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a compound of bisulphide of carbon and maltha. No. 348,994 is for electric conductors covered with the same mixture. No. 348,995 is for paper coated with the same compound, the claim being in these words: “As a new article of manufacture and commerce, paper painted or saturated with a compound of bisulphide of carbon and maltha, substantially as herein set forth.” No. 348,996 is for roofing fabric "composed of maltha and a basis or foundation of fibrous or textile fabric, with or without a backing of paper." The specification of this patent states that the maltha can be applied to the fibrous or textile foundation fabric either by the "hot method” or by the old method,” the maltha in the former case being brought to a plastic state by the application of heat, while in the latter method it is reduced to a proper consistency by means of a suitable solvent, such as bisulphide of carbon; and it is added that “the results may be said to be equally effective as regards the qualities and properties secured in the finished article."
The proofs establish, and indeed the complainant's own expert testified, that prior to the application for the patent in suit coated waterproof and nonconducting papers were in common use, and were made in a great variety of ways, by applying to the paper, either in a melted condition or in solution, many different substances, those substances being used separately and singly, or being mixed with each other in different proportions; oils, waxes, paraffine, coal tar, asphaltum, and liquid products of petroleum being among the materials most commonly employed. It also appears that the method of coating paper described in the patent in suit was old. It may then be confidently affirmed that whatever of novelty, if any, is to be found in this patent is in the substitution of maltha pure and simple for the coating substances or compositions previously used.
The alleged infringing paper was made under and in conformity with letters patent No. 426,633, dated April 29, 1890, granted to Henry J. Bird for an improvement in “waterproofing compositions for paper.” The Bird compound consists of a mixture of “the pitchy material from the distillation of petroleum,” designated as "petrocite” throughout this record, “petroleum residuum,” known as “tailings,” and Trinidad asphalt, in the proportions of 50 to 60 per cent. of petrocite, 20 to 35 per cent. of tailings, and 10 to 15 per cent of asphalt; to which is added a small proportion of “Carnauba wax,” to act as a drier, to prevent sticking.
The proof discloses that the maltha of the patent in suit is the product of a single distillation of the “heavier grades” of petroleum; which distillation is carried on at a comparatively low temperature. On the other hand, petrocite—the substance employed by the appellants, and the use of which constituted their alleged infringementis obtained from the light grades of petroleum common to Pennsylvania and other Eastern states, and is the product of a secondary distillation, carried on at an exceedingly high temperature. Its method of production is in this wise: The crude oil is subjected to a distillation process, during which kerosene--the refined illuminating oil of commerce—is produced. When the kerosene is driven off, there remains a small residuum of petroleum tar, which is a distinct article of commerce. The petroleum tar is the subject of a second distillation-a destructive distillation-resulting in several products, according to the stage to which the process is carried. One of these products is petrocite. The method whereby this substance is produced is described in letters patent No. 239,260, dated March 22, 1881, issued to Julius J. Livingston, for a plastic from petroleum, styled in the patent “petroleum-asphaltum." That product is the petrocite which the appellants used in their paper-coating composition. Notwithstanding the difference in the methods of production of petrocite and the maltha of the patent, the court below decided that they are the same thing, and therefore held that the defendants (the appellants) were infringers. In the view we take of the case, it will not be necessary for us to express an opinion upon the question of the identity of petrocite and maltha, nor yet upon the question whether or not the words of the patent, “the solid residuum obtained in the distillation of the heavier grades of petroleum,” impose upon the claim such a limitation as excludes petrocite. Aside altogether from these considerations, and waiving also the further question whether a patent granted in the year 1888 for the use of maltha by itself is violated by the use of a composition which has petrocite as one of its ingredients, the case, we think, is with the appellants.
In the first place, as we have already seen, the alleged infringement by the appellants was in the use by them of the product which was patented by Livingston in 1881 under the name of "petroleum-asphaltum,” but which is now called “petrocite.” Livingston's patent distinctly sets forth that that substance is suitable for the purposes to which asphaltum had theretofore been applied. The specification states that it is "of such superior quality that it is adapted for use for purposes for which Trinidad or other like natural asphaltum has heretofore been thought to be necessary." Now the proofs conclusively show that long prior to the date of Livingston's patent natural asphaltum was largely and openly used in the United States in coating paper. Livingston, then, having disclosed to the public as early as the year 1881 that the artificial petroleum-asphaltum, described in and covered by his patent, could be used for all purposes as a substitute for natural asphaltum, and the latter substance having been previously commonly used for coating paper, argument is not needed to show that no patent could lawfully be granted in 1888, upon an application made in 1887, which would prevent the use, in the coating of paper, of the asphaltum or petrocite of the Livingston patent. Hence, that patent was a complete defense to the complainant's suit.
