mONCLAD MANUE"G CO. t!. JACOBI:. VOLLRATH MANUE"G CO.

143

lRONCJ1U) MANUE"G Co.·". JACOB J. VOLLRATH MA:!WF'G Co., Limited;

et at.

(Circuft Court, E, D. Wisconsin.

June 27,1892,)'

1.

PAT"E1IlTS, :pon INVENTIONS-PUELIMINAny INJUNCTION-WHEN ISSUED,

In a suit for infringement, when the case is not free from doubt, and the expert-. are at variance, and there are no prior adjudications, a l;lreliminary injunction will be denied, especially if defendants at'll amply able to respond to any damages that may be adjudged against them on final hearing. ,

2. SAME-PROVINCE OF PATENT OFFICE-INTERFERENCES.

UJ)on an interference 1n the patent office the question is all to priority of invention, and anYthing said by the patent ,oflloials 8S to the construotion of the olaims is not binding upon the courts in a suit for infringement,

, In Equity. Bill by the Ironclad Manufacturing Company !l-gainst the Jacob J. Vollrath Manufacturing Company, Limited, and ot,qers,
for infringement of a patent. ' Demed. On motion for a preliminary injunction. . L. Bond,MarcellU8 Bailey, and Ernest,C. Webb, for complaimuit·· DyrenjortJi & DyrenjWtJ", .for defendants. ",.

, JENKINS. pistriqtJudge, (orally.) , The bill is filed for an infringement ,of a patent for pepperedeniuueled j'ron ware, issued to Chester. Comstock, ,the patent being numbered 415,161, dated 1889, and for a preliminaryinjtlnction torestrain the defendants from the alleged infringement this litigation. The specifiQation, after stating the process for obtainiiigthe "foundation' coating," it may be called, of the vessel that is to be enameled,pror.eeds: ' "When surface to be enameled has been properly pickled and cleansed in the usual way, and a paste of suitable material has been prepared in anyone of the usual ways for the production of either the ·mottled' ware, · white' ware, or 'plain' ware, I incorporate in such paste, preferably, comminuted .or granula.r oxide of iroll, and, after coating the surface of tJhe iron witb such paste,baving so commingled with it the comminuted oxide of iron, it is SUbjected in the mume to the usual fusing proCess, which produces the glazed appearance, but which also leaves the comminlJ,ted or granular oxide, in its natural or substantially natural condition, in practically mechanical ,sus, pension withintbe body of the glaze, and producing an appearance in tbe finished article which I here denominate as 'peppered' enameled ironware, in contradistinction to the restbetic appearance of the severally and prevIously described well-known artIcles in tbe trade. While. as I have said, I prefer to use granular or comminuted oxide of iron to produce this effect, it wmbe understood that I may employ any other suitable contrasting body which will not fuse at the ordinary temperature employed for fusiIig the paste which 8ubsequentlyconstitutes the coating, and I therefore do not wish to be limited in any degree to tbe character or quality of the materIal employed for this purpose, so long as it results in the production of what I have termed.' peppel'ed "enameled ironware, by which term I intend and mean enameled ironware having mechanically suspended or held in and. throughout the glaze a granular or comminuted. material in color contrasting with that of the body of the enameled coatIng, and comparatively infusible as compared with the . glaze, so that when thelatter is fused ontbe wal'e the granular or comminuted

144

FEDERAL REPORTER.

vol. 52.

