In the case of United States v. Speed, 8 Pennsylvania; Frederic P. Schoonmaker, Wall. (75 U. S.) 77, 19 L. Ed. 449, the Supreme Court said: "And we do not believe that any safer rule, or one nearer to that supported by the general current of authorities, can be found than that adopted by the court, to wit, the difference between the cost of doing the work and what claimants were to receive for it, making reasonable deduction for the less time engaged, and for release from the care, trouble, risk, and responsibility attending a full execution of the contract." The jury evidently had some basis on which it arrived at a verdict. What profits were allowed and deductions made for less time engaged, release from care, trouble, risk, responsibility, and use of capital, we do not know. Some amount should have been allowed and perhaps considerable; but since we do not know the profits allowed or disallowed and the deductions made because the contracts were not completed, we cannot say that the verdict shows that the damages were assessed upon an erroneous or illegal basis, or that the verdict was arbitrary or the result of a compromise. Under the evidence, and instruction of the court, the jury had rather a wide latitude as to the finding of facts. The verdict may be in exact obedience to the instruction and the facts as it found them. Therefore the judgment of the District Court is affirmed. FULLMAN v. STEEL CITY ELECTRIC CO. Judge. Suit by James M. G. Fullman against the Steel City Electric Company. Decree for defendant on counterclaim, and complainant appeals. Affirmed on condition. Winter & Brown and Reed, Smith, Shaw & McClay, all of Pittsburgh, Pa. (Frederick Critchlow, all of Pittsburgh, Pa., of counW. Winter, George D. Wick, and Paul N. sel), for appellant. Patterson, Crawford, Miller & Arensberg, of Pittsburgh, Pa. (Green & McCallister, of Pittsburgh, Pa., of counsel, and C. F. C. Arensberg and E. W. McCallister, both of Pittsburgh, Pa., on the brief), for appellee. Before WOOLLEY and DAVIS, Circuit Judges, and RELLSTAB, District Judge. DAVIS, Circuit Judge. This suit was brought by James M. G. Fullman, plaintiff, charging that the defendant infringed letters patent No. 1,251,497, issued to him January 1, 1918, for the improvement in floor The defendant admitted the outlet boxes. manufacture, use, and sale of the boxes, but alleged that it owned the invention and the letters patent, and filed a counterclaim or cross-bill, wherein it prayed that the court decree that the invention and patent belonged to it, that it order the plaintiff to assign them to it, and dismiss the bill. The case was tried to the court, which entered a final decree in accordance with the prayer of the counterclaim. From this decree the plaintiff has appealed to this court. The plaintiff prior to 1904 had been man (Circuit Court of Appeals, Third Circuit. Sep- ufacturing adjustable outlet boxes, under tember 30, 1924. Rehearing Denied December 1, 1924.) No. 3096. 1. Master and servant 62-Equitable title to patent held to be in employer of inventor under contract. Under a contract between defendant corporation and complainant, then its general manager, the equitable title to a patent for an invention made by complainant while so employed, and developed and perfected in defendant's shop during working hours, but patented after the relation had ceased, held to be in defendant, subject to its payment of the expense incurred in securing the patent. 2. Equity 66-Maxim, "he who seeks equity must do equity," applicable to defendant, asking affirmative relief. The maxim, "he who seeks equity must do equity," is as appropriate to the conduct of a defendant as to that of the complainant, and should be applied in every case where its application is necessary in order to do justice. Appeal from the District Court of the United States for the Western District of his patent No. 899,381, applied for May 6, 1902, and issued April 11, 1904. In or about the year 1903, the plaintiff became involved in financial difficulties and sold his business to the defendant, which was incorporated at that time for the purpose of purchasing it. Fullman acquired about onethird of the stock of the new corporation, became its general manager, and conducted its business, from that time until March 15, 1913, under a license which he had granted to it under his first patent. About the year 1907 the need of a nonadjustable floor outlet box was recognized. This type of box was invented by the plaintiff, and was covered by the patent in suit, which was applied for November 17, 1908. The patent not being issued, the application was renewed June 13, 1916, and the patent was finally issued January 1, 1918. The nonadjustable box was put upon the market in 2 F.