the proof by which it is sought to connect the defendants with the infringing pendants. Though this evidence is not of the most convincing character, it was unquestionably sufficient to put the defendants upon their proof, and, as they have failed to deny the infringement after testimony was adduced which pointed to them with great directness as the wrong-doers, it is clearly the duty of the court to find against them on this issue. There should be a decree for the complainant.
CELLULOID MANUF'O Co.
(Oircuit Court, S. :D. New York. November 10, 1ll85.)
PATENTS FOR INVEN'l'IONS-CELLULOID COLLARS .AND CUFFS-PATENT 939 SUSTAINED.
On rehearing former opinion (23 Fed. Rep. 397) adhered to.
Motion for Rehearing. Edmund Wetmore, Edwin M. Felt, and John P. Adams, for the motion. Frederic H. Betts, Willia,m D. Shipman, and J. E. Hindon Hyde, opposed. "Before SHIPMAN and COXE, JJ. COXE,J. The argument that the patent in controversy was anticipated and void for lack of invention was fully presented upon the hearing of this cause in February last. 23 Fed. Rep. 397. It is now reasserted with much force and ability, but the foundation upon which it rests is identically the same. No additional facts are presented, no new evidence has been discovered, the record is the same and the premises are the same, but it is contended that the conclusion drawn from them was erroneous, and should now be reversed. To do this the court must hold that the Sanborn invention is invalidated by a patent, which was decided, after careful consideration, to be no barrier to the complainant's rights to recover. The contention of the defendant, both orally and in the brief, is based almost wholly upon the specification of the English patent granted to Alexander Parkes. In view of the prominence thus given to this patent we hav.e again examined its provisions, and are clearly of the opinion that it does not defeat the Sanborn invention in either of the particulars suggested. The Parkes patent was introduced· by the defendant with scarcely a word of explanation. The defendant's record is not before us, but, as the facts are now recalled, the only evidence on the subject came from the lips of the complainant's expert witnesses. From their uncontradicted testimony it appeared that there was a vast discrepancy between what Parkes actually accomplished and what he thought
CELLULOID MANUF'G CO. V. CHHOLlTHION COLLAR & CUFF CO.
he had accomplished. No accusation of illiberality to himself, in the number and scope of his claims, can be sustained against Parkes; he, certainly, was not disposed to underrate the magnitude of his own discovery, yet, when brought to the test of actual experiment, it appeared that the compounds produced by him were utterly worthless for any practical purpose as applied to collars and cuffs. The court properly construed the patent as being not for a collar or cuff, but for a fabric to be used in the manufacture of collars and cuffs, and other similar articles. Parkes had no such fabric in mind. The idea may have itselfvaguely to his imagination, but he failed utterly to reduce it to a reality. True, he uses the word "sheets," but he refers to the sheets produced by the process of solution previously explained by him. 1.'he Hyatt sheets were not known till 20 years afterwards, and it is indisputably proved that for these nothing that Parkes describes can be successfully substituted. The problem was by no means solved when Hyatt produced his celluloid sheet. Could it be used for collars and cuffs? That it could not be used alone is clearly demonstrated. Many difficulties presented themselves which were overcome by Sanborn and his co-inventors. What they did in the adaptation of this new and untried material to a fabric which can be used for collars and cuffs, required, in our judgment. the exercise of the inventive faculty, and not mechanical skill merely. It was, to use the language of the supreme court in Smith v. Goodyear, 93 U. S. 494, a new fabric, "differing from all that had preceded it, not simply in degree of usefulness and excellence, but differing in kind, having new uses and purposes." We do not regard this as a great invention, but we do consider it a very useful one. The patentees supplied a public need. They made what men wanted. They produced what had not been produced before, and they should not be deprived of the fruits of their invention by the vague and general language and nebulous claims of the foreign patents relied on. To use again a well-worn simile: A company of sportsmen enter a copse in search of game. A bird arises, seen plainly by a few; the others catch but a passing glimpse. Several shots are fired, some wide of the mark, others dangerously close. The pursuit begins, and continues with varying fortune. The coveted bird is wounded by one of the sportsmen, and is almost within the grasp of another; but he, alone who finally brings down the game is entitled to place it in his pouch. The motion must be denied. SHIPMAN. J., concurs.
and another v.
«(Ji'!'cuit (Jourt, S. D. New York.
Where profert is made of a paper in the complaint, it is for all purposes presented to the court as part of the pleading, and an objection thereto may be taken by demurrer. Where complainant is a mere licensee, and the owner of the patent is not made a party, a bill for the infringement of the patent is demurrable.
PATENTS FOR INVENTIONS-INFRINGEMENT-PLEADING-PARTIES-DEMURRER.
Walter D. Edmonds, for complainants. W. C. Hauff, for defendant. COXE, J. The complaint alleges that the complainant Smith was the original and first inventor' of certain new and useful improvements in electrical machines, for which letters patent were duly isJued to him; that thereafter, on the thirteenth day of May, 1873, he J,ssigned to the complainant Bogart the full and exclusive right and liberty to make, use, and sell the patented machine for the specific purpose of lighting gas-jets, "which said instrument was duly recorded on the twenty-first day of May, 1873, in the patent-office of the United States, in Liber W., 16, p. 33, as by said instrument, with the certificate of recording thereto affixed, or a duly-certified copy thereof, in court to be produced, will more fully and· at large appear." A copy of this instrument is produced in court by both parties. It recites that Smith obtained letters patent for his improved machine, August 10, 1869, and on the seventh of October, 1871, assigned all his right, title, and interest therein to the Laflin & Rand Powder Company; that the company on the eighth of May, 1873, reconveyed to Smith, and his assigns, all its right to apply the invention to the purpose of lighting gas-jets. Then follows the conveyance to Bogart of all the right which Smith had "under said instrument." The infringements complained of are alleged to have taken place after the first day of January, J 876. The defendant demurs, insisting-First, that the Laflin & Rand Powder Company is a necessary party; and, second, that the complainant H. Julius Smith having no interest in the patent, is an unnecessary and improper party. Upon the argument it was thought that a demurrer might not be the proper remedy, for the reason that the objection did not appear upon the face of the complaint. The formality with which profert and oyer are tendered was not, at that time, fully appreciated. A somewhat extended examination of this subject leads to the conclusion that, though the authorities are by no means unanimous, the weight of opinion is in favor of the proposition that where profert is made of a recorded paper it is for all purposes presented to the court as part of the pleading, and an objection thereto may be taken by demurrer. Knottv.Burleson,2 G. Greene, 600; Wilderv.McCormick, 2 BIatch£. 31,35; 1 Chit. PI. 415, 416; Grahame v. Cooke's Adm'r, 1 Cranch, 116; Douglass v. Rathbone, 5 Hill, 143; Rantin v. Robertson, 2 Strobh. 366.