PEDDAL'BEPORTEB.
voL 52.
..
symmetry in the rates of duty, but the court cannot into sywmetry the various provisions of a statute which must. include many details, by creating exceptions' to a well-settled, and, ontbe whole, satisfactory, rule of interpretation of the statute relating to. the revenue from imports. . In accordance with this rule, the term "hemmed handkerchief" is a commercial term, and does not mean a handkerchief whilili has been cut from the piece, and has been in fact hemmed, but it means the article commercially known as a '.'hemmed handkerchief," which definition excludes the hemstitched arti(}le. Indeed, if the distinctions made in common speech are lookei at. it is probable that the word "hemmed" would generally be regardes as indicating a different article from the one known as "hemstitched." The term appropriatelydl*lcribes a class of articles in which, by tlte coJDmercial nomenclature, hemstitched handkerchiefs are not included, and resort must therefore be bad to other statutory provisions to ascertain the proper duty upon the excluded articles. We agree with the opinion of the circuit court, that the importation in suit should have been classified under section, 824. The judgment is affirmed. WALLACE, Circuit Judge, (dissenting.) I cannot agree with my Brother SHll'M'AN in this case. I think that the handkerchiefs in controversy, being hemmed as well as ornamented, are "especially enumerated or provided 10r" by paragraph 325. It is unreasonable to suppose that congress intended to impose a higher dut.yupon cotton handkerchiefs having a plain, cheap hem than upon those having an ornamented and more expensive hem. I think that lhe term "hemmed handkerchiefs" is descriptive, rather than denominative. It means the same thing as though it read "hahdkerchiefs hemmed/'or "handkerchiefs having a hem." The case 18' soIilewhat analogous toBJinm v.La'wrtmce, 12 How. 9. The importatibns :arir none the less hemmed'bandkerchiefs because they are also oma" rlieriWd ones. ' '. INDURATED FIBRE INDUSTRIES No.
Co. et al.tI.
GRACE
et ale
(Oirc1.tdt Oourt, D. Massachusetts. July 28, 1892.) 2,982.
i.' PiTBNTB ,
Ina suit against two or. more perBon8 for infringing a patent, a general ave1'" JDellt bf infrillgement by deJ'endants is a sufll.cient uJlegation of common Infringement, Without in terms averring a joint infringement.
11'0. IrnNTIoNs...:.TOrN'rINPRINGEM1IlNT-PLllADmG.
S. SAllI-O-PROJ'BRTOJ' IDa bill for infringement, the proff'rt by oomplainants of, the letters patent does not make the recitals in the specifications as to the prior state of the art a part of the bill, in any technical or proper sense, 80 that the prior state of the art can" oonsidered on delllurrer· .. S.ui:E-DEMURR!llR-JUDIOIAL NOTICE
18,1883, to the Underground Electr!o Cable Company, for an insulating under-
On demurrer to a bill for infringement of letters patent No. 978,869, iSBued March
oP
PRIOR ART.
,.
ground cable OODductorhOODBisting of a tu be. of compressed paper, the court cannot take judicial notice of t e prior state of the art.
Charle6 S. Pinkham, and Eugene W. Godfrey I for infringement of let--
the 'Builders' Insulating TUbe Company against James J. Grace,
"In'Equity.
Bill by the Indurated Fibre Industries Company and
INDURATED FIBRE INDUSTRIES CO. ". GRACE.
