98
FEDEEtAW .REI'ORTElV.,
vol. 53.
.. be Wid. EVe:qdfithey werertal1d,;tbe Shares. thetorce,pt the deQree, woilild 'belong to the heirs, 'an.dfth.ere would be no. powet: in the administrators to: conttact to sell,tJhOOr;J!lhares, of stock:,· and 'W01ilct·be no right:iotiiMtioil' intb.e adtninistrators,aB' complainants, 1;@. eDfonce such acontl'$ct. .' . ' ,. , . , 'INnrdo we think, that>theproceediBga as to the Sh.a1rpe tract;may be taken as an application of the personal representativ.e.s ·of,T.. J. MegibtieI1to a comJof equity to require the miilOr heir$to part with their·;naked legal title ·in ,order to b1'i:tlg;,aboutareduction of. the money. Tb,e administrators, :who alone ,could, such: a parties[tJO the' petition in the Harrison chancery coUrt. riTne:petitionwas based on·tb,etheory thall the heirs ofT.. tJ, Megibben had a benefieieJ.interest;, as' heirs, .lJlLthe partnership 'real esta.te,'andtha.t the COllr.t, a :chnilcery court, had power to Qrder a.Bali!i intei'esMf«'shares 'of. stock in :the The anSW61.li'a(lmitB such to ,be caSe, and. the. dooree expressly finds the interestj andconftrms, ,ifJhe .exchange for shares of stock in. the new OODlpaD:Y as a beneficial investment. .It is difficult to soohowsucha pll'oooeding can.,be made to"ser'Vethe purpose of an action to. compel the transfer of the nakecl:legal title on the ground, that there was 1;1;1:' benefiellil"interest, espooially when, as an attempt to sell the benencmtlmterestof infants.imreal estate, the proceeding is a nullity. With thErdefects:in the 'title' to the two distillery-tracts, we cannot force upon an unwillingpurchasel'; The decree of the with instructions to dismiss the bill. court ·bl\low· must be
.;llothe·YegibbeJ1,Excelsior DistilleJ.lYlt1'Qct, must be held.
B.LOUNT .v. SOOIET.li1 . .
P ASTEURet al. No.57.
lJU
CHAMBERLAND SYSTE)IE
(Circuit Court of Appeals. Sixth Circuit. November 1. 1892.) 1. PATENTS lNvENTION$l-Al'l'EAL TION-REVIEW."
lrROll: OJiliER FOR PRELIMINARY INJUNC-
On an appeal to the circuit court of appeals under section 7 of the act of .:March 3. from an ordergrallting an injunction pendente lite agaillsHhe " Infringement a patent, the only question for review Is whether the inj'unction was erroneously: or l improvidently gr'anteet in the legal discretion of the trialcourt;an,d the cltJ.tlstjpn's of.thevalidjty of the patent and infringemeot call be, considered ,onl;r incidentally, as bellfing upon this matter. . On an application tOT '8 p'relirilinary 'inJun'ction to' restrain infringement Of letters llatentNo. 886,1185; 'p;ranted:February 16. 1886, to Charles E. Chamber.If\nd for oertain new compounds,itllPpeated that had an undoubted title to the patent as assigllee.and licensee;, that it made lind sold the',articlef6r several years without any; lit. tempt by others ·to maKeO! sell the·samel thatth-e invention had been used . ·from the: date.of' the:.patent until 1892. only under license of tlle patentee; and that an injunction grat;lted in another circuit in a Buit between tha same parties. Held. 'that these circumst,ances created so strong a presumption of the validity of the patent as to authorize the issuance of a prelipliU8tllY injunction, in the '8.bsence of clear'proof of invalidity. Oll'V'4loIDITY OF PATENT· .
