CELLUW:l;D MANUF'G Co. et 6l.
FREDERICK CRAN.!!: CHEMICAL CO.
(Oz"rcuz"t Oourt, D.New Jersey. June 26,1888.)
PATENTS jaR INVENTIONS PYROXYLINE.
The specifications of letters patent granted to John H. Stevens, December 19, 1882, for iIIiprovements hi the manufacture of pyroxyline by the use of ,new solvents; recite that "my new group of active liquid solvents or convert· ingagents comprises oil of spearmint, nitrate of methyl, "etc., naming 22 sub· stances, and that these menstrua may be used in connection with each other. or with camphor or alcohol, or singly by themselves. Held, on demurrer to a bill filed to restrain an infringement, that the patent did not cover a natural principle, bp,t an application Qf aptinciple, and was valid. and that it was not void for want of ingenuity or invention in discovering it. Such patent is not void for multifariollsness because it has adapted many substances or instrumentalities for efl'ecting its object.
In Equity.On demurrer to plaintiffs' bill. Bill filed by the Celluloid Manufacturing Company and the Celluloid VarnishCompanyagaillst Frederick Criane Chemical Company to restrain ,the infringement of a patent, and to recover damages and profits. Defendant demurred to plaintiffs' bill. Betts, ,AtterQv,1'11t Hyde &: Betts, for complainants. Whitehead, Gallagher &: RicharrlB and A. v. Briesen, for defendant. Argued ,pefore Justice, and NIXON, J.
BRADLEY, Jnstice. This is a bill in equity to restrain the infringe-ment of a patent,and to recotrer damages and profits. The patent sued ,was granted 'to John H. assignor of the. complainant, (the Celluloid Manufacturing Compnuy,) on the 19th dnYQf Pecember, 1882, and purported to be for certain new and useful improvements in the man-' ufacture of or nitro-cellulose. The principalimprovernent cOJ,lsistR in the employment of certain substances as, solvents or convertofpyroxyline or nitro-cellulose, in manufacturing compounds of that substance. The principal solventheretofolie used has been cam-. or a ofcamphor in alcohol. The patentee, in the specisays,: " the best of pyroxyline, as. wen as, the preferred have had camphor as an ingredient; and it \vas the object of my experiments to find new men,ytrua which are in themselves such active solV'ants of pyroxyllne as to render the use of camphor unllecessary, and I have succeeded in this respect to the extent hereinaftt'l' set 'forth. My new group of; active liquid solvents or converting agen.ts comprises oil of spearmint, nietc. ; naming 22 trate of methyl. butyric ether·. valerie ether. benzoic ',' . dillerllU t substances. 'The to give directioIJa"as to the quantity of· these ingredients to be used, and the manner of using them, stating, among other things, that they may be used in connection wHh each other, or with camphor or alcohol, or singly by themselves. The claim of the patent is in these words:
CELLULOID MANUF'<i CO. V. FnEDERICK CRANE CHEMICAL CO.
"What Iclairo herein as new and desire to secure by letters patent is: As an improvement in the art of compounds of pyroxylineor ni· , tro-ceUulose. ,the use of the hereinbefore specified-new group of active or converting agents. substantially as described." The patent being set forth in the bill by way of profert, the defendant demurred, and for cause Clfdemurrer stated that the alleged invention in the patent set forth and claimed is not a patentable invention for which letters patent could lawfully issue. It is argued, among other things, that the thing patented is neither an art, machine, manUfacture, or composition of matter, but only a principle of nature, namely, quality or power which certain substances have of dissolving pyroxyline; that the patentee professes to have discovered this power in these substances, and olaiins the exclusive right to use it, which is contrary to the well· settled rule that a principle cannot be patented; that the claim is quite as objectional as that of Pl'6f.MOrse to the exclusive use of electro-magnetism for making or printing intelligible characters ata distallce;which was rejected by supreme court of the United States. 'I'othis it may be answered that natural principles and forces (so far as they are used) may-form constituent elements of a process of manufacture which is clearly patentable. Morse discovered a certain method or process by, which he ·'could utilize the force of electro-magnetism in transmitting intelligible signs to a distance. Of this process he was entitled to a, moil.Opoly, even particular instl'umelltalitiesrnightbe varied; but he was not entitled to "a monopoly of the force itself applied by other processesessentil1lly different from his. The application'ofthis rule was illustrated in Neile6n's patent for the use of the hot blast in smelting. The effect ofahot'blast in smelting iron ore is due to a principle of but thelilode of employing it by heating it in a receptacle between th-e blow· ing l:lpparatus arid the furnace was held to be patentable. Neikon v. 