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Cochrane v. Badische Anilin Soda Fabrik/Opinion of the Court

This is a suit in equity, brought in the circuit court of the United States for the Southern district of New York, by Badische Anilin & Soda Fabrik, a corporation organized under the laws of the grand duchy of Baden, in the empire of Germany, against the appellants, for the infringement of reissued letters patent No. 4,321, granted to Charles Graebe, of Frankfort on the Main, and Charles Liebermann, of Berlin, Prussia, April 4, 1871, for an 'improvement in dyes or coloring matter from anthracine.' The original patent, No. 95,465, was granted to the same persons, October 5, 1869, for an 'improved process of preparing alizarine.' It was reissued on two separate amended specifications, Division A and Division B. No. 4,321 is Division B.

The following is the text of the specifications of No. 4,321 and No. 95,465. Reading in it what is outside of brackets, and what is inside of brackets, omitting what is in italics, gives the specification of No. 4,321. Reading what is outside of brackets, including what is in italics, omitting what is inside of brackets, gives the specification of the original patent: 'Be it known, that we, Charles Graebe, of Frankfort on the Main, and Charles Liebermann, of Berlin, in the kingdom of Prussia, have invented a [new and useful improvement in the manufacture of alizarine;] process for preparing alizarine from anthracine; and we do hereby declare the following to be a full, clear, and exact description thereof, which will enable those skilled in the art to make and use the same. We first change the anthracine into anthrakinon (oxanthracine,) a substance known to [the] chemists by the investigations of Anderson. For this purpose we take one part, by weight, of anthracine, two and a half parts, by weight, of bichromate of [potash,] potassa, and ten or fifteen parts, by weight, of concentrated acetic acid, and we heat these substances together in a vessel, either of glass or clay, to about 100 deg. centigrade to 120 deg. centigrade, till nearly all of the bichromate of [potash] potassa is dissolved and the liquid has acquired a deep green color. We then recover the acetic acid not consumed in the reaction by distillation, and treat the residuum with water to remove the chromic acetate. From the insoluble mass we obtain the anthrakinon in a pure state by distilling the whole from a retort of glass or iron. In the place of the acetic acid, sulphuric acid, diluted with one or two parts of water, may be employed. Instead of the method just described, we also employ the following one: We heat the anthracine in a vessel of glass or of clay, with ten parts of concentrated acetic acid, to about 100 deg. centigrade, or a little higher, and we add nitric acid of about 1.3 specific gravity, in small portions, till the violent reaction ceases. After distillation of the acetic acid we purify the residuum, as before. We then convert the anthrakinon, prepared by one of the methods described, into bibromanthrakinon. For this purpose we take three parts of anthrakinon, five parts of bromine, and we heat these substances for ten or twelve hours, or until nearly the whole of the bromine has disappeared, to a temperature, by preference, of about 100 deg. centigrade, in a suitable close vessel, either of glass or enameled or glazed iron, which is capable of sustaining the pressure [which is] generated by the reaction. The apparatus is then allowed to cool. It is opened in order to permit the escape of [bromic] hydrobromic acid, which can be recovered by absorption either in water or in an alkaline solution. We purify the bibromanthrakinon remaining in the vessel, as a solid substance, by crystallization from benzole. Instead of the method above described for preparing bibromanthrakinon, we also employ the following: We convert first the anthracine into a bromine derivative, into the tetrabromanthracine, known to chemists by the investigations of Anderson. We take one part of this tetrabromanthracine, and we heat it in a retort of glass or clay with about five parts of nitric acid of about 1.3 specific gravity to 100 deg. centigrade, as long as vapors of bromine are evolved. We distill off the greater portion of the nitric acid, wash the residuum with water, and purify it by crystallization from benzole. We thus receive the bibromanthrakinon as before, in the form of a yellow, solid mass. We then convert the bibromanthrakinon into alizarine. For this purpose we take one part of bibromanthrakinon, two to three parts of caustic potash or soda, and so much water as is necessary to dissolve the alkali, and we heat the whole in an open vessel of glass, glazed or enameled iron, or silver, to about 180 deg. to 260 deg. centigrade for one hour, or [till] until the mass has acquired a deep blue color. We then dissolve it in water and filter the violet solution, from which we precipitate the alizarine by an inorganic or organic acid. We collect the yellow flocks of alizarine thus obtained on a filter and wash them with water. By these methods we receive the alizarine in a form in which it can be employed in the same manner as the different preparations from madder. In the place of bromine, chlorine [also] may also be employed, but not so conveniently, as the reactions above described are more difficult to accomplish with chlorine than with bromine. Having thus described the nature of our invention and the manner of performing and carrying out the same, we would have it understood that we do not confine ourselves to the exact details hereinbefore given.'

