842
\
Bll:POll.'rER,
vol. 88.
by lix:piting ,its scope and operation, so as to it cover and embrace all tbe' elenients oftbe ,combination describell in" the specifications, including the sill, C, and theplankingresti,ng thereon, ,which forms the sides or shell of the tunnel, then, as thus limited and confined to the specific!ltructure described in. the patent, it infringed by the defendant's s t r u c t u r e . , . 4. That the first clause or branch of the sixth Clainrof said letters patent, in reference to the arrangement or oombination ,"'lVith the rope tunnel or chamber of pillleys'jourmiled' in'the same, upon which the rope runs,"w8sitntidpated by the Gardner 'patent No. 19,736: and is wantnoveIty;that, in respect to the second ofsaid Claim ing 'relating to the "means for lubricanng the 'bearings onlaidpulleys from the outside ofthe tunnel, substantially as described andshoWll," no patentable invention is shown.,'inviewdf the general and well-known use of tubes for carryirig oil to inaccessible journals. ' . 5. But, if said sixth claimcontaiiled any patentable'device, the same is infringed by the defendant, who' employs a different means for 'biling its journal boxes.') Defendant does nqt use 'or employ any oil reser.voirs or oil tubes leading from the outl:side of the tunnel to the shaft such as those described. in the specifications and drawings of said Jetters complainant, certainly, cannot properly insist upon such a broad constrUotion of the latter clause of said sixth claim',astocOv,erany liridall openings or holes made'in the cover'ing of the tunnel for the, 'purpose of reaching the: journals' with oil, di,rectly app1ied.. ." .' , . " ,. . ., . , '6; It folIowsfromtne/oregdingcGnClusions' that the complainant's :biU must be dismissed, which is 'I,lccordingly ordered and 'adjudged, with
costs.
."
".'
I
LEGGE'J;'T
v.
OIL 00.
(Oi1'euit (JO!urt,:S· .D. New York. May 15, 1889.) BARRELS WITH GLUE.. " .' . Letters patent. issued March 10, 1874, tQ Edwarcl W. Leggett. for an Im· ': proved mQde of lining tbe'inside of oil·barrels with glue, the c}aitp,s for which , were a prQcess"wherein the glutinQus IDIIMrial,. ipstead ,of being produc!!.d by reductiQD frOID a previous]ysolid state, is permitted tQ attain only aeertain . , ; liquid consistency,audis then app,lied to the package and permitted to harden thereon for the til'st time, "and 'a barrel. cask, eoated or sized by the lllaterial, and by the ID94e or process whereby it is absQrbed intQ and strengthened by.the wo()d for want of inventi0Il'
" In Equity; On bill injunction.':-" , . :·P1dwinM. Felt and EdU;ardWe&n01'e,for plaintiff. :, C!Jharle8 a. Beaman and EdwinN. Dickerson, for defendant. :.
t··,
l
r'
SHIPMAN,
J .. This is a bill in equity to restrain the defendant ftom for January 24,1874,
II. STANDARD OIL QQ.
843
for an improved mode issued March 10, 1874, toJMward W· of lining the inside of with glue. The original patent was dated October 21,1873. The ordinary dried glue of commerce is usually made from the trimmings ofskins, which come from slaughter.:houses and tanneries, as follmvs: The skins are soaked iuwater and lime to renlove the fat and grease, and arf;lthen thoroughly washed and exposed to the air, or may be treated with a solution of acid to remove the lime;· for the presence of lime, after it has performed its originl,ll office, is exceedingly injurious to the glne. The stock is then boiled by the application of and when the solution has beeh effected by boiling the liquid glue is run into moulds, and allowed to set and form a jelly. The jelly is cut into slices, whIch are spread upon nets and dried. 'I'he ing part oUhe process is simply to bring the glue to a condition in which it will keep permanently, and can be transported4 and bell. merchantable article; .for either liquid glue or jelly glue, unless mixed with antiseptics, quickly and easily attracts impurities from the atmosphere, decompuses, and is spoiled. In order to make glue a commercial ,article for general use it must be dried. This part of the process is iha most expensive, because the jelly glue is easily influenced by atmospheric changes, and, when thus affected, will not dry, but melts, and becomes worthless.· Before 1874, hydro-carbon oil-barrels were prevented from leakingb)" pouring into them a sufficient quantity of hot glue, rolling the barrels, and thus permitting a lining or coating of glue to be poured upon the jJilside of the barrels. The liquid glue for this purpose was maqe in' the ordinary way by melting dried glue, and heating the solution. The invention consisted in applying directly to the 'barrels hot liquid:glue, or "glue soup," before it had been subjected to the cOQling or drying part of the ordinary process of manufacture. The describes his invention in the specification of the reissued patent as follows: It "consists in preparing, from any glutinoqs substance, glue soup, said soup permitted to attain but a cel'tain consistency. and then applied rectlyas a coating, or sizing. In carrying out my invention I proceed as follows: Take any of the material!, from which glut> may be made. aod proceed in the lIsual or any suitable manner for the mannfacture of glue. until the soup has attained a certain consistency. This consistency mnst be considerably less than that which is required whereby semi-Illlid, solid, or cakegllle is to be produced, anll, while it is in this half.finished slatt', so to speak, it isapplied directly to the inside of the barrel or cask, where, after due, evaporation. it will be found that said cask or barrel is lined thoronghlyand completely with the material. inasmuch as a pressure of steam generated by heat applied is sufficient to force the thin glutinous fluid or soup well into the pores, fibers, and receSSt'S of the wood, thus insuring a perfect lining. 1 am aware that barn-Is, etc., have been lined or coat"d with glue of commerce, when said glue has to a process of reduction by dilution from i.ts original consistencfto a ,sufficiently liqUid state; but I am not aware, of any process whei'ein theglntinons material has been permitted to attain only its proper ency for the purpose specified, and then applied directly; thus saving the time, labor, and expense heretofore employed by continuing the manufacture of the gelatinous soop!UiDtil it has attained a glutinous condition; thusnecessitatillg 8e1;, a redu<1tio,J;L.,by diluting andr"heating before it is fit,.for
844
FEDERAl, REPORTER,
vol. 38.'