But then again, having regard to the five earlier patents appertaining to maltha granted to Pearce and Beardsley, the patent in suit, in our judgment, is destitute of patentable novelty. first patent of this series, that of March 30, 1886, for the compound of maltha and bisulphide of carbon, set forth the peculiar qualities and properties inherent in maltha which make it a suitable waterproof and weatherproof coating body for fibrous and
textile substances and the surfaces of other things.
The purpose of the invention of that patent was to utilize maltha in a cold state by dissolving it and holding it in solution by means of a solvent, thus dispensing with the common melting agency of heat. After naming bisulphide of carbon as the best solvent for the purpose, the specification proceeds thus: “Bisulpide of carbon has also great penetrating power, and after evaporation, when the composition is spread on or otherwise applied to a surface, it leaves a solid, dry, firm coat or covering, which is elastic and pliable, and which will protect the surface or substance it is applied to both against the elements and against acids and alkalies.” The roofing fabric patent of September 14, 1886, prescribed the application of maltha alone by the hot method, stating that the results were equally satisfactory whether the hot or the cold method was pursued. Then, not stopping to discuss No. 348,993 and No. 348,994, we have the patent No. 348,995 for "paper painted or saturated with a compound of maltha and bisulphide of carbon." Now, after this lavish issue of patents involving the same subject-matter, and to the same patentees, could the monopoly be still further broadened and prolonged by the grant of a later patent for "paper coated or saturated with maltha” alone? We have no hesitation in responding negatively. Such an extension of exclusive privileges would be a sheer abuse of the patent laws. Assuredly, in view of the prior state of the art, the mere dispensing with the solvent, and the application of pure maltha to paper as a coating substance, did not involve invention. Moreover, as is indicated by the above quotation from the first of these maltha patents, bisulphide of carbon quickly evaporates, and thus paper treated with the compound of the prior patent (No. 348,995), after the evaporation of the solvent, becomes essentially "paper coated or saturated with maltha." In our opinion, this case is clearly within the principle declared in Miller v. Manufacturing Co., 151 U. S. 186, 14 Sup. Ct. 310,—that no patent can rightfully issue for an invention actually covered by a former patent, especially to the same patentee, although the terms of the claims
Upon the case presented by this record, the court below should have dismissed the bill of complaint.
The decree of the circuit court is reversed, and the case is remanded to that court, with a direction to enter a decree dismissing the bill with costs.
EDISON et al. V. HARDIE.
SAME V. POMEROY DUPLICATOR CO. et al.
(Circuit Court, D. New Jersey. June 15, 1895.)
PATENTS-INVENTION AND UTILITY-INFRINGEMENT-STENCIL SHEETS.
The Edison patent, No. 224,665, for an invention relating to autographic stencil sheets for multiplication of writings, and which consists in the use of a slab having numerous fine points or projections, upon which the sheet is laid, and which are made to penetrate the paper upwardly by the use of a blunt stylus pressed upon the sheet by the hand in writing, sustained, as a meritorious and useful invention, and held infringed.
These were suits in equity by Thomas A. Edison and others against William C. Hardie, and against the Pomeroy Duplicator Company and others, respectively, for infringement of a patent relating to autographic stencil sheets for the multiplication of writings.
Dyer & Driscoll, for complainants.
ACHESOX, Circuit Judge. Each of these suits is upon letters patent No. 224,665, dated February 17, 1880, issued to Thomas A. Edison. The invention relates to autographic stencil sheets of paper for the multiplication of writings, etc. The object is accomplished by means of a slab or plate provided with a number of perforating points or projections, closely proximate, upon which a sheet of paper is laid, and the use by the person writing of a blunt stylus, which is pressed on the sheet by the hand with a force sufficient to cause the points or projections of the plate to penetrate the paper upwardly in the lines beneath the stylus. In his specification the patentee states:
"I make use of a slab or plate with a surface of numerous sharp points. Such surface is represented at a, composed of needle points set closely together, or wire points, the extreme ends of which are in the same plane, and the bodies united by solder or cast metal; or the said surface may be a metal plate with its surface scored with grooves that leave the intervening sharp points projecting. * * * A steel plate thus prepared and hardened is preferred."