125
ters patent No. 273,869, issued March 13, 1883, to the Electric Cable Company, as assignee by mesne assignments of William _d Timothy G. McMahon, for certain improvements in underground _bles. Heard on demurrer to the bill. Demurrer overruled. The specifications thus describe the invention: "Our invention relates to insulated conductors for conveying electrical eurrents for any of the purposes for which such currents are ordinarily used, and more especially to insulated underground conductors, although the improvements are of utility in, and applicable to, any relations or positions in which insulated conductors of electricity are desirable. In order to be commercially practicable, underground insulated conductors must be furnished with an insulating and protecting medium, economical in first cost, of high insulation, durable, and easy of application, to which ends -many materials, combinations, and forms have been devised, the most common of which have been compositions, solid or presumably solid at ordinary temperatures, but plastic at high temperatures, so that they could be applied to the conductors in a plastic condition. Some of these possessed the merit of economy in first cost, but were found to lack durability, being affected by thermal and hygrometric changes, and hence proved in the end to be lacking in actual economy. Others proved comparatively durable, and not subject to any great chauge under such intluences; but their prime cost, due to expensiveness of the materials used, especially where rubber and such materials entered into the composition, renderell them economically undesirable. In other instances the conductors are placed and kept separated from each other in tubes WhICh are filled with an insulating liqUid; but in such cases constant attention was reqUired in order that the tUbes be kept constantly full of the liquid under presBure, and leakage and evaporation prevented; hence such systems, 80 far as we know, have failed of general adoption. Moreover, where in compositions -bydrocarbons -such as paraffine, asphalt, etc.-were used, the insulation itself ,was highly combustible, and proved in some instances a source of great danger·. "In view of these tbings, the object of our invention is to produce an inlIullioted conductor wherein the insulating material shall be cheap in prime cost, durable, of hiKh insulativecapacity, easy of application, and, under ordinary circumstances, practically incombustible. To accomplish this we make ,the insulation of the conductors as an already.formed tube of paper completely encircling, protecting, and insulating the conductor. '''fhe insulating properties of paper were of course known before our invention. For instance, in som8 positions, for small spaces or for temporary uses, sheet paper has been wrapped around the conductor, and it has been suggested ,thl;1t paper pulP be coated upon the conductor; but, so far as we know,no means were suggested or shown of carrying this mere suggestion into ,practice. Paper has also been used incidentally, alternative with cloth or any other fabric. as a base upon which an asphalt composition was applied, and a tube then formed thereof, which served as a mandrel, upon which a cement pipe was cast. Beyond this. so far as we have been able to ascertain, no way has been devised or disclosed for utilizing the inSUlating properties of paper. "In our invention tubes are formed, preferably from the pulp, and, when they are to be used in any peculiar situations, with any desired exterior configuration best fitting them for use in the peculiar situatio11. They are 'ormed under great pressure, so as to render them hardin substance, firm, and homogeneous, and so formed they are pra.ctically incombustible, or ali least not liable to combustion from any influence of the current. "By these meaus we are enabled to utilize the high insulating propertiee of
/' I'
and ofhiglll·:msulative capacity. .What .W.IPc18Un ill'--- . currents, ooI)$istlnlt;or the oombl'fiatit>,Q1af and a, formed pipe of paper' only·.8QPstantiaIly"as set forth." . . .
llal1ell;:arlil ;to tnrnfsb 8nth8ufated fcond'uctlll',ebeap, durable; easyofmanfp.
.
,
<\loud .ting. out tPe"variousmattersishowing complainants' right to maintain an that there is a large and grow· ing claimed bYllaidpatenhwhich demand have amp1efa,cilitiesJor "Yettl'lllttbe8aid defendants, well knowing the premises and the rights .and priiVlleges, secured to y,ol1r oratoruts aforesaid, by the. said letterB patent, but contriving to injureyouforators, and to deprivatbem of the profits, ben. efits, and 'l&dvantages which might, and otherwise would.,have accrned to them from the, said letters patent,have ·been, in said district' dfMailsach usetts, and in. and elsewhere in these United States,and still are, un· lawfully,. wrongfully, and without permission of your orators, making, using, and vending:toothers to be l1sed, wiring systems fot electric installations in wblchpaper itubesare used for the protection and insuIation of the metallio cpnductors in ·the manner set forth and claimed in the aforesaid letters patent, and. in ;violation and infringement of the aforesaitl.righta and privileges of and req uested to your orators;, And; althoughaotilled of said des-istthetefl'om.;, they stiUcqntinue so to do; and your orators further show that the defendaltts havedetived and are still deriving from such construction, use, or aale large gaiDs,and profits, but to what.amount your orator. are ignorant, and cannot set fortb;and they pray that·the defendants may be required toi make a disclo8ureot allsuch gains and profits, and of the amount of such infringing apparatus which they have thus wrongfully mnde, used. or 801d. "And YOllr orators further pray that the said defendants may be compelled bj a deere.e of this court to 8cc\>unt for and pay over to your orators all such gains andprofiteas have.8cerued to or been received by them, or either al them. and alL suob gains and profits as your orators would have received but for the said uD1llwful acts of"theaaid defendants, and the damages by said ,. ,unlawful acta althe said defendants. . "And that the defendants, their clerks, attorneys,. agents. servants, and workmen,may,b,e,perpetuallyflnjoined. and restrained by the decree and injunction of;,tbls dourt from, directly or indirectly making, constructing, using, or vending to others to be usoo, any tubes formed of paper in combination with metallic oonductol'S contained therein, or any apparatus containing or embodyingthei,nvention described and patented in s8idJetters patent, and that they mlll1·be. decreed to pay the costs of this 'suit, and that they may be eojoinedaildrestrained, as aforesaid, during the pendenoy of tbissuit. and flbat.your oratorsroay haYa such other' and furtherrelief Wi the equity of the case may require, and to this court may seem meet, .. , .', " J·: .· i,··,\,. ' .. "". I.; "" ,'.. ,I
as follows: yop.rorators of said letters patent, S8Ulernay,be taken &s apart of this bill," After set· profeJ.1;of
Bentley Dyer
for Complainants, for defendfl.nts.
