the grant should not put the statute of limitations in operation against him until the grantee devotes the land to some use not consistent with, or not contemplated by, the grant, which indicates clearly that he does not intend to comply with the condition upon which it is held. The grantee of an estate upon condition holds generally in subordination to the right of the grantor to enter for condition broken. Tenure exists between them, and for that reason a mere constructive possession by the grantee such as accompanies the legal title ought not to be deemed a denial of the grantor's right to enter. Some act must be done by the grantee which is tantamount to a disavowal of his obligation to perform the condition. Such an act might consist in putting the land to a use other than that which was limited in the grant; but suffering it to remain vacant and unused for a period longer than is reasonably necessary to comply with the condition, where the limitation is to some specific use, cannot be regarded as a denial of the grantor's right to enter for condition broken, and therefore as sufficient cause to start the statute of limitations. From the findings made by the trial judge it appears that the Union Pacific Railroad Company did not take possession of lot 8 in block 96 (otherwise than by constructing a switch track across the same, which was speedily washed away and abandoned) until April 23, 1886,-less than 10 years before this suit was instituted. At . the latter date it leased so much of lot 8 as then remained above water to the Smelting Company, which made use of the lot from that time forward as an ordinary roadway. From the date of the grant of the lot for specified uses on June 19, 1865, until April 23, 1886, the lot appears to have been vacant and unoccupied. The railroad at most only had a constructive possession. At all events, no act was done or performed by the grantee which can be said to have clearly indicated that it did not intend to put the lot to the use for which it had been conveyed, but did intend to put it to other and inconsistent uses. In view of this finding it may be conceded that the statute of limitations began to run as against the grantor of the lot on April 23, 1886, when the lot in controversy was leased to a third party, and put to uses which were incompatible with the condition on which it was granted; but we are of opinion that the statute did not begin to run prior to the last-mentioned date, because the holding prior thereto was not adverse, and that the plaintiff was not barred of his right of action or entry when the present suit was instituted. With respect to lot 1 in block 97, the trial court concluded that, because that lot was washed away before a reasonable period had elapsed within which to comply with the condition, and the grantee was thereby prevented by an act of God from complying with the condition, no forfeiture of that lot took place. In that view of the law we fully concur. It is accordingly ordered that the judg ment below be affirmed. SANBORN, Circuit Judge. I concur in the views expressed in the foregoing opinion relative to the title to lots 1 and 3, and as to lot 8 I concur in the result, on the ground that the construction of the switch track on that lot by the Railroad Company evidenced an intention to comply with the condition in the deed, and the first evidence of an abandonment of that intention and of the use of the lot for a railroad disclosed by the findings is its lease to the Smelting Company on April 23, 1886, within ten years of the commencement of the action. But I do not assent to the proposition that a grantor may not, by laches and acquiescence, waive his right and bar his action to recover vacant and unoccupied land for a breach of a condition subsequent. If the condition subsequent is negative in its character, if it does not require the use or occupancy of the land granted, then I agree that acquiescence in its vacancy may not waive the condition. But where the condition subsequent expressly requires the occupancy and use of the premises by the grantee for a specified purpose within a reasonable time, as in the case at bar, then the mere vacancy for an unreasonable length of time is itself a breach of the condition, and gives rise to a right of action for the recovery of the land; and, if the grantor does not enforce the right or bring the action within the time limited by the statute of limitations for the commencement of such actions, no sound reason occurs to me why, upon general principles, his laches and the limitation of the statute are not alike fatal to him. "The strongest equity may be forfeited by laches or abandoned by acquiescence" (Swift v. Smith, 79 Fed. 709, 712, 25 C. C. A. 154, 158, 49 U. S. App. 181, 186; Peebles v. Reading, 8 Serg. & R. 484, 493; Great West Min. Co. v. Woodmas of Alston Min. Co., 14 Colo. 90, 95, 23 Pac. 908; Sullivan v. Railroad Co., 94 U. S. 