212
FEDERAL REPORTER.
NEW YORK GRAPE SUGAR CO.
'/J. AMERICAN GRAPE SUGAR CO.
et al.
SAME '11. BUFFALO GRAPE SUGAR CO.
(Oircuit Court, N.
n. New
York. June 8, 1888.)
PATENTS FOR INVENTIONS-PRIOR VSE-REHEARING-SUPPRESSION OF TESTIMONy-CREDIT OF WITNESSES.
N, the owner of letters patent No. 65,664, of June 11, 1867, to Joshua J. Gilbert, for "manufacture of starch." sued G. .for infringement. Pending suit G. procured strong affidavits from Gilbert's employes that the process covered by the patent had been used in his factory for more than two years before his application on March 11, 1867. These affidavits being submitted to N., he became alarmed, and agreed, in consideration of their surrenaer to him, to secretly abandon the suit, which was done. He also retained the attorney who procured the affidavits. A., whom he had previously sued for infringement of the same patent, and had obtained a decree against, upon discovery of these transactions, moved for a rehearing on the ground of newly-discovered evidence as to .public for more than two years. and suppression of testimony upon that point by N. The testimonl offered in support of the motion was all that of Gilbert's employes. Some 0 it was unimportant, and not new; and the most material part was that of Gilbert's foreman, who, at various times during the several suits, had made five affidavits as to such public use, two being entirely antagonistic to the other three, and the contradiction being unexplained. In addition, other affidivits excited serious distrust of their accuracy. Held, that although the conduct of N. was reprehensible, the rehearing should be denied; the testimony offered being untrustworthy
In Equity. On petition for rehearing. John R. Bennett and Sherman S. Rogers, for the petition. Edward N. Dickerson. contra. SHIPMAN, J. These are petitions by the defendants for a rehearing oftha Il.bove-entitledcauses upon the ground of newly-discovered evidence, orevidence the knowledge of which had been withheld by the act of the plaintiff, upon the question of the public use of the invention covered by letters patent No. 65,664, 1 by J. J. Gilbert, the inventor and patentee, for more than two years before the date of his application for the patent, which was about March,21867. The opinions in the cases are contained in 18 Fed. Rep. 638,20 Fed. Rep. 505, and 24 Fed. Rep. 604. 8 The bills in these cases were filed October 14, 1881. The defendants' testimony was closed November 14, 1882. The plaintiff's rebutting testimony was closed ApriJ 3, 1883. In June, 1883, a petition was bronght by the defendants for leave to introduce additional and newly-discovered evidence in support of two of their defense". A part of the new evidence was the testimony of John A; Owens, Daniel Murphy, Thomas CavaIlagh, and John L. Palmer, tha,t the process had been used in the J. J. Gilbert factory for several years before the application, and before 1835. These four per 90ns are it part of the witnesses whom the desire should testify upon the rehearing. This petition was heard by Judge W AI,LACE and was denied. Shortly after, the case wall heard by me upon final hear-
'Issued June 11,1867. 'March 11. 'See, also, 10 Fed. Rep. 835.
NEW YORK GRAPE SUGAR CO. V. AMERICAN GRAPE SUGAR CO.
