Badische Anilin and Soda Fabrik v. Cochrane. So, the fact that they could be expressed in equations, and that chemists would understand the same things when so expressed that they do as now expressed, is not at all decisive. Neither could the actual effect of such reactions be accurately calculated beforehand. They must be first tried, and their effect found from the actual result. The question here is what in fact this result, the alizarine in yellow flocks, is. There can be no fair doubt, upon the evidence, but that the process can be carried out to a practical result. Several persons testify that they have done it, and no one testifies that these persons have not done it, nor really that it cannot be done. Those who have done it to any considerable extent agree, also, in testifying, that a practical dyestuff is produced, which, although represented in formula like chemically pure alizarine, and probably containing it, is different from it. Upon this testimony, considered with all the other testimony and evidence, it is found that the product of the patent is different from chemically pure alizarine, and that the patent covers the invention. It remains to be considered whether the defendants infringe. That they deal in an article produced by the process of subsequent letters patent, No. 153,536, dated July 28th, 1874, to Heinrich Caro, Graebe and Liebermann, is proved and not disputed. If that substance is the same, they do infringe. In the patent in controversy, anthracene was to be converted into anthrachinone by a known process mentioned; and anthrachinone into alizarine, according to Prof. Chandler, by adding, by means of bromine, two atoms of oxygen; or, according to President Morton, by substituting two atoms of hydroxyl for two atoms of hydrogen, by introducing in place of the hydrogen, bromine, which could be replaced by the hydroxyl; or, according to Prof. Ordway, by replacing the hydrogen with hydroxyl by the use of bromine as a radical. These are understood to be merely different descriptions of the same chemical process, in which the bromine, as said by Prof. Hedrick, does not inhere at all in the result. It served only as a sort of vehicle to carry in what was necessary, and fetch away what was not wanted, without disarranging the rest. It was discovered that sulphuric acid was superior to Badische Anilin and Soda Fabrik v. Cochrane. bromine for this purpose, performing the same offices in the same way. The Caro patent is for this improvement. Some say this was merely substituting one well-known equivalent for another; others, that it involved inventive skill. Which are right is of no consequence here now. There is but little, if any, disagreement about the result being the same. The defendants stoutly invoke Graebe and Liebermann themselves in support of some of their positions. Their statements upon this subject have been observed. They state that they tried sulphuric acid at first, but made the mistake of using too low heats. That "Caro first noticed that anthrachinone, if heated with sulphuric acid to above 200°, would give sulpho-acids, which, on fusing with hydrate of potash, formed alizarine, the same as the bromine compound." They describe the development of this process further, and then say, further: "The first process is, therefore, identical with the first bromine method given above." They then describe the second method, and add, in conclusion: "On fusing the two sulpho-acids, they give alizarine exactly like the monobrom-, and dibrom-, anthrachinone." The patent is to the same effect. The specification commences: "This invention relates to improvements on an invention described in letters patent of the United States, granted to Charles Liebermann and Charles Graebe, for improvements in preparing coloring matters, dated the 5th day of October, 1869, No. 95,465, in which the preparation of artificial alizarine is based upon the action of caustic alkalies upon bibrom-anthrakinon or bichlor-anthrakinon. We have now discovered that a similar result may be obtained by substituting sulphuric acid for bromine or chlorine, in the above process." Both the intended and the actual identity between the products, as to both source and properties, seem to be clearly established. And the establishment of this is of some importance, bearing upon the question of fact, before considered, as to the likeness between the natural and artificial alizarine. Prof. Chandler, upon whose testimony the defendants appear to most strongly rely, claims that the differences between them have been found in the product of the latter patent, and not in that of the former. This may well have been, Moffitt v. Rogers. because they have not been so much looked for in the former. But, if the products of the two patented processes are identical, as is here found, what he recognizes as differences to some extent in the product of the latter patent would be found in that of the former, if persistently sought after. These conclusions are the more satisfactory, because they are in accordance with those reached in the two former cases upon this same division of this patent, in the one of which, in this district, much reliance was placed upon the decision of that in the District of Massachusetts, and the opinion of Judge Shepley there. Let there be a decree establishing the validity