Judge Townsend, while regarding the trolley stand as "probably the most substantial, if not the chief, element," said:

"The advertisements thereof contained no limitation to sales for repairs, or to persons having the right to use said invention, and it may fairly be inferred from the affidavits that sales have been made to persons not having such right. * * Defendants further suggest that their trolley stand is capable of a lawful as well as an unlawful use, by way of reparation or restoration of a patented device, and that the presumption must be that this is the purpose for which it is to be used. As already shown, it does not appear, by advertisements or sales, that its use is to be confined to such purpose. Inasmuch as the defendants make and thus sell stands which are useful only for the purpose of performing functions involved in the operation of the patent, it raises a presumption that they intend their stands should be so used. A suit for infringement cannot be defeated by merely showing that such devices could be used for some other purposes. Walk. Pat. (3d Ed.) 331."

But in the suit at bar the sale was made to persons licensed to use the combination, and to no others. Therefore the decision of Judge Townsend does not relate to facts such as are here presented. But Judge Shipman states (75 Fed. 1009, 22 C. C. A. 5):

"While it is not intended that a trolley stand should be broken or should lose its useful capacity, either calamity may befall it; and the right to replace the injured part by a new stand, from any person who can supply the article, should be conceded by the owners of the patent."

But he immediately adds:

"It is not intended to permit the unauthorized substitution of the vital and distinctively new part of an invention in place of one worn out by use, as the substitution of a new filament in an Edison incandescent lamp, or the substitution of a new for an old burner in the Wallace Case, supra [9 Blatchf. 65, Fed. Cas. No. 17,100]; but the trolley stand is not the vital element of the invention, though a portion of it is an element of the combination."

But in the suit at bar the tubes are the vital element of the invention. The cylinder might feebly operate without the tubes, but would be useless for any valuable purpose. The specification

states:

"The water circulates through the generating-tubes, b [the tubes marked "b" are thus below the water line], flowing upward, and is converted into steam in its passage through said tubes. The saturated steam is dried in its passage upward to the steam-dome, e, through the tiers of tubes, b', [b' are the tubes above the water line]."

And after describing the arrangement of the tubes continues:

"This arrangement of the tubes compels every portion of the ascending heated gases to come in contact with some portion of some one or more of the generating tubes."

In Davis Electrical Works v. Edison Electric Light Co., 60 Fed. 276, 8 C. C. A. 615, the claim was for "the combination of carbon filaments with a receiver made entirely of glass, and conductors passing through the glass, and from which receiver the air is exhausted, for the purposes set forth." The court held that "the carbon filament, in use in a vacuum, represents the entire advance from the state of the art." The receiver was punctured, the carbon filament destroyed by use was removed, and a new filament inserted, with its ends inserted in platinum sleeves, the hole closed

by fusion, and the air exhausted. The court held that the filament was essentially Edison's electric lamp, and that the "globe and the conductors * * only the chimney, the stand, and the opening for inserting the oil or other fluid, found in the ordinary domestic lamp." The defendant was held to infringe. This decision seems to be to the effect that, when that element which alone gives the combination patentability is replaced, it is renewal, and not repair. Judge Colt, while considering this Edison lamp in the Circuit Court (58 Fed. 878), said:

"When you take an Edison lamp with its filament destroyed, and break open the all-glass chamber, you have only left the broken pieces-the remains of the original lamp. Its identity as a structure is gone."

If this be the rule of "identity," the Morrin steam generator loses its identity when the tubes are removed, because it leaves a thing not only useless in fact, but also stripped of the element that makes it patentable.

A case wholly contrasting with either of the above is Pacific Steam Whaling Co. v. Alaska Packers' Association, 100 Fed. 462, 40 C. C. A. 494, where the owners of a machine for automatically filling cans removed all the parts except the legs, and on such old legs placed a new superstructure. This was obvious renewal.

In Singer Manufacturing Co. v. Springfield Foundry Co. (C. C.) 34 Fed. 393, the defendant company made some, but not all, the parts of the patented combination for improvements in sewing machines. Such parts were the feed-cam, forked connecting feedbar, feed-lifting rock-shaft, feed rock-shaft, shuttle-driver, and shuttle-race, and they were made and sold for the purpose of replacing parts which had been broken or worn out in organized sewing machines sold by the plaintiff. It appeared that the parts would fit no other machine than that of the plaintiff without considerable alteration. Judge Colt refers to Wilson v. Simpson, 9 How. 109, 13 L. Ed. 66, which related to replaced cutter knives; Chaffee v. Belting Co., 22 How. 217, 16 L. Ed. 240, where the defendant “had used certain machinery, constructed in conformity with the specifications of the plaintiff's patent," and where the question was whether the defendant, as grantee or assignee, was licensed to use the thing patented, there being present no question of restoration or repair; to Gottfried v. Brewing Co. (C. C.) 8 Fed. 322, which will be later noticed; and Aiken v. Printworks, 2 Cliff. 435, Fed. Cas. No. 113, where the needles renewed by defendant were subject to a separate patent. Thereupon he said:

