(after stating the facts.) While a large number of patents were put in evidence, either to anticipate or limit the Eggleston patent, the question of anticipation really turns upon the several patents to McGill, numbered 212,316, 220,932, and 220,933, covering devices for inserting' metallic staples in papers; devices which, in their most improved form, have gone into general use for attaching legal papers together in a manner convenient for filing. Patent No. 212,316, the one most relied upon, exhibits an upright case, D, containing a plunger, F, and a spiral spring attached to raise the plunger after the staple is inserted. The plunger consists of a metallic cylindrical rod having at its base an enlargement, which' latter is provided on opposite sides with feathers, which are forced down on the head of the staple, driving .the shanks of the latter out of the guide, and supporting grooves 'through the articles, which a.re placed on an anvil adapted to bend the shanks of the staple in towards each other, clinching them ;against the underside of the papers to be attached together. In this connection the patentee states that “a staple provided with almost any shape or struck-up form of head may be inserted with this device, by mortising out the face of the plunger, F, so that the bottom of its feathers will always rest upon the top of the shoulders of the staple.”
This device, which bears a closer resemblance to plaintiff’s patent than any other put in evidence, was evidently not designed for the purpose of fastening buttons to cloth or leather, or driving staples with buttons strung upon them; and, while the experiments made in the presence of the court indicated that it can be adapted to such use, it could not be made effectual for that purpose without certain changes, which Eggleston seems to have been the first to make. The idea that a staple with a button strung upon it could be guided and driven through a tube was apparently new with Eggleston, and the carrying out of such idea required certain changes to be made in the McGill patent which were.not very radical, but which never seem to have occurred to any one prior to Eggleston. Doubtless, a patentee is entitled to a monopoly of his invention for all purposes; but where it is designed for a particular purpose, and another has taken it, and, by certain changes in its construction, has adapted it to an entirely different purpose, the evidence of its original adaptation for such new purpose ought to be reasonably clear and convincing to deny the improver the benefit *223of a patent for such new adaptation. Whatever be the technical rights of the original patentee, the equities of the patent law do not require that he should be protected for any use of his device bo-yond that originally contemplated by him, unless such new use involve changes of a purely trivial character. The evidence that the new use conceived by Eggleston was not con templated is scarcely weakened by the testimony of McGill that his device was not devised by him for the special purpose of putting on the market an instrument for setting buttons on shoes, but that was an obvious use, “and in fact it did occur to me when I first made Exhibit A, in 1879, that the tool could be used for attaching buttons to cloth, leather, etc., and I on several occasions then and since showed to others its capabilities of such use by actually setting buttons.”
Without going into details of the difference between the two devices, it is sufficient to say that the slot, i, of the Eggleston patent, which is made sufficiently narrow to act as a guide for the button, at least up to the point where the eye of the button is engaged by the recess, P, in the jaw, J', is not found in McGill’s device, or, if found there at all, not used for the purpose for which Eggleston employed it, and not capable of such use except in a very awkward and insufficient manner.
Hut, assuming it to be a question of doubt whether the changes made in the McGill patent did involve invention, the fact that the patent has already been sustained in two other cases — one decided by Judge Colt of the first circuit, in the case of Peninsular Novelty Co. v. American Shoe-Tip Co., 39 Fed. Rep. 791, and the other by Judge Severens, in the case of Peninsular Novelty Co. v. Olds,1 —is sufficient of itself to turn the scab; in favor of the patent. We repeat here the language which was used in Searls v. Worden, 11 Fed. Rep. 501:
“That in patent causes, where the same issue has been passed upon hy the circuit court sitting in another district, it is only in a case of clear mistake of law or fact, of newly-discovered testimony, or upon some question not considered by such court, that we feel at liberty to review its findings.”
Upon the question of infringement, the main defense is that the Elliott machine, with which the defendant is operating, does not have the guide of the Eggleston patent with its front slot, i, which, as before indicated, is really the essence of his invention. Defendant’s machine is of a, different class from that of the plaintiff’s — a power machine in whidh'the buttons are automatically fed to a certa,in point, where a straight piece of wire from a continuous roll is passed through the eye of the button, cut to a proper length, and bent around a former into a staple, where the former is withdrawn, leaving the staph' with the button strung upon it in a guide provided with a groove for embracing and guiding the legs of the staple, and is then driven hy the action of a driver through the guide into the material, and the legs of the staple *224clinched against the underside of the material by the action of an anvil. In this connection defendant does show a front slot, which up to a certain point subserves the purpose of guiding the button; hut it is claimed that this function ceases at the point where the wire is cut and turned to form a staple, and that below the point where the driver engages the crown of the fastener it is enlarged, and does not perform the function assigned to it in the Eggleston patent. It is therefore contended in behalf of the defendant that, because of this enlargement of the lower portion of the slot of the defendant, its machine does not have the guide of the Eggleston patent with its slot, i.
It is difficult to see what the object of the defendant was in widening the slot at its lower end, since such enlargement appears to fulfill no essential purpose, neither adding to, nor detracting from, the operation of the machine in any way. Indeed, it is quite possible it may have been done for the very purpose of evading this patent. If it be said that the narrow slot is useless to the defendant after the staple is formed and the setting operation begins, it is because at this point the driver straddles and seizes upon the eye of the button, and guides it to the point of insertion in the fabric, precisely as at a certain point in the operation of the Eggleston device the eye of the button is straddled by the slot, P, in the jaw, J, when the narrow slot in the guide becomes useless, and the button is held in place by the slot in the jaw. In neither device, after the driver has straddled the eye of the button, is there a necessity for a slot so narrow as to hold the eye centrally upon the crown of the staple; but it may be widened out, provided it be not widened out so much as to destroy the function of the groove, t, and permit the legs of the staple to escape laterally from the groove. It appeared that in the Elliott machine' the slot, i, of the Eggleston patent is made úse of so far as such use is of any value to the machine, and we do not think the charge of infringement is avoided by the fact that in the final operation of perforating the fabric and clinching the staple the narrow slot becomes superfluous. The main difficulty arises from the fact that in the Eggleston patent the button starts down the slot or groove with the staple already formed and strung upon it, while in the defendant’s device the button starts down the groove alone, stops on its way to receive the wire, and to have this wire formed into a staple, and then to be impelled by a driver so fashioned that the narrow slot becomes unnecessary. .
I have experienced some difficulty in the examination of this question by the intricacy of the Elliott mechanism and the absence of a model; but, upon the best consideration I have been able to give to it, it seems to me, though I confess not without some doubt, that the charge of infringement is fairly sustained, and that there should be a decree for the plaintiff. The defendant seems to have availed itself of the Eggleston device so long as it was useful in the structure of its machines, and to have discarded it when it became unnecessary.
Not reported.