PuTNAM, Circuit Judge. '.. ,Onegrpuqd demurrer assignedi9 that the bill is defective becau.seit ,does not, in terms, allege a joint infring.. or at least set out, sufficient facts from which a joint infringem8Dt Cl&D. be gathered. Neither party has furnished me any decision of aIq
or
INDURATED FIl'lRE INDUSTRIES CO. ". GRA-CR.
127
C9urt, or .0bEW'Vation of any text writer,or referred forms, directly touching thispropositjon, unless Rob. Pat. § 1104, and $hi.ckle v. FO'UffI,dry 00., 22 Fed. Rep. 105. What is said.iu Robinson Patents rests entirely Ot;l Shickle v., .Foundry 00.; and tIlls. case. was an oral rtiJillg,made appareptly converljAtionally, without. any citation of authl>ritiesor caf well-considered reasons, and under: such circumstQllcestbat the court. may very likely have gathered from other parts of.the bill that, prima facie, the defendants were .in fact· several infringers. This. case is not sufficient to me that for' this matter there. is&ny special rule applicable .to bills for infringement of patents not found elsewhere. Tllecases and text-books are full of expressions that, inbUls oUhis nature, a general allegation of infringement if! sufficient, .thus :conforming to the common practice in other suita, and giving there . is, no special rule to be obse.rved by patentee! the in framiJlgplewings at laW-or in equity , In whether on torts or in contract, in bills in equity for waste or nuisance, and even in pleadiIlgs,of.eo high a character as, indictments for .murder and piracy, a general allegation cl1arging thOse Damed as defendants t or tl108e indicted, without the interpolation of tbe word "jointly" or its equivalent, is sufficient; and I can see no reason why iUs. not sufficient in bills like thig, in which the common act does not in law necessarily involve a conspiracy, but, as with !>rdinary torts, is proven by showing common wrongdoing, 'Without alleging or especially proving a COmmon intent.. The rules of the supreme court have stricken from bills in, equity the ,common confederacy clause; but for all ordinary bills.this was 10Dgsince as of no intrinsic value, and its omission can hardly require the interposition of new allegations. I knoworno more approved forms than those given in Curtis' "Equity where I find the frame of a bill in behalfof the owners of a patent against two defendants. This nowhere alleges that defendants jointlY infringed, nor does it contain an equivalent therefor. It is true that the form uses the common confederacy clause, in the following words, namely, "that the said defendants have confederated to '\1se the said .but the portion!! which properly constitute the stateDlent of the infringement cQnform literally to the bill in the case at bar. In the absence of any sufficient authority shown to me to the contrary, I shall apply the rule of pleading usual.everywhere else, and hold that the,bill sufficiently alleges 8. common infringement· .The principal ground of the defendants' demurrer is that the patent sued on appears on its face void for want of invention. This proposition was stated .at the oral argument to have reference to the state of artj but it was claimed that, independently of what is set out in the the COlut could take judicial knowledge thereof. Ref.el'ence was mad.e especially to those portions which state that, prior to the alleged invention sought to be covered by the patent, the insulating properties of paper Were known, and .also that, in some positions for Bntall spaces or for temporary uses, sheet paper had been wrapped about the. co.nductor, an<ithat it;bad been suggested that paper pulp be coated
on
upon the latter.. It may' be ·that other portions' 'Of 'the "BPecUioationl, more or were referred to on this point. ' It wasalSb. Claimed'· that; by making profert of the letters patent, these made 'a part of the bill. This is undoUbtedly correct. Nevertheleas,they were not thus made part oNtmore effectually, or for any than if set out in the bill at· length. A bill in equity does not necessarily make all the statements of fact contained in a contract or letters patent, or other instrument, proper parts of its pll;lad. ings, either by referring to them, or by annexing as an eXhibit, or by mak· ingprofert,orby reciting the tenor at length. With reference to letters patent, the claim. orclaimlJ become, of course, a fundamental portion of the allegations of the bill, so far as any of them-in case there '. are more than one--are relied on by the complainant. So everything in the specifications which mustberesorled to by the court in; construing the claims might be considered as part of the complainants' pleadings. But allportions'which merely set out the state of the 'art are, like recitals of facts inoontl'l1cts or other instruments, more or less conclusiV'e on the party who sefSthem up, 'yet in the eyes of the law eJtplainable, and not absoltitelypresnmed to have been so alleged as tobElcome'the subject of demurrer. 