forth in this specification, traveling over, as it were, the same ground bacKward and forward two or three times, whereas, by my process, this troll ble is entirely dispensed with, by operating as within described. This invention has nothing to do witll the ordinary glue-lined barrel, but relates to a new and inexpensive mode or process of barrels, casks, etc., better adapted to the purpose designed, by coating or sizing, as set forth, than by the ordinary means. Heretofore glue has been taken in its completed state as an article of manufacture, reheated, diluted, and then applied; but such a process necessarily carries with it all the expense of prepariug the glue at first as an article of trade or commerce. My process contemplates taking the said soup when at a proper consistency, and applying it to the inside of the package, permitting it to hurden for the first time upon that surface. The distinguishing feature of this improvement may 'be found, on examination, to be the superior integrity of the lining by the use of soup glue. By its peculiar character it; is more freely absorbed by the wood. penetrating into the fiber deeper than by the ordinary m<;lde. Hence the sizing or coating is not only upon the but penetrates into the wood, thel'eby presenting a thicker covering to the action of the oil, and this siiing.ifl not liable to be broken off or cracked in handling the cask, as part of the coating is absorbed into the /i..ber and cells of the wood, whicrl gives additional strength to it." The claims are as follows: casks. etc., wherein the glutinous instead of being produced by reduction from a preViously soJidstat,e,is permitted to attain only a certain liquid' consistency, and is then applied to th'e package and permitted to harden thereon for the first time; substantiillIyas herein set forth and described. (2) A barrel. caSk, ete., coated or sized by the material, and by the mode or proce$s, whereby it is absorbed into. and strengthened by the woodfiber,!lubstantildly all described." The patented' process has been very extensively used by the defendant. Suoh Use commenced after the date of the patent. , The question which first and most strongly presents itself is that of the patentability of the described and patented process. Upon this question the plaintiff's counsel insist that a solution of glue formed in the course of the original boiling and a solution of glue formed by dissolving the drieq. glue, a.re. not identical; that the latter is subject tochanges only partIally undeJ,"stood, but positive and efficient, whereby the adhesive property of the gelatine is diminished; that, although thi8 wastheoretically known at the date of the invention, and although jelly glue was, at the same date, so treated as to last without decomposition, the use of glue fresh from the tubs was unkI,lown; that dried glue dissolved was the thing that was used, and fresh from the boiling-pot was not 8. known substitute for dissolved. dried glue in the lining of oil barrels; that no ,one then knew or believed that it could be used for that purpose, but that Leggett madethe practical discovery that glue,in the boiling state, and before it was dried, made a more efficient and economical artide for the uses of the oil refinet than· remelted dried glue, and that tMsapew process created', by which a large and expensive part of tl).e old, process was ll:voided.It must beregardedas proved that before the date of the invention practical experts believed that remelted dried glue, was .inferior in adhesiveness and binding qualities to hot andun-' : "(I) Tne within-described pl'oeess ()f coating or lining the inside of barrels,
LEGGETT V. STANDARD OIL 00.