213
ing, was decided on November 20, 1883, and an accounting was ordered from and after October 13, 1881. Subsequently a motion was made by the plaintiffs to amend the interlocutory decree, so that an accounting should be directed as to profits which were received, and damages which were inflicted by the infringers before October 13, 1881, which motion was denied on July 23,1885. When the motion was argued, the defendants had been orally informed of the abandonment of the suit of the plaintiff against the Duryeas, which will hereafter be spoken of, and the reasons for said abandonment or settlement. and endeavored to show, from this information, that there was evidence in existence which would justify or call for a rehearing; but as they had no affidavits from persons who had personal knowledge on the subject, their efforts to make their information effective were of no avail. Wright Duryea and John Duryea, two of the Messrs. Duryea, the principal stockholders in the Glen Cove Manufacturing Company, of Glen Cove, Long Island, were witnesses for the defendants in these two cases, and were very sharply criticised by the plaintiff's counsel. In December, 1883, a temporary injunction against the use by the Glen Cove Manufacturing Company of the process patent was obtained at the suit of the plaintiff. A suit against John Duryea and Wright Duryea, for conspiracy, was commenced by the plaintiff iIi one of the courts of the state of New York, and a. prosecution against John Duryea, for perjury in these cases, was before a United States commissioner. Upon the hearing this complaint was dismissed by the commissioner. In the preparation that portion of their defense in the patent suit which related to th > public use by J. J. Gilbert before his application for a patent, the Duryeas employed Simon D. Phelps, Esq.· a lawyer of New York, who obtained the assistance of K. E. Morgan, Esq., a lawyer of Little Falls, and John A. Owens. Affidavits were given in May, 1884, by 12 of the former -employes of J. J. Gilbert, including an affidavit by Owens, for the purpose of showing that the patented process had been used by said Gilbert before 1865. These affidavits were very satisfactory to said Phelps and Morgan, who considered that the defense of public use was conclusively -established thereby, and were taken to New York city, and, said Morgan having brought about an interview between the president of the plaintiff company and Mr. Phelps, they were taken to the office of Messrs. Dickerson, counsel for the plaintiff, and were read in the hearing of Mr. Dickerson, Jr., and other representatives of the plaintIff, by Mr. Phelps, for the purpose of inducing the plaintiff to abandon its suit against the Glen Cove Company. Mr. Dickerson, Jr., advised the directors of the plaintiff company that the affidavits were not, in his opinion, an 'effectual defense. The directors voted not to discontinue. Shortly after, an interview was Dad between the executive committee of the directors and Messrs. Wright and Hiram Duryea, which resulted in an agreement for -the settlement and abandonment of the said suit, and in the subsequent delivery of said affidavits to the vice-president of the plaintiff, all which was not communicated to their counsel. A written agreement between the two companies, dated May 16, 1884, was executed, by which the
214
FEDERAl, REPORTER.
plaintiff Company and its officers from ail clairns fordamllges or by reason of.any past or ..Iuture -infringement of said .patent, and agreed to discontinue said suit, and, that it should have the right to Uile said process. .On May 22, 1884, the plaintiff made a written with said K. E. Morgan, by which, in consideration of his legal/l,nd other services to be rendered in its suits previously or thereafter commenced upon the Gilbert patents, it agreed to pay him 5 percent. upon all gross sums received from any person as damages or profits by reason of the infringements of said patents, except from the present defendants and the St. Joseph Refinery. Said Morgan agreed to aid and assist the plaintiff in and about said actions, but he was not to take part in, the trial thereof, or aid in their preparation, outside of Herkimer county, except as to evidence. connected with the Gilbert faetoryin New York state. He wal;lalso paid a retainer of$250. The gentlemen connected with the plaintiff place the agreement with the Duryeas upon the ground that they were to assist them, before the master in the present cases, with testimony and evidence respecting the value of the Gilbert process, and were also to use and develop the De Castro ahd Miller patented process for making starch, the patents for which the plaintiff had recently purchased for a large sum. The plaintiff has not yet or purchased a machine, as it was intending to do, and the Duryeas have not built the factory in which the process was to be used, if it proved satisfactory after experiments at Glen Cove. At the interview between the executive committee and the Duryeas, these were the considerations which were pressed for a.n abandonment of the suits and a license to use the .Gilbert process, and the suppression of evidence was not probably alluded to in the discussion; but the fact, which cannot be concealed, WB$ that the officerE! of the plaintiff were intimidated by these affidavits, and feared their publicity, and wanted that the testimony should not be bruited about, and that the lips of the affiants should be closed, and were willing to abandon the hope of the very large sums which they had expected to g!iin from the Duryeas' use of the Gilbert process, and make with them a secret treaty, which they did not tell their counsel. The with Morgan was also for the purpose of keeping this testimony quiet, and the affiauts in their control. No stipulation for discontinuance of the patent suit was then asked for or exequted. It was first asked for and obtained on April 18, 1885, and was filed in court on November 12, 1886, and the suit was discontinued on the same day. Phelps told the defendants' counsel about April 10, 1885, of this settlement, so far as it had then taken place, but would not give an affidavit. Subsequently the defendants made efforts to outll-in information from Morgan, at Little FaUs, but were foiled, until hElceased his connection w:ith the plaintiff, and entered the employment ofthe about May, 1886, ",heJ} the business of affid,av;it making was resumedjand the affldavits of t4e ,variousaffiants, which were use4upon this hearing, were sworn to in :September lJ,nd October, 1886., The petition was brought in February, 1887, but by successive agreements of counsel. for various reasons, the hearing waa postponed till March, 1888.
