UNDERWOOD
et at 'I).
GERBER
et ale
'(Circuit Oourt, E. D. PATENTS
]yew
York. February 18, 1889. __MANIFOLD PAPER.
The claim in letters patent No. 348.072. August 24. 1886. to John T. and Frederick'W.'Underwood. for a composition for transfer stii"faces for proBucing ,is for the cQloring comIXlsitiolJ. ,tllerein described for copies of the manufacture of a substitute for: carbon paper composed of a precipitate of dye-matter inconibfnatioiI wIth oU. wax, or oleaginous matter. substantially as set forth., Tha,t in letters, pateliti ,No. 348.073. issued the same day to the thil Sll-lIle persons., on an theserialnllmber next succeedingthat the former patent. a,nd the same date. for an improvedreproduc-, ing surfacEl'f6r type·writing and manifolding. is for a s4eet of material coated , withaceinposition of precipitatedf dye-matter, obtained as described. in Combillationwith oil. wax,or oleaginous substance. substantially. etc. The composit"ion in each is the same. Held,that the only "advance of the latter patent is the spreading of thecomp05ition on paper. and that such patent is void for want of invention, and that a suit based solely upon it cannot be ", maintained.
In Equity,_, .," , '... .", Sqit,.by,:1;6,!:ln, Underwood and Frederick W ·. Underwoodagainst ,H13J;lryGerl:>er and Anton Aqdreae to restrain the pat,,'.. ,,' ' , .: . . -, , ,Ja1iiaA· .tIuason, for cited, to the decided in opinMan,ujacf:wri,ng Co.v. Railroad 00.,22 Fed. Rep.. 6p5j McMillan v· . 1 . :, .Qriesen, $teel:& ,Knauth,fC?r defenQants., 'cited, to same point: Mahn v. garwood, 112,JJ. S,354"p,Sup.. Ct. Rep. IHiLock.OO.v. M08ler, 127 Ct. Rep.1148;Su,ffolk v. Hayden, 3 Wall. 315; Morris !v.,!l""untinu¥>n,) Plline,q48; M,athew8 v. Flowler, 25 ,Fed. Rep, 830. ...,., ,;
"
J." This isa suit brought to restrain the, defendants from letters patent 348,073, granted to the, complainants August improved reproducing surface for type-writing and 24, ,1.886, manifolding." ,The citcumstancesof the are peculiar, . and present ,what. seems tp be:ll. novel question., On March 22, 1886, the complain,ant& file4 their application, (known as ','Serial Number 196,200.") The pa,tentissued thereon, and now sued on, sets forth that the iriventionrelatesto an imprQved reproducing surface adapted to be employed for oboil type-writing, or other printed or 'written impressions , by imeaJ1S :ad,:pe-writer or other printing device, or by the employmentof a sty:lqs, or other writing means; that the transfer sudace is spread upon a sheet or vehicle, and, when so applied, is adapted to be employed in place of the articles of trade commonly known and designated as "carbon papers"," or "semi-carbon papers." The specification then proceeds as follows: ,,(. Carbon papers,' or · semi-carbon papers') are employed by type-writers and others to produce copies of impressions either obtained by a machine or by a stylUS or other writing means. In cal'l'ying out our invention, we em-
683'1 ploy in the manufadufe of our or their active ,principles, which we filter precipitate w.tllalkaliefland mineral salts, with alkl'lies, acids, and mineral salts, or, With acids oralka-, lies alone. After the solution has been filtered, the precipitate is removed from the filteringdevice; and dried. Theprecipitate is then mixed with oil and wax, or 'their equivalents. and the mixture is then ground together in a warm state. The dj'e solutions we prefer to employ are obtained from logwood ,or hrematoxylin, the active principle of 10gwood,Brazil wood, sapan wood, peaqh-wood, madder. or its active principle.-alizarine. '.rhe proportions we find to answer well in producing our improved surface are as follows:, Take one pound of extract of logwooct and dissoh e the,same in one gallon'of water." '.rhen add til the solution one pound of soda and one pound of mineral, salt, using one of the salts of iron or copper, preferably sulphate of copper. The mixture th us obtainell is then placed in a filter. After .the solution lIas been tlHered, the precipitate is removed from the device employed for filtering, a:nd then drilld, after WhICh the precipitate is ready for use. To every two pounds ,of precipitate thus obtained we add one pound of oil and one pound of wax, and then grind the mixture, in a warm state, in whatis commonly known as a. · paint' or other suitable grinding mill.. The mixt-, ure thus obtained is then applied to tissue paper or other suitable paper or fabric by ,means of a sponge or other suitable transfening device.' The' paper or fabric to which our improved surface is to be applied is placed upon Q heated by preference formed ot' iron, /lnd heated by steam; but this; may. be val:ied. In plllce of employing oil or wax, or both combined, we Qan eTJ;l.ploy any other suitable oleaginous matter or combination ,ofoleaginou8 matter having equivl1lent or a.pproximatelyequivaJent ' . The invention having been thus described, tbe patentees claimed CIa sheet of material or fabric coated with a composition composed of a;precipitate