,vi'/'cuit (JfJUrt, 8. D. New York.
A case will not be reopened for the introduction of new evidence, unless the new evidence would vary the case, and probably lead to a diffet'ent result.
James A. Whitney, for complainant.
Peter Van Antwerp and Rodney Mason, for defendant.
D. J. This cause has been heard since a decretal order for dismissing the bill of complaint, and before decree signed, upon a motion .of the plaintiff to reopen the case for the introduction of new evidence as to the novelty and utility of the patented trap. It is plain that the motion should not be granted unless the. new evidence would vary the case and probably lead to a different result. The patent is simply for a die-drawn seamless soft-metal plumber's trap, made by forcing the metal through dies at varying velocities on 'opposite sides. It describes nothing to distinguish these traps from others except the mode of. manufacture and longitudinal striations appearing upon them, which are merely the result of the manufacture, and have nothing to do with the quality or operation of the traps. The patent assumed that soft-metal traps were before known and .in use, and, besides, that fact was a matter of common knowledge, of which the court took judicial notice. There was nO evidence as to the quality and characteristics of the die-drawn traps as compared with the cast traps before most in use. The new evidence would tend to show that their walls have greater solidity and more perfect uniformity, and that they are more elastic, and that the quality of the metal is changed and improved by the process of drawing, and that they have largely superseded all others in use. All these differences are due to the process of manufacture, in forcing the metal through dies, all of which effects were before well known. They are the same as the differences between cast and drawn lead pipe, as was shown in Leroy v. TathlJ,m, 14 How. 156. There the testimony was that the drawn lead pipe "was superior in quality and strength, capable of resisting much greater pressure, and more free from defects, than any pipe before made; that in all the modes of making lead pipe previously known and in use it could be made only in short pieces, but that by this improved mode it could be made of any required length, and also of any required size, and that the introduction of lead pipe made in the mode described had superdeded the use
of that made by any of the modes in use, and that it was also furnished at a less price.": . Still the court said, through Mr. Justice }4:cLean:
A patent for leaden pipes would not be good,as it would be for effect, and would consequently prohibit all other persons from using the same. ¥ticle, however ... same, the metal, pefpg in no respect different. . Any difference in ,forlll and strel!gth JPust arise from the mode of manUfacturing the pipes. The new property in the metal claimed to have been discovered by the patentees belongs to the process of. manufa<f. ture, and noUhe thing made.
And in 'OollarOo.'V. Van Dusen, 23 Wall. 530, Mr. Justice Clifford .
. Articles of manufactu're may be new in the commercial sense they are not in the sense of the patent law. New articles of commerce are not patentable as new manufactures unless it in the given case that the production 'Of the 'new arllCle'involved ;the exercise of invention or discovery be,rond what w.as necessary to aonstruct the apparatus for its manufacture or production.
. The plaintiff did not discover that soft· metal could be··wrought through 'that the quality of wrought soft metal is generally superior to that which is·merelycastJi and:does not pretend that he did; and ·his patent is not.for any ,Buoh discovery, 'nor for the application of it. He constructed; a 'machine by which crooked pipe could be made of soft metal'the samaas straight pipe had bef<l'rebeen made, Mid the crooked'pipe could ,be cutoff so as to constitute'traps. His patent is f<1r the traps made in that way-for the effect merely of that machine. He hlliS not the discovery. of any principle, even such as the minority of the coutrtin Le Roy v. Tatham thought Tatham had to support his patent, in the working of soft metal. This newly-offered. evidence of the differences in quality between the drawn traps; 'and least shows merely the differences between drawn pipe and cast pipe orWl'ought lead and CQBt lead, and eould not affect the decision of the CaSEl at all in the view taken of it by the court. If this construction of the patent and view of the case are wrong they can be corrected by appeal. The motion must be denieq..
STILL & BRO.
READING and others.
August 26, 1881.)
(Circuit Court, W. D. Texas.
LETTERS PATENT-LICENSORS-THEIR RIGHT TO MAINTAIN ACTIONS AGAINST !NFRINGEUS. '
A patentee, who has sold the exclusive right to use his.invention for a term of years short of the full life of the patent, can maintain an action for an infringement. '1.
The petition, however, is demurrable, unless it affirmatively appears that the alleged infringer is not using the invention under the authority of the licensee.
Walton, Green et Hill, Hancock et West, and J. W. Robinson, for plaintiffs. . S. S. Boyd, for defendants. TURNER, D. J. The plaintiffs in their petition allege that on the eighteenth day of September, 1877, they obtained letters patent from the United States government for the exclusive right to use, make, and vend their new invention, and known as the "Still saddletrees;" that on the fifteenth day of January, 1878, petitioners con· tracted with one J. S. Sullivan & Co., of Jefferson City, in the State of Missouri, and sold to the said J. S. Sullivan & Co. the exclusive right to use their said invention, except that the plaintiffs reserved the to use their own invention in their two shops in Texas; that said con· tract with J. S. Sullivan & Co. was to continue in force for the term of five years; that the letters patent granted to them (the petiti(mers) was to secure, and did secure, to them the exclusive right to use and control their said invention for the term of 17 years. The petition alleges that theee defendants have infringed their right secured to them by said letters patent by the use of their invention in the construction of saddle-trees, etc., since the first day of January, 1880, up to the time of .filing their suit. The petition alleges that in the sale of the use of their invention to J. S. Sullivan & Co. it was agreed that said J. S. Sullivan & Co. should pay to the plaintiffs a certain sum of money for each saddle-tree made, used, etc.; that the defendants, by using plaintiffs' saddle-trees, and by sales of saddles, etc., have deprived them of their just rights as patentees, and have, in fact, infringed upon their patent, and thus deprived them of the royalty that they would be entitled to if they had secured their right to make said saddle-trees under a contract with J. S. Sullivan & Co. The petition alleges that defendants are not using their invention by their