De Florez v. Raynolds. RAFAEL DE FLOREZ ET al. vs. CHARLES T. RAYNOLDS Et al. IN EQUITY.* In a suit on a patent, after an interlocutory decree in favor of the plaintiff, the defendant applied to the court for leave to file a bill to review the proceedings and the decree, and to amend the answer by setting up two French patents against the novelty of the plaintiffs' patent, on the ground that, if the French patents had been in evidence, the decision would have been different. The application set forth, (1.) that the defendant was ignorant of the existence of the French patents until after the proofs were closed; (2.) that he did not know of their relevancy and materiality until after the decree was made and after he had employed new counsel; (3.) that the defendant's ignorance, and the insufficiency of a prior application, made after the proofs were taken and before the hearing, to admit said patents in evidence, was solely due to the inexperience and lack of legal knowledge of his former counsel; (4.) that, in selecting such counsel, the defendant was mistaken: Held, that the excuses offered were not sufficient to warrant the granting of the application, and that it was not clear that the result would have been different if the French patents had been in evidence. (Before BLATCHFORD, J., Southern District of New York, June, 1879.) BLATCHFORD, J. The bill in this case was filed in May, 1875. It named as defendants Charles T. Raynolds, Thomas B. Hidden, Leonard Richardson and Edward L. Molineux, as members of and composing the firm of C. T. Raynolds & Co. In August, 1875, Aquila Rich was added as a defendant, as a member of said firm. In June, 1875, the four defendants originally made such put in an answer to the bill, which set forth that Rich was a member of the firm. The answer was sworn to by the defendant Richardson, and the name of George F. Martens was appended to it as attorney for the defendants, above the signa * 16 Blatchf. C. C. R., 397. De Florez v. Raynolds. ture and oath of Richardson. The answer set up that Bouvet was not the original and first inventor of the patented invention, and other defences. A replication was filed to the answer. The taking of proofs for the plaintiffs began January 10th, 1876. The defendants took proofs on several days in March and April, 1876, Mr. Martens conducting the examination a part of the time, and Mr. Whitney a part of the time. The plaintiffs put in rebutting evidence on three days in April, 1876. The case was then ready for hearing. In October, 1876, a motion was made on the part of the defendants for leave to put in evidence on their part a French patent granted to Martin de Lignac, dated May 19th, 1847, No. 5,630, and the certificates of addition forming part thereof, and a French patent granted to one Dupas, dated December 2d, 1847. This motion was founded on two affidavits, one made by Mr. Whitney, the defendants' counsel, and the other by the defendant Richardson, both of them sworn to the 2d of October, 1876. The affidavit of Mr. Whitney set forth, "that he is an attorney and counsellor at law residing and doing business in the city of New York; that he has been attorney in fact for the defendants in the above entitled action, from the inception of said action, and that, since about the month of May last, he has been counsel for said defendants; that he has been fully familiar with the progress of the said action, and with the nature of the testimony produced therein by, or available to, the said defendants in said action; that neither he, nor, to the best of his knowledge and belief, any other person connected with said action in behalf of defendants, was aware that the French patent granted to Martin de Lignac, May 19th, 1847, No. 5,630, and the certificates of addition forming part thereof, contained matter relative or bearing upon the issues or subject matter of the above entitled action, but that, on the contrary, said defendant had no reason to suppose that said patent contained matter proper in evidence in said action until after the testimony had all been taken, both for the complainants and the defendants in said action, but that, after the closing of such testimony, he became aware, that said French patent and the certificates of addition forming part thereof, did probably con De Florez v. Raynolds. tain matter which should be produced in behalf of defendants. in the above entitled action, from his connection with another and different matter, and with due diligence did proceed to obtain copies duly certified, of said French patent and the certificate of addition forming part thereof, in accordance with the usage of the French Government in such cases; and that he hath also with due diligence obtained a translation of said copy, which now, in connection with the certified copy hereinbefore named, he lays before this court, praying that the above entitled action may be reopened for the admission of the aforesaid French patent and certificates of addition forming part thereof, as hereinbefore set forth, as evidence in behalf of the defendants in the above entitled action; and defendant also prays that said action may also be reopened for the admission in evidence of a certain French patent, granted to one Dupas, dated December 2d, 1847, which deponent is informed and believes describes 'boxes with a band or a wire bound around top; ring at the overlapping end for opening the box; tearing off band by pulling,' said patent last mentioned, as also the French patent to De Lignac, as deponent believes, being a direct anticipation of the United States patent granted to Jean Bouvet on or about the 28th day of June, 1864, upon which the complaint in the above