(2d) 4 May, 1908. From that time until the plaintiff, as general manager, severed his connection with the defendant, it manufactured and sold, under his management, the nonadjustable boxes, and has continued to do so since he left. As if to prevent such controversies as have resulted in this litigation, the parties hereto entered into an agreement on May 1, 1907, wherein it was provided that, if plaintiff should make, conceive, or develop any invention while thus employed by the defendant company, it should "be his sole and exclusive property." But the agreement further provided that: "Nevertheless, should the said Fullman voluntarily invent and develop and perfect any invention during working hours, upon being requested by any officer or the board of directors of the said company to improve, develop, or perfect any current methods of manufacture, apparatus, device, or article then being used or manufactured, or for which arrangements have been made for the manufacture or use by the said company, expending the moneys and materials of said Steel City Electric Company in such development, improvement, or perfection, all such inventions and improvements so perfected and developed, and all letters patent that may be obtained therefor, shall be the property of the said Steel City Electric Company, its successors and assigns, and the said Fullman agrees to do every act and thing requisite to vest said patent or patents in said Steel City Electric Company, without any other or additional consideration to the said Fullman than herein expressed." [1] The real question, therefore, is the ownership of the invention and letters patent. This must be determined from what was done under the agreement. The defendant contends that the nonadjustable boxes were voluntarily invented and developed during working hours, upon the request and at the expense of the defendant, and therefore the invention and letters patent belong to it. As evidence of this fact, it points out that, from the date of the invention until July, 1915, no demand whatever was made on defendant by plaintiff with regard to this invention, and the demand made then was that he be reimbursed for the expenses which he had theretofore incurred in prosecuting the application for the patent. Until about the time this suit was begun, his attitude had always been that the inven tion belonged to the defendant. On December 1, 1908, he wrote, in the name of and for the defendant, to the Machen & Mayer Electrical Manufacturing Company, of Philadelphia, and to W. R. Ostrander & Co., of New York, notifying them that they were infringing defendant's invention, and said, "We send you this letter to advise you that we will protect our rights," and signed the letters, "Steel City Electric Company, J. M. C. Fullman, Manager." On April 25, 1913, about a month after leaving its employ, plaintiff wrote defendant, threatening to institute proceedings against it unless royalties were paid under his earlier patent, but did not say a word about royalties, fees, or expenses regarding the invention covered by the patent in suit. The learned trial judge, who saw the witnesses and heard them testify, found the following facts: "He made drawings at night for a nonadjustable box, and had the matter up with Mr. Patterson, president of the corporation, and the other directors of the company, explaining to them the description of the new construction. After some conference, they instructed the plaintiff, as manager, to make the box and sell it. "The nonadjustable floor box here in issue was invented by the plaintiff, developed and perfected while the plaintiff was in the employ of the defendant company, and while he was, in fact, manager of that company. The work of development was not only carried forward in the shop of the defendant, but was also done during working hours at the expense of the defendant, while the plaintiff was manager and in full and complete charge of the business of the company. This work was also carried forward with the knowledge of the other officers of the defendant company, in the defendant's tool room, and was personally conducted by one of the company's employees, Harry A. Beltz, the shop foreman of the defendant company, under the direct supervision of the plaintiff." If the evidence supports this finding, and we think it does, the invention and patent belong to the defendant, under the "nevertheless" provision in the agreement. The plaintiff agreed "to do every act and thing requisite to vest said patent or patents in said Steel City Electric Company, without any other or additional consideration to the said Fullman than herein expressed," and this agreement he must keep and perform. The clear implication, however, if not ex press provision, is that the defendant would bear all expenses of developing