. BOYD fl. CHERRY.
the com plainant. The com plainant hailll right of property in this tradel of different fprm, which mark, and it has a right to useitupon contain its whiskey; and the defendants have no right to adopt a mark so near like it as to be liable to deceive purchasers,wllatever tbe siz,e or form ofthe package may be. . The granting of a preliminary injunction depends upon the special circumstances of each case. This case has been fully tried upon affidavits.. I. qo not see what new proof could be brought forward by either side at final hearing. There islittle dispute of fact, and the question is mainly: oqe of law, namely, whether the two marks are so similar that the defendants should be enjoined from. the use of the one they have adopted. In a case of this character, if the court has no doubt on the question of infringement, an injunction should be granted at this stage of proceedings, unless there are special circumstances which take the case out of the general rule. I do not find any such specialcircumstances in this.case. The defendants contend. that it would work irretrievable injury tothem to grant this motion, but this position is not supported by the proofs. The defendants are liqu9r dealers, and they put this label upon one' kind of liquor sold by them. It is true that money has been spent by them in advertising, .but the only injury in restraining them from the use of this label will be to oblige them to put some other form of label on this particular brand of whiskey, which is not an of the. complainant's trade-mark. NordoI think the complainant has been guilty of laches, considering the distance from Boston where the complainant's distillery is established, and the fact that the evidence goes to show that Mr. White, one of the proprietors of the complainant company, had nO knowledge of the defendants'label priqr to 1889, ,and this suit was brought in 1890. . Ppoq the whole, I aIll satisfied that the. complainant is entitled to an injunction; and it is so ordered.
(Circuit Court, D.lowa, E. D. January, 1883.)
PATENTII FOB INVENTIONIl-ANTICIPATION-PRIOR USB.:...M:JLlt CANS.
The Cooley patent of September, 1879, covers "a new process of raising cream from tnilk. " and, as stated by the specifications, "consists mainly in water-sealing the milk within the vessel containing it, and also in submerging such vessel in water, and in 'apparatus hereinafter described;" the ,object beinlt not only to exclude dust and dirt, but also to prevent the absorption of deleterious gases or odors from the air, and the exposure to sudden changes, electric, therinal, and otherwise, of the atmosphere, Held, that the patent is valid, although other persons had been in the habit of occasionally snbmerging containing milk, as they never proceeded so far as' to discover the importance of the method or the valuable results achieved by the patentee. The patent is infringed by a milk can maI\ufactured under the Cherry patent, whICh describes a substantially similar apparattul, and purports to accomplish the I18meell!ls, iUllubstantially the same way;· and infringement 'cannot be avoided on
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the theory:tbat tbe Oherry patent is for a device, while the Cooley patent is for a process, especially when it appears t.hat thc Cherry apparatus was sold with direction for using it aClJOrdingto the Cooley. process.
By "procel\s" is meant the or ,operation of sO!De element or power of nature,or of' one sUbject to another; 'as, for example, the art of tanning, dyeing, smelting ores, and the like. In such cases, the invention consists in the application of.old and well-known principles to :and useful purposes.