'Especially must this be sgwith specifications in patents, in which many statements are necessarily complex, relate to unfiuuiliar topics, and are not easily understood without extrinsic evidence. It is true that, so far as,thtl specifieations contain any representations which, if erroneous,maybepresumoo to have mislE'd the patent office to the detri· ment of the public, the patentee may be estopped·. On the other hand, I do notundersmnd the law has gone so far as to (orfeit a valuable patent tbepatentee has inaptly, or somewhat inaccurately, described the Iltateof the art, or that it conclusi'Vely prohibits him from. showing sucb inaptitudebr inaccuracy, if it also appears that the public has not been prejudiced thereby; and in the case at bar, where the state of the art has been lIet out, not so positively or categorically as the respondents seem to butsomewbat confusedly and with qualifications, I should be unwilling to MId on a demurrer that there was no possibility that the complainants might introducee.Vidence placing invention in a more favorable position than the assign for it. I am not aware that in this circuit the practice of demurring on the ground of the want of invention has obtained a footing. The miSchief of permitting it unnecessarily is well pointed out by the reference of Judge BLODGETT to the crop of demurrers which one of his decisions occasioned in the northern district of illinois. Manufacturing e.Q. v. kina, 36 Fed. Rep. 554.' I am not able .to ascertain that the practice of this character which exists in some of the districts has ever had the direct approval of the supreme court. The expressions in BrrYWn v. Piper, 91 U.iS. 37, frequently referred to, do not seem to go to thatextentj fiS in tliatcase there were a bill, answer and proofs. so that the complainant hadhatl f\lII opportunity, and all possible facts were before the court. On such a record the court might with safety say that there was nothing on the face of the patent itself which co\lId require its attention. In New
a
INDURATED FIBRE INDUSTRIES CO. '!1. GRACE.
129
York Belting Co. v. Nw Jersey Rubber Co., 137 U. S. 445, 11 Sup. Ct. Rep. 193, where the subject-matter was that of a design, the court overruled the demurrer on the merits, without either expressly condemning or approving the practice on this point. It is true, nevertheless, that in several districts this practice is sustained; and it is also approved by Rob. Pat. § 1110. and by Mr. Gould's notes to Story, Eq. PI. (10th Ed.) § 452. In BleBBing v. Steam Copper Works, 34 Fed. Rep. 753, Judge SHIPMAN uses the following language: "To decide. in advance of an opportunity to give evidence, that no evidence can possibly be given upon the question of invention which would permit the case to be submitted to the jury, seems to me to be ill-advised, except in an unusual case." This would seem especially so if the questions. not only of value and usefulness, but of novelty, are to be in any degree determined by what transpires subsequent to the issue of the patent, as was suggested in Magowan v. Belting Co., 141 U. S. 332-343, 12 Sup. Ct. Rep. 71, and The Barbed Wire Patent, (Washburn &- M. Manufg Co. v. Beat 'Em All Barbed Wire Co.,) 143 U. S. 275. 12 Sup. Ct. Rep. 443; even with such qualifications as appear in McClain v. Ortmayer, 141 U. S. 419, 12 Sup. Ct. Rep. 76, and Adams v. Stamping Co., 141 U. S. 539, 12 Sup. Ct. Rep. 66. However, without undertaking to settle whether in any case a demurrer can be allowed for want of invention appearing on the face of the patent, or whether, in this particular case, the state of the art would be, with the aid of the recitals in the specifications, a matter of judicial knowledge, I hold that the recitals relied on by the respondents are not made by the profert a part of the complainants' allegations, in any technical or proper sense, so that they can be considered on demurrer, and that, aside from such recitals, the court cannot take cognizance of the state of the art to which this particular patent relates. I am aware that in Fougerea v. Murbarger, 44 Fed. Rep. 292, and in Studebaker Bros. Manuj'g 00. v. Illinois Irrm & Bolt Co., 42 Fed. Rep. 52, in each of which cases the demurrer was sustained, the court read into the bill statements of facts found in the specifications; but I do not perceive that the propriety of doing so was considered, and the practice seems so clearly violative of fundamental principles of correct pleading that I am compelled to follow my own conclusions. I believe that of all the cases properly in point which have been cited in the briefs, or otherwise found, the demurrer was sustained in only three. Demurrer overruled, with costs for complainants to the time of filing respondents' answer; respondents to answer on or before rule day in 0ctober next. v.S2P.no.l--9
130 .ELltcTRIOAL !