NEW YORK GRAPE llUGAR CO. tl. AKERICAN GRAPFl SUGAR CO.
215
The affidavits,which:MOrgan's abandonment of his relations with the plaintiff permitted to be taken, and which relate'to the use of the Gilbert process at Little Falls, are of James Bennett, WelfordC. Casler, Thomas Cavanagh, Michael Davin, Peter Dunn, John Haley, Patrick Kiefe, James Mathews, James McGurty, Daniel Murphy, John O'Brien, John A. Owens, and John L. Palmer. The affidavits of Casler and Dunn are unimportant, and those of Haley and Mathews are not valuable. Palmer's' affidavit is somewhat vague as to dates. but its value, whatever it is, is impaired by his affidavit of April 27,1881, in which he says that Gilbert was experimenting until about a year and a half before the date of the patent, at which time his invention was perfected. The plaintiffs' case upon final hearing was that Gilbert experimented for a number of years in regard to the sweet process. At first he" alkalied " the unground corn with alkaline liquor, prepared from :;oda ash and lime, in a tank upon the third story of his mill, which stood near the tub in which the corn was soaked. He abandoned that method, and for a time '1alkalied" the entire contents of the settling vat upon the first story, before the supernatant water was drawn off. Then, having substituted for the square vats which he had previously used, round vats, with mechanical agitators to stir up the starchy mass after the alkalineliquor had been added, instead of stirring by hand, he applied the alkali only to pasty mass in the tub after the superfluous water had been drawn off. The construction ofthe round tubs and their agitators, in the summerof1865, mark, according to the plaintiffs' theory, the time of the invention of the process which is disclosed in the patent. Upon final hearing, the defendants 'having introduced only one witness, Spohn,whose testimony was of consequence in regard to previous publictise, the plaintiff proved its case by two workmen in the starch factory. the carpenter who made the tubs, and a man who gave the proper dimensions of the tubs to the caTpenter. The object of the affidavits is twofold-HrBt, to show that continuously, from and after the introduction of the sweet process into the mill, the alkaline liquor was placed in the settling vats,and that this process was carried on, without break, for a long period before 1865; and, 8tCQndly, that the substitution of the round tubs for the square tubs was without significance, and, if it was, it occurred in 1863 or 1864, instead of in 1865. Owens gives a very long and carefully prepared affidavit, in which he narrates the history of the sweet process, and of the mechanical changes in the factory, and says that what was always called the "sweet process" was practiced therein from 1857 or 1858 to 1866, and that by the process the caustic liquor, which was prepared in the tank on the upper floor, flowed through pipes into the settling vats on the first floor. Without positively declaring in this affidavit that the unground corn was never alkalied, he wishes to have it understood that the Usweet process," as now known, was continuously practiced, in its important and .leading features, in the ordinary and usual manufacture of starch, frotil and after 1858. The case upon this petition rests, in a great measure, upon Owens, who was the foreman or superintendent of J. J. Gilbertduriilg all the time which is in controversy; who is an io-
216
telligellt man; is the inventor of one of the patents which are the subject of the suits; who had the opportunity of knowing, and the capacity for remembering, the exact truth in regard to the, matter of Gilbert's manufacture; who is, in my opinion,the real author of the memory of most of the otheraffiants, not including O'Brien and Palmer; and who has himself given five affidavits on the subject, which are in evidence. It is said that he has also given one more. On May 3,1881, he gave an davit in which he said that at first a system was tried of soaking the entire grain in alkali, consisting oflime and soda ash, which was repeatedly tried at intervals until the year 1865, when it was finally given up. That several other methods were tried, among which was "alkaliing" the entire mass of starch as it came from the