402

FEDERAL REPORTER.

9imilar lining on the face of the buckram, to which the flock is not applied, with the napped face of the canton flannel exposed, and not. nex:t to the buckram.

The Kendall turban, defendants' Exhibit No.3, has no side crown or brim. Irrespective of this, it is not satisfactorily established that that article had in it any stockinet support, or anything but canton flannel, with flock applied, directly to the unnapped face of the canton flannel. Bracher's frame, No.6, if made with the unnapped face of the canton flannel exposed, had only flock enough put on the buckram to take an impression of the straw braid, and was made, not for use in that condition as a hat, but solely to be stamped as an imitation of a straw hat. The flock was put on only as a pulp on which to emboss, and the flock, by the embossing, lost its identity and parted with all resemblance to felt. The. Morse hat, No. 13, is a flocked buckram hat, with a strip' of canton flannel put in separately as a brim. Hats such as the Novelty Companyhats of 1876, of canton flannel, muslin, and flock, with the napped face of the can. ton flannel not exposed, were not the. Gray hat. It is plain ,that cementing the nap to the buckram tended to destroy the pliability or softiless aimed at by Gray, by reason of the absorption of the nap by the cement, and that there could be no appearance of napped feU. The case is one where there was sufficient invention to support the patent, and there must be a decree for the plaintiffs, with costs.

DOWNTON 'V. TIlE YAEGER MILLING

Co.

(OirlJuit Oourt, E. D. Missouri.

March 28, 1879.)

1.

LETTERS PATENT-]\'[IDDLINGS FLOUR.

Certain instruments, set out in full in the opinion delivered by the court, held not to amount to such an assignment by Downton, a patentee for a pI:ocess patent, of which the claim is for manufacturing middlings flour by passing the middlings through or between rolls, of his right as patentee, as to preclude him from suing third parties who infringe his patent.

In Equity. W. G. Rainey, for G. M. Stewart, for respondent. DILLON, C. J., (orally.) We are prepared to announce 9ur'()onclusions in the case of Downton v. The Yaeger Milling Co. This is a bill in equity by the complainant, as the patentee in a granted by the United States for an invention,-in charaoter a pro<:ess patent/-against the Yaeger Milling Company for the

DOWNTON 'l1. YAEGER MILLIN

00.

403

monopoly or rights granted by that patent The issues have been made up, and proofs have, been taken. We ordered an argument on the question of assignment and estoppel, since that question, if dccided in one way, would end the case against the complainant and of the court going into the proofs on the merits. obviate the Some time about the year 1872-that, perhaps, is common knowl. edge in this country now-there was brought into successful operation and practice the manufacture of flour of a superior quality or grade; from what is known to millers as the "middlings." Before that time, in America, at all events,-although it was shown by the proofs in another case that they had much more intelligent conceptions on this subject abroad, and especially in France,-in America, however, prior to that time, what is known as the middlings, which constitute the most nutritious portion of the grain, by reason of a greater relative portion of gluten,-a nitrogenous subsh.nce which is more nutn1ious than the other parts of the wheat,-by what is known as the "new process," were shown to be susceptible of making flour" as I said before, of a superior quality, and had the effect of revoluthe process of manufacturing flour very largely, and, at all events, to bring the spring wheat of the country, for economical purposes, in more favorable competition, if not on a par, with the winter wheats of the country. Now, when that improvement was practiced eft' brought into successful operation a year or two afterwards, the United States granted t9 Mr. Downton, the complainant in this case, what is known as a process' patent, 80'S distinguished from a patent for. a mechanical device, which sufficiently appears from the claim which he made. , After describing the state of the art, as required, heprocEleds to 'state in the claim what' he insists is covered by'his invention, and for what he wants a monopoly or patent. Now, that claim is this: "The hereinafter-described process of manufacturing middlings flour by passing the middlings through or between rolls." The middlings area comparatively coarse product, and instead of regrinding them at once, as had been theretofore practiced, Mr. Downton cla;ims a patent, procured one, for passing them between rolls, (instead of comminuting or triturating them and reducing them to an impalpable powder,) which has the effect of flattening cerand they are enabled by a sifting process to eliminate tain said impurities before the middlings are regrou'nd; that is the process, viz., ,byjhe use of rolls as an intermediate step' or process in the .art. of IIlflUQJa.ctllring flour. So he says:

· 404

FEDERAL REPORTER.