entitled action is based, but which said patent to Dupas deponent has not been able as yet to examine, or to obtain copies or translations of the same." The affidavit of Richardson set forth, "that he resides in the city of Brooklyn, and is a member of the firm of Charles T. Raynolds & Co., the defendants in the above entitled action, and that the said firm has confided to his charge all business affairs relating to the said action; that he had no knowledge of the French patent granted to Martin de Lignac, dated May 19th, 1847, No. 5,630, or the certificates of addition forming part thereof, contained matter relevant to the subject matter or issues of the above entitled action; and that he, the said deponent, was first made aware of the existence of such French patent, its certificates of addition, etc., and the contents thereof, by James A. Whitney, counsel for defendants in the above entitled action, on the second day of October, 1876, and that, to the best of his knowledge and belief, De Florez v. Raynolds. no other member of said firm of C. T. Raynolds & Co. is aware of such patent or of the nature of the matter contained therein." This motion was argued by Mr. Jacques for the defendants, and was denied by this court. This cause was heard on the pleadings and the proofs, by Judge Wheeler, who decided it in favor of the plaintiffs, (14 Blatchf. C. C. R., 505,) and on the 29th of June, 1878, an interlocutory decree was entered in favor of the plaintiffs, awarding a perpetual injunction and an account of profits. On the 16th of October, 1878, the defendants gave notice of an application to this court for leave to file a bill for the purpose of having the proceedings in this suit, and especially the decree therein, reviewed, reversed and set aside, and that all proceedings had therein and thereunder be vacated and set aside, and that no further proceedings be had therein or thereunder, and that the answer in this suit be amended by setting up the new matter set forth in a petition on which such application was founded, and that this suit be reheard. The said petition is sworn to by all the defendants except Rich. The petition sets forth that the said decree has been enrolled; that the injunction under it was served July 2d, 1878; that the accounting is being proceeded with; "that, since the time of pronouncing said decree, your petitioners have discovered new matter of consequence in the said cause," particularly the French patent of Dupas, dated December 2d, 1847, and the addition thereto, dated March 14th, 1848, and the French patent to De Lignac, dated May 19th, 1847, and the addition thereto, dated December 6th, 1847, and the second addition thereto dated February 19th, 1848; and that, if the said two French patents had been read in evidence and considered by the court, said decree would almost certainly not have been made, but it would have been decided either that the plaintiffs' patent was void for want of novelty, or that the defendants did not infringe it. The petition sets forth the reason for so stating, founded on a comparison of the contents of the Dupas and De Lignac patents with the plaintiffs' patent. It also states, that, when this suit was brought, the defendants referred the matter of defending the suit and doing all things requisite therefor, to the defendant Richardson, as the one De Florez v. Raynolds. among them the best qualified to take charge of such matter, he having the supervision of the cans made, used and sold by the defendants. It then proceeds: "And Leonard Richardson, one of your petitioners, says, and the other of your petitioners say, upon information and belief, that the said Richardson immediately consulted James A. Whitney, Esq., of New York city, formerly their attorney and counsel in the said suit, whom your petitioners were recommended to employ, to advise them and defend the suit, by one G. H. Churnock, the inventor and patentee of the can used by your petitioners, Mr. Whitney having solicited his said patent and others relating to cans, and thereby acquired an extensive knowledge of the state of the art, and as a competent person to advise your petitioners and to defend the suit. And your petitioners being informed by Mr. Richardson that he had been acquainted for a little time previous with Mr. Whitney, and that he was a counsellor in patent causes, and made a specialty of such matters, and supposing that he was a counsellor of this court, of extensive experience, your petitioners employed and directed Mr. Whitney to investigate the plaintiffs' claims, to advise them as to the validity thereof and the course to be pursued by your petitioners in the action, and to do whatever was requisite and proper for maintaining such defences as might be available to them. Your petitioners were not acquainted with the patent laws of the United States, and were not aware that a patent is not authorized to be issued for an invention which has been previously described in a foreign publication, or patented abroad, and relied, therefore, upon the professional knowledge of Mr. Whitney, the advice which he should give them, and his acts in their behalf. After Mr. Whitney had, as they were informed and believed, investigated and considered the matters intrusted to him as aforesaid, they were advised by him that the plaintiffs' patent was void for an irregularity in the application for it, and also that the cans made by your petitioners were not an infringement of the plaintiffs' patent, both of which points the court, by its said decree, decided against your petitioners. Your petitioners have been, since the decree, informed that no search was made among the records of foreign patents, for anticipa |