The claim of No. 4,321 is as follows: 'Artificial alizarine, produced from anthracine or its derivatives by either of the methods herein described, or by any other method which will produce a like result.' The claim of the original patent was in these words: 'The within-described process for the production of alizarine, by first preparing bibromanthrakinon or bichloranthrakinon, and then converting these substances into alizarine, substantially as above set forth.'

The bill of complaint alleges that No. 4,321 was issued 'for a distinct and separate part of the same invention, on a corrected specification,' on the surrender of No. 95,465; and No. 4,321 states, on its face, that, on such surrender, new letters were ordered to issue 'on two separate amended specifications.' But Division A, No. 4,320, is not in the record before us. The bill alleges the infringement to have been committed by making, selling, or using the invention or dyes containing it. The answer denies the manufacture of alizarine, but avers that the defendants have sold in the United States alizarine lawfully made in Germany, and imported as an article of commerce, which was not made by the process described in No. 4,321, or any proces substantially the same, but was made according to processes which were invented subsequently to the date of No. 95,465, and are the subject of different and independent letters patent. The answer also avers 'that alizarine is a natural product, having a well-known definite constitution; that it is not a composition of matter, within the meaning of the statute, but has been well known in the arts, from time immemorial, for the purpose of dyeing, and has generally been extracted from 'madder root,' and from other analogous products, by various processes suitable for that purpose; that, therefore, there can be no valid patent granted for alizarine; and that No. 4,321 is void.' The answer refers to 'Watts' Chemical Dictionary, published before 1869, under the title 'Alizarine,' to show that alizarine was well known long before the said patent;' and also sets up that the patent had expired because prior patents granted to the patentees in foreign countries, for the same invention, had expired. Proofs were taken, and, on final hearing, the circuit court decreed that No. 4,321 was valid, and had been infringed, and ordered a reference as to profits and damages, and a perpetual injunction against the making, using, or selling of the article designated in No. 4,321 'artificial alizarine,' or dyes containing the invention described in and secured by No. 4,321. Afterwards, there was a final decree against the defendants for $13,326.65 and costs, of which $12,871.86 was for profits made by the defendants, 'by the sale of artificial alizarine, in infringement' of No. 4,321. From this decree the defendants have appealed.

This reissued patent No. 4,321 had been adjudicated in the circuit courts in several cases. It was before the circuit court in Massachusetts, in February, 1878, and the decision of Judge SHEPLEY is in Badische Anilin & Soda Fabrik v. Hamilton Manuf'g Co. 3 Bann. & A. 235, and 13 O. G. 273. It was also before the circuit court for the Southern district of New York, in September, 1878, and the decision of Judge WHEELER is in Badische Anilin & Soda Fabrik v. Higgin, 15 Blatchf. C. C. 290, and 3 Bann. & A. 462, and 14 O. G. 414. The decision of Judge WHEELER in the present case, in April, 1879, is in 16 Blatchf. C. C. 155, and in 4 Bann. & A. 215. The patent was also before the circuit court in Massachusetts, in September, 1879, and the decision of Judge LOWELL is in Badische Anilin & Soda Fabrik v. Cummins, 4 Bann. & A. 489. In all of these cases the validity of No. 4,321 was sustained.

In the case before Judge SHEPLEY, it was held that No. 4,321 was a valid patent for a manufacture and composition of matter, an artificial dye-stuff, called artificial alizarine, being a new product, produced by a new process, not a chemically pure alizarine, but having combined with the alizarine in it, anthrapurpurine, isopurpurine and other bodies, not known to have existed before they were produced by Graebe and Liebermann, the presence of some of which bodies appeared to much enhance the value of the dye-stuff. It was decided that the defendants had used that article.

