340
FEDERAL REPORTER.
devices," will be patentable. lJIarsh v. Dodge J; Stevenson Manuj'g Co. 6 Fisher, 563. I cannot say, without any evidence on the subject, that, corrugrting the blank by means of a fluted counter·former and a gear, instead of by rollers, before the blank was projected npon the former, did not require such a change and alteration of the mechanism as to amount to a new device, or was nothing more than a mechanical change. This question involves questions of fact upon which no testimony was presented, and therefore the presumption from the grant of the patent remains nn,;.istlll'bl.:d. 'rhe first, third, and fourth claims are, therefore, held to be valid. 'rhe second claim is for the revolvin,6 connter-former, fluted or not flnted, presser, and 'Lllxilial'y supports. 'rhis is substantially the mocha ,ism of tbe finlt part of No. 178,869. Let there be a dec for lln injunction against the infringement of claims 5 and 6, of P'1t 'fit j·o. 17.s,8v9, and chl.ims 1,3, and 4, of No. 209,826, and for an accvuu-illg.
UNITED
NI ,KEL CO. v.
MELCHIOR.
(Circuit Com'f, N. D. Illinois.
July 10, 1883.)
Fon INvEN'rroNs-EI.EcTno-DEPoSITION OF NICKEL-PATEXTS Nos. 93,;,157 AXD 102,748 SUBL'AIXE Letters patent No. 93,157, ;va ltell to Isaac Adams, Jr., August 3,1869, fo'!' nn "improvemc'nt In the electrn-deplsitioll of nickel," and letter., patent No. 102,74S. granted to ls:mJ Adams, .Jr, May 10, 18 iO, for an" improvement in 1 he electro-deposition of n·ckcl." sustained; and thc first llnd fourth claims of patent No. and both of the cIa m" of patent No. 102,74S, heed infoinged by the solulions u:;ud by defenda.1t, anll a deClee to that eiIect entered.
In Equity. CobuTit d': Tlurchcr, for complainants. West J; Bond, for defendants. BLODGETT, J. This is a bill for injllllction and accounting by reason of the alleged infringement of lEtters patent No. 93,157, gt'anted to Isaac Adams, Jr., Augnst 3, 1869, for an "improvement in the electro-deposition of niclwl," Rnd letters patent No. 102,748, granted to Isaac Adams, Jr., JIl1Y 10, 1870, for an "improvement iu the electro-deposition of nickel." These patents have been so frequently before tue United St tes courts in other circuits, and been so fully discussed and const.rued, and have been so uniformly sustained, in the face of exlJaustive research into the history of the art, and critical analysis of their terms and scope, that little, if anything, more can be said as to the novelty of the invention, or the construction to be given the patents. Ullited Nickel Co. v. Anthes, 1 Holmes, 155;
UNITED NICKEL CO. V. MELClILOR.
84:1.
Same v. Keith, rd. 328; Same v. Harris, 15 Blatchf. 319; Same v. llJanhattan Brass Co, 16 Blatchf. 68; Same v. Pendleton, 15 FED. REP. 739. The defendant is charged in this case with the infringement of the first and fourth claims of the patent of which are as fo110\Y8: "(1) '.rhe electro-deposition of nickel by means of a solution of the douhle sulphate of nickel allll ammonia, or a solution of the double chl(ll;Lle of nickel anll nrnmonium, prepared anti used in such a mllnner as to lJe free from the presence of potash, soda, alumina, lime, or nitric aciLl, or fl:om any acid or alkaline reaction. (4) The electroplating of metals with II coating of compact, coherent, tenacious, flexible uiekel, of sutJicit'nt thickuess to protect the metal upon which the deposit is macte from the action of corrosive agents with which the article ma.r be brought in contact."