'Harford; Webst. Pat. Cas. 275, 371, 8 Mees. &W. 806, The UI$8 ofa .new "ttiaterial in a process has been held patentable when a better or · bheS:perresult is produced, as pit coal instead of charcoal in smelting irou;(Dudley'8 Patent,Webst. Pat. Cas. 14;) and anthracite instead of pit coal; (Crane v. Price, ld. 375,5 Scott, N. R. 338,4 Man. &G. 586; Curt. Pat. §§ 16, 18.) In certa.in cases, it is true, the substitution of one material for another in the same implement or machine has been 'held not'to be patentable, where it was clear that the alteration required no invention, but merely the exercise of mechanical skill and judgment. Such 'Was the case of HotchkiBa v. Greenwood, 11 How. 248, where porcelain doorknobs (which were old) were affixed to the shank or spindle in the' same manner. as metallic .knobs, the court held that this substitution waS not a patentable invention. So in another case, tried before Justice NELSON, a patent was granted for covering a wooden button with tin, when the same thing had been done to a horn button half a century before, the use of. wood instead of horu was held not tobea pat'entable invention. Anon.; ld. 266. So in Hick8 v. Kelsey, 18 Wall. 670, the, court held .that the substitution of an iron wagon-reach for a woodeno'Hedf'the;same,shape and form wllisno invention; that the m,a-
chine remained the same, and· the adoption of a stronger material was a mere matter of mechanical judgment, and not of invention. These cases dependedonthEiir own circumstances. There is no rule oflaw that the substitution of one material for another is not patentable. In processes of'manUfacture, and in compositions of matter, such a substitution often effects material changes' in the result, either as to the product or the expeuse. Now, weare not willing to say that there was no ingenuity or invention on the part of Mr. Steveus in discovering that the substances named in his patents are solvents of pyroxyline, and good substitutes for cam· phor. 'Qn the contrary, from the language of the specification, we infer · that it was the result of much experiment and investigation. It is true that the mere discovery of the quahties possessed by these substances is not patentable'iin other words, the qualities themselves cannot be patented. But the patent in question is not granted for the discovery, nor for the solvent quality, of the substances; it is granted for the "use" of the substances ":in the art ,of manufacturing. compoands of pyroxyline, substantially as described," that is, as described and pointed out in the specification. The method there described is that, after thepyroxyline has been reduced to a fine pulp by grinding in some of the. known ma· chines,; angfreed from aqueous moisture in the usual way I and after the addition of any coloring matters or other ingredients desired, the solv·ents (which are: liquid) fife to be applied to the pyroxyline (preferably bysprinklingol'spraying over the mass) in the proportion of about two ·ot three parts <:if soh'ent>to two parts of pyroxyline; then left in a tight vessel for 12 hQursor thereabouts, in order that the solvents may thoroughly permeate the mass; then to be worked or masticated in heated rolls. and thus formed into a homogeneous compound, which compound is then pressed into blocks or sheets, and subjected to the seasoning or curing process., asis well The product thus obtained will be susceptible of use in the manufacture of utensils and ornaments of different kinds, in the manner pointed out in the specification. This is the general process of manufacture with the new solvents discovered by ·,the patentee, pointeu out in the. patent. Such a process is certainly SllSceptible of security by patent, if it be novel and useful, and if the process is patentable.· The employment of the newly-discovered solvents 'asa part of the prQcess (being a still narrower claim) is also patentable· .:And itwould seem that the result of the process is a different substance frOID that produced when, camphor is the solvent used. The specifica·tiori, it is true,· intimates and concedes that certain parts of the process were 'well known; but exactly what.was well known, and what was not, · does not appear. No former patents are exhibited in the bill. Per··haps, by the answer of· the defendants· and proofs ,taken in the case, it imay: be luaue ,to appear that every. part of the process, as a process, was . known and used betore, .and that.the only originality on the part of the patehtee was the discovery of the fnet that oil ofspearmint and the other substances named t.l.re solvents of pyroxyline. SQQuld .this. be so, the question would tbenbe fairly presented whether the mere discovery of
this fact was patentable, and whether the case would be governed by the rule laid down in O'Reilly v. MO'l'se, 15 How. 62, and so beautifully and clearly illustrated by the opinion of Judge SHIPMAN in Morton v. Infirmary, 5 Blatchf. 116. As the case stands, we do not think that this question is fairly presented; but think that the patent on its face exhibits an art or process which mayor may not be anticipated by prior patents, or by the previous state of the art. The objection that the patent is multifarious, and for that reason void, we do not regard as tenable. We have never understood that the adaptability of many substances or instrumentalities, for effecting the object of an invention, vitiated a patent. The conversion of pyroxyline into a compound suitable for certain purposes by means of applied solvents, manipulated in a certain way, has a unity of purpose and effect sufficient to answer the objection. We do not deem it necessary to follow the reasons assigned for the demurrer in greater detail. We are satisfied that the demurrer should be overruled, and that the defendants should be required to answer the bill of complaint, and it is so ordered.
