MICHAELIS 'D. ROESSLER.
the use of the infringing machine. It still continues in possession Of all the contrivances and appliances to enable it to violate the patent, but promises not to use them for that purpose. This is a na.ked and ported promise. The practice of the courts in such cases is well settled. In Woodworth v. Stone, 3 Story, 752, it was decided that "a bill for an injunction will lie, if the patent-right is admitted or nas been established, without any established breach, upon well-grounded proof of an hended intention on the part of the defendant to viola1e the plaintiff's right." A fortiori should an injunction issue where, as in the present case, the defendant has already infringed, and nothing but a mere promise stands in the way of its doing so again. The general rule is stated in Walk. Pat. § 676, and concludesas follows: "Indeed, no injunction can be averted by affirmative evidence that the defendant has ceased to infringe, even though coupled with a promise that he will infringe nb more." See, also, Curt. Pat. § 422, which gives the same rule, only in different language. Further authority on the same point may be found in Ohemical Work8 v. Vice, 14 Blatchf. 179, and in Lo8h v. Hague, 1 Webl;lt. Pat. Cas. 200. If the defendant intends in good faith to keep its promise, the injunction will not harm it; otherwise, it will be a security for the plaintiff that its rights will not again be invaded. The plaintiff is entitled to a decree.
(Oircuit Oourt, D. New Jersey. January 18, 1888.) 1.
PATENTS FOR INVENTIONS-ExTENT OF CLAIM-PROCESS FOR MANUFACTURiNG CHLOROFORM.
The second claim of letters patent No. 322,194, of July 14, 1885, to Gustayus Michaelis, for "the manufacture of chloroform and purified acetates," is as follows: "The production of chloroform from the liquid products resulting from the decomposition of crude acetates at high temperatures by subjecting 'said liquid'products to the action of a hypochlorite, and removlUg the chlo· roform therefrom by distillation, substantially as described. "The patent con· tained no reference to the color or degree of crudeness of the acetates, and stated that the brown acetates were preferable for the purpose. Heid, the gray acetates being distinguishable, as respects crudeness, from the brown only in a slight degree, that they were embraced in the term" crude acetates." Gray acetates being embraced in the term "crude acetates." as used in the second claim of letters patent No. 322,194. of July 14, 1885. to Gustavus Michaelis for "the manufacture of chloroform and purified acetates," their use in the production of chloroform in combination with It method of distillation substantially the same as that described in the Michaelis patent is an infringement thereof.
8. SAME- V ALIDITY-!NACCURACIEB IN SPECIFICATIONS.
There being room for doubt that Gustavus Michaelis (letters patent No. 322,194, of July 14, 1885) was the first to discover fhat chloroform could be,advantageously obtained from the liquid products resulting from thedecon1position of crude acetates of lime by the method of distillation described in the patent. and it being very clear that the production of chloroform was greatly cheapened by that discovery, the patent is not invalidated by the facts that
theqll"ant!ty-of from ace· were pre.vIQ\lsly used for its productIOn.. ) that ,was ill 'error as·to the quantity that could be got from the hIgher bOIlIng properties of, ingl'Gdients ofcrudeaeetates, and that other statements contained in his specitlcatiqns are inaccurate.
. In Equity. Bill for infringement of letters patent No. 322,194, of July. 14, 1888, to Michaelis, assignor of one-half to William 'r. Mayer, for "the manufaqture of chloroform, and purified acetates." Ritch. &: Woodford, for complaina.n:tB· .'Gifford&: Brown, for respondents. Before McKENNAN and,:BuTLER, JJ.
This EI,*is for infringement of the second claim of patent, No. 322,194, dated July 14, 1885, for "the manorchloroform, and purified acetates." The ,claim reads as fol-
, of chloroform from the liquid products resulting froID tlle !lec0!JIposition of crude acetates at high temperatures, by subjecting said liquid prod'ul:ts to the actioll of a hypochlorite, and removing the chloroform thei'efroni. t;ty distillation, sUbstantially as described."
Theteis 'no foom to doubt that the complainant was the first to discover that chlorofonn could be advantageously obtained frorothe liquid products resulting from the decomposition of crude acetate of lime, by the method of distillation' described in the patent; and it is very clear that the production of chloroform was greatly cheapened by this discovery. Subsequent, experiments have shown that the patentee was mistaken respecting the quantity of chloroform obtainable from acetones, (which were previously used for its production,) aI!d that he was probably mistaken respecting the quantity obtainable from the higher boiling properties ofingredients of crude acetates, and that other statements contained in, inaccurate. These mistakes do not, however, atlect ,th,evalidity of the patent. Conceding them, the fact remains that he wasthe first to discover the process described of manufacturing chloroform, frbm crude acetates' of lime, and that this was a highly- valu, ' able Does the respondent infringe? He uses the gray acetate, while the the brown. The patent designates "crude" acetates, withc\l,lt refel'ence to color or degree of crudeness, and states the brown to be preferable. This designation clearly includes the gray, which, as respects crudeIl,ess, is from the brown only in a slight degree. Both are "crude" in th !>,lUse contemplated by the term, as employed in the patent.' 'l'hat the method of distillation used by the respondent is substil.ntially'thesame as that described and used by the complainant seems clear. A decreemu'st be entered against the respondent for an injunction sndan
EMERsoN· et al.
w: D. Pennaulcania.
PATENTS FOR INVENTIONS......ASSIGNMENT-RtGHTS OF AsSIGNEE-PRIOR INFRINGEMENTS.
Mere intention; not signified in an assignment of letters patent to include therein claims for infringements previously committed, .will not suffice to invest the assignee with any equitable title to those claims; and such assignee, after bill filed, in a suit for infringement brought b'y him, having procured an assignment of said claims, will not be permitted m fuat suit to set up· by a supplemental bill fuis post assignment. . .) .
In Equity. .. Sur motionfor leave to file a supplemental bill, which was exhibited to the c o u r t . ' Wm. L. Pierqe, for eomplainants. W. BakeweU, for resporidents. ACHESON, J. It seems to be quite plain that the assignments lip in the original bill transferred the title to the letters patent only, and did not carry the claims for previous infringements. Moore v.Marsh, 7 Wall. 515. Now,giving to the allegations contained in the proposed supplemental bill the fullest effect, the plaintiffs' alleged equitable title to those claims rests t1-pon the mere intention of the parties to th()se assignments thereby to. transfer them. But no such intention appears on the face Of the instruments. At best it is a case of naked intention verbally expressed, but not carried out. No particulars are stated, or facts disclosed, from which the plaintiff might deduce any The assignments of the patents to the plaintiff wa.s for the nominal consideration of five dollars. In fine, it is not shown to the court th!!otthe plaintiff had the shadow of right in or to the claims in question until nearly five months after this suit was brought, when assignments thereof were executed. These post assignments the plaintiff seeks, of a supplemental bill, to have "considered as included in the cause of action as set forth in the original bill, and more particularly asa Pllrt of complainant's title, as set forth in paragraph 12 thereof." Butaplaintiff cannot support a bad title by acquiring another after the filing of the originlll bill, and bringing it in by supplemental bill. 2 Daniell;Ch. Pro 1594,1l0te 2; Tonkin v. Lethbridge, Coop. Ch. 43; Pilkington v, W-tgnaU, 2 Madd-. 240; Story, Eq. Pl. § 339. Being of opinion that this motion should be disallowed for the reasons above indicated, I do not ·thihk it necessary, to consider the de.fendants' further objections t() tbenlOtloil. 'fhe· motion is denied.