and perfecting any invention Fullman might make. This includes the expenses incident to securing a patent for the invention. While the defendant has the right to have the court decree that title to the invention and letters patent is in it, and to require plaintiff to assign his right, title, and interest in and to the patent to it, yet, before it can demand that its rights be enforced, it must discharge its own obligations to the plaintiff, by paying the expenses incurred by him in securing the patent. [2] Pervading the administration of equity in all its branches are certain broad principles, so generally accepted and of such fundamental character that they have become known as maxims. One of the oldest and most venerable of these is that "he who seeks equity must do equity." Hanson v. Neal, 215 Mo. 256, 273, 114 S. W. 1073, 1078. It applies to one who affirmatively seeks equitable relief (Columbus v. Mercantile Trust Co., 218 U. S. 645, 662, 31 S. Ct. 105, 54 L. Ed. 1193), but it is as appropriate to the conduct of the defendant as to that of the complainant (Brown, B. & Co. v. Lake Superior Iron Co., 134 U. S. 530, 535, 10 S. Ct. 604, 33 L. Ed. 1021), and it should be applied in every case where its application is necessary in order to do justice (Mutual Benefit Life Insurance Co. V. Brown, 30 N. J. Eq. 193, 199). Having jurisdiction of this case on appeal, it is our duty and in our power to require the payment of these expenses. Potter v. Beal, 50 F. 860, 864, 2 C. C. A. 60. lost or destroyed and memories dimmed, finding of noninfringement by trial court, who saw and judged the credibility and accuracy of the witnesses, held entitled to unusual weight. 4. Patents 328-No. 445,235, for acid-resisting lining of pulp-digesting boiler, held not infringed. Russell patent, No. 445,235, for cementitious acid-resisting lining for pulp-digesting boiler, held not infringed. Appeal from the District Court of the United States for the District of New Hampshire; James Arnold Lowell, Judge. Action by the American Sulphite Pulp Company against the Burgess Sulphite ComDecree for defendants, pany and others. and plaintiff appeals. Affirmed. Frank T. Benner, of Boston, Mass. (Rodney G. Page, of Boston, Mass., on the brief), for appellant. Marcus B. May, of Boston, Mass. (Alfred H. Hildreth, of Boston, Mass., on the brief), for appellees. Before BINGHAM, JOHNSON, and ANDERSON, Circuit Judges. ANDERSON, Circuit Judge. This patent infringement suit has an unusual setting. It was filed on April 30, 1907, for the alleged infringement of the Russell patent, No. 445,235, dated January 27, 1891. The case was tried before Judge Lowell in May, 1923-15 years after the expiration of the patent on January 27, 1908. At the end of a 2 weeks trial, the learned District Judge disposed of the case in a brief oral opinion, as follows: "I am going to give my decision on this now. I have made up my mind, and there Therefore, upon their payment, with in- is no use in waiting. terest, the decree will be affirmed. AMERICAN SULPHITE PULP CO. v. No. 1716. 1. Patents 312(1)-Plaintiff, alleging Infringement, has burden of proof. Plaintiff, alleging infringement, has burden of proof. 2. Patents 312(1)-Patentee, unduly delaying suit, is not entitled to have doubts resolved in his favor. Patentee, delaying for 15 years before bringing his contentions to trial, is not entitled to have questions of fact involving doubt and difficulty resolved in his favor. 3. Patents 324(5)-Finding on noninfringe ment held entitled to unusual weight. Where trial of patent infringement case was delayed for 16 years, during which records were "I think that the patent to Russell should be limited to cementitious material which is acid resistant. The defense that the defendant's structure was not acid resistant was not made in any of the cases to which I have been referred. It seems to me it is proved to my satisfaction that the liningthat is, the layers of material next to the shell-were not acid resistant, and therefore that they are not covered by the plaintiff's patent. "As to the contention that the facing course of brick is set in litharge, it seems to me that that is disclaimed by Russell in two places. In one place, on page 1 of his reissue patent, he says: "I am aware of the use heretofore of a digester lining comprising a layer or coat of masonry or brickwork laid in cement, and make no claim thereto.' "That is one place. In another part of 2 F.