(District Court, E. D. Michigan. July 19. 1888.)
ADMmALTy-SALE OF VESSEL-LIMITED LIABILITY ACT-DISTRIDUTIONCLERK'S COMMISSIONS.
Where a vessel is sold by a trustee under the limited liability act, and the proceeds of sale are paid into court, the clerk's commission is payable from such proceeds, even though the owner appears and contests the liability of the vessel for her losses. A claimant who desires to contest the liability of the vessel. and gives a stipulation for costs. under Gen. Adm. Rule 26, is liable only for the costs prop· erly incident to such contest. . , Where a vessel is sold by a trustee under the limited liability act, the marshal is not entitled to a commission.
SAME--COSTS-STIPULATION-LIABILITY OF CLAIMANT.
Where a witness attends from out of the district, mileage can only be taxed to the extent of 100 miles. Where two libels were tiled the same vessel for two losses occasioned by the disaster, but the two causes wete never consolidated, held. tbat double mIleage and attendance should be allowed. though the witnesses were sworn but once. and their testimony was read in both cases.
5. SAME--DOU.BLE MILEAGE.
SAME-COSTS-COLLISION-PREPARATIONS OF MAPS.
The charges of a person employed to make soundings. and prepare- a map of the locality of a collision, cannot be taxed as disbursements.
In Admiralty. On appeal from taxation of The Vernon was arreste4 upon two libels for negligence in towing the schooners Senator and Watson upon the rocks at the mouth of Detour v.36F.no.2-8
l'lver. Daniages were claimed in the aggregate sum of $35,000. The Vernon was released upon the usual stipulation to answer judgment, and subsequently her owners, the petitioners in this case, ipstituted proceedings for a limitation of their liability. Under the statute, section 4285, they elected to transfer the Vernon to Henry A. Harmon, as trustee, and thereafter the said trustee proceeded to take possession and sell the vessel. She brought $23,150. The proceeds of the sale, less the trustee's costs and expenses, were paid'into court, and petitioners thereupon proceeded to take issue with and' to contest the claim of liability for the loss of the schooners; but a decree was finally rendered in favor of the owners of the Senator in the amount of $12,000 and costs, for the damages suffered by the Senator andber cargo. To the owner of the Watson the court decreed $22,156 and costs. H. Wisner, for petitioners. . H.H.Swan and F. H. Canfield, forlibelants.