The 1870 relates to the anodes employed in niclwl.plating, and consists in a made of preparing the nickel for the anodes by a combination of carLon or some other metalloid or metal acting i:l the same way to make the nickel more fusible; the claims being: (1) For a comlJinatioll With nickel of a metal or metalloid electro-negative to the nickel in the solution; (2) for a nickel anode of nickel and carbon combined, and cast in the reyuired form. Much testimony has been put into the record in this case' bearing upon the question of the novelty of these two patents. But a careful emmination of this proof satisfies me that all this testimony, which is worthy of attention, haH been considered by the courts 1,efore whom these patents have been heretofore adjudicated, and that no new light is shed. by the testimony upon the question of 'l'lle same ground seems to have been gone over in the former cases that is shown in this, and the devices held to be novel and patentable. The only point made in this case which does not seem to have been directly passed upon in the prior cases is as to the effect of tlle subsequent patents issued to Dr. Adams upon the patents now before the court; but it seems to me that the obvious and complete answer to this point is that Dr. Ailams could not by the disclaimer found in tue English issue of his patent of 1869, nor by the claIms of his later American pa tents, invalidate his older patents; so that the only open question, as it seems to me, in this case, is the question of infringement. Does the proof show that defendant infringes oath or either of these patents? There is DO doubt, from the proof, that when defendant commenced business 118 used the douLie sulphate of nickel and ammonia made pursuant to the directions of the Adams pa'ent of 1869. Reiman, by wbom the business was first slarted, and sold to defendant, states that he made and used an Adams solution and turned it over to t11e defendant. After a time t11e defendant undouhteJly used a solution which would be chemically described as an ammonia sulphate, when first prepared, but which becomes a double sulphate of nickel and ammonia by the action of the galvanic
34;)
FEDERAL REPORTER;
current upon it. Defendant afterwards undoubtedly experimented· with a solution made up by Prof. Wheeler,after the directions of Prof. Boettger, he does not seem to have used it very long, and I doubt; from his own testimony, if he ever did any successful plating with what may be called the Wheeler solution; for I do not think it was, as prepared by ·Prof. Wheeler, strictly a Boettger solution,that is, made entirely according to the directions of Prof. Boettger. But whether the Boettger directions were strictly followed in making the Wheeler solution or not, it is quite plain from the proof that this was a mere experiment, and that, in his practical work of nickel-plating, defendant used either the regularly prepared double sulphate of nickel and ammonia, or the ammonia sulphate, up to about the time proceedings were had to attach him for contempt for violation of the injunction in this case, and since then he has been using the Pendleton solution. The late decisions of Mr. Justice BLATCHFORD, in United Nickel Co. v. Pendleton, 15 FED. REP. 739, holding that the Pendleton solution, although an acid solution, is an: infringement of the Adams patent of 1869, not only disposes of this case; so far as the use of the Pendleton solution is concerned, but so construes the Adams patent, in regard to all attempted evasions of it by mere changes in the solutions, as to bring all the solutions used by this defendant within the field covered by this patent. What he says on this point seems to be so fully applicable to the arguments used in behalf of defendant in this case that I quote: . "Before Adams, no product posseasillg the properties described by him as those of his product was known. He intruuuceu a new process, that of claim 1, as well as a new prounct of manufactu:re, that of claim 4. In attempts at nickel-pLlting before acids had been useu which were known solvents of nickel, Adams used those acids to prepare his solutions. 'When he speaks of acid reaction in his specification, and in claim 1, he must be regarded as referring only to the acids he had spoken of as used to clean the articles to be coated, or as sol vents of nickel; namely, nitric, sulphuric, and hydrochloric acids. Those are the acids which he mentions as used to make salts of nickel, the being dissolveu in the acid. Hence the acid reaction spoken of by Adams incluues only the mineral acids.referred to by Adams, those being the acids, and the only acids, whiCh could fit into' the solutions referred to by Adams, or into any plating solutions then known. Adams did not invent the solutions of claim 1. He showed how' to prepare and use them snccessfully. The solution is the vehicle whereby the nickel is conveyed from the anode to the cathOlle, in suspension the nickel to be ileposited, and supplying the place of the deposited nickel by taking other nickel from the anoue. The real invention was in discovering the proper conditions for the use of such vehicle, not the particular chemical composition of the vehicle. Any proper vehicle used with those conditions woulu do the work. Any vehicle, in the nse of Which those conditions should not be observed; 'wonldnot do work. Thl) actual chemical composition of the solution, so long as it shoul(l be a good working solution, was and is unimportant. The onlv material point· ":as its freedom from the injurious constituents indicated by Adams. In this view, the defehd,\nt's solution is an equiv:llent, in the seDse Of-the p,Hent law, for thesolutiollS of claim 1., It accomplishes the same re-
UNITED NiCKEL CO.
v.
lIl:LCHIOn.
