ity in point, for in that case there was but one section of the statute
under which the liquidation could have been made, and, with that section and the protest before him, the collector could not have been misled. In the case at bar, on the contrary, there are a large num· ber of clauses, stated by the district attorney to be about 24, which provide for an ad valorem duty of 25 per cent. There is nothing in the protest calling the attention of the collector to the one upon which the importer relied. The objections to the admission of the protest are sustained. The protest being excluded, the district attorney moved for a direction of a verdict for the defendant, which motion was granted by the court.
The case of Frazee v. Moffitt, 18 Fed. Rep. 584, is not an author-
and others v.
(Circuit Court, No
York. May 10, 1886.)
PATENTS FOR INVENTIONS - ASSIGNMENT, RESERVATION IN SIGNEE FOR INFRINGEMENT.
Where the owner of II patent assigns for certain states, but reserves to him· self the right to use the invention in one of said states in common with his assignee, such reservation will not defeat an action by the assil\'nee alone for an infringement Of the patent in the states not covered by the reservation. But it would not be an unreasonable construction of such an assignment to say that the patentee, having, by the usual words of transfer, divested himself of all right, title, and interest in the patent, desired to provide that he should be permitted to use the patent in the territory covered by the reserwithout subjecting himself to an action for infringement.
SAME-CONSTUUCTION 011' ASSIGNMENT.
SAME-DEFENSE THAT TITLE IS DEFECTIVE MUST BE PLEADED.
Where alleged defects of title might have been corrected had plaintiff been notified prior to the trial, Iwld that, under the provisions of the New York Code, it was the duty of the defendants to apprise the plaintiffs, either by demurrer or answer, of this defense.
An attack on the validity of II patent comes with poor grace from one who has paid large sums of money for its privileges, and built up a flourishing business by asserting that his goods were made under it, and who has maintained that it was good and valid in law, even though when sued as a trespasser he may not be technically estopped to dispute its validity. In such a case, and where, although the invention was of great value, there was a full acquiescence on the part of the public in the validity of the patent, the court should scrutinize evidence against its validity with the utmost care.
SAME-EFFECT OF ACQUIESCENCE BY }'UBLIC.
The patent was for a wooden pipe, which was rendered impervious to water or gas by coating it inside and out with a composition of coal-tar and sawdust. It was shown that pitch was known itS a preservative of wood long prior to the date of the patent; that it had been used as a coating for wooden
Edited by Charles C. Linthicum, Esq., of the Chicago bar.
HOBBIE V. S:\UTH.
pipes; that tarred pipes rolled in sand were old; and that sawdust had been known as an absorbent of sticky substances. But sawdust and tar had never before been combined in the manner described in the patent, and the patentee made tarred wooden pipe a practical reality. Held, that although patentee's method was not a great discovery, it was a valuable improvement, en· titling him to the reward of an inventor. The specification described the coating of wooden pipes with a composition of coal tar mixed with sawdust, and applied while hot, and suggested that "the pipes, after having been coated with tar, and before the said tar has set, may be rolled in sawdust." The claim was for "the combination of a composition of hard boiled tar and sawdust with wooden pipes, applied in the manner and for the purpose set forth. " Held that, referring to the description for a full meaning of the claim, the patent was not limited to the coating of the pipes with the composition, but covered the method of coating them with tar, and then rolling them in sawdust.
The defendants in this case used auger borings instead of sawdust in coat· ing their pipes. The two were so nearly identical that the difference was hardly discernible, one being an exact equivalent of the other. Held, tb,at they mfringed.
SAME-SALE, OF PATENTED ARTICLE, VENUE OF.
Defendant, manufactured patented goods in Michigan, for which state they owned the patent. Some of their goods they sold anti delivered within their own territory, the purchaser taking them into the territory owned by plaintiffs under the same patent. In other instances they sold goods which they to deliver within plaintiffs' territory. Held: First, that where the delivery of the goods was made in Michigan, the venue of the sale was there: second, that where, by express agreement, the defendants contracted to convey the goods to plaintiffs' territory, and thcre deliver them, the sale must be regarded as made in said territory, and that such sales were an infringement upon plaintiffs' exclusive rights. The grantee of a particular territory under a patent, has the right to sell in that territory, and such right cannot he curtailed, though the purchaser take the goods beyond the prescribed limits; and this is so, even though the vendor knows that the purchaser intends so to act. The evidence showed that the sales made by defendants in plaintiffs' territory would have been made by plaintiffs if defendants had not interfered, and that plaintiffs were compelled to sell their goods at a reduced price by reason of the defendants' competition. Held, that the profits which plaintiffs would have realized, had they made the sales, were a fair measure of damages; and that the reduction in plaintiffs' price caused by defendants' unldW' ful sales should also be taken into consideration.
SAME-LAWFUL WHERE MADE, LAWFUL EVERYWHERE.
SAME-DAMAGES-Loss OF SAJ,ES.
At Law. Tried by the court. James A. Allen and George Wing, for plaintiffs. Benjamin H. Williams and Wells W. Leggett, for defendants.