BROWN, J. Petitioners appeal from the clerk's taxation of the following items: 1. The clerk'8 commission upon the proceerh of Bale. By Rev. St. § 828, the clerk is entitled to a commission of 1 per cent. "for receiving, keeping, and paying out money in pursuance of any statute or order of court," As the proceeds of sale to the amount,Qf $23,150 were paid into the registry of the court by the trustee, no objection is made to the taxation of the commission. The only,question is by whom it should ,be paid. Ordinarily, where money is collected upon anexecution,lt is the duty ofthe marshal tQ!"dd thE!! clerk's pounqage as ,well as his ownto,theliUIlount of the judgllle,nt, and collect it of the defendant, as the, plaintiff is entitled to the ,',Whole amount of his judgment. Fagan y. Oullen, 28 Fed. Rep. 843; In re . ,'Goodrich, 4 Dill. 230; Upton v.' Tl'iblecock, Id.232;.· Kitchen .v. Woodfin, 1 Hughes, (U. S.) 340,342; Blake v. Hawkins, 19 Fsd. Rep. 204. Such stipulation is is undoubtedly the rule in admiralty, where an 'given to answer the decreEl of the court, and execution is issued against tl\eclaimants and their stipulators. By the limited liability act, (Rev. St. § 4285,) a new right is givento the owner of the ship, viz., the right to transfer her to a trustee, "from and after which transfer all claims and proceedings against the owner shall cease." This transfer being effected, proof of all claims, (Gen. Adm. rule '55,) shall be made before a commissioner, and upon completion of the proofs the commissioner shall .report,and upon the confirml/.qoll of such report, the proceeds of the ship or vessel and freight, "after payment of costs and expenses," shall be divided pro rata among the several claimantS. This, no doubt, contemplates the payment of all costs and expenses necessarily incident .to, the sale of the vessel and the proof of the claims, including the clerk's commission upon the moriey paid into court. If, however, the owner chooses to contest the liability of the ship for the losses, as he may do under rule 56, he is boundunderrule 26 to give' 'the usual stipulation for the costs incident to that contest, including the fees of the clerk, 'marshal,proctofs, witnesses, j butnot, I think, including the clerk's
ooromisslofi,which is' payable'whether he Ml.1tests or Mt. Costs are within thediscretitm of a court of admiralty, and I think equity demands. , that where a party contests a claim for damages he ought to be mulcted only in the interest upon the fund, and in such costs as necessarily arise from that contest. Costs which; but for such contest, would be paid from the fund, ought, I think, to remain chargeable against the fund. H the petitioner had been successful in contesting his liability for the loss, he would undoubtedly be bound to pay this commission himself, when he withdrew the proceeds of the sale from the court, since it attaches to the .fund itself, and not to the litigation out of which the fund arises. 2. Th,e marshal's commisaion upon the fund in court. By section 829 the ll11l.rshaUs entitled ,to a commission.in admiralty cases in two contingenlflirst, where the debt or claim is settled by the parties without a sale of the, property, he is entitled to a com,mission pi 1 per cent. on the first $500, and one-half of 1 per cent. on thee;xcess. This contemplates a settlement ofthe'case between the parties before trial, in which case the marshal.is entitled to his commission upon the amount paid in settlement; but as the cases under consideration were never settled, but were contested through to a final decree, it is evident that the marshal is not entitled to a commission. under this clause. Second, or the sale of vessels or other property! under process in admiralty, or under the order of the court of-admiralty, and for reGeiving and paying Over the money, he is entitled to a larger commission.' But as the vessel was never sold by him, it is clear that he is'not entitled toa oommission under this subdivision. 'l'hat itw.ould beinequitable to.allow him this commission is apparent from thefact:ihat tlie trustee who makes the sale, either receives a commission in the nature of a commission upon such sale. Indeed, 1 understand this item to be practically abandoned upon the argument. . 'S.Mileage of witnessesfrom out ofthe district. Libelants claim the right to charge the :full mileage of witnesses from out of the district, though there is no do.ubt their-depositions might have been taken. Petitioners, upon the other hand, claim that, under the construction given to this statute by this cOllrt; they are entitled to charge only for the dietance of 100 miles. Probably there is no question cOl).nected with costs in the federal courts upon which there is agreatl::r conflict o.f authority. In the First unif01:mlyheld from 184'2 to the present day that the circuit it has succesf:lfu) party was entitled,to the mileage of his witnesRes, regardless of the distance, 'or of the..fact that. they came from out of the district. The rule was first announced by Mr. Justice STORY in Prouty v. Draper, 2 Story, 199" was reiterated by-the. same judge in Whipple v. ingOo., S Story, 84; was recognized and approved by Mr. Justice WOODBURY in Hathawayv.Roa.ch J 2Woodb. &M. 63, 73, and was finally again exhaUsti-velyconii.der.edand,reaffirmed by Mr. Justice GRAY, inU. S. v. Sanborn, 28 Fed.hep. 299·. It was,admitted, however, by Mr. JustiC.eSTORY tha-t under the stllte practice iQ Massnohusetts the travel of the witness only be .t3xed fronl the line, the state. Melvjn v.
