SHUTE v. MORLEY SEWING MACH. CO. et al., 64 F. 368

PER CURIAM. We agree fully with the reasoning and conclusion of the judge who sat in the circuit court in this case, but we will notice two matters not spoken of in his opinion. The appellant maintains that in Sewing Machine Co. v. Lancaster, 129 U. S. 263, 9 Sup. Ct. 299, the supreme court construed the claims in contest in this case as coni ¡lining the element of a fabrie-fceding mechanism.

The alleged infringing machine in that case infringed these claims on either construction, and the supreme court had no occasion to consider the question involved in the case at bar, and does not specifically state that it had considered it. Our observations in the opinion passed down October 12, 1894, in King v. McLean Asylum, 64 Fed. 331, as to matters nor necessarily considered by the court in reaching a result, disposes ol“ this proposition of the appellant.

The Dennis and Caprou patent came into the case as an afterthought, and, though now strenuously urged, is so clearly lacking in point — as such aiferthoughts are apt to be— that it needs no discussion, except to remark that in its operation the very first step is essentially unlike the automatic principle of the Morley machine, because the feeding of the hooks and eyes is done singly, by hand, instead of in mass. The patent in suit contains 18 claims, and the prayers of the bill relate to the patent as a whole.

The decree below directed that an injunction issue “according to the prayer of the bill,” although only claims 2 and 13 were in issue. It has been many times urged that the public lias an incidental interest in patent litigation, which throws a duty on the court to notice certain matters of its own motion. This is one of them; and in a patent cause a decree should not; go which is hro'ader than the findings of the court.

Heretofore we have been content merely to correct the decree below, but, as the duty of drawing* out a proper decree rests on the solicitor for the complainant, we will hereafter endeavor to protect the court' by a proper adjustment of costs. As the appellant assigned no error on t his account, he is not entitled to costs in ibis behalf. The decree of the court below* will be modified so as to be expressly limited to claims 2 and 13, and, as thus modified, is affirmed. if either party will recover any costs of appeal.