"I claim, as new, the herein-described process of manufacturing middlings flour by passing the middlings, after their discharge from a purifier, through or between rolls, and subsequently bolting and grinding the same for the purposes set forth."

The point is that this is a process patent, as distinguished from a patent for it mechanical device. This difference in the law concerning patents for inventionR is one of great moment. If it is a patent for a process, the particular mechanical device by which the process is worked is not patented; any machinery or mechanical deville for executing the patent is not embraced in it. Generally a patent for Do process, for that reason, is very much more valuable than a patent for a mechanical device, because whatever way you make any alteration in the device changes the nature of it, if it be for a combination patent; if you add an element, or omit an element, such patent is easily evaded. But not so with the process patent, which has no concern with the specific mechanical devices or contrivances by which the process is worked. Now, Mr. Downton, after securing that patent, anq, as shown by the proofs, being an intelligent man, and with an ingenious mind, also contemplated the procuring at this time of a patent for machinery for the purpose of working his process; for instance, this· patent is to be worked, as it appears, by rolls and rollers, and he contema mechanplated at this time the procuring of a patent for ical device, or machinery to operate his patent, and also for what is known as a middlings duster, known as "Downton's Peerless Midlings Duster." Now, after he had obtained this process patent, and when he had these patents for machines in contemplation, he fell in with the firm of Allis & Co., of Milwaukee and Chicago, who it seems had a large establishment for the manufacture of machines of various kinds. Downton having the patents,-that is, having one and contemphtting getting others,-it was supposed they could make an arrangement to act together, (Allis & Co. to manufacture the rolls and duster, and avail themselves of Downton's patent for the right or process,) and they made a series of contracts. I will allude to each of them very briefly. The only one now material to be considered is the one I first read:
" For and in consideration of the sum of $125, to me in hand paid, I hereby sell. assign, and set over to Edward P. Allis & Co., of Milwaukee, Wisconsin, their successors and assigns, the exclusive right to manufacture and Bell rolls for crushing grain or middlings, or other substances, No. 162,157, dated Aplil

DOWNTON V. YAEGER MILLING CO.

4:05

20,1875, [which is the only process patent that was granted, and which was the only patent that had been granted to Downton at that time,] for the full life of such patent, and any reissues, extensions, or improvements thereon, except that the shop-right to manufacture and sell in the state of Minnesota, but not elsewhere, is granted to O. A. Pray, of Minneapolis; said Allis & Co. also having an equal right to sell in said state. Dated at Milwaukee, Wisconsin, this twenty-fourth day of January, A. D. 1876. [Signed] .. ROBERT L. DOWNTON."

The next contract of the same date and a part of the same transactions, is an agreement :
"For and in consideration of the sum of $125, to me in hand paid, and the further payment of the patent fees thereon, Ido hereby sell, assign, and set over to Edward P. Allis & Co., of Milwaukee, Wisconsin, their successors and assigns, the exclusive right to manufacture and sell a certain machine for which I agree to obtain a patent, to be known as ·Downton's Peerless Middlings Duster,' for the full. term of the patent, or any improvement or sions thereon; and, upon the obtainil1gof said patent, I hereby agree to execute such assignment. . . [Signed} "ROBERT L. DOWNTON."

·

The third agreement on the same day is as follows:
.. Witnesseth, that whereas, by certain agreements, bearing even date herewith, the rights to the exclusive manufacture of 'Downton's Peerless dlings Duster,' and rolls for crushing grain, etc., patented by said Robert L. Downton, have been conveyed by him to said Allis & Co., .. * * it is hereby agreed that the engagement of said Robert L. Downton of his exclu· sive services to said Allis & Co., at the above rate of $1,500 per annum, may be ended upon notice of six months by either party, or without notice, by payment of the sum of $750 in money; and it is understood that said Downton is not entitled to take away any or otherwise, of any of the machines made by said Allis & Co." [Signed by the parties.]

With this addenda:

"In case of the termination of the above engagement by death, or other casualty, the right to sell the machines referred to in the above agreement shall revert to the heirs or successurs of R. I,. Downton, the manufacture continuing in said Allis & Co., to whom all orders are to be sent." [Signed by the parties.l

That was in January, 1876. Downton, the patentee under this patent, went into the employ of Allis & Co. under this agreement, and while in Allis & Co.'s employment he made a contract as the representative of Allis & Co., and of himself, in reality, as connected with Allis & Co., by virtue of this contract, with the Yaeger Milling Com. pany to put certain rolls, which had been manufactured, or were' to be manufactured, by Allis & Co., into their mill, which they were erecting at that time in this city. And two sets of rolls1 manufactured by

406

FEDERAL REPORTER.

