HOLLIDAY 'R'oLLIDAY and others
(Circuit Court, S.
PICKHABDT andanother.York. March 11, 1882.)
PATENTS FOR INvENTIONS-DECISION OF PATENT-OFFICE.
The decision of the patent-office in au interference, that the prodnct cla:med in a patent can be prodnced by following the directions contained in the specification, is evidence of such fact on a motion for injunction.
2. BAME-INll'RINGEMENT-SUBSEQUENT PATENT.
The fact of the granting of a patent has no tendency to show that the inven, tion described in it does not infringe a prior patent.
In Equity. On motion for preliminary injunction. Dickerson fl Dickerson, for plaintiffs. .George Gifford and J. Van Santvoord, for defendants. BLATCHFORD, C. J. Professor Seeley testifies that he practiced the set forth in No. 250,247, llsing the (:lxact' proportions and materials specified therein, and produced thereby a product, a sample of which is Exhibit B. He says that Exhibit A (the defendants' article) seems to him to be identical with B; that he has tested them in various ways to determine their similarity; and that he is clearly of opinion that A is the product described in No. 250,247, and claimed in the first claim thereof. . Professor Morton, for the defenddoes not say that A. is not identical with B. What he says is . that B is, manifestly, not the product obtained by following the directions of No. 250,247, and that he does not hesitate to say that B was ,made by, following said directions. Professor Chandler does not A is not identical with B. What he says is that he has examIned B, and, from his knowledge and experience of the process, is convinced that B was not made by process. Dr. Endemann does not say that A is nOt identical with B. What he says is that he has found that B is a product which could not btl produced by following the directions of No. 250,247. Thera is, therefore, no dispute as to the identity of A with B. The contention of the defendants is merely that B cannot be produced by following the directions in No. 250,247. Their experts do not exhibit any article which they say they produced by following the directions in No. 250,247, nor do they give any analysis of B. In the interference before the patent-office, Professors Morton and Chandler testified that they had followed the directions given in Holliday's specification, and had been unable to produce what he
-Reported by S. Nelson White, Esq., of the New York bar.
claimed those directions would produce. The patent-office then directed Holliday to satisfy it that he could obtain the product claimed by the process described in his specification. The report of the examiner shows that in his presence Holliday, by following the directions of the specification /Jond using fuming sulphuric acid, tested by Beaume's hydrometer, at over 69 deg., and almost exactly 70 deg., produced a true sulpho-conjugate acid salt of rosaniline, capable of being dyed in a hot acid bath and preserving its color; not passing into blue through crimson, and made from fuchsine by the reaction of fuming sulphuric acid thereon. T4is report was confirmed by the commissioner of patents, and he rejected the testimony of the chemists who said they had followed the instructions and had been unable to produce the alleged product. This very point, therefore, as to whether Holliday's description would make):lis product, was decided in hisfavot by the patent-office, on a direct issue as to it between him and Caro, whom the defendants represent. There is nothing more now presented on that subject than was before the patent-office, and, for the purposes of this motion, it must be held that it was made, by following the Holliday description. The patent-office also decided that Caro's product and Holliday's product were idelltical. It does not appear that A is not the same thing which was' before the patent-office as Caro's product. The patent-office 'a1so decided the question of priority of invention in favor of Under such circumstances the plaintiffs are entitled to an injunction. Hanford v. Westcott, 16 O. G. 1181. The fact of the granting of It patent to Caro has no tendency to show that the prodqet A, which is the same Caro product that was before the patent-office in ference, does not infringe No. 250,247. The motion for a preliminary injunction is granted.
PERRY V. ,CO-Ol'ERATIVE J'OU:tiDRY CO.
and another, as Trustees, etc., '0. and others.
(Circuit Oourt, N. D. NIYlIJ York. 1882.1
PATENTS FOR INVENTIONS-INVENTION-WHAT IS NOT.