contrasting colored material, although mixed with and held In the glaze, will preserveunlD1paired its original form, and thereby give the enamel a peppered appearance. " of the patent is for the process described. The first The second claim is stated to be.. As a new article of manufacture, peppered enameled ironware having the properties lind characteristics substantially as hereinbefore set forth." On the 19th of November, 1889. just It week following the issuance of the patent to Comstock, a patent was issued to Vollrath, which is the foundatiQuof the defendants' claim, and his process differs from the other as stated in the specification. After the foundation coating he makes a mixture which he calls "A." Then,' according to the color desired, he necessary ingredients, and adds t,o them a separately miiture in substantiiilly the same proportions as the mixture of the, coloring ingredient added being more or less, as a light or {lark 'result is dElsired, and this mixture is melted, eooled, and groqud dry into a condition like sand, forming a mixture B, and is ground to a different degree offineness from the mixture A. He mixes A and B in the necessary proportions to produce the desired effect, according the finished product is to have more or less of the color prominent! This mixed ulass, composed of A and B, is ofa paste-like is applied by pouring it upon or dipping into it the foundation coating, and then they are articles havihgthe put into a mtiffle and subjected to a temperature of about 1,000 0 Fahrenheit, and ther.e is'produeed what is called in the patent "a speckled appearance,"consequent upon'the different degrees of fineness of the mixture. The question in' this litigation is upon the construction of the second claim the Comstock patent, whether the words "having the properties characteristics'substantially as hereinbefore set forth," are to be limited to the process described in the specification, or whether it isa claim for peppered enamel ware, however produced. Some months after these patents Vollrath filed a claim for another patent, his claim being for an article of manufacture, namely: ·· Ironware having in the enamel throughout the entire coating specks contrasting in color with the remainder of the enamel. " There was an interference declared upon that claim, and it was held by the patent office that· the second claim of the complainant's patent was in anticipation of this alleged discovery, and it is asserted by the complainant that that decjsion substantially forecloses this claim of the defendants, and substantially holds thntthe second claim of the com· plainant'spatent is to be construed 1113 a claim for articles of enameled ironware having this peppered appearance, however produced. The court cannot agree with that conclusion. The issue before the patent office whether ,this claim for the article of peppered ware, or speckled ware, 811,claimed by Vollrath, was allticipated by the second claim of Comstock. and the controversy there was which was the first inven-

mONCLAD MANUF'G CO. V. JACOB J.VOLLRATH MANUF'G CO.

145

tion. The sole controversy was whether Vollrath or Comstock had first invented peppered ware. The patent office held that Comstock was the first inventor; but it was not within the province of the patent office to construe this second claim of the patent, nor was it essential to the determination of the question there involved. There Were some things said in the opinions by the different officers of the patent office which ha,re been supposed to bear upon this question, and, so far as the court is advised by reading their decisions, there would seem to be some comfort to be gained from them by both parties. The decision of the examiners in chief asserts: "The appearance may be given in various ways, amounting to but little beyond the ordinary resources of the craft in manipulatiIig their enameling processes; but it appears from the record that each party to the interference has secured a patent to his peculiar method of producing the effect, and each has also been allowed a claim for his specific product resulting from his specific process. * * * Each of these claims Is supposed to correspond to the product resulting from the pursuance of the method set out in the patent of the respective parties. The issue in interference is <leemed to be somewhat generic, thus covering the species made by either party. Hence this interference. Tbe title to the generic claim must turn upon the evidence as to what each party did in arriving at the general result of speckled or peppered ware, and the dates!;)f such experiments. In any case, each party's species, as defined by its modllofproduction, is seCured to him beyondcavil. This is au instrucif avoidance of litigation be an object, tive instance, moreover, of the of defining and limiting the novel product of a process by the terms of that process in setting forth the true and patentable substance, contrary to usual practice, but correctly set out and distingUished by the commissioner in Ex pa1'te Painter, 57 O. G. 999. The existing allowed claims to both parties we regard asspeeific, being based on their respecti ve processes." Now, upon the other side, the acting commissioner of patents, in his decision, said: "Without setting forth the various facts upon which a conclusion is based as to just what will meet the terms of the issue, it is sufficient to state that such subject-matter is held to be enameled ironware haVing incorporated in the enamel specks, fusible or infusible in their inherent characteristics, scattered throughout the enamel, and gi ving it a speckled or peppered appearance." It would thus seem that the acting commissioner of patents, so far as his attention was called to the subject, took a different view of this second claim from that taken by the examiner; but, as before observed, it was not a question for the officers of the patent office to construe. That is within the province of the court. Upon this motion there have been presented the ex parte affidavits of two experts on each side construing this claim differently, so that it may be said, at the least, that the proper construction of this second claim of the Comstock patent is not altogether free from doubt. The court need not go further than to say that, without expressing any opinion whatever upon the construction which should be given to that second claim, for, upon a motion for an injunction in advance of any adjudication by th6 courts, it is ",,'ell settled that a preliininary injunction will not· be allo,ved unless the, is entirely clear and unless irrevocable injury is to result