(2d) 6 the specification, on page 2, he refers to the lead paste of Reynolds. So that it seems to me that infringement has not been made out in this case. "Now, that really disposes of the case; but I suppose it will go to the higher court, and possibly it may be worth while to indicate my opinion on the rest of it. "If I had held that this defendant were infringing, I should not allow this bill to stand on account of the delay. It seems to me that a person, even after filing his suit, who delays for 16 years to bring it to trial, 15 years of which was after the patent has expired, has not used that due diligence which should induce a court of equity to give him its aid." The validity of the patent is not in question. As the case was on the merits fully tried before the District Court, as that court found as a fact on all the evidence that there was no infringement, and as we think this conclusion was right, we need not consider the other defense of laches or equitable estoppel. The Russell patent was construed by this court in American Sulphite Pulp Co. v. Howland Falls Co., 80 F. 395, 25 C. C. A. 500, decided April 16, 1897. For most, perhaps for all, present purposes, the validity and scope of the patent are agreed on both sides to be determined by that opinion. The pending case is the second suit brought by this plaintiff against this defendant for infringing this same patent. The first suit was brought on November 3, 1899, for using the patented linings in 10 digesters. A motion for a preliminary injunction was heard by Judge Putnam, whose opinion is found in (C. C.) 103 F. 975. His conclusion was that the defendant infringed as to nine of the digesters, and that as to No. 10 the question was too doubtful to justify the issuance of a temporary injunction. As to that digester, Judge Putnam said: "Without undertaking to go at length into the nature of the lining of the tenth digester, and reserving my views about that until a final hearing, all I need say with reference to it is that it involves too much doubt on the question of infringement to justify me in issuing an injunction against it. The points of doubt are: First. Whether, after all, the real substance of this construction is not that described by the respondents as a purely bona fide composite lining. If it is a purely bona fide composite lining, fairly so termed, it certainly does not come within the claims of the patent in suit, because the very essence and gist of those claims is that Russell was able to get rid of everything except the shell of the digester and the lining of cement. That is the very pith of his invention. Second. I have doubts whether this digester really shows anything more than is shown by the Pierredon patent, lava bricks laid in a heavy course of cement; and what is shown in that patent the public has the right to use, independently of any question whether Pierredon saw all the advantage coming from having a heavy cement course under his lava bricks. Third. The testimony with reference to the substantial advantages and comparative relations of the various parts of the lining of digester 10 are too conflicting to justify the court in basing an interlocutory injunction upon it. On the whole, it is enough for me to repeat that the question of infringement as to digester 10 is too doubtful to justify this court in using the power of a temporary injunction with reference to it." Shortly thereafter this first suit was settled by the payment by the defendant to the plaintiff of about $32,000, and the grant of a license by the plaintiff to the defendant, covering the Russell patent, and another patent not now material, for use in the defendant's "ten (10) digesters now erected and in use in its mill at Berlin, N. H., at the present time, or their equivalent in cubical contents." This suit was by agreement discontinued without costs on November 5, 1900. There was therefore never any complete judicial determination of the question of infringement as to the tenth digester. Perhaps by implication the plaintiff abandoned its contention as to that infringement, thus conceding that the lining in No. 10 was not covered by the Russell patent, but was, as Judge Putnam tentatively thought, "a purely bona fide composite lining, fairly so termed." About five years later, the defendant, desiring to increase its digester capacity, lengthened certain of its old digesters, numbered 1 to 6, inclusive, and built eight new digesters, numbered 11 to 18, inclusive. In lining the extensions of the old digesters, 1 to 6, and the new digesters, 11 to 18, the defendant claims that it employed substantially the same lining as that used in digester No. 10, against which Judge Putnam had refused to issue an injunction. The plaintiff, on the other hand, contended and contends that the linings used were covered by the Russell patent, and that, as they were concededly not covered by the li cense, they infringe. After some prelimina- of the patent and to the evidence will be ry correspondence and negotiation in 1906, the present suit was brought, as above stated, on April 30, 1907. In May, 