and profits which Tecktonius had made or received by reason of such infringement; and the cause was referred to ascertain the amount, and Tecktonius enjoined from further infringing such patent. In making such decree, the learned judge of the Eastern district expressly stated, in effect, that such in-fringeihent was the only issue which required serious consideration; that by a narrow construction of the Scott patent there would be no infringement, but that by a broad construction of that patent, as he felt bound to give it, there was an infringement. The validity of the patent issued to Tecktonius March 20, 1894 (being No. 516,690), was not involved in that litigation. True, the answer of Tecktonius in that action alleged “ that all band fasteners made and sold by him were constructed under letters patent of the United States, and lawfully granted to him,” but that was alleged solely by way of defense against the charge of infringement. In other words, there was no cross bill to determine the validity of the patent so issued to Tecktonius. The “Tecktonius lug” being an infringement of the Scott patent, as held by the federal court, the fact that Tecktonius. obtained a patent on such lug nearly six years after the patent was so issued to Scott was no defense to the charge *453•of such infringement, even though it was a valid patent. Accordingly, Judge SeaMAN stated in his opinion that “the patents issued to the defendant ^Tecktonius'], and appearing in the record, are not referred to in the argument on behalf of the defendant [Tecktonius], and I do not rega/rd them as material.” Thus it appears that the decree was made in the infringement suit without regard to the question whether the patent so issued to Teoktonius March 20,1894, was valid or invalid. In other words, the federal court did not pass upon, nor attempt to pass upon, the validity of that patent. Such validity was not involved in that action, and, of course, could not legitimately be determined in that action. After the entry of that decree, and after Teoktonius had appealed therefrom, and on August 2, 1899, the parties settled the litigation and all matters in controversy between them. In such settlement Scott sold and assigned his patent to Teck-tonius,, and the latter paid him therefor $3,000, and gave back to him a shop right of what was so covered by the patent so issued to Scott October 16, 1888, as appears in the agreement copied into the opinion filed by my brother WiN-slow. That agreement, as I understand, is construed by all the members of this court as only covering such shop right as Scott previously held under his patent. In other words, by that agreement Teoktomus parted with no property or rights of property which he. possessed, if any, under his patent prior to his purchase of the Scott patent, and Scott obtained no property or property rights thereby which were not covered by his patent so assigned to Tecktonius. Scott thereupon continued to manufacture and sell the device described in the patent so issued to him October 16, 1888, until in December, 1899, and then, for the first time, commenced to manufacture and sell the device described in the patent so issued to Tecktonius March 20, 1894. January 5, 1900, Tecktonius commenced this action to restrain Scott from such manufacture and sale of the device so described *454in his patent, on the ground that he had no right to the-same under such agreement, and also to cancel and set aside so much of that agreement as secured to Scott such shop right. The question recurs whether the patent so issued to Techtonius is a valid, subsisting patent; and, if so, then were the property and rights of property thereby acquired by Techtonius determined and extinguished by the decree in the federal court ? As indicated, the validity of the patent so issued to Tecktonius was not involved in or questioned in the infringement suit, otherwise than that the device therein described was held to be an infringement of the Scott patent; nor is it otherwise questioned in this action. The granting of “ a patent is prima facie evidence that the patentee was the first inventor, and casts upon him who denies it the burden of sustaining his denial by proof.” Smith v. Goodyear D. V. Co. 93 U. S. 486; Lehnbeuter v. Holthaus, 105 U. S. 94; Morgan v. Daniels, 153 U. S. 120, 123. Tim fact that, a short time after making the agreement mentioned, Scott commenced the manufacture and sale of the device described in the patent so issued to Techtonius, is. evidence to be considered in determining the validity of that patent. Smith v. Goodyear D. V. Co. 93 U. S. 495, 496; McGowan v. N. Y. B. & P. Co. 141 U. S. 332, 343; Barbed Wire Patent, 143 U. S. 285.
“ Two machines or devices are substantially identical when they perform substantially the same thing in substantially the same way to obtain the same result; and they differ from each other, in the sense of the patent law, when they perform different functions, or in a different way, or produce substantially different results.” Cantrell v. Wallick, 117 U. S. 689.
In that case it was also held that:
£< Two patents may be valid when the second invention is an improvement on the first, and, if the second includes the first, neither patentee can lawfully use the invention of the other without his consent; but a stranger sued for infringing the second patent cannot defend by setting up the existence of the first patent.”
*455So it has been held that:
“ The inventor of an improvement has a right to his own improvement. The original inventor cannot use the improvement because it is ingrafted upon his invention.” Whipple v. Baldwin Mfg. Co. 4 Fish. Pat. Cas. 29.
That the “ Tecktonius lug ” was a patentable device, notwithstanding the prior patent so issued to Scott, is manifest, in the broad difference in the claims of the respective patents; for it is a well-established rule of patent law that, “ where a specific device or combination is claimed, the nonclaim of other devices or combinations apparent on the face of the specification is, in law, so far as the patentee is concerned, a dedication of them to the public, and will so be enforced, unless he with all due diligence surrenders his patent for reissue, and proves that his omission to claim them arose wholly from inadvertence, accident, or mistake.” Miller v. Brass Co. 104 U. S. 350; Mahn v. Harwood, 112 U. S. 354, 362, 363.
The claims for the Soott patent are:
“ Having thus described my invention, what 1 claim as new, and desire to secure by letters patent, is: (1) The herein described clamp for uniting the ends of hoops or bands, or tightening the same, consisting of a pair of heads recessed and apertured as set forth, and provided with crossbars, grips loosely mounted therein, and a rod extending through one head into and through the opposite head, having screw-threaded ends, with nuts thereon, substantially as described. (2) The herein described clamp for uniting the ends of hoops or bands, or tightening the same, consisting of' a pair of heads enlarged at one end and reduced at the other, having apertures and recesses therein, and crossbars, as set forth, the grips loosely and removably mounted in said heads, and having enlarged outer ends and inner concave downwardly projecting ends, with a smooth-bored aperture passing there through, and the threaded rod or bolt passing through said head and nuts, substantially as described.”
The claim for the patent issued to Tecktonius is:
“ Having thus described my invention, what I claim as new, and desire to secure by letters patent, is: The combi*456nation with a band of a pair of hollow, tapered metallic castings, having flat base plates, adapted to receive the ends of the said band, tapered, longitudwially perforated clamping wedges, whose upper portions coincide in shape with the under surface of the tapered under wall of said castings, and having tapered undersides formed with series of transverse corrugations, and a coupling bolt passing through and connecting the said clamping wedges, and provided with suitable tightening nuts.”
To my mind it is very clear that the evidence sustains the findings of the trial court to the effect that Scott violated his contract with Tecktonius, and in December, 1899, and since, wrongfully manufactured and sold the device described in and covered by the patent so issued to Tecktonius, and hence should be held liable in this action.
Dodge, J. I concur in the foregoing dissenting opinion of the chief justice.