Allis & Co. pending the continuing of the arrangement between them and Downton, were put into the mill under that contract which had been made by Downton, representing Allis & Co. as 'well as himself. After these had been put in, Allis & Co. failed, and proceedings in bankruptcy were commenced against them. That, Downton seemed to have conceived, had the effect to end these three contracts between himself and Allis & Co., and, at all events, from that time all busi. ness relations or connections between them ceased, as it is claimed. Allis & Co. were not adjudged bankrupts. They made an agreement or composition with their creditors, and proceeded in business. So that any rights they had under that contract they still have. Thus, the bankruptcy, by reason of its termination in this manner, ceases to be material in ascertaining the relations of the parties. As to the special point now under consideration, we assume that the proofs show that Yaeger & Co. had notice of the bankruptcy, and that Downton claimed that he had terminated this arrangement,and that Downton insisted that the whole contract between himself and Allis & Co. was at an end, and that all rights thereunder had reverted to him. After this, and after the alleged notice of the character I have described, Allis & Co., claiming that the contract was still in force and that they were the assignees of all rights of Downton, continued to manufacture these rolls, and the Yaeger Milling Company put in severa.l other sets of rolls in their mill. Now, this is a bill by Downton, as the holder of the process patent, to which I have adverted, against the Yaeger Milling Company for mfringement of his rights under that patent in the use of these rolls, under the circumstances I have stated. This is an outline of the case. Now, one question, on which we ordered an argument, is whether, under these circumstances, whatever may be Downton's rights as between himself and the rest of mankind, or as between himself and Allis & Co., who are not parties on the record in this suit, as Mr. Downtoll has never had judicial settlement or adjustment of his rights in a direct proceeding with Allis & Co.-whatever might be the rights of Mr. Downton as against anybody else-the question is, whether he was not equitably estopped, as against Yaeger & Co., from insisting that they infringed his patent, by reason of the circumstances I have stated. The counsel have been heard on that, and we agree (Judge Treat and myself) that so far as the two roUs are concerned that were put in by Downton himself during the pendency of his relations with Allis & Co., and for which, they paid Allis & Co.,.

DOWNTON V. YAEGER

CO.

407

he is estopped to claim that the use: of those rolls is an infringement of his patent. That, I think, is plain enough; for .not only did Yaeger & Co. buy these rolls for the purpose of using theql of Do.wnton as well as Allis & Co., but Downton took his proportion of the amount paid therefor. Therefol:e, fj,S respects those rolls, it is too plain for controversy that Downton is estopped. Now, as to the others purchased by Yeager & Co., after they had notice that a controversy had sprung up between & Co. and Downton, and were put inwithout Downton'sconsent, and a.fter notice that, "If you do that, I (Downton) will hold you responsible." If these..are the facts, then they went on at their peril. . Now, if the proofs shall show that they made a valid contract for, or bought and paid for, these rolls before they noticl:l of Downton's rights, then these ad!litional rolls will stand on the same footing as the others; but otherwise,J:).ot. Another material point argqed, and to be decided, is this: that Downton had disabled himfrom maintaining a suit against anybody by reason of the assignment I first read. It being claimed that that was an assignment (as distinguished from a license) of his entire rights under .the patent to Allis & Co., and therefore that he had made an entire unconditional assignment of his rights, and could not bring an action againilt anybody for invading those rights, which he could have brought had he not made the assignment. So the question is whether this is an assignment of his rights under that process patent: .. In consideration of the sum of .$125, to me in hand paid, I hereby s'ell, assign, and set over to Edward P. Allis & Co., of Milwaukee, Wis.. the sive right to manufacture and sell rolls for crushing grain or middlings or other substances." Now, he had no patent for rolla. ,:ije had no more right to make rolls than anybody else in the world. He had a patep.t for a process. This is not a suit between Downton and Allis & Co., but a third. party, against whom Mr. Downton, as patentee, has brought a suit. He produces his patent, and claims that they have infringed it: They this suit, because you have come in and say, "You assigned all your rights, under this process patent, to another party, and, if we are liable to anyone, .we a:r;e liable to them, i. e., Allis & Co., and not you." The defendants are setting up this contract as :an assignment, and, in my view, in otder to enable them to. avail themselves of it as such, it must. appea..r. on its face to be a. complete of Downton's right!!; if not, he can maintain this suit if