sieve, but this worked imperfectly; and he knew that the improvements in patent No. 65,664 were made by Gilbert, and completed in his factory about 18 months before the date thereof, and that none of these were in public use or on sale for more than two.years before the date of the patent. On October 21, 1881, he made another affidavit, in which he testified that in 1868 he went himself into the manufacture of starch, and used the Gilbert improvements without knowing that they were secured by letters patent; that Gilbert sued him for the infringement of No. 65,664; that he then examined the patent, and, "being satisfied that Gilbert was the first inventor of the.improvements, and that they were of great value, and indispensable in,the manufacture ofstarch from corn, discontinued their use and the manufacure of starch, and went into another business. His third affidavit was for use upon the hearing before Judge W ALI,ACE, in which he says that the caustic alkaline. liquor was not p pplied in Gilbert's factory, before grinding; that the statements contained in the depositions of the plaintiff's witnesses that alkali was used on the corn before grinding, are entirely erroneous; and that the proceSR, as described in the pat. ent, was used for several years in the factory befortl March 11, 1865. In no one of the last three affidavits does he. explain why he made the totally contradictory statements which I have quoted, or give any reason for the change in his recollections. He does not apparently attempt to excuse or mitigate the disgrace of being a willful perjurer. Nothing that this man can say upon the history of this process.will now have the slightest effect upon my opinion. He has discredit.ed himself so much by his The affiants Benfalsehood, that, in this case, he is a complete nett, Cavanagh, Davin, Kiefe, McGurty, Murphy, O'Brien, and Palmer, all reside in Little Falls, except O'Brien; and aU except O'Brien and Palmer were apparently common laborers, and persons of limited intelligence. Before the testimony for final hearing was taken,Mr. Selden, one of "endeavored to defendants' counsel, visited Little Falls, and, as he find the employes who were in the J. J. Gilbert starch factory, at Little Falls, N. Y., from 1860 to 1867. I found It number of those parties." He found Owens and Cavanaugh, who wero ,;ilent, and Palmer, who was communicative enough, and whom he subpamaed, but did not ask to testify. He had and used abundant opportunities to hear about and see
NEW YORK GRAPE SUGAR
co.
V. AMERICAN GRAPE SUGAR CO.
217
1tll the Little Falls workmen, but it is manifest that his attempts at extracting information which would be favorable to his clients were unsuccessful. They were either ignorant, and could not tell him anything, Qr willful, and would not tell him. I think that Owens was then favorably disposed to the J ebbs, and that the workmen got the idea that the defendants'success meant injury to the starch factory which was then in operation, and they were intentionally silent; and furthermore, that their memory on the subject was confused and blurred. These witnesses were induced, suhsequently, to remember and to talk. I distrust testimony thus obtained and given. It commands neither my confidence nor my respect. Turning now to the contents of the affidavit, they fail to convince me that the alkaline liquor was not originally applied to the unground corn, for, if it was not, why was the tank in which the liquor was prepared placed in the third story, which involved the necessity of hoisting the hogsheads of soda allh, and the casks of lime into the third story,;-a most unnecessary labor, if the .present representations of Owens and the subordinate workmen are to be credited. If the liquor was applied to the unground corn, and that process was subsequently abandoned, the affidavits of these witnesses show a lack of memory which is not strange when the length of time which has elapsed since 1865 is considered, but which seriously impairs the value of their affirmative testimony. Again, in regard to the time' when the round tubs were put in, the affiants show a confubed state of memory. Owens, in his Duryea affidavit, fixes the time of putting up these tubs by certain entries in the day-book of William Dorr, as in