In the case against Higgin, it was held that the product of the process described in No. 4,321 contains isopurpurine, anthrapurpurine, monoxanthraquinone and other ingredients, which were not only not ingredients in pure alizarine or madder alizarine, but did not exist in any dye-stuff with chemically pure alizarine, C14 H8 O4, before that of Graebe and Liebermann, and are useful coloring agents, so that the product invented is a new composition of matter. It was decided that the defendants had used or sold dye-stuffs substantially the same, though claimed to be the product of a different process.

In the present case, it was insisted in the circuit court, by the defendants, that the patented product was the same thing as the natural dye-stuff, alizarine, found in the root of the madder plant, and chemically known by the formula C14 H8 O4, and not patentable. But it was decided that the article which Graebe and Liebermann had made synthetically from anthracine, though having the same chemical formula as madder alizarine, was essentially different, in capabilities and properties, from chemically pure alizarine, madder alizarine, or any coloring matter before known; that the article dealt in by the defendants was produced by the process of United States letters patent No. 154,536, granted July 28, 1874, to Heinrich Caro, Charles Graebe, and Charles Liebermann; that the use of sulphuric acid, in the process of the latter patent, performs the same office, in the same way, as the bromine in the process of No. 4,321; and that the products of the two processes are identical.

In the case before Judge LOWELL, he held that what Graebe and Liebermann sought to discover, and supposed they had discovered, was the alizarine which is the dye-stuff of madder; that what is called 'artificial alizarine' contains important dyeing substances not found in madder, namely, anthrapurpurine and isopurpurine (accordingly as these may be two substances or one and the same substance) and flavopurpurine, which substances produce valuable effects not produced by any extracts from madder; that, although the defendant insisted that those new purpurines were not found in the artificial alizarine made by the bromine process of No. 4,321, and were found only in artificial alizarine made by methods in vented since Graebe and Liebermann invented that process, and the evidence on that point was in much conflict, yet it was shown that pure alizarine, pure isopurpurine, and pure flayopurpurine were all contained in the patented article; that the artificial alizarine of No. 4,321 is different in some important respects from any article known before; that the new article of manufacture claimed in No. 4,321 was new in fact; and that the infringement was made out.

In Watt's Dictionary of Chemistry, vol. 1, p. 113, published in 1866, Alizarin is stated to be a red coloring matter obtained from madder, first prepared by Robiquet and Colin. This was in 1826. The correct formula of alizarine, C14 H 8 O4, was first arrived at by Strecker, in 1866. It means that there are 14 atoms of carbon, 8 atoms of hydrogen, and 4 atoms of oxygen in each molecule. At this stage, Graebe and Liebermann took up the subject and treated madder alizarine with the view of determining what was its mother substance. They tell the story themselves, in a paper in the record, entitled 'Artificial Alizarine,' which is a translation from the original, prepared in German by them, contained in the Official Report of the Vienna Exhibition of 1873, and also published separately in 1876. They heated madder alizarine with zinc dust, and made the alizarine give up its four atoms of oxygen, and take up two atoms more of hydrogen. They thus obtained a hydro-carbon, identical with that found in coal-tar, called anthracine and having the formula C14 H10. They then conceived the idea of converting anthracine into alizarine. Anthracine was difficult to obtain, and the experiment was conducted on a small scale. But it resulted in the process, described in No. 4,321, of converting anthracine into anthrachinon, the formula of which was C14 H8 O2, and then heating the anthrachinon with bromine and obtaining bibromanthrachinon, and heating that with caustic potash or soda, and obtaining alizarine. Graebe and Liebermann thus solved the problem of the synthesis of alizarine. It was a matter of great scientific interest, and gave thus solved the problem of the that the first method, described in No. 4,321, for preparing the bibromanthrakinon was so laborious that they devised the other method described, of first converting anthracine into tetrabromanthracine, and then treating that with nitric acid to obtain bibromanthrakinon. 'This method,' they state, 'made it possible to obtain the alizarine more readily, and aroused hopes of its technical execution,' although it involved two more reactions than the first method.

