KAOLATYPE ,ENGRAVING CO. and another v. HOKE and another·
.<pircuit Oourt, E.
The patentability of the thing patented is ilOt admitted by a demurrer to a bill for infringement, alleging·that the patentee was the :first inventor.
BILtr-PATlllNTAlHLITY NOT ADMITTED.
Where, il):a suit for the ofa patent against H.and M., it was alleged that the defendants were Qusiness under the name of the H. E. Co., and that H.and M. had infringed since July 14, 1874,and on divers tImes and occasic!>DS between that time and the time of filing the bill of neld,that Jtstlfficiently appelU'eq: tllP,t the defendants had been jointlyen. gaged in tlle alleged acts of
"An alle&,ation in a bill filed October, 1886, that the defendants have infringed "since July 14,1874; and on divers times and occasions between that time and the time of filing tIle Qf, complaint," does not show such a continuous use of the invention for'such,period as to bar all relief.
5. SAME-JuDICUT. NOTICE-DEM'cJRltllllt'
Whe1'8; in a suit for the infringement of a patent, a copy of the specification is made ,a part of the bill,th,e plttent may be declared void on demurrer, if facts"f which the court is qound to take judicial notice clearly show want of inventioJi in the subject-mfLtter of the patent. '
6. EVIDENcE:--"JUDICIAL NOTIOE-DICTIONARmS A.N1) CYCLOPEDIAS. JUdicial'notice will not be taktllioffacts stated in encyclopedias, dictionaries, or other publications; unless, they are of such universal notoriety and 80 generally understood that they may be regarded as, ,forming part of the common knowledge of every person. '
In Equity. .Dn demurrer to bill., , ". This isasuit brought October, 1886, against Jos'eph W. Hoke and Charles D. :Moody, to restrain the alleged infringement ;of letters patent No. 153,084, granted July 14, 1874, 'to Maurice Joyce,for an ment in processes of producing metal plates for printing, etc. The bill alleges that Mr. Joyce Wl1s' the first inventotoi the improvement described in st;tid patentj that the defendants are Hdoing business under the name of the Hoke Engraving'C6mpanyj" l1nd "that since the fourteenth day of July, 1874, and on divers times and occasions between that time and the time of filing this, your orators', bill of complaint, the defendants herein, Joseph W. Hoke and Charles D. Moody, in the citJC ofSt. Louis, inthe Eastern distpctof Missouri, * * * have made, used, andsold,andcaused to be made, used, and sold, and are now making, using, ltnd selling, large numbers of plates produced by the process shown,descrfbed, and claimed','ii). the aforesaid letters patent." The Kaolatype Erigraving Company; sues as' assignee of the patent, and the other defendant as licensee of the Kaolatype Engraving Comyany. The assignment oqhe patent is alleged to have been executed February 11, 1880, but no assignment of any right of action is alleged to have been made.
KAOLATYPEENGRAVING CO. tl. HOKE.