99 8. 8A.ME-ESTOPPEL-EQtJITflEB. " . In a suit 'by a corpol'Q.tio*, fof infringement' of a patent, it appeared that defendanthad act}vely in, ,Procuring, a to and sell" the patented article. and 10 p,romoting andorgaDlzlOg the corporatIOn to carry on the business thereunder. and that he had' 'held a illnancial interest in the , corporation. and had been ,an officer thelt8Pf. : Hfla t,hatdf thill relation to the paten,t did, not, entirel,Y, de,fendant, fro,m, its validity, it at least, gave rise to a strong ,equity in favor of compllUnant. '"' ' RESTRICTION OF PA.T:EN''1''-FILTERIN'G COMPotnm.' Letters patent No; 836.385. issued February 16, 1886. to Charles E. Chamberland, cover a tlltering compound made" a$ ,stated in the specifications, of "pipe clay, or suitable clay, and porcelain earth ground to a tine powder, or its equivalents, hereinafter named." The patentee subse9uently states that he does not limit filmself to the above·named snbstances. for the same result may be attained by using, for instance. silex, magnesia, or its equivalent, instead of porcelain earth. " Held, on appeal from an order granting a preliminary Injunction, that. unless the patent was to be strictly construed. it would seem. to cover the substitution of fine sand for the porcelain earth, and that there was apparently nothing in the state of the art, or the value of "the invention, to require such a strict construction.
Appeal from the Circuit Court of the United States for the Western Division of the Southern District of Ohio. . In Equity. Bill by the Societe Anonyme du Filtre Chamberland Systeme Pasteur and the Pasteur Chamberland Filter Company against Ambrose A. Bloun1l and Frank K. Way for infringement of a patent. An order granting a preliIninary injunction was entered in the circuit court, partly on the' authority of a like injunction granted in the seventh circuit in a suit between the same parties. See Pasteur-Chamberlahd Filter Company v. Funk, 52 Fed. Rep. 14:6. Defendant Blount appealed therefrom, under section 7 of the ju. diciary act of March 3, l!891. Subsequent to the appeal a motiOn to set aside the supersedeas was denied by the cireuit court. 51 Fed. Rep. 610. Order for preliminary injunction sustained, appeal dis. missed, and cause remanded, with direction to reinstate the injuno· tion, which had been improperlysupereeded. H. A. Toulmin, for appellant. Kerr & Curtis and Staley & Shepherd, (L. Hill, of counsel,) for apBefore JACKSON and TAFT, Circuit Judges. JACKSON, Circuit Judge. This is an appeal, under the seventh section of the act of, March 3, 1891, from an order of the circuit court granting a preliminary or provisional injunction against the appellant. On June 6, 1892, the appellees, as assignee. and licensee of letters patent 336,385, granted February 16, 1886, to Oharles E. Ohamberland for. certain new and useful improvements in filtering, compounds, instituted suit against the appellant and one Frank K. Way, as infringers of said patent. The bill, in the usual form, set forth that said Chamberland was the true, original, and first inventor of said filtering compound; that letters patent of the United States were dilly issued to him therefor; that by instrum.ents in writing, duly executed and recorded, said Chamberland bad thereafter assigned and conveyed to complainant the Societe Anonyme du Filtre Systeme Pasteur, a Frellch corporation, the entire right, title, and interest in, to, and under said letters patent; that said assignee had
FEDERAL REpqR'l'ER,
thereafter transferred to the complainant the· Pasteur·0hamberlatJd a' corporation 'cl'ootedand existing under the laws state of Ohio, the ',right to sell and use the said pat· ented, invention in the United States, subject to certain conditions alldprovisiolls named in the instrument conveying the right; that sa'id Uoonsee had spent large stun:s cl(money and used much effort in introducing said invention, andbrtpging it into pra,ctical and pub· lie ,<use; that it had been in the'mldisturbed possession and enjoy· ment of the valuable and exclusive privileges secured by said letters pa,'!ient, 'aM' of the. profits atisip.g 'therefrom, ,until the defendants the infringement thereof; that said liefendants, prior to theinfritigement complained of" were stockholders and officers in the the Pasteur-Chamberland Filter Company, Blounthaving beim its president and a member of,ita;boairdof directors, and defendant Way its sllperintendent. It is further alleged, in substance,that said Blount, prior to his connec· tiOJl ,with, saidPasteur.Chamberla,nd Filter Company, was a large stockholder in and an officer of