FEDtRAL REP01\!r1<}'Rj vol.
52·
ACqtrM:ULATOR
tt at v.
BRUSH ELEdTRIC
Co.
, {C!'rcuit Court of Appeals, Second Cil'cuit, October 4, 1892.} , ,,' , ..,'.. .;, . 21 , 8 ,(It letters pat,en t "No.,8,87,299! issued. March 2, 1886, to Charles
1;
:
. \ ;.: . , ' ,1 . I: ,i" ' ", } , ,' ':, " " ,' ' i ; PATENTBlIOR. bVEN'lIQNS-.:NQVELT}'-CONSTRUC'l,'ION 011 CLAIMS";,,SECONDARY BAT.
TERll!ie;
11'. Brushifor an improvemllilt lnsec6ndar,Y in a plate or element having' aCtive' or ab80tpti"'!l material prItnarily and meahanlcally, applied thereto or invaJ.idated.ontp.e theory tj:llu,tpe term "secoJ;1d' , ary battery" was used therein in its older and looser sense, and 'included battenes .which were sometllD.6sprimary and someliimes secondary according to the method tlI.eir ,for thedistl¥ption ,secondary batteries is definItely marked and recoglhzed, and the Brush invention was professedly an improvementitlVer:the.Plante,battel'1; which was of thepurelyseoondary ciQ08s. 2. SAllI....DBPzNI'llIONS-"PRIMARY?'.AND "SECONDARY" BATTERIES· .,4, "lIeConlillJl.¥ batteI;Y"js one which has no power of developing a our·
'rent, Bnd, onlfoWlien rendered so bv sendIng a current through it from an ind,6i>end,ent sour,ce, of elect,rica,l energy, while a "primary battery" is one whioh is ot the wlIh)h it is made.
Tlie Owner oHhe Faure patent in this country havmg, as the result of oertain 'litigation, flIed s.disclaimer Umiting his invention to an eleotrQde coated with a of lead, Or insoluble .substauce,.placed the suppllttlng plate in the' of a paste, pamt, or ce;ment, pr!or to m the ,batteI7 nidi,' any furt,her: d,iso,u,ssion: of· the, question of pnority of lUventlonbe, ,tweeJ1.Faure and Brush is now useless. ft,
OJ'
...''
5.
Brush'spaWnt 937,999 was not anticipated by the patent of April 8, 1868, to G. Pe,'rCivaUor".llfll(l,',OAdary pa!;tery consisting, of cells filled with coarse qonduetingpovyder. alld divided bX a porous partition; or by the patent of. Aprit 28, 'Leclanche,' 'tor a "polarlzationapparatus or electrical accumulatoll, , oon9.l8tilig' of two plate, of or unoxidi.zable metal buried in .two of powdered, a Uquid which is a good conductor, suclIaspotashwater. '1'\". .'" , Ga,'Org,e
"..
. .
1.
SAME-PRIORITy-PRESUMPTIONS lIROM PATBNT NUMBERS.
The Brush patents and 83,,2911 were Issu,ed On the same date, (Maroh 2,,1886;) the betwljsn themw/'S the difference between "an absorptive sUbstance; or 8nabaorptivesubstance adapted to be transformed into active mateJ:'ial," on the One hand, ,alld or material adapted, to become active, " on the other. Held that, in view of t\1e admitted fact that all distinction between the two disappears the momen tt a wttery' SO construoted is charged or discharged. there WQ08 DO. au.bstantial dilfi!rence, and the two patents were for the "" ' i i ' . ' " '.
INVENTION'
These patents were issued on the same day to the same person, and the evidence showed that it would be impossible ever to ascertain which .. official signature that rendered it a valid deed. Held. that the mere fact that one had an earlier number was no proof of priority, for it merely signified that the patent office followed the alphabetical order of Brush's contemporaneous applications, and hence that one could not be held an anticipation of the other.
S. SAME-ELECTION BY PATENTEE.
Under these circnmstanoes the owner of both patents was entitled to elect UpOIl which one he would rest his monopoly; but having elected to rely upon No. 837,. 299, it became improper that No. 337,298 should be left in a condition in which it could be assigned and sold, and a final decree should be framed, which, in connection with its finding of the validity of No. 887,299, should declare 887,298 inoperative. and prohibit its assignment or sale.