Colgate v. Gold and Stock Telegraph Co.

before the service of the injunction, and, in form, like that with Bostwick, I suppose the giving to the Cemetery on the 23d of August, 1879, under the agreement, the use of a guttapercha-covered cable, was a violation of the injunction, for which an attachment must issue against the defendant. The same facts exist and the same decision is made in the case of the Woodlawn Cemetery, and in the case of J. G. Bennett,. No. 2.

In the case of the Ansonia Clock Company, there was no violation of the injunction, as the agreement was made and the gutta-percha cable service was commenced before the service of the injunction.

In the case of the Manhattan Chemical Company, there was a violation of the injunction, for which an attachment must issue against the defendant, for, although the agreement was made before the service of the injunction, the gutta-percha cable was furnished afterward. The above comprise, I believe, all the cases presented to my notice.

F. H. Betts, for the complainant.

E. N. Dickerson and G. W. Soren, for the defendant.

VOL. IV-36

Colgate v. Western Union Telegraph Co.

CLINTON G. COLGATE

vs.

THE WESTERN UNION TELEGRAPH CO. IN EQUITY.

The defendant company, having been restrained by injunction from using the plaintiff's patented invention, except the identical wires or cables then in use by it, and also "from selling, transferring, lending, leasing or parting with in any manner, any wires or cables embodying said invention, or conferring upon any other person, persons or corporation, either in whole or in part, or alone, or in conjunction, or in connection with the defendant, any use of, or right to use any such wires or cables," and having, subsequent to the service of the injunction, entered into an agreement giving to a railroad company the use of cables embodying the patented invention: Held, that the same amounted to a violation of the injunction.

(Before BLATCHFORD, J., Southern District of New York, October, 1879.)

BLATCHFORD, J.

By the injunction, the defendant and its agents were restrained from using the invention, except the identical wires or cables then used by the defendant, "and also from selling, transferring, lending, leasing or parting with, in any manner, any wires or cables embodying said invention, or conferring upon any other person, persons, or corporation, either in whole or in part, or alone, or in conjunction, or in connection with the defendant, any use of, or right to use any such wires or cables." The injunction was served on Norvin Green, the president of the defendant, on the 17th of January, 1879.

The contract of March 8th, 1879, made by the defendant, by Mr. Green, as its president, with the New York, Lake Erie and Western Railroad Company, contains an agree ment by the defendant, to give to the railroad company, free of charge to it, "the exclusive use and enjoyment of

Colgate v. Western Union Telegraph Co.

three cable-conductors across the Hudson river, with all necessary connections into the railroad company's offices in Jersey City and New York," and also to "maintain the said cable-conductors and connections without cost or expense to the railroad company." This is not an agreement to furnish gutta-percha-covered wires. It would have been fulfilled by furnishing any cable conductors and connections. Mr. Green, however, states in his affidavit that the said agreement refers to three cables insulated with gutta-percha, which had been used by the Erie Railway Company and its receiver, the predecessors of the new railroad company, under a like arrangement with each of them. The cable conductors actually furnished under the agreement with the new company have been the said three cables insulated with gutta-percha.

Under the injunction, the right of the defendant to use for itself the identical wires or cables it was using for its own proper business is one thing, and the right to confer on any other person or corporation the right to use any wires or cables embodying the patented invention is another thing. The latter is forbidden. Yet the defendant and Mr. Green have done it by the agreement in question, in connection with the action taken under it, for thereby the railroad company is using, under a grant from the defendant, infringing cables. This is the very thing the injunction was designed to prevent. The intention was that the defendant should not establish any new relation with any new person or corporation in respect to gutta-percha-covered wires, by any new arrangement. If the existing contract applied to the new corporation, it did so without any new arrangeIf a new agreement was necessary to bring in the new party and confer on it the right to use the cables, the new agreement was a violation of the injunction. Mr. Green states, in his affidavit, that the defendant claimed that the existing arrangement applied to the new company, and it must be inferred that the new company did not assent to this view, for Mr. Green further states that the new agreement was executed, so far as the defendant was concerned, as a recognition by the new company of its existing liability,

ment.

Lorillard v. Ridgway.

and of its willingness to continue the stipulations of the existing contract.

An attachment must be issued against the defendant, and Mr. Green, in respect of this violation of the injunction.

The granting of licenses by the Gold and Stock Telegraph Company, through Mr. Green and Mr. Prescott, as its officers and agents, is no violation of an injunction against the defendant and its agents.

Betts, Atterbury & Betts, for the complainant.

Porter, Lowrey, Soren, & Stone, for the defendant.

PETER LORILLARD ET AL.

vs.

ELI RIDGWAY.

SAME

VS.

SELLERS. IN EQUITY.

The first and third claims of reissued patent No. 7,362, granted to Charles Seidler, October 24th, 1876, for improvement in plug tobacco, held invalid for want of patentable invention.

The case of Lorillard v. McDowell, 2 Bann. & Ard., 531, upon the additional proof offered in this case, not followed.

(Before MCKENNAN, J., Eastern District of Pennsylvania, October, 1879.)

MCKENNAN, J.

When Seidler's patent (Reissue No. 7,362, dated October 24th, 1876) was before me, on a motion for a preliminary

Lorillard v. Ridgway.

66

injunction, in the case of Lorillard v. McDowell, 11 Off. Gaz., 640, it was held that the patent was not void by reason of any essential difference between it and the reissue; that the invention described in it was not a double use of an old device, because it did not appear to have been used for any purpose analogous to that contemplated by the patentee, or even remotely suggestive of such use," and that, under the proofs exhibited of the state of the art, there was sufficient inventiveness involved in its production to sustain its patentability. But the proofs presented here very much circumscribe the field left unoccupied by devices of the class to which the alleged invention belongs.

Impressions were made upon tobacco, in the process of manufacture, by the application of metallic and other hard substances, under heavy pressure, the imprint of which was left upon the tobacco after they were withdrawn. This was done for the purpose of distinguishing or identifying the tobacco. These impressing substances were left only temporarily in the tobacco, but it is apparent, that they might have remained permanently in it, if it had been so desired. The only objection to this would be the superficial and insecure method of their attachment to the tobacco. Seidler, however, obviated this defect by providing projections or prongs on the under side of his tag, which, by sinking deeper into the tobacco, gave it a secure attachment. But he did not invent this device, and, if he did, it is difficult to see how the mere attachment of prongs to a flat disk, which had been used before, would involve a patentable exercise of inventiveness.

Another feature of his alleged invention consists, as stated in the third claim, in "having letters or other decorative and distinguishing marks produced on a hard metallic surface, and pressed, as specified." It is abundantly shown, by the proofs, that letters and distinguishing marks had been produced upon the surface of tobacco, and that machines had been patented to make such impressions, before the date of Seidler's patent. The objects of these marks were in both cases the same. The only difference is, that in the one case they were impressed upon the surface of the tobacco, and in the other upon a metallic disk attached to the tobacco.