In regard to the alizarine thus obtained, the same paper says: 'The artificial alizarine, besides having the same composition, had also the same properties as vegetable alizarine. In hydrated alkalies it is soluble, with a blue violet to purple color. The solutions of the alkali salts give, with lime, baryta, lead, iron, alumina, and tin salts, lakes corresponding to the madder lakes. Cloth printed with mordants dyes exactly alike with both coloring matters. From these salt-like compounds yellow floculent alizarine is set free by the addition of a mineral acid. The artificial coloring matter shows the same solubilities, and the solutions of the alkaline salts the same absorption spectra, which are known of the natural coloring matter. The free coloring matter sublimes in beautiful yellow to red needles, which cluster together like feathers. On oxidizing with nitric acid, phthalic acid and oxalic acid are formed. Heated with zinc dust, the artificial alizarine is again converted into anthracine.' The paper then proceeds: 'The above methods, which now, from a technical point of view, have only a historic interest, * and are, therefore, described without further detail, make up the subject of the patents taken out in England on the eighteenth of December, 1868, and then also in France, Prussia, most German states, Austria, Russia and America.'

The provisional specification deposited in the English patent-office, December 18, 1868, which was the date of the patent, gives a short description of the process and says: 'The alizarine prepared in this artificial way is perfectly pure, and can be employed in all the applications for which the different preparations of madder are used.' The full specification, filed June 17, 1869, is substantially identical with the specification of No. 95,465, and claims 'the artificial production of alizarine, by first preparing bibromanthrakinon or bichloranthrakinon, and then converting these substances into alizarine, as herein described.'

In further pursuing the history of the matter the same paper proceeds: 'The discoverers of the synthesis of alizarine soon found it necessary to enter into connection with some large dye factory. This was necessary in order that the raw material could be more easily obtained, and that the experiments could be made on a large scale and further developed. This could be done best with an establishment already in existence, where the doubtful question, whether this might be the basis of an industry, with hopes of success, could be solved. One of the chief difficulties experienced was the fact that the raw material was not only known in commerce, but also in the tar industry, and it was difficult to say whether it could ever be obtained in sufficient quantity. It was also doubtful whether the artificial alizarine could compete with the natural. Furthermore, there was much difficulty in transferring the above methods to a large scale. Graebe and Liebermann, therefore, entered into connection with the Baden Anilin & Soda Works, in Ludwigshafen, on the Rhine, the largest works of the kind in Germany, even on the Continent. [Originally, the experiments were limited to the purification of the anthracine and the manufacture of anthrachinon by the second mentioned bromine method, because this, notwithstanding its difficulties, showed some hopes of success.]' The passage above in brackets, by another translation, reads thus: 'The first trials principally embraced the purification of anthracine, the manufacture of anthrachinon, and the practical application of the second above-mentioned bromine method, as the same, notwithstanding the great difficulties, still gave assurance that it could be used practically.'

The paper then goes on: 'The latter' (meaning the second mentioned bromine method) 'was dropped as soon as the observation was made that the alizarine could be made more simply by means of anthrachnion sulpho-acids. Graebe and Liebermann had originally attempted to obtain anthrachinon sulpho-acids, by acting on anthrachinon with sulphuric acid. But they made the mistake of using too low heats. The temperatures they employed were not high enough, being not greater than those generally employed in the preparation of sulpho-acids. They had also been misled by the observation that anthrachinon could be sublimed unchanged from strongly-heated sulphuric acid. Therefore, they hoped little from sulpho-acids, and gave all their attention to improving the above methods. This mistake was avoided, and the modification of the synthesis of alizarine, which forms the basis of the industry of to-day, was discovered first by Heinrich Caro, who, as an officer at the Baden Anilin & Soda Works, made it his task to give, in combination with Graebe and Liebermann, life to the alizarine industry. Caro first noticed that anthrachinon, if heated with sulphuric acid to above 200 deg. would give sulpho-acids, which, on fusing with hydrate of potash, formed alizarine, the same as the bromine compound. Perkin noticed the same fact shortly after or at about the same time. This method was further developed by Caro and the original discoverers, and the English patent was taken on June 25, 1869, (Caro, Graebe and Liebermann, English patent, 1869, No. 1,936.) The patent of Perkin is dated June 26 (Perkin, English patent, 1869, No. 1,948.) Two methods were discovered, analogous to the two bromine methods. In the first and most important, the anthracine is oxydized to anthrachinon; this is converted into sulpho-acids by heating with sulphuric acid to 200 deg. to 260 deg.; and these, by the beautiful method of Kekule, Wurtz, and Dusart, by fusing with caustic potash or soda, are converted into alizarine. The first process is, therefore, identical with the first bromine method given above. In the second method the sulphuric acid acts on the anthrachinon in such a manner that, besides the anthrachinon monosulpho-acid, as principal product, a small amount of anthrachinon bisulpho-acid is also formed. This was subsequently determined analytically by Graebe and Liebermann. In the patent only the anthrachinon sulpho-acids are mentioned. From analogy, Perkin, in his paper, (Jour. Chem. Soc. (2) viii, 133, and Ann. Chem. Pharm. clviii. 335.) considered the bisulpho-acid only. It is also formed in larger quantity by the excess of acid he employs in his method, than it is by the method of Caro, Graebe, and Liebermann.'