January and February, 1863. In his present affidavit he says between the last of 1863 and the spring of 1864, "I should say about April, 1864." McGurty, in his Duryea affidavit, says that they were in the factory when he went there, in March, 1863. In his present affidavit they were built in the spring or summer of 1864. Murphy thought, in his Duryea affidavit, that they were put in about 1863. Now he testifies that they were built by Eddy and Dorr. The time he does not fix, but he left the factory February 1, 1864. Cavanagh, in his Duryea affidavit, thinks that the date was in 1863. Now he says, after 1862 or 1863. O'Brien, in his Duryea affidavit, thought that the time was in 1863. In his present affidavit, he says that it was before he left, which was in 1866 or 1867,-when he cannot tell. Bennett, in his Duryea affidavit, thinks that the date was in 1863. He does not attempt to fix the time in his present affidavit. Davin testified in his deposition that they were built in 1865. In his affidavit he says that he made a mistake, and it was in 1864. I have looked at these affidadavits with more attention, because the case is not placed by the petitioners solely upon the ground of newly-discovered evidence. In view Qf the knowledge of Mr. Selden of the names and places of residence of the Gilbert workmen, and of the fact that the testimony which some of the important witnesses ,would give was known before the final hearing, and that application was made to take their testimony, and was denied, it can hardly be said that it was newly-discovered evidence. But the
218
petition is also placed upon the ground that there was, on the part of the plaintiff and the Messrs. Jebb, a fraudulent concealment and suppression of this testimony from the very beginning, which taints theca8e, and renders it important that ther!3 should be a new hearing. Upon. this account I have thOught it best to lOOK with some care into the acter of the te!'ltimony, and see whether its nature is such as to furnish any reliable information in regatd to the history of the vatented process;. for, although the suggestions of the defendants may be correct, if the testimony is of so poor a character as not to affect the mind favorablYt it is useless to grant a rehearing. It is true that I view with great dislike the final course of the plaintiff in regard to the Phelps-Morgan affidav.its, the abandonment of the Duryea suit, and the employment of Morgan. The cOllduct of the plaintiff in this respect has been such ag. to arouse a desire, that there should be a new and full hearing. If 1 had confidence in the trustworthiness of the testimony I should be inclined to have the question again tried. But whatever Owens may say is entirely untrustworthy. The other witnesses, not including O'Brien, Palmer, and Davin, who was a witness for the plaintiff, and who now seeks to correct his testimony, had abundant opportunity to tell Mr. Selden what they knew, if they knew anything, before the hearing; but nothing. favorable could he elicited from them until the key was applied by Owens Qr Morgan. Assuming that the plaintiff has acted all the way improperly, and with a just dissatisfaction at its conduct in the matter of the Duryea settlement, I have such a serious distrust of this testimonywhich, I fear, has been, to a considerable extent, injected into the memory of the witneSl"lls. though not by the defendants or any of their solicitors .or I cannot,grant the petitions. The petitions are denied.
MORSS t1. KNAPP
et ale
(Oirc'Uit Oourt, D. Oonnectiout. June 9, 1888.) PATEns FoR INvENTIONS-INFRINGEMENT-AOTION AT LAW APTER DEcREJIl1l'OB INJUNCTION AND ACCOUNTING.
After complainant in a Iluit for infringement has obtained a.decree for perpetual injunction and account of damages and profits, and the accounting has commenced and is pending, he cannot, without leave of court, proceed at law for infringements committed since the decree. .
In Equity.
On motion for restraining order. John K. Beach, for the motion · .Wm. A. Wright and Ohas. F. Perlcinst contra.
SHIPMAN, J. . This is a motion by the defendants in the above-entitled bill in equity to restrain the plaintiff therein from the further tion of a suit at law against the defendants. In November, 1886, the
, YORSS1I. KNAPP.