acorpo;ration in Ohio known as the Filter Oompany, which owned and controlled the right to make and use filters under said. letters throl;lgllo\1ta lftrgeterritory of the States;, that said Western PAAteur FUter thronghthe efforts aJlqrepresentations of said' ,A!tn.brose A. mOlWt, ·liispo8.C;lli of ,its, rights, under said patent to, 'iib,e,; O(@plainant corpprati,on Filter COQ,pl\py,:w.d that said :ijlount a of the, con· the: latter for SUCh: transfer"e'W-; that said defendants,::after of stock and interest'in said PasteurOb.3.1llberlllnd Filter the, of said , the soutb,eIm liistrict of Ohio, inC9nnection with one OoJiEfliffu,Jm. ,using the, ]owwle«lgEl a,il.liexperien.ce of the trade, business methods, and ,by. -them while in the em· ploy of said Pasteur-Chamberland Filter Company, as its confidential all.d officers and employes, for tb,e purpose of fraudulently obtaming tlfg benefits of the effortS of complainants in introducing said invention to the public, and of the market established for the same, etc. The bill prayed 'for an injunction :and the ordinary account in such cases. The motion for preliminary injunction was heard upon bilI 'aildafllda-rlts a,nd· exhibits thereto, introduced on both sides, and' wa;s in thensual form, restraining defendants, and each of th'ein,' their agents and representatives, from the further or any· use of the'ftItering compound, or a like or similar compound, as set forth in said lettets patent No. 336,385, the same to continue in force until decree on final hearing or further order of the court. After the order awarding the preliminary injunction was passed, and the writ was' issued, the .defendant Blount filed his answer to the bill; but, without moving for a dissolution of the injunction, he thereafter prayed for' and obtained an appOOI' to this court from the order granting the -same. . The single question presented for our determination on said appeal whether the order of the lower court awarding the injunction was or improvident, uuder the factsa,nd circumstances of the
BLOUNT V. SOCIETE ANONYME DU FILTRE, ETC.
101
case, as disclosed by the motion papers on which its action was based. It is provided by section 4921, Rev. St., that"'l'he several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunctions, aroording to the course and prindples of courts of equity, to prevent the violation of any right secured by patent, on such terms as the court may deem reasonable."
The object and' purpose of a preliminary injunction is to preserve the existing state' of things until the rights of the parties can be fairly and fully investigated and determined upon strictly legal proofs, and according to the course and principles of courts of equity. 'rhe prerequisites to the allowance and issuance of such inj unction are that the party applying for the same mllst generally present a clear title, or one free from reasonable d!mbt, and set forth acts done or threatened by the defendant, wbich will seriously or irreparably injure his rights under such title, lIDless restrained. The legal discretion of the judge or court in acting upon applications for provisional injunctions is largely controlled by the consideration that the inj ury to the lllo"ing party, arising from a refusal of the writ, is certain and great, while the damage to the party complained of, by tlle issuance of the injunction, is slight or inconsiderable. In Great Western R.Co. v. Birmingham & O. J. Ry. Co., 2 Phil. Ch. 602, it was said by Lord Cottenham: "It ill certain that the court will in many cases interfere and preserve prop"' erty in statu quo during the pendency of a: suit in which the rights to it are to be decided, and that without expressing,and often without having the means of forming, any opinion as to such rights. It is true that the court will not so interfere if it thinks that there is no real question between the parties; but, seeing that there is a substantial question to be decided,it will'preserve the 'property until such question can be regularly disposed of. In order to support an injUllction for,such purpose, it is not necessary for the C011i·t to decide upon the merits in favor of the plaintiff."
III Glascott v. Lang, 3 Mylne & C. 455, it is said by the' same learne'd judge that. ' "In lo6king through the pleadings and evidence for the purpose of an injunctioD.,lt is not necessary that the court should find a case which would entitle tlll' plaintiffs to relief at all events. It is qui te suflicient if the com't finds,. upon t):J.e pleadings and upon the evidence, a case which makes the tr:Unmction a proper subject of investigation in a court of equity."