Whiting, 13 Pick. 184; White v. Judd, 1 Mete. 293. In the Second cir<mit the rule is as well established the other way. In an anonymous :lase reported in 5 Blatchf. 134, Mr. Justice NELSON and Judge SHIPMAN held that the traveling fees to a witness were allowable to the extent the subprena would run, that is, for any distance within the district, but for not exceeding 100 miles from .the place of trial, unless tll,e distance was wholly within the district. This ruling was affirmed by Judge BENEDICT in Beckwith v.Easton,4 Ben. 357, and in The Leo, 5 Ben. 486, and by Judge COXE in Insurance Co. v. Steam-Ship Co., 29 Fed. Rep. 237. The rule has been settled in the same way in the Ninth circuit by Judge SAWYER, in Spaulding v. Tucker, 2 Sawy. 50 , and in Haines v. McLaughlin, 29 Fed. Rep. 70. I do not regard the cases of Parker v. Bigler, 1 Fish. Pat. Cas. 285; Woodruff v. Barney, 2 Fish. Pat. Cas. 244, or Dreskill v. Parish, 5 McLean, 241, as of any particular value in this discussion, as the last two of them, at least, put their decision upon the gron!ld that It witness can in no case be entitled to his fees unless he is summoned by a regular subprena issued from a court. The necessity of a subprena. carefully considered by Judge WrrHEY in Andersonv. Moe, 1 Abb. (U. S.) 299, and by Mr. Justice GRAY in U. S. v. Sanborn, 28 Fed. Rep. 299, and both of them came to the conclusion, that a witness who, in good faith,comes to court to testify in It pending suit, whether he comes in obedience to It snbprena or at the mere request of one of the pll-rties, attends "pursuant to law," and is entitled to his fees. I have no doubt, myself, of the correctness ofthese rulings, and have always followed them in this district. There is no settled rule in this circuit upan the subject of mileage, although in the case of Anderson v. Moe, 1 Abb. (U. S.) 299, Judge WITHEY held the fees of witnesses to be taxable, though they came from New York. and more than 100 miles from the place of trilll. In determining this question, I think that considerable weight should be given to sections 863 and 876, the former of which permits the deposition of a witness to be taken when he lives at a greater distance from the place of trial than 100 miles; and the latter of which allows subprenas to be served in other districts, with It provisoihut in civil causes witnesses living out of the district in which the court is held do not live at a greater distance than 100 miles from the place of holding the same. Construing these two sections together, the inference seems to me very strong that it was the intention of congress to limit the allowance of mileage to the distance of 100 miles, where the witness lives in another district. There is, no doubt, very considerable force in the argument of Mr. Justice STORY, that the act is not peremptory in requiring the depositions of witnesses to be taken, but only that they may be taken and used. "It is," says he, in Prouty v. Draper, 2 Story, 200, "a mere option given to the party who wishes to use the testimony of the witnesses. In many cases the presence of the witnesses in person. and their oral testimony on the stand, may be indispensable to the true exposition ofthe merits of the case. No deposition would or could meet all the exigencies which might arise from the varying character of the evidence, or the necessity of instant explanation of circumstances, not previously known or
stood." And his ruling appears to have been invariable to allow the mileage of witnesses when they were not brought for the purpose of oppression, or without necessity, for the purpose of swelling the costs oflitigation. His opinion appears also to be supported by the English authorities at that day. Notwitbstanding this argument, however, it seems to me to be putting in the hands of a litigant a very great power to permit him to summon witnesses from distant states to attend sessions of the court here, although their testimony may be very material and important. If he be able to procure the attendance of a witness from New York, and charge full mileage, I see no reason why he might not procure the attendance of an important witness from California, or even from Australia. or other remote quarter of the globe, and practically ruin the opposite party by . the accumulation of costs. It is true, there is reserved to the court the power of declaring that the testimony of such witnesses is not somaterial as to require their attendance from out of the district; yet, if the testimony of a witness were shown to be important, it would be very difficult to say from what distance he might or might not be summoned.. My own practice has been, in such cases, to limit the mileage to 100 miles, presuming that the testimony of witnesses who live at a greater distance could and should be taken by deposition. I would not say that, if a case were presented by affidavit showing the materiality ofa witness who lived out of the district, and at a greater distance than 100 miles, that his deposition could not be satisfactorily taken, and that his presence were actually necessary at the trial, that I would not allow mileage for his attendance; but I regard this as a special case, and calling, perhaps, for an exception to the general rule'. For the present I shall adhere to the practice that has heretofore prevailed, and decline to allow for more than 100 miles. 