The reactions in the second method are then given by formulas, in reference to anthrachinon monosulpho-acid and anthrachinon bisulpho-acid, and it is then said: 'On fusing the two sulpho-acids, they give alizarine, exactly like the monobrom and bibrom-anthrachinon. The anthrachinon bisulphoacid behaves, for the greater part, if not altogether, like the monosulpho-acid, and furnishes, instead of the corresponding bioxyanthrachinon,' (which is the alizarine of the process of No. 4,321,) 'essentially trioxyanthrachinon, the isopurpurine.' They then give the two sets of chemical equations, one producing alizarine and the other producing isopurpurine. Further on, in the same paper, they say: 'As far as has been observed, it seems that only the anthrachinon monsulpho-acid will produce alizarine, while the anthrachinon bisulpho-acid produces isopurpurine.'

In an article by Graebe in the New Handbook of Chemistry, published in 1871, he had said: 'Alizarine, lizaric acid, madder red, matiere colorante rouge, first prepared from madder by Robiquet and Colin, (1826;) artificially by Graebe and Liebermann. (1868,) from anthracine. Formula, C14 H8 O4, is derived from anthracine, and is to be considered as byoxyanthrachinon, C14 H6 (O2)" (OH)8.' In another publication by Graebe and Liebermann, in 1868, they had said: 'By treating alizarine with zinc dust, a hydro-carbon was produced, having the composition C14 H10, and coinciding exactly in its properties with anthracine. * *  * According to our experiments, alizarine, which is hence a derivative of anthracine, must have the formula C14 H8 O4.' In another publication by them, in 1869, they had said: 'We have produced from anthracine artificial alizarine. The properties of the product obtained by us, as well as the colors which we have produced with the same on mordanted cotton, exhibit perfectly the identity of the artificial alizarine with that obtained from madder root. *  *  * The methods which have led to the above results, and which we shall describe later, confirm the accuracy of the rational formula for alizarine, recently advanced by us.' Again, in a further publication in 1869, they had said: 'In our first notice we have already hinted that we have detected no difference between the natural and artificial alizarine, and that the very characteristic colors which both possess, when fixed on cotton mordanted with alumnia and iron, are perfectly identical. We believe, therefore, that it is with one and the same chemical individual we have to deal, and not with isomerous compounds, of which an extraordinarily great number is conceivable, and of which an example already exists, as we have hinted, in chrysophanic acid. In conclusion, we will call attention to the fact that our production of alizarine is the first example of the artificial formation of a coloring matter occuring in plants.'

The various papers thus referred to are, it is understood, put in evidence, by stipulation, with like effect as if the authors of them had testified to the facts stated in them.

In Prussia, a patent for five years was granted to Graebe and Liebermann, March 23, 1869, for their bromine process, on condition that it should be put into practical operation in 12 months within the kingdom. On the seventh of July, 1870, after several notices to them, the patent was declared extinct, because proof had not been produced of the carrying out of the patented methods. In view of what Graebe and Liebermann themselves state, in the publication before cited, it is manifest that the Prussian patent was revoked because the process described was not a practical one. There was nothing * practical until the sulpho-acid discoveries were made. In regard to this the paper first cited says: 'The patent of Caro, Graebe and Liebermann is dated one day earlier than that of Perkin. If any value at all is to be placed in the date, then Caro must certainly be mentioned first, since the application for a patent by the German chemist was delayed by an error. The signing took place at the patent agent's in Berlin. In reference to the above two English patents, Perkin and the Baden Anilin & Soda Works, proprietors of Caro and Graebe and Liebermann's patent made an agreement in consequence of which the patents became common property. By the publication of these patents, the sulpho-acid methods of preparing alizarine became known, and a series of works were erected in states which gave no, or insufficient, protection to the patentees.' This shows that the only methods practiced commercially were the sulpho-acid methods. The English patent for the bromine methods expired December 18, 1871, for the want of payment of a further fee.