In Shrewsbury v. Railway Co., 1 Sim. (N. S.) 410--426, after reviewing the above rulings of Lord Cottenham, the vice chancellor thus states the rule in reference to preliminary injunctions: "That there are two points on which the court must satisfy itself. First, it must satllify itself, not that the plaintiff has certainly a right, but that he has So fair question to raise as to the existence of such a right. The other is whether 'interim' interference, on a balance of convenience or inconvenience to the one party and to the otker, is or is not expedient."
In Georgia v. Braiseford, 2 Dall. 402, it is said: case of probable right, and a probable danger that the right would be defeated without the special interposition of the court." "In order to support a motion for an injunction, the bill should set forth a
The same general principles announced in these authorities govern and control the legal discretion of 'the judge or court in granting pre-
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FEDERA.L
REPORTER,vol. 53
liminaDj': iajlH1ctiotis in suits' fOf,t:ile dJifringementof patents. In .such suits the plaintifs: application' for, a· provisional or pendente lite in· junctionsbou,ld present a title to the patent the. probable va· lidity of suchpaUlnt, and, infringement ,thereof' 'by the defendant. [t il!! not question'edthat ,the complainltIlts, together" are vested with all the right, title, and interest in and to the letterspaterit iIi 'suit, which were posselilStld', by, the, patentee, Oharles E. <Jhamberland. Their title is fully not .ec)llMded; and if,in addition to such title, it fairly appears or; is to be presumed that the patent is valid, or that ap})ellant.was noUn a position to deny its validity, and that he has actually i:nfringedor threatened to infringe the sltme,' a prima facie case fora preliminary injunction is made out. This court, un· der the present appeal, is not called upon to make any final decision as to the ,Validity of the patent or the infringement thereof, nor is the consideration of those questions either necessary or proper, fur· ther than to ascertain whether the (lrder complained of was an im·· of a legal discretion on the part of the circuit court. We' have held at the present t,erm .that appeal under the seventh section of the act of J\{ap<lh, 1891, from an interlocutory , order granting an injunction, this court, even with the consent of parties, CQuldnot properly pronounce any final judgment or decree on the merits of the controversy in relilpect to the validity of the pat· ent involved, 'and its infringement, iJj!.a,smuch as these questions re·' mained in the lower court for final adjudication, intha exercise of itl!! original jui'isdiction.See opinion in Watch Co. v. Robbins, 52 Fed. Rep. 337. , " · '" , But while thfs court, ,on appeaJElllke the present, may not properly pasElupon the merits of the controversies involved in the litiga· tion, it may' incidentally consider the questions relating to the valid· ity and infringement of the patent, al!! weU as all other facts bearing upon the propriety of sustiaining or dissolving the injunction awarded Now, what are the fair and reasonable probabilities as to the validity of the Chamberland patent in question, disclosed in the case before us? There is the generaJ"prima facie" presumption of the novelty and utility of the invention, and that the patentee is the first and true inventor, which arises from the letters patent granted by the government. Railroad Co. v. Stimpson, 14 Pet. 448; Seymour v. Osborne, 11 Wall. 516.; Smith Y. Dental Co., 93 U. S. 486; and Lehnbeuter Holthaus, 105 U. S. 94. There is the further ·special presumption of its validity arising f.rom public acquiescence. It is well settled. that,. for the purpose of laying the foundation fot' a preliminary injunction, it may be ,shown that the patentee, or those have. m/lde, u\iled, and sold the patented succeeding to his article or device for years, during which no other person or persons have assumed to make or sell the same. Where all'persoIis, other than the owner of the patent, have for several years refrained from making, using, or sellmg the patented article, forthE;l reason that it is patented, when it would be for their interest to adopt it, such acquiescence raises a fair presumption of its validity, sufficient to warrant the issuaneeof·a preliminary injunction'to restrain its in·
BLOUNT V. SOCIETE ANONYME DU FILTRE. ETC.