806, 811, 24 L. Ed. 324); and it seems to me that a mere right to enforce a forfeiture, which is never favored in the law, may be forfeited or waived in the same way (1 Warv. Vend. p. 450, § 9; Ludlow v. Railroad Co., 12 Barb. 440, 445; Jones v. McLain [Tex. Civ. App.] 41 S. W. 714, 715; Kenner V. Contract Co., 9 Bush, 202; Coon v. Brickett, 2 N. H. 163, 165; 2 Washb. Real Prop. p. 20, § 18). (98 Fed. 309.) FORD et al. v. BANCROFT et al. (Circuit Court of Appeals, First Circuit. October 10, 1899.) No. 251. PATENTS-INFRINGEMENT-MACHINE FOR MAKING WOVEN CANE WORK. The Morris patent, No. 401,050, for a machine for inserting diagonal strips in woven cane work, while on its face covering a pioneer invention for automatically doing the work, is not entitled to the broad construction accorded to such patents; the machine described having failed to accomplish the result intended, and no practical machine embodying the invention having ever been constructed. Held, also, not infringed. Appeal from the Circuit Court of the United States for the District of Massachusetts. For opinion in circuit court, see 85 Fed. 457. William D. Baldwin and Loyd B. Wight, for appellants. Before COLT, Circuit Judge, and WEBB and ALDRICH, District Judges. COLT, Circuit Judge. This appeal relates to patent No. 401,050, issued to Henry B. Morris April 9, 1889, for a "machine for inserting diagonal strips in woven cane work." The invention, in the words of the patentee, "is for a machine for automatically inserting diagonal threads or strips in a prepared foundation mat." The foundation mat of woven cane work, and the completed fabric after the insertion of the diagonal strip, are illustrated in the following figures: Fig. 1 Fig. 2 ## The Morris patent, as appears from the specification, covers a complete automatic machine, composed of several groups of instrumentalities, namely, "improved means for inserting diagonal threads into a woven fabric, improved means for feeding the fabric to the mechanism for inserting the diagonal threads, and improved devices for severing the threads at proper length." The chief feature of the Morris invention relates to the dies which separate the strands of the foundation fabric, and open a passage through which a diagonal strand may be passed. The inventor says: "I conceived the plan of using a straight needle, and of opening a path through the foundation fabric for said needle by elevating and depressing the proper strands so that the needle might follow the course to be occupied by the diagonal thread. In carrying out this idea, I constructed a pair or set of separator bars furnished with separators, or, as I call them, dies for elevating and depressing the proper portions of the mat." The patent was granted April 9, 1889. Morris conceived the invention in the winter of 1886-87, and between that time and the date of the patent he made several sets of separators for the purpose of experiment. Some time after the patent was issued, he constructed a machine, which proved to be structurally weak, and was abandoned. A second machine was completed in the winter of 1891-92. On March 17, 1892, this machine was operated in the presence of two of the complainants, Ford and Johnson, and of Henry G. Dunlap, at Geneva, N. Y. Morris and his son, Edmund, testify that the machine worked fairly well. Dunlap testifies that he told Ford that it "would never do the work practically," but "that it might be improved and worked down fine enough to make the work all right." The complainants Ford and Johnson are not called as witnesses, and we have not the benefit of their evidence as to the operativeness of this machine. Two days after this examination of the machine, on March 17, 1892, the complainants entered into a contract with the Morris Weaving Company, to whom the patent was issued as assignee of Morris, for the purchase of the patent; and about the same time Morris and his son entered into the employment of the complainants, and have since continued in their employment. This contract contained the following provision: "It is further understood and agreed that the party of the second part shall pay to the party of the first part the sum of $5,000 upon the execution and delivery of these presents, and the balance of the twenty thousand dollars ($20,000) as follows: That when in the opinion of H. B. Morris or Edmund Morris, in behalf of the party of the first part, and of Henry G. Dunlap, or some other expert appointed by the party of the second part, the machine has been developed and perfected under the letters patent aforesaid so as to be commercially useful, that the parties of the second part shall pay to the parties of the first part fifteen thousand dollars ($15,000) cash: pro vided that, if the experts of the two parties hereto shall not be able to agree as to when said machine has been so perfected, then, upon the demand of the experts of either party, a third party