In Equity.

M. McKeag for plaintiffs.

E. J. O'Brien for defendants.

TREAT, J. This is a suit for an alleged infringement of plaintiffs' rights under patent No. 164,858. The patent is for a process "intended for all oil-finished work when it is desired to represent a rich veneering, or imitation of wood." The successive steps of the process are enumerated in the claim and set out in the specifications. There is nothing new in the pigments used, nor in their mixtures with oil. Such mixtures were known long before the patent was. issued, not only in oil, but also in water and beer. Nor was there anything new in the use of a crumpled cloth, for the manipulation mentioned, to work out the blending of colors, so as to imitate different kinds of woods. The patent contains no disclaimers, and therefore it is somewhat vague in its terms. A proper construction, however, shows clearly enough that it is for a process for enameling wood, consisting essentially of successive steps to be taken in the use of various pigments, etc., as described; each of which steps is an essential part of the process itself.

It appears from the evidence that the defendants did not use either the first or last of the steps named, and it is doubtful whether the plaintiffs have over used either of them. The other steps were well known, and had long been in use, and no patent therefor would have been grantable. If the addition of the first and last steps enumerated made a new process within the purview of the patent law, it is obvious that there could be no infringement unless those were used. It is doubtful whether the patent is not void for want of novelty, but it is not necessary to decide that question. It is clear that no infringement has been proved.

The bill will be dismissed, with costs.

UNITED STATES DAIRY Co. and others v. SMITH.

(Circuit Court, S. D. New York. August 4, 1880.)

PATENTS FOR INVENTIONS-PATENT No. 146,012-MOTION FOR INJUNCTION DE

NIED.

BLATCHFORD, J. Patent No. 146,012 seems to make the use of the udder necessary in divisions 6 and 7 of the specification, in obtaining from margarine the resulting material. There is no suggestion that it may be dispensed with, or that any good result can be obtained without using it. In the reissue the udder is omitted in the description, and in claims 5 and 6, and then it is stated that the use is "expedient." If the use of the word "expedient" brings in the udv.19,no.2-7

der as parts of claims 5 and 6, the defendant does not infringe. If the use of the udder is no part of those claims, then the reissue, as to those claims, claims inventions not suggested or indicated in No. 146,012, and is invalid. It may be that the proofs for final hearing may put the case in a different aspect, but, as the case now stands, the foregoing considerations are sufficient to require that the motion for injunction be denied. The same disposition is made of the motions as to Flagg and Boker.

ROEMER V. NEWMAN and others.

(Circuit Court, D. New Jersey. December 22, 1883.)

1. PATENTS FOR INVENTION-INJUNCTION-CONTEMPT.

Where defendants have consented to a decree that a patent is valid, and an injunction restraining them from using the mechanism which it embraces, they must obey the writ until it is dissolved, and cannot, in a proceeding for contempt, assail the validity of the patent.

2. SAME-AGREEMENT BETWEEN PARTIES-EVIDENCE-DECREE REOPENED.

As the evidence in this case is conflicting, and leaves the question as to whether complainant allowed defendants the privilege of using the fastening claimed to infringe his patent, the rule to show cause why they should not be attached for contempt should not be made absolute, but the decree pro confesso should be reopened, the release of damages canceled, and the case proceed to final hearing.

On Attachment for Contempt.

Briesen & Betts, for the motion.

A. Q. Keasbey & Sons, contra.

NIXON, J. This is a motion for attachment for contempt against the defendants for violating an injunction. The petitioner brought an action in this court against the defendants for the infringement of letters patent No. 195, 233. No answer was filed. A decree pro con. was entered, and an injunction was issued restraining the defendants from any further infringement of said letters patent. The allegation of the petition is that the injunction has been violated. The defendants set up three grounds of defense: (1) That the complainant's patent is void; (2) that before the decree pro con. was taken the complainant conceded to the defendants the right to use the fastening which is now complained of; and, (3) that there has been no infringement.