103
fringement. So, too, if the patentee has long licensed the use of his invention, which no one has, for periods varying from two to eight years, assumed to· use or Bell without such license, there is such acquiescence as lays the foundation for a preliminary injunction. Sargent v. Seagrave, 2 Curt. 557; Doughty v. West, 2 Fish. Pat. Cas. 559; and Machine Co. v. Williams, Id. 138. It distinctly appears in the present case that the Chamberland patent has since its issuance, in February, 1886, down to 1892, only been used under license or right granted by the patentee, and that during said period there has been a general public acquiescence in its validity. The complainants, as the successors in title, have expended large sums in preparing for and· carrying on the manufacture of the patented in introducing the filtering compound into practical use. They have for many years had this exclusive use, without question on the part of the public, of a patented device of great utility and value. Under such circumstances there arises such presumption of the validity of the patent as to entitle them to a preliminary injunction to restrain· its infringement, unless the party sought to be restrained can clearly show its invalidity. This the appellant has attempted to do by reference to several prior patents for filters and filtering compounds. We do not deem it necessary to review those prior patents in detail. We have carefully examined them, and fail to find that they or either of them accomplish the purpose of the Chamberland invention, or cover the filtering compound which forms the subject of his patent. Again, it is shown that in a suit by complainants against appellant in the seventh circuit, for alleged infringement of this Chamberland patent, the circuit court has awarded a preliminary injunction based upon the validity of the patent, and its infringement. This interlocutory decree in another suit between the same parties, if not conclusive of the complainants' right to a provisional or pendente lite injunction in the present case, is strongly presumptive of the propriety of awarding such injunction, as it involved to a certain extent a judicial determination. that the patent was prima facie valid. An interlocutory decree granting an injunction in another case is a good foundation on which to base an application for a preliminary injunction in any other court. Potter v. Fuller, 2 Fish. Pat. Cas. 251. But, aside from the foregoing considerations, it is shown that appellant was personally active in procuring a license to use this Chamberland patent in the United States; that he was a promoter of, and stockholder in, the Western Pasteur Filter Company, which accepted a license from the complainant the Societe Anonyme du Filtre Chamberland Systeme. Pasteur, as owner of the patent, for the exclusive right to make, use, and sell filters embodying said invention throughout a large portion of the United States; that by and with his consent and active participation the rights so acquired by the Western Pasteur Filter Company were transferred and assigned, for a valuable consideration, to the complainant the PasteurChamberland Filter Company; that the appellant received a portion of such consideration; that he became a stockholder in and president of said Pasteur-Chamberland Filter Company; that while connected
104
,; .'
with. eaoh oNmid and personally Int,erested in said patent; he,by oireularsand otherwise, lauded and proclaimed the novelty. and impo1'1:wloo of! the invention covered thereby, and was greatly instrumental in bringing to the attention of thepubltc its v.alue and utility, aswelHus the'fact thatJsaidoompanies were tlie exclusive owners of the valuable right of making,using, and selling the same in the United States, It further, appears that the 'sale and transfer of the rights held by the Western Pasteur Filter, Company to the complainant the Pasteur-Chamberland Filter Company. were duly authorized and directed by the stockholders of the former, including the appellant. Having thus recognized the validity of the patent by acquiring and accepting rights thereunder, by promoting and organizing and holding interes1J$ in corporations which held licenses to make, use, and sell the patented article, and, by. actively participating in selling and transferring such rights, it may well be doubted whether appellant is not estopped from denying or disputing, as against the Pasteur-Chambel'laI1d Filter Company, the validity of the patent. It appears that, after parting with his stock in the last-named company, he; in connection with others, commenced and using the alleged infringing article in the spring and summer of 1892. His prior relation to the patent presented a strong equity in favor of the complainants, if it did not estop him from denying its validity under the authorities. See Faulks v. Kamp, 3 Fed. Rep. 898; Onderdonk v. Fanning, 4 Fed. Rep. 148--150; Purifier Co. v. Guilder, 9 Fed. Rep: 155; Telegraph