of obtained as c:lescribed,hl combination with· oil, wax, or .oleaginous matter, substantially as and for the purposes set forth. ".op the same day (March 22, 188p,serial number 196,199) com· plainants also applied for a patent com position for transfer surfaces for copies of type-writing," and letters patent therefor (No. 348,072) were is::lt;l.ed to bomplainants on the same day as those sued on, -August 24, 1886.,. The specification sets forth, that the invention relates totbe process of producing a transJer surface adapted to be employed upon a sheet .or vehicle to take the place of,the articles of trade commonly known. and designated .asClcarbon papers" or "Seml"l\,"&Toon' papers." It then states that these papers are employed by type-writers, or others to produce copies of impressions either obtained by a machine" or by a stylW$ or other writing meanl1, !1nd proceeds to describe the· invention in the identical words used in the other. patent, and qUOted above.' Having thus described their invention, the patentees claimed,: "The coloring composition herein dE'scribed for the manufacture'of a sub-, stitute fur ®;rbon paper, composell of a precipitatp.of in combina.tion witq oil, wax, or olellginousmatter, SUbstantially asset,fOl'th." This novelinethod of manifolding an invention wRsadopted, as' plainahts state, inordet to comply with recent decisions' oftpepatent· office, interpreting ,rule 41 of that office, and holding that iii .:!>er.:.' son has "invented something in an: art, or ,as it IS 'OTdiriitrily'called,' process,'. also a :machine for carrying out the ,proCE!ss,il.nd· illsbthe inlui.!
I
'·.tt:
684,
FEDERAL REp(,RTEB,
vol. 37.
ufactureor article which is produced in the operation or the process by the machine," he must take out three separatepatents,-one for the process, one for the machine, and one for the product. Ex parte Blythe, 30 O. G. 1321; Ex parte Hm-, 410. G. 463. Before those decisions the patent would have contained the common specification above quoted with two separate claims.-one for the process and resulting composition; the other for its cOl)1bination with the paper. The complainants insist that their position is precisely the same whether their invention is covered by a single patent with a double claim. or by two separate patents. Whether this is so, under the circumstances of the particular case here presented, must be now determined. The defendants insist that no invention is set forth in either patent, and that they do not infringe. For the purposes of the argument upon the preliminary objection, however, the converse of these propositions will be accepted. The present application is to restrain the defendants fromcontinuiqg to infringe; and, for some unexplained and unaccountable reason, the complain,ants sue only on a single patent, and that, too, the One whose,number would indicate that it was, in time of application (tnd of issue,suhsequent to the other. Having taken their stand solely upon this patent, what is their position towards defendants, who make the'composition of matter described 'in both patents, and combine paper with it. as indicated in the one sued on? When differentiated each other, it is found that the only step'in advance which the higher-numbered plttent suggests is the spreading upon paper of the composition described in the lower.numbered patent. In viewof the earlier patents and pub': lications which have been put in evidence,-in fact, considering only what is within the common knowledge of all who have for upwards of a generation manifolded writing by the use of a paper coated or impregnated with some pigment,-it is difficult to see what novelty or invention could be detected in merely taking a coloring substance already known and applying it to paper. If the patent for the composition of matter forming the coloring substance had been granted to John Doe the day before complainants applied for their patent covering the application of that substanoe to paper, the latter would be clearly void for want of novelty or invention. It follows that if the first-numbered patent were held by an assignee 'of the complainants, near or remote, he could not be held an infringer of the second patent. Complainants conceded upon the argument that an assignee could not be so held except for the combinationof paper with the coloring SUbstance for the purpose named, aIidsuch a combination is clearly old. The complainants insist that' their pQSitic>D. is precisely the same is if they held a single patent with twoclaims,-,.one for the process or composition of matter producjng the coloring substance; the other for the combination of that subsbincewith p!'pel'" ,ThiEf might be so if they could be considered as holding both p.tenis. suit they have carefully abstained from declaring' up0Jtl the or even in any way.referring to it. Its issuance is · to, ,thf'l court through the defendants, who set it up in defense. pase their claim to a monopoly solely upon the second
UNDERWOOD fl. GERBER.