408

FEDERAL REPORTER.

not otherwise equitably estopped. Now, did he by this inst1'lllnent assign his rights under the process patent? He says, "I grant to them the exclusive right to manufacture and sell rolls for crushing grain or middlings, or other · · .. which right or process to manufacture and sell rolls is secured to me by said patent." This seems to be based on a mistake from the begining to the end. It is said, however, by the defendants that he meant to convey some· thing, and you must put a construction on it so as not to defeat the operation of the instrument. But my judgment is, since this does not operate intrinsically or ex proprio vigore as an assignment by Downton of his rights under that patent, they remain in him, and will remain in him as against Allis & Co., until Allis & Co. shall secure, by the decree of a court in equity, if thereto entitled, a specific execution of an assignment of the process to them. In'conclusion let me add that I only decide: 1. That the instruments executed by Downton to Allis & Co. do not, nor does either of them, amount to such an assignment of the rights of Downton, as patentee, as to disable him from suing persons generally who infringe his patent if the same is a valid patent. . 2. But whether he can maintain a suit against the purchasers of rolls from Allis & Co., who use the same in such a manner as to infringe his patent, will depend upon the principles of the law of estoppel. Applying these principles, it sufficiently appears that he is estopped as to the first set of rolls; but whether he is estopped as to the others will depend upon the special flllcts and circumstances which will be considered when the cause comes on for final hearing. Judge Treat does not agree in the above view as to the effect of the assignment and as to estoppel, but that being my view the case will be disposed of on this point in accordance with the views I have expressed, if it shall turn on them. We have not considered the merits. They will stand for a further argument and hearing.
TREA,T, D. J. Putting a proper construction on these agreements, and taking into consideration the fact that Downton, over his own name, published to the world that whoever bought rolls of Allis & Co. should have the right to use the process, I think there is an estoppel in this case, as Yaeger did buy his rolls of Allis & Co., some of which rolls were put into the mill under Downton's own superintendence. So far as the contracts and agreements are concerned, standing as they do now, and holding that this contract is designed to convey something, the plaintiff cannot recover, as the right to use is given

PROVOST V. PIDGEON.

to any person purchasing rolls of Allis & Co., and these defendants did purchase rolls of Allis & Co. The controversy, primarily, should be between Allis & Co. and Downton, setting up all these matters, as between them, to take out of them or him any pretended right either may have. But, so far as third persons are concerned, who acted on the faith of Downton's conduct, publications, and the recorded assignment, they cannot be proceeded against for the use of this process. To get rid of any difficulty in this matter, he should proceed directly against Allis & Co. to have the original agreement reformed, so as to correct the mistakes which may be, possibly, detected by looking at the cotemporaneous· agreements between the parties. In other words, there should have been a suit against Allis & Co. to reform the agreements, as between themselves, and having them reformed, sue anyone who thereafter might infringe the process. On the trial, at the proper time, the merits will be considered to determine as to the validity of the process patent.

PROVOST V. PIDGEON.

(District Oourt, S. D. NeUJ York. tieptember 23,1881.)

1.

2.

WHEN SET ASIDE.

An attachment will be set aside in the absence of any proper endeavor to make personal service upon the respondent.
:MARRIED WOMEN-PROCESS.

When the respondent is a married woman, having no place of business or of customary resort other than her home, which there is no reason to suppose she has left, an omission to seek her there, or at her usual or last known place of residence, must be hcld a failure of any proper endeavor to make personal service.
3. MISUSE OF PROCESS-PRAC'l'ICE.

When it is clear from undisputed facts that through the want of any proper effort to make personal service the process has been used in an unauthorized manner, such misuse will he corrected on motion.

In Admiralty. Motion to set asid'e the service of process of attachment. Samuel B. Caldwell, for libellant. P. Cantine, for respondent. BROWN, D. J. A libel in personam was filed in this case on September 5, 1881, to recover for supplies furnished the steam-tug Frank Pidgeon, Jr., in her home port, during 1877 and 1878. On t,he same day process was issued to the marshal, with the usual clauso