1907, before the filing of an answer and in connection with the motion for a preliminary injunction, plaintiff took and subsequently filed the deposition of Eliphlet E. Decker, whose employment as superintendent of the defendant was terminated in June, 1906, when, as the evidence indicates, Decker, with "about three dozen of his relatives" were "disengaged from the company by Mr. Burgess at that time." Thereafter, and until May, 1923, the litigation slumbered, although somewhat fitfully, for in 1913 the plaintiff took the depositions of William E. Jolbert and George F. Jolbert. [1-4] Apart from these ancient depositions, the record is made up of nearly 500 pages of parol evidence before the District Court, including the transcript of many letters, besides an addendum of over 150 pages of exhibits, largely dealing with the prior art. This bulky record relates simply to the narrow question whether the linings put in defendant's digesters in 1905 and 1906, and continued in use therein prior to the expiration of the patent on January 27, 1908, were covered by the patent, and to the defendant's present contention of equitable estoppel. Of course, after January 27, 1908, the defendant was free to use the linings covered by the Russell patent. The dates on which the linings were installed and used, therefore, become important. The burden is throughout on the plaintiff. Plainly a patentee, indulging in 15 years of delay before putting its contentions to trial before the court, is not entitled to have questions of fact involving doubt and difficulty, either as to the kind of construction, or as to the date thereof, resolved in its favor. Theodore P. Burgess, one of the original defendants, and other witnesses claimed by the defendant to be material for the defense, have died. Records have been lost or destroyed. The memory of those once conversant with the facts has grown dim. If the issue were otherwise doubtful, as we think it is not, the question is one in which the judgment of the trial judge, who saw and judged the credibility and accuracy of the numerous witnesses who testified before him, is entitled to unusual weight. The prompt and confident decision of the trial judge should not be reversed, unless plainly wrong. Careful examination of the record constrains us to the view that that court was plainly right. A brief reference to the subject-matter enough to indicate in a general way the basis of our accord with the court below. A pulp digester is a huge steel boiler, 40 or more feet high, and perhaps 15 feet in diameter. It is used for cooking or reducing wood chips to fiber suitable for making paper. This cooking is done by filling the boiler with chips and bisulphate of lime, and subjecting the mass to steam heat and pressure. In the bisulphate liquor is sulphurous acid, which, if it reaches the steel shell, eats and destroys it. Hence the necessity of lining these steel shells with acidresisting material. Formerly the shells were lined by sheets of lead,-unsatisfactory, because the lead would expand under heat and would not contract evenly with the contraction of the steel. This noncoordinating contraction caused the lead to creep, buckle, and crack. Russell's invention consisted, roughly speaking, of lining these shells with cementitious material, "put on as one would plaster a wall." 80 F. 398, 25 C. C. A. 503. The patent has only two claims: "1. The improved pulp digester herein described, having an outer shell A and a continuous lining or coat B of cement, as described, applied to the interior of the said shell, for the purpose set forth. "2. The improved pulp digester herein described, having an outer shell A, a continuous lining or coat B of cement, substantially as described, applied to the interior of the said shell, and an interior lining of tiles C, all substantially as set forth.” In the specification Russell says: "I am aware of the use heretofore of a digester lining comprising a layer or coat of masonry or brickwork laid in cement, and make no claim thereto. I mean to be understood that the digester linings comprising a layer or coat of masonry or brickwork laid in cement, to which I have just referred, have always been, so far as I know, supplemented by a lining of sheet lead interposed between the brick or tile lining and the digester shell." The specifications contain other references to the disclaimed prior art. In the Howland Falls Case, 80 F. 395, 25 C. C. A. 500 (the original opinion sustaining and construing this patent), Judge Aldrich said: "We look at this as an invention of an improved structure, with a devised and described process for creating it and putting it in operation in connection with a new and pressing emergency, and not for any particular ingredient or composition. It is true, |