InEquity. , The 60mplairiant by his hill chltrgesrespondent with the infringement ora patent granted to William Cooley, and duly assigned to him. The said, patent bears date February 20, 1877, and is "for an improvement iriobtairiing cream from milk." It is described in the opinion. The twofold: (1) ThatCooley wasnot the original and first the process described in his patent; or, in other words, prior use by otJlJ.el' 'persons. (2) That,. even' if complainant's patent is valid, 'defen4,lint'has not infringed. ProOfs'have been taken, l).nd the case has been tw!ce' argued. Upon the first hearing, the court found that the f'ense6fjJrior'use was sustained, but granted a rehearing. ' Munddflj'Evarts& Adcock, Wwhard '&ReiLd, and Phillip8,Goode &:Phillip8; fdrcomplarnant. . ,', ' & Eastman, for defendant. Circuit Judge; As it is admitted 'that has manufactured and sold a milk cilliconstructed'aecordirig to the patent iSBuedto'bilil,on the 23dofSeptember, 1879, k110Wn as th'e"Hawkeye Patent," ourfitstinquiry will be as to whether this is an infringement under which the complainant claims. An examiof"the nation· of ,the two patents will clearly show that they are substantially for the same For I older patent as the "Cooley Patent;" and the later one as tihe "Cherry The Cooley patent is described as "a new process of raising cream from milk," and the specification declares that "it consists mainly in waterE'ealing the milk within the vessel containing it, and also in submerging such vessel in water and in apparatus hereinafter described." The Cherry patent is described as "an improved means of raising cream from milk, and for driving off the anima'l ,heatdrvapor contained in the same in the shortest and best possible manner;" and the specification further declares that" the invention' consists essentially in water-sealing the milk within the vessel. containing it, by maansof a cover of novel conetruction, andsubinerging such vessel and cover in a tank of water." In both patimts, cme,roain purpose is declared to be the excluding of the milk from the outer 'atmosphere during the process of raising the cream. Thus the specit):cation in the Cooley patent declares: I water-seal the can or other vessel containing the milk to be treated, whereby all possibility of the entrance into it of foreign matter;' or odors is prevented," etc. And the specification in the Cherry patent declares that.:.. The, vesllllLcontaining the in a tank of water. and the milk not only excluded from the Quter atmosphere, but an equality in the-
BOYD. tI. CHERRY.
temperature is established and maintained throuKhout the entire vessel, anll the animal heat or vapor driven out into the surrounding water." In both patents the utility of the invention is declared to consist in substantially the Same thing. Thus the specification in the Oooley patent says: "The ordinary mode of raising cream is with open cans, either shallow or deep, and then by hand labor skimming the cream from the surface after the Illilk bas stood from say thirty-six to forty·eight hours. This mode is open to several serious objections, among which may be named the exposure of the. tnilk, ,to the atmosphere, from which it attracts insects and absorbs gases and odots', often very deleterious, and from which it collects and retains dust and dirt floating in the air; the agitation of its surface from winds and other causes; the great length of time required to raise the cream; the unavoidable lack ofunifurmity in the quality of the cream, and cOllsequently in the butter made from it, because, of the various ,subtile and invisible atmospheric causes which tend to taint, acidify, or otl;lerwise vitiate it; the positive and direct exposure to all the sudden changes, electrical, thermal, and otherwi811, ()f the atmosphere; and the necessity of having pans enough to hold them1lk of two or more days' milking." On the same Bubject the specification in the Cherry patent states: "It will be observed that by the old method of raising crf'am in open, shallow pans,tl1e milk absorbs deleterious odors and gases, and collects dust and dirt floating in the air, and is also subject to various changes of atmosphere, and rendering a lack of uniformity in the quality and quantity of the cream produced, and consequently lessening the value of the butter made from it. By means of the present improvement these objections are ellti1'ely obviated, inasmuch as the vessel.containing the milk is submerged in ·a tank,of water, .and the milk not only from the outer almosphere, but an equality in .the temperature is fstablisl)ed and maintained througbout the entire vessel, and the vapor driven out into the surrounding water." The similarity in the two patents becomes still more apparent when we come -to compare the description of the invention,and the milk cans :actually constructed .underthem, some of which are. in evidence before .us. In both there is a pylindrical receptacle or pan for holq.ipg the .:qlilk. In both there is.a tank or vessel for holding water into which :the milk can is placed. In both there is a movable cover for the can, ;shapedsomewhat like an ordinary tin. pan, and placed upside dow.n on the top .of the can, the overlapping orflaring sidesaf the cover leaving .an annular. space between such sides and the can. Both are rendered airtight by water-sealing; that is, by being submerged in water, or so nearly submerged that the air is excluded from the can. In both the process contemplates that the can shall stand in the water until the ·creamis gathered at the top, .and in both an outlet is provided at the bottom by which to draw off the milk, leaving the cream only in the ·can. True, there are some differences, but they are immaterial, and my conclusion is that the two patents are substantially identical. But the counsel for the respondent insist that he has not infringed the CooJey patent; and their argument is that said patent is for 11 pro-cess, and not for a mechanical device, while respondent's invention is Jor thlllatter, and not for the former. It is impossi1(le to this
TEey,'ttre 'alike; P" lri'in yJ j'ndgment,'ljcitlit paMhiBcovedl.'prbi.