685
patent. As that single patent, tried by the usual tests, may stand or fall, the case which they make out .upon their complaint must also stand or fall. One who seeks to enforce the rights secured to him by a patent is an Ishmaelite,-his hand against everyone, and everyone's hand against him. His adversary may avail ofevery publication of the fruits of human irwention-by letters patent, by printed books, by actual public useas if they we{e his own. When offered in evidence they may prove not conflicting, not anticipatory, or be found otherwise immaterial; but, for what they are worth, they are the common property of all who are called upon to justify their acts in the face of a complainant patentee. The holder of the patent sued upon in this case must submit it to comparison with the first patent as if that first patent were outstanding. By not declaring upon it aS'its present owner, he leaves it to the defendants, to be availed of as if it were the property of a stranger.. What then is his position? At the very time when his patent was issued the composition of matter which enters into. his combination with paper was known, and the right to exclude all persons from making it was conferred upon the holder of another patent. Upon the holder of the patent siled upon was conferred the right to exclude all others from combining paper with this composition, in view of the state of the art such a grant was void. The cases cited by complainant (Manufacturing Co. v. Railroad Co., 22 Fed. RtJp. 655, and McMillan v. &e8, 1 Fed. Rep. 722) do not apply. There it was held that. the addition!>l combination which the original inventor sought to secure by his later patent wal:i in fact a real step in advance. It was held that the description of his invention in the earlier patent would not preclu!le him from securing his additional claim, because that additional claim covered a patentable invention. "Whether two patents," says the court in the case last cited, "cover the same invention, must be determined by the tenor and scope of their claims, not by the description in the specifications." . Here, as we have seell, the combination which the second patent sought to cover was not patentable. .This suit, based upon it alone, must therelold fail. To the holder of the first patent, whoever he may be, alone belongs the right to exclude all others from making the new composition of matter, the only invention which (if the other issues in the case be decided against the defendants) was sufficiently novel to warr!tnt the grantiug of letters patent. Usual decree for defendant.
FEDERAL REl'OBTER, vol.
37. t1.
H. TIBBE & SON MANUF'G CO.
HEINEKEN.
(Oircuit Oourt, S. D. New York. February 18, 1889.)
1.
PATENTS FOR INVENTIONs-ANTrCIPATION-CORN-COR PIPES.
Letters patent No. 205.816.'July 9, 1878. to Henry and Anton Tibbe. the claim of which is. "as a new article' of 'manufacture. a smoking pipe made'of corncob. in which tbe interstices are ,fill<ld with plastic self-hardening cemeD,t." plaster of Pari!! being indicated in the specification as a suitable plastic cement. are void for want of invention; corn-cob pipes. the bowls of which were lined with plaster of Paris. or a plastic cement prepared from meerschaum dust. having been manufactured anc:!, sold more than two years before appli<;atiop for the patent. ,, TO DENY VAr,IDITy-FoRMER LICENSEE.
, One who has had a license to sell a patented article is not thereby estopped from questioning the validity of the patent in vindication of acts done since , the,license expired.
8.
SAME-A'l'TORNEY
One who, under power of attorney froID the patentees. conveys the patent: right, and who, under another receives a proportion of the proceeds of the sale, the patent being conveyed by the assignee, through mesne conveyances to the original patentees, who convey to another, is not estopped, either by deed or in pais, from denying that the patent is valid.
FACT.
In Equity. On motion for preliminary injuncti<lD. Bill by H. Tibbe & Son, ManCompany against Willia.m L. Heineken for the infringement of a patent. Paul Bakewell and Abram J. Rose"for complainant. , LowiJJ C. Raeglmer, for defendant. T.iAcoMBE, J. This is an application for a preliminary to restraiidnfringement of letters patent No. 205,816,of July 9,1878, Henry and Anton Tibbe for "improvement in pipes." There has be-en no adjudication in support of the patent, except a decree which, being on consent, need not be regarded. Complainant insists that the "alidity of the has been suitably acquiesced in by the public, shdwingthlltits sales of articlE'S covered thereby have run up into' the millions. The weight of this argument is' greatly weakened by the' facts shown in viz. : That the defendant has been the same pipes continuously, and to a eonsiderable extent,' since 1883; that the Tibbes, through their solicitor, threatened to prosecute him for in-' fringement four years ago; that he then rotained counsel, and insisted that he had a right to manufacture and sell, communicating that Jact t(} their solicitor; and that he has ever since openly continued the manufacture and sale 'of his pipes undisturbed by complainant or his grantors. In view of'the other facts disclosed by the papers, this branch of the subject need not be discussed. We may concede that the letterfl patent and proof of exclusive enjoyment make out a pl'imafacie case, and proceed at once to deteruline whether defendant's answering affidavits are sufficient to defeat that case. The claim of the patent is: "As a new article of manufacture, a smoking pipe made of corn-cob, in which the interstices