COXE, J. On the twenty-second of November, 1864, letters patent No. 45,201 were issued to Arcalous Wyckoff, of Elmira, New York, for an improvement in gas and water pipes. In the specification the patent.ee declares:
"This invention consists in the application or use of a composition of sawdust and hard boiled tar in combination with wooden pipes, in such a manner that, by coating said pipes on the inside and outside with the composition, the wood is rendered perfectly impervious to water or gas; and preserved against the injurious influence of moisture from inside or outside. * * * I boil coal or gas tar to sllch a consistency that it will become Lard when cooled, v .27F.no. 9-42
and mix It with sawdust in about the following proportions: coal-tar ten parts, sawdust one part; and this composition, while hot, I apply to the pipes,-both inside and Ollt for gas, and outside only for water. Instead of mixing the coal-tar with sawdust previous to applying the composition to the pipes, the coal-tar, after having been boiled, may be applied first, and .sawdust sprinkled over it; or, instead of this, the pipes, after having been coated with tar, and before the said tar is set, may be rolled in sawdnst to take up enough to prevent the pipes from sticking together when piled up, or to the hands when handled, before the composition is perfectly hard." The claim is as follows: "The combinatioIl of a composition of hard boiled tar and sawdust with wooden pipes, applied in the maUIler and for the purpose set forth." Plaintiffs were, from May 31; 1876,l1ntil November 22, 1881, the date of its expiration, assignees under the patent for New York, New England, New Jersey, Pennsylvania, Delaware, Maryland, Virginia, West Virginia; and the District of Columbia. During the latter part of this period the defendants, first as copartners, and afterwards, with some changes, as a corporation, were assignees for Michigan and other states, having the right to make, use, and sell the patented article. within the assigned territory. The defendants have sold large quantities of the patented pipe to parties residing within the territory assigned to the plaintiffs, and it is to recover datnages for this alleged infringement that these actions are brought. The defenses are-First, that the plaintiffs' title is defective; second, that the patent is void for want of novelty and invention; third, that defendants do not infringe, because the pipe manufactured by them is not covered by the claim of the patent; and also for the reason that all their sales were made at Bay City, Michigan, where they had a right to sell. The objections urged against plaintiffs' title, though they show much ingenuity, are formal and technical in character. It is said that the patentee is a necessary party for the reason that the assignment from him dated July 31, 1874, contains these words: "Excepting and reserving, however, the right of said Archalous Wyckoff to use said patents in common with said I. S. Hobbie, Miles Ayrault, and J. A. Hobbie in the state of New York from and after April 1, 1877." It will be seen that even if the interpretation contended for by the defendants is placed upon this clause, namely, that the patentee still retains the legal title, it could not defeat the action, for the reason that the reservation relates only to the state of New York. As to the other states the assignment is absolute and perfect. But it would seem to be not an unreasonable construction to say that the patentee having, by the usual words of transfer, divested himself of all right, title, and interest in the patent, desired to provide that, after a certain date, and in a limited field, he should be permitted to use the patent without subjecting himself to an action for infringement. The legal title is transferred to the assignees; a personal right to use is retained by the assignor. The answer is, silent as to
HOBBIE V. SMITH.
thia objection, and also Rato the other alleged defects of title, many. if not all, of which could have been corrected had the plaintiffs been notified prior to the trial. I am inclined to think, therefoie, that, under the provisions of the state Code, it was the duty of the defend. ants to apprise the plaintiffs, either by demurrer or in the answer, of their position in this regard. Although the defendants, sued as they are as trespassers, may not be estopped to dispute the validity of the patent, it is thought that the accusations against it come with poor grace from those who were willing to pay large sums of money to be admitted to its privileges; who have built up a flourishing business. and made large gains, by asserting that the pipe manufactured by them was made pursuant to its specifications; and who, during its life, maintained, both indirectly and by positive assurance, that it waR good and valid in law. These considerations, together with the significant fact that there was a full acquiescence on the part of the public,-that although the patent was regarded as of great value, no one ever disputed its valid· ity,-should lead the court, in an action of this character, to scruti· nize with the utmost care the evidence now offered to overthrow it. The defendants presented some proof tending to show that the patented pipe was used prior to the date of the patent at Elmira, Corning, and other places in the southern part of the state of New York. The burden is upon them to establish this defense beyond a reasonable doubt. Cantrell v. Wallick, 6 Sup. Ct. Rep. 970, (April 12, 1886,) and cases there cited. It suffices to say that, tested by this rule, the proof is insufficient to overthrow the presumption of validity arising from the patent itself. The further testimony upon this branch of the case may be summarized as follows. It was shown that pitch was known as a preservative of wood long prior to the date of the patent; that it had been used as R coating for wooden pipes; that tarred pipes, rolled in sand, were known as early as 1851; and that sawdust had been known as an absorbent of sticky substances. The field was therefore a narrow one; but the fact remains that sawdust and tar had never before been combined in the manner described in the patent. Wyck. off took a forward step in the path of invention. He made tarred wooden pipe a practical reality. His was not a great discovery,but it was a valuable improvement, entitling him to the rewards of an in· ventor. The proposition that the defendants do not infringe because the method adopted by them of rolling the tarred pipes in sawdust is not covered by the patent, cannot be maintained. It is argued that the claim. relates only to the coating of pipe with the composition or rpixture of hard boiled tar and sawdust. Such a construction would be illiberal and narrow in any case, and especially so when demanded by those who have for years asserted that their pipe was made pur· suant to. the '3pecification, and protected by the claim, the patent.