1. With regard to the first defense, it is only necessary to say that the defendants are not allowed in this proceeding to assail the validity of the patent on which the injunction has been issued. They consented to the decree that the patent was valid, and to the injunction restraining them from using the mechanism which it embraced, and they must obey the order of the writ until it is dissolved. Phillips v. City of Detroit, 16 O. G. 627.

2. The bulk of the testimony has been directed to the second point, to-wit, whether the complainant agreed with the defendants that the manufacture and use of a certain fastening, marked in this proceeding Exhibit A, would be regarded by the complainant as a violation of the injunction. There is no doubt that the manufacture complained of, and which is alleged to be a violation, no more nearly resembles the invention claimed by the complainant's patent than does Exhibit A; and if the testimony shows that at the time of agreeing to the decree it was understood between the parties that Exhibit A was not an infringement, the complainant should not be allowed, on this motion for contempt, to stop its manufacture and use, The testimony is conflicting. The complainant denies that there was any admission made or license granted for the use of Exhibit A, and the defendants produce several witnesses who are sworn to prove it. It is difficult to determine where the truth lies, and it is charitable to hope that there was an honest misunderstanding between them. At the time that the decree pro con. was allowed against the defendants, the complainant signed a paper releasing them from all claims for damages and profits. Possibly both parties were acting under a misapprehension, and the best solution of the case, in my judgment, is for both to agree that the decree should be opened, the release of damages canceled, and the suit proceed to a final hearing.

At all events, I am not willing, on the evidence taken, to make the rule to show cause why the defendants should not be attached for contempt absolute. The same is discharged, but, under the circumstances, without costs.

DAVIS v. FREDERICKS.

(Circuit Court, S. D. New York. January 2, 1884.)

1. PATENTS FOR INVENTIONS-PATENTABILITY.

Letters patent No. 84,803, granted to Thomas B. Davis, on December 6, 1868, for an improvement in scoops, held to embody a patentable invention. 2. SAME-CALCULATION AND EXPERIMENT CONTRASTED WITH MECHANICAL SKILL. A result which required calculation and experiment beyond mechanical skill and good workmanship is entitled to be classed as inventive. A new thing produced, better for some purposes than had been produced before, although it appears easy of accomplishment when seen, is such success as is within the benefits of the patent law.

3. SAME-PUBLIC USE.

Where an inventor gives another an article embodying his invention, and, without his knowledge or consent, it is shown to others, who manufacture and sell the same for two years prior to an application for a patent, this will not constitute a public use within the meaning of the acts of 1836 and 1839, and render the patent void

In Equity.

Andrew J. Todd, for orator.

Charles F. Moody, for defendant.

WHEELER, J. This suit is brought upon a patent granted to the orator, numbered 84,803, dated December 6, 1868, for an improvement in scoops. The defenses relied upon are want of invention, and prior public use. The orator appears to have made the invention in the fall of 1865; and to have made application for the patent June 6, 1868. The first scoops, so far as shown, were struck up by hammering, in one piece, except the handle. Then they were made of sheet-metal, cut into shape in one piece, bent up, and fastened at the joints, ready for the handle. They had oval surfaces, and would not rest firmly and hold their contents securely when set down. The orator's scoop was made from one piece of sheet-metal, cut into such peculiar shape that when bent up and fastened it had a flat surface on which it would rest when set down, full or partly full, so as to hold the contents securely; and the acting parts were well shaped and strengthened in making them of this form. To fix upon the necessary pattern for the sheet-metal to produce this result must have required calculation and experiment beyond the practice of mere mechanical skill and good workmanship. It seems to be entitled to be classed as inventive. A new thing was produced, better for some purposes than had been produced before, although many skilled workmen had been practicing the making of those known before, and making as good as they could without reaching this. He hit upon this while no one else did, although it appears to be easy of accomplishment when seen. This success seems to be within the benefits of the patent law.