The statement of Graebe and Liebermann is, that Caro discovered that by using anthrachinon with sulphuric acid, he could obtain sulpho-acids, and then, with hydrate of potash, procure alizarine, 'the same as the bromine compound,' that is, the alizarine of the process of No. 4,321; but that the bisulpho-acid process, developed by Perkin, produces not the alizarine of the process of No. 4,321, which is bioxyanthrachinon, but trioxyanthrachinon or isopurpurine. The article sold by the defendants is this last substance, made by the bisulpho-acid process, carried on abroad at the present day, and containing large proportions of coloring matters not shown to be found to any practically useful extent in the alizarine of the process of No. 4,321, such as isopurpurine or anthrapurpurine, one or both,-two articles if they are different, or one if they are the same, as seems to be shown. No. 4,321 furnishes no test by which to identify the product it covers, except that such product is to be the result of the process it describes. The process by which the defendant's article is made is not shown to be the same process as that described in No. 4,321. Graebe and Liebermann, as appears from their own statement, experimented with sulphuric acid and failed. It was not obvious that sulphuric acid would accomplish any result, nor was it obvious how to employ it. Their experiments with it led them to hope little from it, and to withdraw their attention from it and devote themselves to improving the bromine and chlorine methods. They state that Caro avoided their mistakes, and was the first to discover the modification which led to success, and that Perkin was an independent discoverer of it about the same time. It is, therefore, impossible to say that the sulphuric acid process was a known equivalent process at the time. It is easy now, after the event, for scientific men to say, with the knowledge of to-day, that the thing was obvious. But the crucial facts contradict the assumption. It does not satisfactorily appear that the process of No. 4,321 will produce the defendant's article to any useful extent, if at all. The process of No. 4,321 never was, and is not now, practically carried on anywhere. The article of No. 4,321 was called 'artificial alizarine,' and the article now in the market is called by the same name, but the identity, in the sense of the patent law, between them and between the processes for producing them, is not shown.

The English patent to Caro and Graebe and Liebermann having been granted June 25, 1869, and the full specification filed January 13, 1870, an application for a patent in the United States for producing artificial alizarine by the sulpho-acid processes was filed by them January 26, 1870. It was granted as No. 154,536, July 28, 1874. The full specification of the English patent and that of No. 154,536 are identical. The specifications state that the invention relates to improvements on the invention described in the English patent to Graebe and Liebermann, of December 18, 1868, and in No. 95,465, 'in which the preparation of artificial alizarine is based upon the action of caustic alkalies upon bibromanthrakinon or bichloranthrakinon.' They then proceed: 'We have now discovered that a similar result may be obtained by substituting sulphuric acid for bromine or chlorine in the above process. We thus obtain the sulpho-acids of anthrakinon, which, by being dissolved in and heated with an excess of caustic alkali, are converted into alizarine. This invention relates to improvements in the production of coloring matters, and more especially to improvements in the method of producing what is known as artificial alizarine, from anthracine, a method of producing which was described in' the English patent of December 18, 1868, and in No. 95,465, 'and consisted in the production of artificial alizarine by converting anthracine into either bibromanthrakinon or bichloranthrakinon, and then acting upon the same by means of an alkali, and precipitating the alizarine contained in the alkaline solution by means of an acid. In the complete specification of the aforesaid letters patent granted to Charles Liebermann and Charles Graebe two different series of processes are described for obtaining the brominated or chlorinated derivatives of anthrakinon. In the first of these processes the anthracine is submitted to the action of oxidizing agents, as is well understood, and the oxidized anthracine or anthrakinon is then treated with bromine or chlorine. In the second of these processes the anthracine is first treated with bromine or chlorine, and subsequently submitted to an oxidizing process, in order that the desired compounds, videlicet, bibromanthrakinon or bichloranthrakinon, may be obtained. In an analogous manner we now employ sulphuric acid as a substitute for the bromine or chlorine employed in the processes above referred to, and we thus obtain the sulphuric acid derivatives of anthrakinon, which we call the sulpho-acids of anthrakinon.' The specifications then go on to describe the two new processes. The first is, to alter the anthrakinon by heating it with sulphuric acid. The product is then put in solution and treated with carbonate of lime, and then with carbonate of potash or of soda, and potash or soda salts of the sulpho-acids of anthrakinon are produced. These are treated with caustic soda or potash, under heat, and the artificial alizarine is precipitated by an acid. In the second process anthracine is heated with sulphuric acid, the product is put in solution, and treated with peroxide of manganese, under heat. Caustic lime is then added in excess, till there is an alkaline reaction, the mixture is then filtered and carbonate of potash or soda is added to it, and the potash or soda salts of the sulpho-acids of anthrakinon are produced. These are treated with caustic potash or soda, under heat, the product is put is solution, and the artificial alizarine is precipitated by an acid. It is stated, in regard to this substance, made by either of these two processes, that it 'may be employed for the purposes of dyeing and printing, either in the same way as preparations of madder are now used, or otherwise.' In each of the two specifications there are tow claims, in these words: '(1) The manufacture of coloring matters by submitting anthrakinon to the action of sulphuric acid, so as to obtain soluble compounds, which we have called sulpho-acids of anthrakinon, treating the products of such operation with an alkali, and precipitating the coloring matters therefrom by means of an acid, as herein described. (2) The manufacture of coloring matters by submitting anthracine to the action of sulphuric acid, oxidizing the product thereby obtained, heating such oxidized product with an alkali, and subsequently precipitating the coloring matters therefrom by means of an acid, as herein described.'