219
plaintiff brought in this court a bill in equity against the defendants, praying for an injunction against the infringement of letters patent No. 233,240, and for an account. An interlocutory decree in favor of the plaintiff, in which a perpetual injunction against said infringement, and an accounting of damages and profits was ordered, was filed April 26, 1888. The accounting has commenced, and is now pending. On May 29,1888, the plaintiff brought an action at law against the defendants to recover damages for the infringement of the same patent from April 26, 1888, to May 28, 1888, the damages being laid at $5,000, and attached the property of the defendants in said suit. The defendants now file a motion in the equity suit to restrain the plaintiff from the prosecution of said action at law. The action was brought upon the ground that it was not feasible for the plaintiff to have an accounting for infringements which have 'been committed since the decree, and if it was, that the defendant's property is inadequate to pay the judgment that will be rendered. The supreme 'court has said that, in taking the account, the master is not limited to the date of the decree, but in such cases" it is proper to extend the account down to the time of hearing before him, unless the infringement ceased prior to that date." It is further said that "the practice saves a multiplicity of suits, time, and expense." Rubber Co v. Goodyear, 9 Wall. 788. Tatham v. Lowber, 4 Blatchf. 86, is to the same effect, and I had supposed that such was the practice. The law upon the subject of injunctions, in pending bills in equity for an account, to restrain suits at law subsequently- brought for the same matter, is that, after the plaintiff has Qbtained a decree to account, and the proceedings upon said accounting are pending, the plaintiff is not permitted to proceed at law for the same matter, without leave of the court. Mocher v. 1 Ball & B. 318; Bell v. O'Reilly, 2 Schoales & L. 430; Wedderburn v. Wedderburn, 2 Beav. 208; Phelps v. Prothero, 7 De Gex, M. & G.722; Kerr, Inj.104; 2 Story, Eq. Jur. § 889. If the bill in equity is pending, the party can obtain an injunction by motion filed in that suit; otherwise, when the decree has been fully executed. Ford v. Compton, 1 Cox, 296; Wedderburn v. Wedderburn, BUpra; Harrison v. Gurney, 2 Jac. & W. 563; 3 Daniell, Ch. Pro 1720. In this case the plaintiff can have an accounting, if he desires, before the master, for the infringements sinr.e the date of the decree, and can have an attachment for contempt, if the infringements are obvious. And, without knowing more of the reaSODS which induced him to bring an action at law, I think that he should have confined himself to his remedy in equity; but the reasons may be adequate. The motion is granted, without prejudice to any special application which may be made by the plaintiff to bring an action at law upon a statement of the circumstances which he thinks justify such proceeding.
220
THE ELIZA
S.
POTTER.
THE HELENA E. RUSSELL. CHAMPLIN
et al. v.
THE HELENA E. RUSSELL. 1
{Oircuit Oourt, D. Oonnecticut. May 28, 1888.} COLLISION-BREACH OIl' RUI,ES-MANEUVER IN EXTREMIS.
The R. and the P. were sailing upon opposite courses, the R. on the starboard and the P. on the port tack. The former, having the right of way, continued on her course, supposing the P. would keep out of her way, and go astern, but the P., although she saw the red lig-ht of the R. two miles off, kept on her course until a collision was inevitable. If the R. had then continued her course, the P. would have struck her, head on, and nearlyamidships, causing a collision. The R. thereupon put her helm hard to starboard, and let her main-sheet run. to diminish the force of the collision, and receive a glancing blow, for the purpose of saving serious injury to herself. Held, that this was a change of course made zn e;r;trernia. and was not negligence.
In Admiralty. On appeal from district court. Samuel Park, for appellants. S. A. Robinson, for appellee.
31 Fed. Rep. 687.
LACOMBE, J. This is an appeal in admiralty from a decision of the district court, filed August 1, 1887. 31 Fed. Rep. 687. The collision, which was the subject of investigation before t.hat court, occurred near Hog Island light, at 4 o'clock A. M., March 11, 1887. The Helena E. Russell and the Eliza S. Potter were sailing upon opposite courses, closehauled, and .respectively upon the starboard and port tacks. The lights of both vessels were properly placed, and burning. There was a lookout at the bow of the Russell, but the Potter's lookout had been withdrawn from the ·bow 10 minutes before the collision to assist in reefing the mainsail. The catastrophe is thus set forth by the district judge: "The Potter saw the red light of the Russell when she was about two miles off. The Russell had the right of way, and continued ouher course, supposing the Potter would keep out of her way, and go astern; blltthe Potter kept on her course until it was too late, and a collision was inevitable. If the Russell had then continued her course, the Potter would have struck her, head on, and nearly amidships, and would have caused a disastrous collision. The master of the Russell, percei ving his vessel was about to be struck, put his helm hard to starboard, and let his main-sheet run, to diminish the force of the collision, and receive a glancing blow, for the purpose of saving serious· injury to his vessel, and in the exercise of good judgment." The appellant does not question the ruling of the court that a change of course made in extremis, and to reduce the amount of damage about to result from an apparently inevitable catastrophe, is not negligence. His contention is that such rule cannot be applied to the facts of this case;
lA.ffi.rming 81 Fed. Rep. 687.