Co. v. Himmel', 19 Fed. Rep. 322 ; Parker v. McKee, 24: Fed. Rep.' 808; Alabastine Co. v. Payne, 27 Fed. Rep. 559; Steam Gauge & Lantern Co. v. Ham Manuf'g Co., 28 Fed. Rep. 618; Burr v. Kimbark, Id. 574. But, aside from the question whether appellant is in a position to deny the validity of the patent, we, are of the opinion that the presumptions in favor oUts validity are not so clearly broken down as to warrant a dissolution of the injunction. On the question ofappellant'B infringement there is' conflicting evidence in the ex parte testimony of the experts, but the weight and preponderance of their statements supports the conclusion that the article manufactured by Dr. Blount does infringe the patented compound. If, as the appellant's counsel contends, the granular element of the patented compound' is confined to baked porcelain earth, ground or reduced to fine powder, the question of infringement would be doubtful. But we are not prepared to hold that this is the proper construction to be placed upon the specification and claim of the patent. The patenteedistinctl)' states in his specification that his compound is formed "substantially of pipe clay, or any other suitable clay, and porcelain earth, or its equivalents, hereinafter named." Then, after describing the method of treatment or preparation,he states that "I do not limit myself to the above-named substances, for the same, or very much the same, result may be attained by using, for instance, silex, magnesia, or its equivalent, instead of porcelain earth." Unless a very restricted construction is given to the claim of the patent it would seem that baked porcelain earth; ground or reduced to powderj is not the only granular element or ma-
BLUMENTHAL 'V. BURRELL.
105
t.erial covered by the patented compound. The state of the art, the value of the invention, and the language of the specification do not require such a limited and restricted construction. It may fairly be contended that the fine sand used as the granular element of the appellant's filtering compound is the equivalent of the baked porcelain earth, ground or reduced to powder. Nor is there such wide difference in the proportions of pipe or other suitable clay and the granular material employed as to constitute any substantial difference in the filtering compound made by each of the parties. The two filtering compounds are almost identical in appearance. To the naked eye there is no difference. The ex parte testimony and the fair construction of. the patent raised a fair presumption of infringement, for the purpose of awarding a preliminary injunction. The appellant has no establiShed business to be interrupted or injured, while the appellees are in a position to be seriously, if not irI'ep· arably, injured, if appellant is not restrained until the rights of the parties can be fully and finally adjudicated. On the case presented we are of the opinion that appellees have exhibited such probable right, and probable danger to that right, as entitled them to the interposition of the injunctive powers of the lower court for its protection pendente lite, and further, that, v.pon the consideration of the balance of inconvenience or injury to one party or the other, the legal discretion of the cireuit court in awarding the injunction was not improperly or improvidently exercised. Our conclusion upon the whole case, as now presented, is that the order appealed from is not erroneous, and that said appeal should be dismissed at appellant's cost. The cause so far as brought to this court by the appeal will be reo manded to the circuit court for the southern district of Ohio, western division, with the direction to reinstate its injunction, which appellant improperly superseded. BLUMENTHAL v. BURRELL et aI. (Circuit Court of Appeals, Second Circuit. Nos. 13 and 14. PATENTS FOR INVENTIONS-INFRINGEMENT-NEW PRODUCT-"CHYMOSIN."
December 6. 1892.)
Letters patent No. 344,433, issued June 29, 1886. to Moritz Blumenthal, cov· ers in claim 1 the new product "chymosin, 'lncombined with pepsin." This product is obtained by the patentee according to a "process" patent. No. 338,471,issued to him March 23. 1886, from the reunets of hogs and calves, by a process of maceration in a warm salt solution. a subsequent precipitation of impurities by acidulation. and causing a separation and floating of the chymosin by further acidulation and continued agitation in a warm supersaturated solution of salt. Reid that. assuming the product patent to be valid, it is not infringed by chymosin containing a considerable percentage of pepsin and other impurities, and produced according to the process of Chr. Hansen, of Copenhagen, which consists in soaking the rennets in acidulated water three several times, mixing the solutions together, filtering them. and then precipitating the chymosin by adding 15 per cent. of salt.
Appeal from the Cil'cuitColIJ't of the United States for the North· ern District of New York. Affirmed.