, .A copy of the speCification of the patent is made apart of the bill. The claims are as follows: "(1) .The' process of preparing a matrix for producing metallic relief-line stereotype plates, by spreading a coating of plaster, clay, or other suitable material upon a metallic base, and cutting the desired design clear through such coating to the metallic surface, sUbstantially as described. "(2) Amatrix for producing cast-metal stereotype plates, consisting of a metallic base or supporti:ng plate, provided with a coating of clay, plaster, or equivalent and 'having the desired design cut clear through to the base-plate,. SUbstantially as described. "'(3) A east-metal relief-line plate for printing or ornamental purposes, when obtained by the process and in the manner hereinbefore set forth and
The'speciication states that the plates, when engraved, "resemble a mould fOl'Rstereotype plate as used in the clay or plaster process of except that the lines and letters are cut entirely through the plaster," and that the metal stereotype is cast "in any manner usual in the 'stereotypers' art." The only advantage claimed is the speed with which the mould may be manufactured. It was contended on behalf of the complainants, among other things, that the demurrer admitted. patentable invention. The' other material facts are sufficiently stated mthe opinion of the court. H; Knight, for oomplainants. Benjamin F. Rex, for defendants. TlIAYli:R, J. 1. In the above case the court is of the opinion that jt sufficiently appears from the bill that the defendants are jointly engaged in the alleged acts of infringement, and that the first point of the demurrer, to the effect that the bill is multifarious, should be overruled. We are also of the opinion that it does not affirmatively appear that the plaintiff has been guilty of suca laches as to preclude it from obtaining .relief. The allegation is that since the date of the lettters patent, on June 14, 1874, on divers times and occasions, the defendants have used and sold the invention. This language does not imply a continuous use of the invention for such itS to bar all relief. The second point oi demurrer is l;tccordingly overruled. The description of the assignmentunder which complainants derived title to the letters patent on Febr.uary 11,1880, is in such that it would not entitle the complainilllts to damages for any infringement prior to that date. The' assignment as described in the bill merely carried the title to the letters pateJ;lt as of that daYi it did not transfer any right to sue for damages previously incurred. The thhd point of the demurrer is accordingly well taken. Complainants are not entitled on the averments of the bill to a discovery, or to relief for acts committed prior to February 11, 1880. 2. The other points of the demurrer are more vital. We are, in, effect, asked to declare, on an inspection of the patentee's claims as set forth in the bill, that the claims disclose no invention. If facts exist of which the court is bound to take judicial notice, and those facts clearlyesta\>-.
in the,I!:latter claiD;led doubtedly we can declare the present patent void QI:\demurrer, inasmuch as patentee's form a part of ,the bill. BrO'Wfl, v. 91U·. $.41; SilJ,w80n, v. Railroad 00., 107 U. S. 649, 2 Sup. Ct. Rep. 663. As the case has·:beenpresented,the question really before us is whether we willt8ke :judicial notice of certain processes describeti in, various mechanical· dictionaries, encyclopedias, and other publications 'produced on the hearing of the demurrer, and,by reason of our taking judicial cogniZance Of such processes, determine. that the entinquestiopdoes notde.scribean advance in the art to which it appertains, rising to the dignity of an invention. Besides those facts of which courts are bound by law to take judicial notice, they will ordiJ111rily only· t;akenotice of facts of universal notoriety,-'-'Of facts that are so generally understood that· they may be regarded as forming part of the common knowledge of every person. BrO'Wfl, Piper, tmpra. The lIl.atters of which we are asked·to take jud,icial cognizance in this instance, and thereupon declare invalidity of this patent, do not strike us as falling within the last category. They are a class of facts which might more properly be called to our, attention on the hearing (with opportunity to the other side to rebut or explain) as tending to' show the state of the art to which this patent appertains, and for' the purpose of enabling us to determine whether this patentrea11y describes a newly-discovered process which called for an exercise of the inventive faculty. The remaining points of the demurrer we accordingly overrule.
April 26. 1887.,
, Answer having, been filed,. this case was dismissed by the complainants.
FA.y and others
Otrcuit OoW't, No D. New York. March 19. 1887.
PATENTS POR INVENTIONS-INFRllilGEMENT-DAMAGEs-A.PPORTIONMBNT OJ' PROFITS.,
Where the claim infringed covers simply and only an improvement upon an existing machine, the damages recoverable 8S profits realized by defendant from sales of the infringing machine are not the amount realized from such sales, less the cost of manufacture of the machines sold, but only that part of defendant's profits which was derived from the use of the patented improvements.
SAME-BURDEN OF PROOF·.
In such a case it is obligatory on the complainant to adduce clear and positive proof apportIOning the profits. or equally convincing proof that they should not be apportioned for the reason that the entire market value of th" .machine sold is due to the invention.
Robert H. Parkinson, for complainants. Charles H. Duell, for defendant.
On exceptions to master's report.