v.52F.no.l-1O

.

'146

.0):.""

'J'EDERAL BEPORTlEB,

vol. 52-

from·witiholdihgthe injunction: Here there is no sort of dispute that the for any damages which the .complainants may 'sustain:i!f"'Uterellhould:be a·final adjudication in their favor upon the construction:oontended for' theircll1im. As the question· is not free from doubt, and is one respecting which the experts are not in accord, it would seenltQ be improper for .the, court, as a preliminary step in the litigatiQn, :td d'O that whicbmight work great inju'ry to the defendants, when.iftlieoomplafnaht&shall finally be adjudged entitled to relief, the defendltlt!;ll1re amply able to compensate them for the inju.ry. The motion for an injunction will therefore be overruled.

';;

:

tI.

;PAeTEUR' CH:AM:mr.AND FrLTEB Co. et ale
tC(rcUii 'CoU11, N.

'1. PATlnrrs' ]1'011

FuNlt et ale

1ft. D. May 16, 1892.)

COMPOUND. .

, . . Lettenftlltent No; !Febru&l'1 16. 1886; to, Charles Edwsrd Chamtor· a ot pipe suitable clay, .)V.,ater, with por.oelai.n ea.rth or it,ll uivalent, the latter be111S B.rst and then reduced to a fine powder; tlie'prot>ortions about 26'to40per ceDt of the clay to OO'.to 80 of the &l!orth. HeM, on motion fora prelimtnaty inJuno'lo1l,tliat it was. an infringement touae acoI!!pound of' kaoUn e11\.l'. finely ground. silex··n about the proportions of 80 to 45 flle kMliJl '8u9 the relit aUex. . ',' ... , . On tb'e gran.tIng ota'prelbhinary injunction again8tinfringeI!!ent, complainan\ will not be requiredt(fgive abon:d tor theproteotion of defendants, when the latter have been guilty.ot blld faith towards hiI!!. I ... . ,
, t . · : :;

FA1TB Oll' DEll'BNDANT..,

.'

In Equity. Bill for infringement of a patent. On motion for preliminaryit1junction. .Granted. Kerr &Curiis';L. Hill. and Staley&,Shepharrl, 'forcomplail'lants. H. 1;-: Bond, and fable & Brawn, for defendants.
BLODGETT, District Judge. '.this', case is now before the court on a motion for a 'prelimina,ry irijul1ction'td restrain the alleged infringement of patent, No. 336,385, granted February 16, 1886, to Charles Edward ,Chamberland, for a tiHering comI>0und. The scope and characteristics of the patent are perhaps best disclosed by the patentee himself, in his specification, w here ...' ,

"The means for'filtering water ordinarily consist in the use of burned brick, powdered substances, and various other materials, but which, either fromthll churllcte1"ofthe materials themselves, or from the I manner thElyare used or compounded. are not fUlly satisfactory. w here great thorough:J1eslI ill filtering is requisite., However efficient the named substances be, for tiltering, purposes, yet they do not, howeye",. retailil genns ,or microbes. or extretneJ.,y, which are in sus, pensi9U. in the Wl:\ter pr other ·· " .'" .... My invention is designed more coml>letely tc)hold back such $erms.' compound is formed 8ubstantiaUYof pipe clay, or any' other SUitable, clay.: and porcelain