4. Double mileage and attendancejor the same witnesses. The witnesses of both the libelants were the same upon the hearing. It is claimed that they are entitled to mileage and attendance in each case. Their right of recovery was dependent upon the same state of facts, yet the cases were distinct. By section 848, when a witness is subpcenaed in more than one cause between the same parties at the same court, only one travel fee and one per diem compensation shall be-allowed for attendanco; but in this case there were two distinct and separate causes, and the inference certainly is that they are entitled to mileage and attendance in both cases. This waS the view taken by Mr. Justice BLATCHFORD in Wooster v. Handy, 23 Fed. Rep. 49,64, by Mr. Justice GRIER in Parker v. Bigler, 1 Fish. Pat. Cas. 285. and by Judge HAMMOND in Archer v. InS'),rance Co., 31 Fed. Rep. 660. I regard it as quite immaterial that the cases were tried together by consent, that the witnesses were sworn but once, that their testimony was but once written out, and used but once in the two cases. In the absence of an order consolidating the two causes, I think it clear that the witnesses are entitled to their mileage and attendance in both cases. 5. Map andffUrveyoj the locality oj the coUiRUm. An expert was employed at,an expense 0£$70 to make soundings and prepare a map of that part
ofothe Detour 'river iii which the 'collision occurred, with the land-marks upon the shore. I think it is clear this cannot be taxed as costs. Tuck v. Olda, 29 Fed. Rep. 883.
P,nnsyZ'Dania. July 18, 1888.)
Where the correspondence between an applicant for insurance .and the insurance company shows that the minds of the parties never met with respect to the terms of the proposed contract, the insurance company does not become bound by mailing to the applicant a policy of insurance which the applicant is not bound to accept.
2. BAME-ArPLICATION-CONCEALMENT OF FACTS. At the time of application to an insurance company at Pittsburgh, Pa., for insurance on 8 steam-boat, the boat was tied up in White river, Ark., for repairs, and was without master, otliceJ"s, or crew, haVing been so seriously inJured by a collision with a bridge pier as to be unable to run at all. Nearly the whole of one side of the boat; including the wheel, was torn away, and 'bllr upper works were badly damaged.·· While in this condition, and within a few hours after the alleged insurance was effected, she was destroyed by . fire. Held, that the above facts IIlateriallyaffecled the risk, and, having been concealed from the insurance company; there could be no recovery against· the company. .
BAME-CONCEAI,MENT BY lNSURANCEBROKER.
A broker. employed to procure insurance. must be regarded in that matter as the agent of the person who so employed him; and his concealment from tbe underwriter of any material fact, whether the suppression be willful or unintentional, is the concealment of his principal.
In Admiralty. Knox « Reed, for libelant. ,D. T. Watson, for respondent.
ACHESON, J. This is a suit upon an alleged contract ofinsurance on the steam-boat De Smett. The ·libel presents the casein a twofold aspect; one of its paragraphs alleging that the contract was consummated by the issuing of a policy of insurance, and another paragraph stating upon an agreement to· insure the vessel the cause of action as against marine risks upon the terms usually contained in the defendant's policies. The answer, while admitting that an appljcation for insurance upon the De Smett was made to the defendant, and thereupon certain negotiations took place, denies that any contract of. insurance, or any agreement to insure, was concluded or entered into; and,· by way of further defense, the answer alleges that important and material facts were omitted from·the application, and concealed from the defendant. The' essential facts of the case are as follows: On the 15th of April, 1886, in consequence of a collision with one of the piers of the bridge spanning Whiteriver, three miles above Newport, Ark, the DeSmett was very'