"As illustrated by these cases, the rule seems to be that where a patent covers, as an entirety, a machine composed of several separate and distinct parts, the purchaser of such machine from the patentee will not infringe by replacing such temporary parts as wear out, so long as the identity of the machine is retained; but, if the patent is for a distinct part or element of the machine, a purchaser will infringe by replacing such part or element. Tested by this rule, I think the defendants are guilty of infringement in the present case. The sewing machine of complainant is not patented as an entirety, but different parts of the machine are covered by different patents. Claims 1 and 2 of patent No. 229,629 cover an improved shuttle-driver, and the defendant makes and sells the same device to be used in a Singer machine.

The second claim of letters patent No. 274,359 is for a shuttle-race for an oscillating shuttle, provided with an elastic side or flange. The shuttle-race cannot be used in the Singer I M machine without the elastic flange. The defendant makes the shuttle-race for use in such machine. He therefore makes the major part of the patented combination, intending that it should be provided with an elastic flange, and used in complainant's machine. Claims 3 and 4 of patent No. 229.629 and claim 6 of patent 208,838 are combination claims. The main elements found in these patented combinations are made and sold by defendant for use in the Singer machine. Under the authority of Wilson v. Simpson and other cases, this cannot be done."

It is understood from the above that Judge Colt held that the shuttle-driver was subject to separate patent; that the shuttle-race, provided with an elastic side or flange, was subject to separate patent, and that the defendant made such shuttle-race usable only in the plaintiff's machine; and that the other parts sold by defendant were "main elements" in patented combinations-and thereupon ordered a decree for the complainant. From this decision it appears that the owner of the machine may not replace broken or worn-out parts that are subject to a patent, either separately, or, if they be main parts, although not the main parts in the combination, and that the parts worn or broken did not bear to the structure the relation of the knives to the planing machine in Wilson v. Simpson. There it was said that the right to replace the knives did not depend upon perishable material, but existed because the inventor's arrangement of the knives in the combination patented precluded continued use of the machine "without a succession of knives at short intervals." Then the court contrasts the other parts of the planing machine with the knives:

"The other constituent parts of this invention, though liable to be worn out, are not made with reference to any use of them which will require them to be replaced. These, without having a definite duration, are contemplated by the inventor to last so long as the materials of which they are formed can hold together in use in such a combination. No replacement of them at intermediate intervals is meant or is necessary. They may be repaired as the use may require. With such intentions they are put into the structure. So it is understood by the purchaser, and beyond the duration of them a purchaser of the machine has not a longer use of them. But if another constituent part of the combination is meant to be only temporary in the use of the whole, and to be frequently replaced, because it will not last as long as the other parts of the combination, its inventor cannot complain, if he sells the use of his machine, that the purchaser uses it in the way the inventor meant it to be used, and in the only way in which the machine can be used. Such a replacement of temporary parts does not alter the identity of the machine, but preserves it, though there may not be in it every part of its original material."

Here the court draws a distinction between parts exposed to wear in connection with extrinsic material subjected to the operaction of the machine, and consumed thereby after brief use, and parts that wear from coaction with other parts of the machine, or from the effect of the operation of the entire organism. But even as to the parts last mentioned, it is said that repair may be had, which leaves the question of what would be repair to be settled as each case arises.

In the suit at bar the tubes are so arranged as to be more directly affected by the heat than the adjoining cylinder. As a whole they

will probably wear out before the cylinder, and certain of them— probably those in proximity to the source of heat-will fail sooner than others. But it was not the design of the inventor that their life should be brief, or that they should fail during a time largely disproportioned to the life of the cylinder. The same influences causing deterioration act, even if they act unequally, on the cylinder and tubes; but it cannot be said, as in Wilson v. Simpson, that the arrangement of the tubes, and the functions imposed upon them, contemplated frequent consumption and replacement.

In Gottfried v. Conrad Seipp Brewing Co. (C. C.) 8 Fed. 322, the bill was dismissed for noninfringement; but Judge Blodgett held that the grates, pipes, and blowers were worn out, and their renewal by the defendant did not destroy the identity of the machine. The opinion states:

"If, for instance, this patent had been upon a peculiar grate, and there had been no patent upon the other parts of the machine, when the grate was worn out the defendant would have no right to put in another like it, because the grate was covered by the patent; but, if the grate is only a part of the entire combination, I think it has a right to replace the worn-out parts, and it cannot be said to be a different machine."