Where the relation between the parts is the same in the arrangements between the patented article and another article in prior use, and the only difference is one of degree as to quantity, or one of convenience as to the character of the device to be used, it does not involve an invention.
C.J. This suit is brought on two patents: (1) reissued letters patent No. 9,24:7, granted to John S. Perry and Grange Sard, Jr., trustees, June 8, 1880, for an "improvement in stoves," the original patent, No. 54,938, having been granted to George, R. Moore, as inventor, May 22, 1866, and having been reissued 6,732, November 9, 1875; (2) reissued letters patent No. 9,252, granted to J,ohn S. Perry and Grange Sard, Jr., trustees, June 15, 1880, for an "improvement in stoves," the original patent, No. 89,304, having been granted to Calvin Fulton, as inventor, April 27, 1869, and having been reissued as No. 5,907, June 9, 1874. 1. As to the Moore patent, the claims alleged to have been in· fringed are claims 1 and 4:, which are as follows: "(1) The combination, with the grate or fire bed of a stove, of a downwardly-contracted' fire pot, the two being so arranged relatively to each othet as to leave an opening between them, substantially as and for the purpose set forth." "(4) The combination in a stove of a downwardly·contracted fire pot and a dumping grate, the two being arranged rela· tively to each otheF so as to an between them, substantially as and for the purpose set forth." These claims, in view of what existed before, show no patentable invention. ' Ail opening between a dumping' grate and the bottom of the fire pot above it, ,with the grate larger in area than such bottom, existed before. Downwardly-contracted fire pots There was no invention in combining an old downwardly.contracted: :fire pot with an old anti-clinker opening and dumping grate. The whole idea is in the anti-clinker opening. No' new or different effect in the combi. nation which results in such opening exists whert Ithefire pot above is contracted downwardly, from that which exists when the fire 'pot above is cylindrical. 9. As to the Fulton patent, the only claim insisted on at the hear· ing as haV'ing been infringed is claim which is as follows: !' A
stove grate, so constructed and arranged relatively to the fire chamber or fuel receptacle as to .1eave·between the two and. around the edge of the grate a. free, open-space end, to permit of the remova.l of clinkers and other refuse through such space by use of the ordinary poker or slicer, aubstantially as described." An anti-clinker opening between a dished grate and a fire pot existed before, and also a flat grate. All that the patentee did was to substitute a flat grate for a dished grate in the arrangement. The relation between the grate and the bottom of the fire pot, so as to leave the sp.ace between the two and the space around the edge of the grate, is the same in the two arrangements. The only difference is one of degree as to the quantity of refuse which the rotation of the grate or the or one of convenience as to the char. use of the poker will acter of the poker which will be used, and does not involve inven. tion. The bill is dismissed, with costs.
CAMPBELL V. WARD.
(Ozrcuit Oourt, D. New Jersey.
May 26, 1882.)
PATENTS FOR INVENTIONS-INVOKING EQUlTABLE RELIEF.
Where the bill upon its face shows that the patents alleged to have been infringed had expired when suit was commenced, and it is in the usual form, and simply prays for an injunction, and for an account for profits and damages, md there is no allegation of special grounds for equitable relief, it will be dismissed. R()()t v. L. 8. II M. 8. By. (fo. 21 O. G. 1112; S. C. 11 FED. REp. 349, note.
On Demurrer to Bill, etc.
Marcus P. Norton, for complainant. A. Q. Keasbey, U. S. Atty., for defendant.
NIXON, D. J. This is a suit in equity, brought by the eomplaina.nt Q.gainst William Ward, postmaster of the city of Newark, for the alleged infringement of certain reissues of two letters numbered 38,175 and dated April 14, 1863, and the other numbel'ed 37,175 and dated December 16,1862, and severally issued to Marcus P. Norton, under whom the complainant holds by mesne assignments. T.he bill of complaint was filed on the first of November, 1880, sev.Al'al months after the two patents had expired on which the reissues were made. A demurrer was filed to the bill, and several grounds.