of this division of the patent, and for an injunction and an account, according to the prayer of the bill, with costs. George Gifford and John Van Santvoord, for the plaintiff. JOHN R. MOFFITT VS. SAMUEL B. ROGERS ET AL. IN EQUITY. The invention patented to the complainant, May 21st, 1872, numbered 127,090, for forming heel stiffeners or counters, by means of two rollers, is not infringed by a machine, for similar purposes, patented to Louis Coté, which operates with one roller working in a stationary mould. The question of the patentability of defendant's invention, as affected by the practicability of his machine when compared with the complainant's, considered. (Before LOWELL, J., District of Massachusetts, April, 1879.) LOWELL, J. The complainant obtained a patent in 1872, for an improvement in heel stiffeners or counters for boots and shoes. In VOL. IV-15 Moffitt v. Rogers. his specification he describes a roller, shaped like the heel of a boot or shoe, set on a swing frame, and having a reciprocating or continuous rotary motion. This roller he calls a “former", and beneath it he places a roller having a profile the converse of, and conforming to, that of the "former." The mode of making a counter, as described, is, to place a piece of leather of suitable size and shape (usually called in the record a counter blank) centrally upon the "former," which is then brought down by a treadle, and the leather is rubbed or rolled, between the upper and lower rollers, as long as may be necessary to give it the shape of a counter. Two additional or auxiliary rollers are shown in one of the drawings, and are mentioned in the specification. The defendants work under a patent granted to one Coté in 1874, in which a machine is described consisting of a spherical or spheroidal roller or head, rotating concentrically upon a shaft, in combination with a stationary mould, made concave in conformity with the head; the patent says that the head may be grooved to facilitate its grasp of the leather. The leather is drawn through, between the head and the mould, by the revolution of the head. The Coté machine turns out counters of a spherical contour; but they are found to be useful, though they require to be brought to the exact shape of a heel by another operation. This machine has gone into use, and has proved of great advantage to the manufacturers, and the question to be decided is, which of the parties really invented the Coté machine? The plaintiff is right, I think, in his contention that the Coté machine makes counters by rolling and rubbing, and not by moulding, and, therefore, the machines, as described, have a similar mode of operation. But the defendants insist that the Moffitt machine was not a practical working device, and would never have developed the utility of Coté's machine, and that the latter is not a mere modification or improvement of Moffitt's, but the first actual operative invention. There is no doubt that Moffitt had the idea of a machine to make counters by rolling and rubbing, as distinguished from moulding. He described a machine which he supposed would accomplish this result, but had not, at that time, proved it by Moffitt v. Rogers. experiment. About the time that Coté's patent came out, Moffitt made experiments, and built machines. It seems probable that Coté intended and expected to avoid the Moffitt patent, and that Moffitt intended and expected, by his reissue, to cover the Coté machine. And the question is, which has succeeded? Upon the evidence, I find the real meritorious invention was Coté's. The plaintiff had the idea, but had not reduced it to practice so as to be able to describe a machine, which any person skilled in the art might construct, and make satisfactory counters. It is true, that if, instead of the roller or rollers of Moffitt, you make a stationary mould, so called, though it does. not operate like a mould, corresponding to the forming roller, and if you crease or roughen the roller so that it will pull the leather through this stationary mould, you have the Coté machine, which is a very powerful and thoroughly working device; but it seems to require something more than ordinary mechanical skill to pass from one to the other, and without some such changes, the rollers of Moffitt will not make merchantable counters, as a practical every-day business, in a machine such as he describes. From this point of view the difference between a heel-shaped roller and a spherical one, though apparently slight, is not unimportant. The attempt of Moffitt was to make a perfect counter by one operation. A heel-shaped roller would do this, if it did anything satisfactorily; while a spherical roller makes an unfinished counter, which, to be sure, turns out to be of practical utility, because it works so rapidly and efficiently that the artisan can afford to apply another machine or operation to bring it to exact shape. The perfect counter has not yet been made, practically, by one operation. The counter which is nearly made is Coté's. Finding these facts to be so, I must either construe the claims of the plaintiff's reissued patent to include only a machine with rollers, or hold them void as claiming more than he has described. Either way the defendants must prevail. Bill dismissed with costs. E. F. Hodges and J. E. Maynadier, for the complainant. |