After the granting of the English patent for the sulpho-acid process, on June 25, 1869, to Graebe and Liebermann, and their application for the United States patent on January 26, 1870, it became apparent that the sulpho-acid processes and products were to be commercially valuable. Then, during the interval of the four years and a half delay in the issuing of No. 154,536, No. 95,465 was surrendered and reissued in two parts April 4, 1871; one for the process and the other for the product, the claim in the latter, No. 4,321, being so worded as to cover 'artificial alizarine, produced from anthracine or its derivatives, by either of the methods herein described, or by any other method which will produce a like result.' Afterwards Graebe and Liebermann assigned the two reissued patents of April 4, 1871, to the plaintiff, on March 1, 1872.

It is very plain that the specification of the original patent, No. 95,465, states the invention to be a process for preparing alizarine, not as a new substance prepared for the first time, but as the substance already known as alizarine, to be prepared, however, by the new process, which process is to be the subject of the patent, and is the process of preparing the known product alizarine from anthracine. The specification states that the alizarine' is precipitated, that 'the yellow flocks of alizarine' are obtained, and that 'the alizarine' is in such a form that it can be employed in the same manner as the different preparations from madder; and the claim is for the 'process for the production of alizarine.' The provisional specification deposited in England, December 18, 1868, states that 'yellow flocks of alizarine are precipitated,' and that 'the alizarine prepared in this artificial way is perfectly pure;' and the full specification, filed in England, June 17, 1869, claims 'the artificial production of alizarine.' No other conclusion can be reached than that Graebe and Liebermann, in the specification of No. 95,465, intended by 'alizarine' the chemical substance known by the formula C14 H8 O4, and thought that was what their process produced. There is no suggestion of anthrapurpurine or isopurpurine, or of any process for producing them. Their published statements show that it was the synthesis of the alizarine of madder which they were making, the specification of No. 95,465 shows that and nothing else,-and it is not contended that the alizarine of madder contains anthrapurpurine or isopurpurine. It is very clear from the testimony, that it is to anthrapurpurine or isopurpurine that the artificial alizarine sold by the defendants owes its efficiency as a dye-stuff and its practical success in the market, and that such product is produced by the bisulpho-acid process of Perkin; and it is not satisfactorily shown that the monosulpho-acid process of Caro or the bromine process of No. 4,321 will either of them practically produce that product.