shall be chosen by the experts of both parties, who shall be a mechanical expert, and both parties hereto agree to abide by the decision of the majority of the three arbitrators thus appointed as to whether the machine has been so perfected at that time as to be commercially useful; and the parties of the second part agree to use all reasonable diligence in perfecting the machinery described and claimed under the said letters patent." This machine was taken from Geneva to Chicago, and then to Michigan City, where the complainants carry on their business of manufacturing cane goods. The machine was then taken apart, and an attempt was made to build a third machine. This last machine was never completed. The separators used in the second machine and in the last partially constructed machine were different from those described in the patent. Although the Morris Company, by its contract with the complainants, was to be paid $15,000, provided a practical and commercial machine could be constructed, the effort to build such a machine was abandoned. The reason given by Morris for suspending work on the machine (that, in view of the low price of making the fabric by hand, coupled with the fact that the contract called for the payment of royalties to the Morris Company, "he doubted" whether "the machine could be made at that time commercially operative or useful") is hardly satisfactory. It appears that he and his son continued their efforts to produce a machine for doing this work, and that they succeeded in designing a successful machine. A patent for this machine was applied for September 27, 1893, and was granted July 10, 1894. This was the first successful automatic machine for the insertion of diagonal strands in open cane work. Subsequently, in 1895, the son, Edmund Morris, was granted a patent for another machine. Both these last patented machines operated upon entirely different principles from the machine in suit. Both proved to be practical and useful, and machines embodying these patents were at once adopted, and are now operated by the complainants. In the Morris patent, in suit, a continuous channel or shed is opened in the foundation fabric for the passage of a straight needle, by means of separator bars which, when brought together, elevate and depress the proper strands. But the difficulty is that the attempts by the inventor, assisted by others, and under the most favorable circumstances, to embody this fundamental conception of the patent in a practical, useful machine, have been wholly unsuccessful. Whether the defect in the machine is owing to the absence of means to properly register the foundation fabric so as to hold the strands in proper position for the insertion of the diagonal strand when the separators are brought together, or to the shape of the projections on the separators, or to the use of a hollow needle, or, as seems to be the case, to all these circumstances combined, the fact is that the machine has proved a failure, and that the inventor and his son subsequently solved the problem by designing another machine operating on a different principle. Neither Morris nor any subsequent inventor has succeeded in the construction of a practical machine on the principle described in the patent in suit. In the defendants' machine the bars or separators and the needle are very different in construction and mode of operation from those described in the Morris patent. The bars do not open a continuous channel or shed for the passage of the needle by bringing the bars together, and so depressing and elevating the proper strands in the foundation fabric. On the contrary, their principal function is to crowd down the strands around the conical registering spurs of the lower bar, and to cause the strands to lie in a correct position above the sliding pins in the lower bar. When the needle is pushed forward, its point reaches the sliding pin just as the pin has been raised by a cam bar and has elevated the warp strands above the level of the fabric. The defendants' machine uses a straight, slender, solid needle with an eye in its point, which will separate the strands by passing through the fabric with an up and down motion imparted by the sliding pins rising and falling in its path, which pins co-operate with the needle to effect the separation; and the diagonal strand, having been threaded into the eye of the needle, is inserted into the fabric by drawing the needle back between the separated strands. The defendants are charged with infringing the first, fourth, and fifth claims of the patent. The first claim is as follows: "(1) In a machine for inserting diagonal threads in warp fabrics. the combination, substantially as hereinbefore set forth, of the separators for opening a diagonal passage in the fabric, means for actuating the separators, the needle which carries the diagonal thread through said passage, and means for actuating the needle." |