Syllabus.

value. The market value, or the value at which the owner or producer holds them for sale and offers them on the market, is not conclusive evidence of actual value, but it is clearly a matter which may properly be taken into consideration in arriving at the actual value. Dwight v. County Commissioners of Hampden, 11 Cush. (Mass.) 201.

Other errors have been assigned and argued. We think there is no substance in any of them. The judgment must be

Affirmed.

DUEBER WATCH CASE MANUFACTURING COMPANY v. ROBBINS.

APPEAL FROM THE CIRCUIT COURT OF THE UNITED STATES FOR THE EASTERN DIVISION OF THE NORTHERN DISTRICT OF OHIO.

No. 396. Argued April 16, 1896. - Decided May 12, 1896.

Construing letters patent of the United States No. 287,001, dated October 23, 1883, and granted to Caleb K. Colby for " improvements in watchpendants," it is held (1) that said letters patent in view of the prior state of the art do not involve patentable invention; (2) that even if said letters patent could be sustained their scope is so narrow in view of prior inventions that the defendant's device is not an infringement thereof; (3) that the fact that the defendant was for a time a licensee under said letters patent did not estop it from disputing their validity in a suit for infringement charged to have taken place after the license was withdrawn; and (4) that the fact that the device described in the letters patent in suit had gone into extensive use did not prove that the device must have novelty and invention, because the extended use found its extension in the novelty and utility of a certain watch movement with which it was sold, and not in anything either novel or strange in the mechanism of the device described in the letters patent in suit.

Extensive use of a patented invention is only an element to be considered in a case where patentability and invention are doubtful, and where the extended use can be attributed to something other than the mere novelty of the patented device it loses its evidential force.

Before TAFT and LURTON, Circuit Judges, and HAMMOND, District Judge.

Statement of the Case.

This is an appeal from a decree enjoining the infringement of a patent. Royal E. Robbins and Thomas M. Avery, as trustees, held the title by assignment to a patent No. 287,001, issued on October 23, 1883, upon an application made on February 1, 1883, to Caleb K. Colby for a new and useful improvement in stem-winding watches. It was averred in the bill and appeared in the evidence that the Dueber Watch Case Manufacturing Company had taken a license from Robbins and Avery of the following patents for improvements in watch cases: "No. 192,425, issued June 26, 1877, to Fisher and Lucas; No. 220,916, issued October 28, 1879, to E. C. Fitch; No. 287,001, issued October 23, 1883, to C. K. Colby; and No. 312,856, issued February 24, 1885, to George Hunter." On the 13th day of February, 1891, the license was terminated because of the failure of the defendant company to make returns and payments in accordance with its provisions. The defenses set up in the answer were want of novelty, anticipa tion and noninfringement.

The Colby invention relates to the class of watches known as stem-winding watches, in which a key or stem-arbor passes through the hollow stem of the case into engagement with the winding arbor of the watch movement, so that by the rotation of the key the watch may be wound. By its longitudinal movement within the stem the key may be retracted from the winding arbor of the movement sufficiently to allow the movement to be easily lifted out of the case or to be inserted therein. The gist of the device is in providing a springlatch within the hollow stem by which the key and stem may be latched to each other in such a manner that the key will be held in its inner position, but will yield upon effort and allow the key to be retracted a certain distance, when the spring will again operate as a latch to secure the key in the second or outer position, from which it can by another effort be pushed back to its first position. The patent describes the essential feature of the device as an "elastic or spring latch attachment of the stem B with the key C, whereby the latter is free to rotate, but is prevented from being moved longitudinally, except by a special effort." The specifications and

Statement of the Case.

drawings describe the various forms of the device. In some of them the spring-latch is attached to the stem and engages in a circumferential groove upon the key, and in others the spring is attached to the key and engages in a circumferential groove on the stem. In others a shoulder is substituted for

the groove.

Figures 1 and 2, 6 and 7, 10 and 11 and 12 in the Colby patent give a sufficient understanding of the operation of the device and its variations. The figures are as follows:

The inventor describes the purpose of his invention as follows:

66

"My invention relates to a stem-winding pendant for watches, being especially adapted to that class of watches wherein the back of the case is permanently closed and the movement, or the ring in which it is mounted, is hinged to the cup-like case. My pendant may, however, be used in any watch-case.

"In watches having stem-winding pendants the key in the pendant passes into the movement and engages a socket or square in or on the winding-arbor and before the movement

Statement of the Case.

can be lifted out or turned on its hinge this key must be disengaged from the movement by withdrawing it far enough to clear the latter. My invention provides a ready means for doing this.

66

Figure 1 is a vertical mid-section of a watch-pendant provided with my improvements, the plane of the section being taken edgewise of the watch-case, and the key shown as protruding into the hollow of the winding-arbor. Fig. 2 is a similar section taken at right angles to Fig. 1, showing the key withdrawn, so as to permit the movement to be lifted out."

A is the watch-case. "B is the tubular stem, attached to the case in the usual way. C is the key, and D is the crown attached thereto to form a head or thumb-piece, by which the key is turned in winding. These parts, per se, are common in stem winding and setting watches." a and a are two internal circular grooves "at different depths in the hollow of the stem, to form latch-bearings for the rotating key, and to the crown D or the key C, indifferently secure a latch spring or springs, bb, preferably four, provided with projecting angles or parts b', to spring into and engage one or the other of grooves ad when the said springs are inserted in the hollow of the stem, as fully illustrated in Figs. 1 and 2. When the key" is pressed clear down into the hollow of the stem "the elasticity of the springs causes the projections b' to engage in the lower groove a. The key will now be in engagement

with the winding-arbor C in the movement F (if there be a movement in the case,) and by rotating the key in the usual way the watch will be wound up. The bearing which the key finds in the neck of the stem and that which the crown finds on the exterior surface of the stem prevent any lateral play of the key, and the engagement of the latch-springs b in groove a prevents any longitudinal movement of the key, unless some force is applied to move it. In other words, the key rotates readily, but only yields to extra pressure purposely exerted when an attempt is made to withdraw it longitudinally. If, however, it be desired to disengage the key from the movement for any purpose whatever, the operator