From the evidence it appears that the orator showed his invention to one Ray, and gave him a scoop embodying it, and afterwards another at his request, but not to sell. Without the orator's knowledge he gave them to others, who commenced making them for sale, so that they were in public use and on sale, but without his consent or allowance, more than two years prior to his application. It is not considered that this being in public use and on sale without the consent or allowance of the inventor invalidates the patent, under the acts of 1836 and 1839, by force of which it was granted, and by the construction of which its validity is to be determined. Campbell v. Mayor, etc., of New York, 9 FED. REP. 500. The case of Shaw v. Cooper, 7 Pet. 292, cited for the defendant upon this point, arose under the act of 1800, (2 St. at Large, 37,) in which it was provided that every patent which should be obtained pursuant to that act for any invention, art, or discovery which it should afterwards appear had been known or used previous to the application, should be utterly void, and is not an authority upon this question. In Egbert v. Lippmann, 104 U. S. 333, the language of the opinion of the majority of the court, as well as that of Mr. Justice MILLER, dissenting, seems to

favor the view that consent or allowance of the inventor is necessary to invalidate the patent under these acts, although this question was expressly left open.

Let there be a decree for the orator, with costs.

THE TITANIA. (Two Cases.)

(District Court, S. D. New York. December 29, 1883.)

1. SHIPPING-LEX LOCI.

On a shipment of goods in England, upon an English vessel, on an ordinary bill of lading, the liability of the vessel is to be determined according to the law of the place of shipment, as the law of the flag.

2. SAME-INSURANCE-BILLS OF LADING-EXCEPTION-DAMAGE THAT MAY BE INSURED AGAINST.

A clause in a bill of lading that the ship-owner shall "not be liable for any damage to goods capable of being covered by insurance," held, to refer only to insurance obtainable of the ordinary insurance companies, in the usual course of business, or on special application, and not to insurance which might possibly be obtained in special or peculiar insurance associations, and thus construed, was a valid exception.

3. SAME-STOWAGE-INJURY TO GOODS.

Where goods in one of the compartments of the steamer T. were injured by a spare propeller which was stowed and fastened in the same compartment, and on the T.'s sixth voyage broke loose during a severe gale, and, in being tossed about, broke through the sides of the ship, whereby water was taken aboard, held, that the damage thus caused was a damage by a "peril of the seas," and within the exceptions of the bill of lading, it being found that the propeller was properly stowed.

4. SAME-SEAWORTHINESS.

Proper stowage of articles which, on becoming loose, may imperil the safety of the ship, is one of the elements of seaworthiness. 5. SAME

AVOIDING DAMAGE-NEGLIGENCE.

Where the damage might have been avoided by the use of ordinary care and diligence on the part of the ship, the insurers are not liable; the negligence, and not the perils of the seas, is then considered the proximate cause of the loss. 6. SAME-CUSTOMS AND USAGE.

The seaworthiness of a vessel is to be determined with reference to the customs and usages of the port or country from which the vessel sails, the existing state of knowledge and experience, and the judgment of prudent and competent persons versed in such matters. If, judged by this standard, the ship is found in all respects to have been reasonably fit for the contemplated voyage, the warranty of seaworthiness is complied with, and no negligence is legally attributable to the ship, or her owners.

7. SAME-SHIP-OWNERS' LIABILITY.

Though ship-owners are liable for latent defects, this principle does not affect the seaworthiness of the vessel where, if all the facts were known at the time she sails, she would still be regarded by competent persons as reasonably fit for the voyage, according to the existing knowledge and usages.

8. SAME-PROPER STOWAGE.

Stowage, according to custom and usage, and the best judgment of experienced persons, is sufficient to protect the ship from the charge of negligence, as against insurers.

9. SAME-CASE STATED.

Upon the facts in this case, held, that the spare propeller was sufficiently stowed, according to such knowledge and judgment; that the vessel was sea