The claims of the patent are as follows: “(1) The method herein specified of preparing stencil sheets for printing, consisting in pressing the sheet, in the lines to be printed, against the numerous fine perforating points of a slab, by means of a blunt stylus that is passed over the sheet at the lines to be perforated, and forces such sheet upon the points, substantially as set forth. (2) As an appliance for puncturing stencil sheets by the aforesaid method, the slab, a, having a surface composed of numerous and closely-proximate penetrating points, in combination with a blunt stylus adapted to be moved by hand over the paper to be perforated, substantially as set forth. (3) An autographic stencil sheet, substantially as described, for multiplicate printing, having perforations that are the largest at the side next the surface to be printed, substantially as set forth.”
The defenses of lack of novelty and want of invention are not sustained by the proofs. That the invention was one of decided merit, and is of great utility, the evidence demonstrates. It is satisfactorily shown that Edison was the first to use the plate upon which the stencil sheet rests as the perforating instrument; the stylus being, relatively to the projections of the plate, so blunt that it cannot enter the spaces between the projections, but bridges the projections, and passes freely over them, so as to admit of easy writing. This is the gist of the invention. The Adair patent for a check protector proceeded upon a different principle. By his method the perforation of the paper was effected by the sharp point of the stylus, and not by the corrugated or roughened face of the plate, block, or tablet. His patent calls for a “sharp-pointed stylus," and, as stated in his specification, “the result is that the point of the stylus punches the paper between the ridges of the corrugations, or between the highest points of the roughened surface below."
A careful examination of the proofs and exhibits has satisfied me that the charge of infringement is fully made out. The defend ants' stencil plate is a metal plate scored in two directions with fine grooves, which create intervening sharp points, upwardly projecting, and their stylus is blunt, when compared with the points or projections of their plate. In a word, their stylus and the projections or perforating points of their plate are so related to each other as to accomplish the results contemplated and disclosed by the patent in suit, in the manner therein prescribed.
I see nothing in the patent calling for the limitations upon which the defendants insist, namely, that the points on the plate must be "conical or pyramidal in form," and the stylus must be of "some soft or yielding material.” No special formation of the points is specified, and, as to the stylus, the only limitation expressed is that it shall be "blunt.” The specification states that “any suitable blunt pencil or stylus may be used.” In each case there will be a decree in favor of the plaintiffs.
WOODMANSE & HEWITT MANUFG CO. V. WILLIAMS et al.
(Circuit Court of Appeals, Sixth Circuit. June 4, 1895.)
1. EQUITY JURISDICTION IN PATENT CASES.
The ground upon which a court of equity takes cognizance of an infringement suit is the relief through an injunction. There is nothing peculiar to infringement suits for damages and profits whereby equity jurisdiction may be maintained, and it must appear that the remedy at law is inade
quate. 2. SAME--LACHES OF PATENT OWNER-EFFECT OF ASSIGNMENT.
The negligence or acquiescence of the former owners of a patent in an alleged infringement has, in equity, the same effect upon an assignee's
rights as his own neglect or acquiescence. 8. SAME.
Fourteen years' delay by a patent owner and his predecessors in interest, in making any attempt to assert their rights against an alleged infringing company, openly engaged in making and selling a rival and competitive machine, and without even serving notice of infringement, held
such laches as to require dismissal of the bill. 4. SAME.
Laches is a defense which may be made by demurrer, or by plea, or by answer, or presented on argument either upon preliminary or final hearing. It need not be formally set up in answer.
Appeal from the Circuit Court of the United States for the Western District of Michigan.
This was a bill by the Woodmanse & Hewitt Manufacturing Company against Bradley S. Williams, Malcolm B. Williams, Homer Manvel, and the Williams Manufacturing Company for alleged infringement of certain patents for improvements in windmills. The circuit court dismissed the bill on the ground of laches, and complainant appeals.