be that B, are the dies of the first claim, ahtsdo,notinfringe.. This eonc1usion makes it. UDnece$sary the validity of the third claim.. 314,192, being for,the method of making ox-shoes by the dies of the first patent, is also not infringed. The bill is dismissed.
SUIT-PATENTS FOR '
III suit to Tesirain the of a patent, the l'espondent sold out his interest in tlI-e\JusinesswhiQh WIJ,II alleged to infringe, :pending the hear, ing. " '.L'he suitpro'ceeded, without 8nych!i.nge of parties, and a de, cree was entered him,' and In favor of the patElnt. Held, although the decree may have been entered in' pursuance of an agreeU!.ent between his vendee and·tlle complainant his personal co-operation, still, by giving up to his vendee the controlsrld'management of the suit, the respondent must be taken to have authorized lIuchan agreement, andtbe decree in favor of the validityoftbe patent is r6l, q4iudilJata &s between,bim and plainant. , ·. ',.: . 2. PATENTS FQB!NvENTIONS-A:PPLIO:&,TION OF PaoCE,ss-GELATINE AND FtsB:
Reissued letters patentNo. 9,29&;isSued,July 18, 1880, to John· Rogers '!" of prichtb.Yo.c91la from fis)1 ,IJ;lVleW of the of the' art, be held valld only for tbe IdentICal thlUg duj· , covered oriilTelited -by the is to say, the' application of the proeessof washing in cool water" extiraQting the gelatine by boiling; and straining and evaporating, as applied to, s,81ted ll11hskins. . tbe process of cleaning the skins in solutions ot bisulphite of soda and Sa!· soda, and of boiling in a solution of borax, followell b18training andevaporating, is not an infringement. ,
GLUE FROM DRIED FISH SitINS."
In Equity. (husten Bro'1l1n!J, for complainant, . B. F. 'fhwr.a.ton and Francis ForbeB, for defen,dant.
CARPENTER, J. This bill is b1'9ugh,t to restrainillfringement of reissued letters patent No. 9,296 issued Jply,13, 1880, to John S. Rogers for ,process ofexti'acting gelatill 6,or jchthyocollafron,l.salted fish f'lkins. This patent wa!dncontroversy in Gloucester Iffingjass Co. v. Brooks, 19 Fed. Rep. 426, wherein Le Page was one Qf the respondents. In that case the,patentl}.bility of the inven:tion wal'! denied" put the main controversy seems to ha:ve turned upon priority- of invention; it being claimed tbatthesltIl1eprocess describeliin t4e Rogers patent had been first invented by Isaa(l ,Stanwood , to whom a patent was granted May 23,1876, :No.; 177.764, . The description' of, the, Rogers proC613S, as given .in the ,patent now in suit, is set out in full in the opinion in the above case. After that opinion wlJ,sueUvered l fl. ,decree was entered by consentof the parties "that the reissue letters 9,296, dated July 1&, 1880,
GLOUCESTER IBINGL:ASS&ULUECO. t1. LE PAGE.
grantecHo' JonnS. Rogers for proceSs of extracting gelatine or' ichthyocollafromsalledfish skins, is a good and valid patent, and that the defendants have infringed the same." The first question which ·here arises is as to the effect to be given in the present case to that decision and decree. The respondent here shows that, before the hearing in that cause, he had sold out the business, in the proseCl'1tion of which he was alleged to infringe, to the Russia Cement Company, a corporation in which he was a stockholder and urer;' and that the management and settlement of the suit were thereafter assumed and carried on by that company; and he therefore con· tends that the decision and 'decree can have no binding force against him in this controversy. It appears, however, that the suit proceeded against him and his associate Brooks without any change of parties, and that the:decree was entered against them. If it be true that this decree was entered in pursuance of an aw-eement made by the company out his active personal co-operation, still it is clear that, by giving up to the company the control and management of the suit, he must be taken tohaye authorized :such an agreement. The finding of the decree is therefore binding upon him, and the validity of the patent is res ad-judicata as between him and this complainant. ·This·oiU,however, is brought to restrain an alleged infringement dif. ferentfrom that which was alleged in the former bill. In this case, it appearS' that· the respondent.uses the process described as follows in the letters patent issued to him October 26, 1886, No. 351,607, for process ofrilaking fish glue: .