"WhaH>DtfJe; I'D this
:by a combinliitiono£:me(j)hanicai devices. A -process ispatehtable, pro'lided tbatitisneW"and usefld. ,By "process" is meant the application or operation of some element or power of na'ture" oJLofonesubjectto,anather. .' ,As processes, 'the:'aTt' of tannirig, smelting ores, and thelik'!!l! may be mentioned.In these arid in'other similar cases the m.erit:ofthe invention .J:lptiil. the 'discpyery rthy)iew law of nature' or principle of p,qt.IQ of old(i.nd welltoneW,l;l.nd" ,purposes. There, cllJl be no patent 'upoDu8n:abstractphilOS<ilphical,principle. ,The laW$,Ol nature and properdee:bfiIlattet are presQmed tobe:known toandsnbject to be.utilized Butth.e these laws or result not NC1,u;on v.¥Iar/?i:Q." 1 ,Webst. Pah Cas. 295 j Corning v. Burden, 15 How. 267; Cpchrq,nev;·.!Jeene:r, 94 U. S. v. Goo4:year, 9 . " ..... , ,the mechanical appliiinces described in frOln theP,f0gess.. cans or \Vorl4 seem to be httle, If any, povj31ty in, ,them,., But. however thi:s mf1.y be, it apPears, from an ip,speetion,of.theCherry' patent itself, .that it is intendedio cover the processj,and,that ,the-cans' Sire to be used only for the purpose of raising 'cream ,'in Lthe manner described." Blisides" the evidence discloses the fact beySbd:qiIestion thll.tthe rt:spopdent inanufactures. the" Hawkeye them in, raising cream from milk accordmg to the process described in the Cooley patent. He advertisesarid: the can for They arEl especililly adapttldfto it, 'andW 'Jioother, and the inference arising froin their sale, be'veryslrong. When it is added that they are,gEiner811yj. if hot always,'acbompaoied to purchasers as'tbthe"tnode M'using them, ,which directions require theadopCo6ley process,. !it.becomes vert clear that the fact is establisherI-. ,Buwke:rv. DOW8, 3 Ban. &:& 518; Ohumiciil'WatkS'V'. Heekfir,'2:Bnn.&A. '851; Wallacev. l1011lie8, 9 Blatchf. 65. It odlyrerh.ld,ns toconsidetthedefense of prior use. The proof unthe date of Cooley's invenlioo, several other persons been. in t habit of bccasional1y submeTgiIig vessels -con:during process qf cream therefrom ,and in some illsmhees,' a'HeaM,such uSe w!l,s public. But it 'also clearly appears far as to discoV'erthe utility of 'the the fact that by it the important and valuable achieved by Cooley could be 'It is beyond doubttha'l:Coolev w8l:Hhe first to discover and to make known to the public' dic5[fii/it' that by this cream. could be raised iii a m·uch shorter 'period' of time than by aliy other' known means, and that by' it a. betterquaUty 'otbutter waS :tobe seeuted· at II reduced. cost. Tn'6
. BOYD .t. CHERR>Y.'