The first claim of the patent was held invalid in Crescent Brewing Co. v. Gottfried, 128 U. S. 158, 9 Sup. Ct. 83, 32 L. Ed. 390; but, upon the assumption of validity, some of the parts held by Judge Blodgett to have been renewed without infringement were mentioned in the claim. The invention related to the preparation of casks for receiving pitch or other melted substance, by subjecting the interior of such casks to blasts of highly heated air by means. of an apparatus described in the letters. There were three claims: “(1) The application of heated air under blast to the interior of casks by means substantially as described, and for the purposes set forth.

"(2) The use of a removable conductor, E, in combination with a furnace and blowing apparatus, arranged and operated substantially as described. "(3) The tube-holding plate, i, in combination with the removable pipe, E, and blast furnace, A, substantially as and for the purposes described."

The opinion of the court (128 U. S. 166, 9 Sup. Ct. 85, 32 L. Ed. 390), describes the above structure as

"An apparatus consisting of a fan-case arranged outside of a furnace, and furnished with a series of rotary wings or fans, which create a blast of air, and force such blast into a chamber and through a fire built upon a grate in the chamber, and thence through such chamber and out of it, and, by means of a pipe, into the cask which it is desired to heat; the heated products of combustion being thus forced into the cask, and then allowed to escape therefrom, so that the cask will be properly heated to admit of the ready flow of the melted pitch into the pores and cracks or joints in the wood in the interior of the cask when the cask is rolled about."

The grates that were renewed were not specific elements of the combination, but the removable conductor and the blowing apparatus were. The blowers that were replaced were probably the rotary wings or fans inside the fan-case, so that only a portion of the blowing apparatus was renewed. The conductor or pipe seemed to have patentable novelty only from the fact that it was removable, and it was said in the opinion of the Supreme Court, “It

is cast separate from the furnace, for convenience of renewal in case of the breakage of either it or the furnace." Indeed, the specification states that the pipe is removed when the cask has been subjected to treatment.

In Gottfried v. Schoenhofen, 10 Fed. Cas. 841, the infringement of the same patent was involved; and while it was held that the defendant was entitled to use the original structure, yet, as he had torn it down, removed the old parts, and put up another machine, consisting of parts of the original machine, he thereby so destroyed the parts of the original machine as to make him an infringer. It does not appear what parts were renewed.

In Cotton-Tie Company v. Simmons, 106 U. S. 89, 1 Sup. Ct. 52, 27 L. Ed. 79, the cotton-bale ties that were the subject of the patent consisted of a buckle and band, with the words, "Licensed to use once only," stamped in the metal of the buckle. At the cotton mill the band was cut, and the ties sold as scrap iron to H., who rolled out the pieces of the band, riveted their ends, cut them to proper lengths, and sold them with the old buckles for their original purpose. This was held to be a reconstruction of the tie. will be observed that the right to use was, by the very license to use, subject to the necessity of destruction after one use, and that the device as such was actually destroyed. Hence when the ties came to the defendant they were, in fact and in law, incapable of restoration for the purpose of baling cotton.

It

Shickle, Harrison & Howard Iron Co. v. St. Louis Car Coupler Co., 77 Fed. 739, 23 C. C. A. 433, related to a patent for car couplers. The couplers consisted of:

"First, the drawheads or shanks; second, the coupling head or knuckle which is used to connect them; third, the pivot pin on which the knuckle turns; and, fourth, the locking pin."

Each claim of the patent was founded upon a combination of three or more of these elements, and no one of the elements was the subject of a separate claim. The defendant made and sold, to persons licensed to use the couplers, knuckles in substitution of those worn out or broken. Judge Thayer states in the opinion:

"The Circuit Court concluded that the manufacture and substitution of new knuckles for those which had been broken should be regarded as a reconstruction of the car coupler, rather than a repair. It was led to entertain this view, as it seems, because it regarded the knuckle as the chief element of the patented combination; also because the knuckle is unique in form and structure, and only susceptible of use in connection with the other elements of the complainant's device. St. Louis Car Coupler Co. v. Shickle, Harrison & Howard Co. (C. C.) 70 Fed. 783. It is undoubtedly true that the patentee did display considerable ingenuity in devising the peculiar shaped knuckle. It is also true that the knuckle is an important element of the coupling device in question, and that it is utterly useless except in combination with the drawheads forming the coupler. But we are not able to say for these reasons that the substitution of new knuckles for others that had been broken should be regarded as a reconstruction of the coupler. Moreover, the drawheads of the coupling device, besides being more durable than the knuckle, are also an essential part of the patented combination. It is not wholly accurate to say that the knuckle is the chief element of the combination. The drawheads have an equally important funetion to perform. They are not like the drawheads in use in the ordinary