SQ6
FEDERAL
him. There can be nO privity of' estate ottitle when no estate or title passes. If Campbell did acquire the right to the patent, tlie'piaintiff has no right to it and ,no case ;.if he did not, there is no privity between them through which the conclusiveness of the decree can reach him. The ability of the plaintiff to maintain a suit against James depends upon his having such a title toihe patent as will, under the statutes of the United States relating to patents, give the right to sue for an infringement. Gibson v. Cook, 2 Blatchf. 144; Gordon v. Anthony, 16 O. G. 1135. The plaintiff's bill sets up such a title, but not any infringement of the right. It shows a recovery by Campbell, but fails to show anything entitling the plaintiff to Campbell's recovery. The demurrer is sustained, the bill is adjudged and a decree ordered· dismissing the bill as to James, with costs.
CAMPBELL (Circuit Court, 8. 1. PATENT -
V.
JAMES and others.· September 14, l8BO.} RIGHT ACQumED
:no New York.
ASSIGNMENT OF' GAINS AND PROFITS
AFTER DECREE IN EQ.UITY.
In Equity. Motions for Rehearing. Marcus P. Norton and George H. Williams, for plaintiff. Sam'l B Clarke, Asst. U. S. Att'y, Edward D. Bettens, and Esek Cowen, for defendants. WHEELER, D. J. This cause has been further heard upon the motion of the defendant James for a rehearing in chief 'upon the question of prior knowledge and use at the Philadelphia post-office, and upon the exceptions to the master's report; upon the motion of the defendants Clexton and Caswell for a rehearing upon the question as to the passing of the title of Eddy to the patent by his assignment for the benefit of his creditors; upon the motion of the plaintiff for a rehearing .See 2 FED REP. 338.
CAMPBELL 'V. JAMES.
807
of Eddy's right to renpon the question as to the cover gains and profits' already a'ccrued by the same ment; and upon the motion of the plaihtiff for an increase of damages to be recovered. The motion for a rehearing in chief is based upon some inaccuracies in the statement of the age of a witness in the fbrmer opinion, and upon the supposition that, because some of the testimony, and of the reasons, leading. to the finding, are stated, the other eVIdence was overlooked, and no other reasons were considered. , This supposition.is.. notwell founded. There was no attempt to review all the evidence, or to state a'll the '. bearing .upontJ;lat question of fact, in the Ii'. ": ,;." " opmlOn. Nothing material, not before considered, has been suggested as ready to be offered in respect to the exceptions to the master's report, nor in respect to the' passing of Eddy's title to the patent by his assignment. It is. urged that the right tore.cover gains and profits would not pass without the right to the patent This is probably true at law, but perhaps 'hot:So in equity. The right to · recover them by the assignee, in the name of the assignor, has not been denied in any case 'cited in argumentorthat has been seen. In thi1> case, as it stands, the form oithe recov. ery in one name or another is Ubt at all in question. The' right to the gains and'profits; aB' between the other than James, themselves, whim recovered, only is in controversy. The right of the plaintiff to the share of Eddy has been acquired since the decree, as a part of a sum already recovered, and not as a'right of recovery acquired before recovery 'had. There appears'to be no obstacle in the way of acquiring such a right. No damages have been found in this case, and there are none s'uch to be increased. The statute authorizes an increase of damages, not an increase of gains andpronts, to be recovered. Rev. St. §§ 4919 and 4921. If damages existed to be increased, the circumstances of this case would not' warrant any increase. .There has been no wanton invasion of the rights of the owners of the patent by the defendant. The use of the invention in such manner as to
S08
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be accountable for the profits bas been rather desired than other,,:ise: This is shown by the evidence, as well as by the fact that no injunction has been asked for. The motions are denied.
TUCKER v. BURDITT and others. (Oz'rcuJe ClfU1'e, D. MlUBai!liu,utu. February 2, 1880.) 1. RoE-IsSUED PATENTS Nos. 2,355 AND 2,356, for an improved process In
bronzing or coloring iron, and for the iron thus colored, held, upon motion for an attachment, not infringed by the defendants in this case.-[En.
In Equity. Motion for an Attachment. O. M. Reed, for complainant. O. E. Mitchell, for defendants. LOWELL, C. J. The Inventions of the plaintiff, contained in the re-issued patents No. 2,355 and No. 2,356, for an improved process in bronzing or coloring iron, and for the iron thus colored, have been sustained by the courts; and in this case a preliminary injunction h.as been issued and served on the defendants. The process consists of cleaning a piece of castiron of the desired pattern ffOm the sand and scale which adhere to it when it comes from the mould, and then coating it with a very thin film of oil, and subjecting it to a high degree of beat, one or more times, whereby various colors may be produced upon the surface of the iron, and rendered permanent, which, before this invention, were not produced in cast-iron, or, if approximated, were not permanent. A film of varnish containing oil may be used instead of oil, and may infringe the patent; and so if the iron is first heated, and then varnished and heated again, the process may be infringed. The theory of the patentee and his experts is that the operation or effect of the process is not merely to produce and fix the well-known colors which heat causes iron to 'assume, with the modification produced by a varnish hardened by