others doubtless came very near to this discovery, but tney overlooked it, ;as is apparent from the· fact that no other one of them thought enough of the processtopernninently adopt it, or to apply for. a patent upon it, until after the Cooley patent had come into, use and its great utility had beendel1lonstrated. ' It follbwsthat the controllinll: 'question upon this branchoNhe case is is necesSl\ry for the defendant, in order to· sustain. the defense· of prior use, to show, not only that the pro.: cess was publicly used before Cooley's discovery, but that it was, so used by some person or persons who perceived the fact of its utility, and who knew what could be accomplished by it, and who communicated this information to the public. But, upon authority and upon principle, I am constrained to answer this question in the In Tilghman v. Proctor, 102 U. S. 711, the supreme court, through Mr. Justice BRADLEY, held an alleged prior use not sufficiently proved, for the reason, among othem, that the result had been accidentally and unwittingly produced, while the operin pursuit of other and different results, without exciting attention,and without its even being known, what was done, or how it done. In Pelton v. Waters,7 O. G.426, the rule is distinctly recognized that the vrior discoverer or inventor must have had sucn a conception of the invention as would enable him to give it to the public. Said Emmons, speaking of the alleged prior inventor in that case, " he not only did not give and could not give it [the invention] to the public, but he did not possess it himself." The same rille is recognized in Andrews v. Carman, 9 O. G. 1011, where it is declared, in effeCt, that the person" who first discovers the principle, and by putting it into practical and intelligent use first makes it available to man," is the first inventor. Ii the alleged prior use of. the process was under such circumstances that the public obtained no knowledge of the mode of its operation, or of the results. to be attained by it, there is no prior use, within the meaning of the patent law. "In other words, if the parties who made the combination, although seeing with the eye perceived not. and he&ring with the ear undt>rstood not, *. * * they added nothing to their oWn stock of knowledge; and the fact, if observed by other men, (if they understood it not,) added nothing to the science on that subject. Therefore the invention was not made until the parties contriving, or others observing, the existing combination, saw that it COUld, be made available for the purpose of producing a result similar to the one which the plaintiffs have mentioned in their specification." Ransom v. Mayor, 1 Fish. Pat. Cas. 267. These adjudications are based upon a sound principle. The rights of a patentee are granted to him upon the consideration of the giving by him to the public of a new and useful discovery. If someone before him had already given the same invention or discovery to the pnblic,this cOIlsideration falls, and he has no basis:for his claim of exclusiveright. Hence it lathat the alleged prior invention must have been made public. If kept secret by the first inve.ntor until the second
hasf(oiBcovered lt and given it to'he public, the latter will be protecte"d, that the public is indebted; it is from him that the ptiblichas received and, as no one can-impart that which he does not possess, it must appear that theallllged prior inventor was aware, not but alsoofit.<s lttility. These considerations leadt<> the conclusion that complainant is entitled toa decree in accordance with the prayer of the bill for an injunction and accounting. Let a decree be entered accordingly.
(Df.8triet Oourt; D.Sonth CaroUna. April 20,1899.)
Asuit in general average was brought by libelant, a ship.m9"ter, against elit; who denied the necessity-for the jettison, thus making the main iS8ue whether libe,laht'eentire claim was a fraud. This suit was the only method of arriving at a solution of the question. Libelant was successful on the main issue t thouA'h the amOUnt of his olaim was diminished, for want of evidence whichooula satiefy the court.. BeZd, that respondent should pay the costs.
In . 1. ;:V. Nathans, for libelant. 1. P.K.. .Bryan and D, B. Gilliland, for respondent.
SIMONTON, . District Judge. The only question remaininglis as to the costs. Upon whom must the burden fall? In law cases costs tute the ,penalty pro falso clamore; they inevitably [oHow the. verdict or decision.)n this court; as in..equity, they do not necess$rily fall on the and ,are; altogether within . the discretion of the court. When the litigation has arisen unnecessarily, either: by haste before a or. by unreas<:mable conduct post litem, rendering hnpracticable ; or when there in the testimony such actiQJ;l QO the part of the litigant as repders him obnoxious to the disapproval of. the court ; and sometimes when the question involved is of such a 'fihnracterthat both parties are equally interested in the decision madei"':':"in'these instances, audin maDy others, varying sometimes w'ith sometimes with the disposition a.nd .temper of the judge, costs are divided, or apportioned, or put upon the successful party. In the present case the ship reached port, a jettison of cargo and other having occurred during the voyage. The usual and proper steps were taken. An average bOlld was executed, and the cargo delivered. i,·Ail iadjustment was made by an experienced adjuster. Respondentsbeingdissatisfied, not with the manner of, but with the occa';lion for, theciaHjustment, this libel was The answer denied for the jettison, especially and particularly for much of the ship's property·