·313
suIt by the same electro-chemical mode of operation, by the S:lme process, with the absence of the same injurious elements.. If claim.1 of the Adams patent claimed the discovery of a new solution, as does claim 1 of the defendant's patent, the question would be a dilferent one. But the claim is a claim to a new method of using solutions, requiring specified conditions by the absence of specified injurious elements." The learned justice goes further in the consideration of the patent", and holds the fourth claim to be a valid claim for a new article of manufacture. He says: "As to claim 4, it is distinctly a claim to a product or article of manufacture, and patentable as a manufacture. It was a new prouuct, never known before Adams' invention. As already said, that claim was never construed in any case before referred to, where a decision was not made sustaining claim 1, notwithstanding anything' said in the Harris Case. 'rhe conclusion I have now reached is that claim 4 is a valid claim, irrespective of any employment of the invention covered by claim 1, and that that claim has been infringed. It is contended that claim 4 claims a resnJt, an idea, an abstract principle, and that its invalidity is shown by the decision in the case of O'Ueilly v. lJIorse, 15 How. 62. But a patent for a process or product is a thing from a patent for a principle, ·as explained by Mr. Justice BRADLEY in 'l'ilghm(ln y. Proctor,1tbi supra, in commenting on O'Reilly v. JIorse. A manufacture or product, if new, mity be claimed irrespective of the mode of making it. In Cohnv. United States Corset Co. 93 U. S. 366, a patent for a corset having certain features. and which did not describe any process of m:king it, was defeatcdbya prior description of the corset. In the present case the patent describes the product and the mode of making it, and claims it. The text of the specifications sets forth as one of the inventions deposits of nickel having certain characteristics, which are defined, and it states that they were never produced before." . This conclusion as to the scope of the fourth claim had been suggested in the earlier cases upon this patent, but never so fully and distinctly pronounced before. As to the patent of May, 1870, I have no doubt from the proof that defendant was using anodes prepared in accordance with the directions of this patent at the time this suit was commenced, and there is no proof that he has abandoned such use. The question as to the extent of the use of anodes will be more appropriate in the further stages of the case upon accounting. There will be a decree entered finding that the defendant infringes ,the first and fourth claims of the patent of 1869, and both claims of the patent of May 10, 1870. .
344:
ECLIPSE WlND:.uILL
CO. v. MAY and others. July 10, 1883.) Nos. 8,826, 8,443, AND
(Circuit Court, N. D. Illinois. 1. PATEXTS
Fon
PATENTS
He;ssucd patent No. 8,826, granted to the Eelipse \Vindmql Company, July 29, 1879, as assignee of original patent, granted to L. II. \Vheeler, D.'ptl'mLer 10, 1867, and rel"sued patent No. 8,44iJ, granted to P,l!mer C. Pcrkins, October 8, 1878, the original of which wa" issued Augnst 18, 1b6}), hel'Z. not to be infrmgecl by the" improved May windmill," manufactnred by the defendant. Held, further, that the" improvcd May windmill" does infringe the third and fourth claims of reissued palent No. 9,4'13, issned to the EclIpse Windmill Company, December 7, 18.0, as assignee of the original patent, 'Vill.am H. Wheeler, dated October 20, bU. 2. SAME-HEISSUED PATENT No. 8,443. Whether the Perkins patcut is valid, qUlIre.
In Equity. Hill If; Dixon, for complainant. G. L. Chapin and Coburn J: Thacher, for defendants. BLODGETT, J. This suit is brought to restrain an alleged ment of the following patents, and for an accounting: (1) Reissued patent .No. 8,826, granted to complainant July 29, 1879, as assignee of original patent to L. H. Wheeler, dated September 10, 1867. (2) Reif:lsued patent No. 9,4-\)3, issued to cumplainant, December 7,1880, as aHsignee of the original patent to Wiiliam H. Wheeler, dated tober 20, 1874. (3) Heissued patent No. 8,443, to Palmer C. Perkins, dated October 8, 1878, the original of which was issued August 18, 186!). No question is made as to complainant's title. It appears froLD the proof that pr:or to the twenty-third of November, IS80, complainant had Lrought suit against defendants for infringement of the two patents, reissue No. and migtnal pa'ent to W. H. Wheeler of October 20, 1874,-the application for the reissue of the latter being then pending; and on the twenty-third of November, 1880, a written agreement was made between the parties by wh:ch defendants admitted the validity of the two Wheeler patents, aud. agreed that they wO;lld not the validity of said patents or any thereof," and further agreed that they would "perl1lrlllentl.ll constructed dis;'ontinue and ('ea·se the manufacture and MIle of with a hin.?ed or pil/r,fed vallC, as emhodlcd in said patents, or in lIUY m'lImer infringin{l upon said patellts." This ag::eement takes out of
tllis case all controversy as to the validity of the first two patents set ont in complainant's bill, and only leaves open the question whether defeudams, by the mill they are now m:lking and selling, infr.nge tlJese two patents, and the of the validity and infringement of ibe Perkins patent. The object of the L. H. Wheeler patent was to regulate and control the action of wind-wheels for the purpose of rendering their action more uniform and elIective than theretofore,