845
dried glue. Thus it was stated in Wagner's Yearly Report of Chemical Technology for 1869 (volume 15, p. 657) that the adhesive and binding power of glue is greatly diminished in the process of drying in the air. Messrs. Wiedenhold and Plumer, two of the very intelligent witnesses on the part of the plaintiff, knew before the date of the invention that glue hot from the tubs was in the best condition, and would penetrate better. It is not important to ascertain whether this inferiority is inevitable in the case of the best dried glue which had been only once remelted, because the frequent liability of glue to suffer deterioration in the process of drying, from one cause or another, is undeniable, and therefore the opinion of the experts was practically correct. While this inferiority was theoretically known, it is also true that glue hot from the tubs was not used, and that its advantages were not introduced to the public, except in the isolated instances to which reference will hereafter be made. The glue jelly manufactured by Stalling, near Dresden, in and after 1869, was a very different thing from the liquid article which is the subject of this patent. Stalling's article was a glue jelly capable of transportation, and was "extracted in a peculiar manner, entirely by treatment of bones with cold water under steam-pressure." The plaintiff, from the fact that inasmuch as the patentee was'lthe first person who showed the public either to use or how to use the liquid article for the inside of barrels, by which a better result and a large saving ofexpense were effected, draws the conclusion that he is entitled to, the benefits which the statutes confer upon first inventors. This conclusion would be correct, if Leggett gave to the public the result of invention, and did not merely give the commercial suggestions which would naturally occur to a person acquainted with the manufacture of glue. The manufacture of dried glue was a necessity, because the mechanic who has only the ordinary business of his calling must buy,'-rather than make, his glue. His business requirements do not compel him to be a daily consumer of a large quantity of the article, and it niust therefore be purchased in a dry state. The use of hot glue as it flowed into the tubs was not practiced, because there was no occasion for such use, but when the time came that a manufacturer needed daily a very large supply of glue, the suggestion of a change in the mode in which he should procure and use glue was made; but the novelty consisted in the suggestion that he should be his own manufacturer. There was no nO,velty in thEi idea of the superiority or economy of hot liquid glue, and so D?uch of the claim of the patentee to the character of an inventor as rests upon the discovery of the superior integrity of the lining by the use of H soup glue" is fallacious. Liquid glue had never been manufiwtured before for daily use simply because nobody needed a large daily supply, and the .Idea that the patentee exercised the genius of an inventor in first practically introducing the article to the public is without adequate foundation, for it was a business, rather thana mechanical suggestion. The thought that the defendant{which was a large daily collsumer) could profitably be itSOWQ manuJacturet of glue came both to the patentee and to Mr. Plumer, who.alsQ su1;>seqtlently communicated the de-
846
FEDERAL REPORTER,
vol. 38.
fendant; but neitheds entitled, on that account, to be, considered an inventor, but each iarather to be regarded as having prompt ability to seize upon correct methods of conducting a large business. It is also true that there was no invention in the application of liquid glne taken freshly from the tubs to the inside of barrels. The use of such glue came naturally, and in the ordinary line of thought, to Wiedenhold, when th e occasion came to him to line barrels. Hearne also to Baumann, before the date of Leggett's invention, when he was called upon to line. neat's foot oil i barrels ·in Peter Cooper's glue factory. ,Such use was undoubtedly occasionally practiced in that factory in other instances about the same time'. The 'idea was the natural one which would readily occur totha intelligent mechanic in the factory. It is not strange that it did not occur tooH, refiners, for they were not glue makers. It is notstraI1ge that it was not made public, because the occasion had not arrived for its development. It would be uselesato the oil refiner who used but a few barrels claUy, for he could not afford to manufacture glue; but When the occasion arose, the proper method of doing the business naturally presented itself to ,the mind ofa person familiar with glue man-. ufacture. , ;; J. do not consider whether an anticipation of Leggett's improvement isblearly proved by the facts which took place in Cooper's factory, but I place the decision upon'the lack of patentable invention in the thing patented. The bill should'be dismissed.
GILMoIQri".
ANDERSON
et ale
(Circuit Court, 8. D. New York. May 15, 1889.)
t.
, After in a suit for the Infringement of the copyright of a biograph· ical book. the case will not be opened. for the purpose of receiving newlydiscovered evidence that the ,author was not designated by the subject of the 'bbOk as his special biographer. 'The validity of the copyright or the right of 'icomplainant to relief does not depend on such designation.
PRACTICE.
2. f SUE. . . ... . Though Rev. St. U. S. !:l49f>2.. provides for the forfeiture of every copy of tPll 'book, and of such damages as may be recovered. only when the infringement ill without the proprietor'swiritten consent. yet that is not the sole provision . on wbich a claIm for relief· rna,. befonnded. but there is a Sllparate right to .relief against violations of the I sole liberty of printing... the copyrighted .,work. given by section 4952; and in a suit inequity. which has not jurisdie· :' ;..tionof an action for the .forfeiture. an account of profits only beinll' claimed. i: ,allegatio11 a,nd proof of the "bsence of such written consent are not necllssary.
8.
profits may be decreed under the general'prayer for relief. OF INFRtNGEMENT-EQUITY. .
'. Infringement furnishes ground for an injunction, and the right to an aoii. c\)Unti!' incjdent to tbll right an injunction; the the in· frJngeinentremoves the occasIOn. but not the rIght to an InJunctIon, and j. 'Inch cessation does not deprive complain.nt of the right· to equitable relie!.