treatmenll. tbe l:laited fish skins, with the scales upon them, are desaJt!:d'. and· bleached by agitating them in a strong 801ution of a solution of to remove all bisulphite of soda; then traces of salt, which has been the great obstacle to complete success here. tofore; then boiling them in water strongly impregnated with borax; after which the is drawn off or expressed, then filtered, and the surplus as hereinafter stated. By my process of treating the skins water and scales togethE!r. I secure a material advantage in retaining in the glue scales, .which render the glue more inall the useful properties of. soluble and stronger than is the case when the skins are first descaled. In desalting, cleaning, and bleaching, I agitate the stock in capacious and pow. erfnl washiIig-machines,8o that all portions are uniformly and sufficiently acted upon....
contends that this process is substantially the same t48,t in the Rogers patent, and varies from it only by the additiQP·()( other elements which do not vary the operation or result of thesuceessive steps. The!emoval of the scales, it is said, is incidental oplyto washing process' bYwhioh the salt is removed; and the same removalofthe scales, to a greater or less extent, is. acc;omplished by the PTOtleSS ofwnshing used by the respondent, wherein the addition of bi· tends tosweUtheskins, and 'so loosen the scal.es and facilitate the removal o(them. The l'espondenhlso points out that the use of the salts of soda and of the borax tend only to facilitate the desalting, and to preserve the glue from decomposition after it hasaeen
extracted from the skins, and that, therefore, they constitute an addition to and not a modification of the process described in the Rogers patent. I think,however, that, at least for the purpose ofthis motioI}, I must make a much narrower construction of the patent than that for which the complainant contends. 'It is not denied that the identical process described in the Rogers patent has been many years in use in extracting glue from glue stock other than salted fish skins. The invention. therefore,consists only in applying'this proce1:lS to a material to which it was not befera kilown or supposed to be applicable. Such an invention or discovery could not be held any patentable novelty if that questionwerE! now open to thesepal'ties. Pennsylvania Locomotive En:gifl;6'SajetyTruck (h., 110 D.' S. 490,4 Sup. Ct. 220; Spill v. (JeUvJoid Manufg 00., 22 BIatchf. 441, 21 Fed. Rep. 631, and 22 Fed. Rep. 94. And although, by 'vi1ltueof the decree above referred to, I tissume for this dase the validity .0£ the patent, still I think, in view of theistate,oftheart, it 'must be held to be valid only for the identical thing discovered or invElDtedbythepatentee; that,iato say, the application of the process of washing an cool water, extracting the gelatine by boiling, and then straining and evaporating, as applied to salted fish skins. " U:Q.derthis interpretation of the patent, the' process of cleaning in solutions Of bisulphite of:soda arid sal-soda, and of boiling in a solution· of borax, followed by straining and evaporating,. is not an infriIl:gement. , .0::': ' It may be that on final hearing a broader construction than that which I have indicated will be giveo'tQ butl entertain so JP.uch doubt on the question whether such broader construction is justifiable that I am not prepared to injunction.
CLARK tl. WILSON.
((Jirouit Oourt. 8. D. NeuJ
PATENTS FOR INVENTIONS-INFRINGEMENT-NoISELESS METALLIC SHUTTERS.
, The first claim of patient No. 187,595, granted to Alexander Olark on April whereby the noise In raising or lowering. such shutters is deadened or prevented by the application of a soft or pliant material, such as leather, webbing, etc., to the shutters, in the width. so as to coil' up thel'ewith, an4 form a cushion between the several coils, is infringed by the shutters constructed' under the patent granted AprilS, 1884, to James G. Wilson, for an improvement in corrugated shutters. in 'which pieces of"leather are placed upon the shutters hi longitudinallines, as iii theClark-4nvention, to deaden the sound, and fastened by rivets. which protect the edges of the shutters,. and the stems of which through the'shutters, and through the leather stripS, which are made to fit in ' : the hollow part of the corrUgations.
8, 1873, for an improvElJllent, In .c9rrugated
Todd} for complainant.