Inasmuch as the defendant's article is produced from anthracine or its derivatives by some method, and is a dye-stuff called artificial alizarine, it is contended that the sale of it infringes No. 4,321. The articles in market, called artificial alizarine, at the present day, are substances all of which are made from anthracine, but they vary all the way from nearly pure alizarine, made by the monosulpho-acid process, through the products of the bisulpho-acid process, which contain combinations of alizarine and anthrapurpurine, up to an article of pure purpurine, free from alizarine. All of these are used as dye-stuffs, according to the shade of color and other qualities desired. The specific article put in evidence in this case as an infringement contains about 60 per cent. of anthrapurpurine. It is claimed by the plaintiff to be the artificial alizarine described in No. 4,321, and to be physically, chemically, and in coloring properties similar to that. But what that is is not defined in No. 4,321, except that it is the product of the process described in No. 4,321. Therefore, unless it is shown that the process of No. 4,321 was followed to produce the defendant's article, or unless it is shown that that article could not be produced by any other process, the defendant's article cannot be identified as the product of the process of No. 4,321. Nothing of the kind is shown. On the other hand, the defendant's article is made abroad, and by a process different from that of No. 4,321. It, therefore, cannot be the product of that process. If the words of the claim 'by any other method which will produce a like result' mean any other method which will produce the only product mentioned in the description, namely, alizarine, as then understood, having the formula C14 H8 O4, the defendant's article is not that product, for it contains other dyeing ingredients which the alizarine of the patent does not contain. If the words of the claim are to be construed to cover all artificial alizarine, whatever its ingredients, produced from anthracine or its derivatives by methods invented since Graebe and Liebermann invented the bromine process, we then have a patent for a product or composition of matter which gives no information as to how it is to be identified. Every patent for a product or composition of matter must identify it so that it can be recognized aside from the description of the process for making it, or else nothing can be held to infringe the patent which is not made by that process.

The circuit court found as a fact that the defendant's article was produced by the process described in No. 154,536. But it regarded that process as the same process chemically as the process of No. 4,321, on the view that the bromine used in the latter was merely a vehicle, and in the former sulphuric acid was substituted as a vehicle, and, though superior, performed the same office in the same way; and so, as it regarded the two processes as the same, it held the two products to be the same. We consider it, however, to be established that the defendant's article is not made by the process of No. 4,321, but is made by the bisulpho-acid process of Perkin, which yields anthrapurpurine, and which, while it may involve the process of No. 154,536, goes beyond it. The bisulpho-acid process puts in two atoms of anhydrous sulphuric acid instead of one, and additional oxygen is carried in, and anthrapurpurine is produced, the formula of which is C14 H8 O5. Aside from this, it is shown that the dyeing qualities of the defendant's article depend on the anthrapurpurine or isopurpurine it contains, and not on the alizarine. As the only alizarine mentioned in No. 95,465, or in No. 4,321, is alizarine the formula of which is C14 H8 O4, the alizarine of madder, the process described in those patents, to be a sufficient support for a valid patent, as being properly described, must be a process which will produce that article and no other; and No. 4,321, to be valid as a patent for a product, must be a patent which will produce, by the process it describes, that article and no other. Unless that process will practically produce the defendant's article, No. 4,321 is not infringed; and it is not established, by the evidence, that it will.

There is another view of the case. According to the description in No. 95,465, and in No. 4,321, and the evidence, the article produced by the process described was the alizarine of madder, having the chemical formula C14 H8 O4. It was an old article. While a new process for producing it was patentable, the product itself could not be patented, even though it was a product made artificially for the first time, in contradistinction to being eliminated from the madder root. Calling it artificial alizarine did not make it a new composition of matter, and patentable as such, by reason of its having been prepared artificially, for the first time, from anthracine, if it was set forth as alizarine, a well-known substance. Wood Paper Patent, 23 Wall. 566, 593. There was therefore no foundation for reissue No. 4,321, for the product, because, on the description given, no patent for the product could have been taken out originally.

Still further, the claim of No. 4,321 is not a claim merely for the product of the process described in it, but is a claim for anything which may be called artificial alizarine, produced from anthracine, or its derivatives, by either of the methods described, or by any other method, equivalent or not, which will produce anything called artificial alizarine. The scope of such a claim is seen in this suit. An article is sought to be covered, by the reissue, which, it is demonstrated, Graebe and Liebermann never made by their bromine process, which they knew that process would not produce, which they recognized as produced first by some one else, by a different process, and which has become the subject of a large industry abroad, and an extensive use in this country, through discoveries made, as they acknowledge, since their bromine process was invented. After those discoveries were made, after it was seen that the bisulpho-acid process would produce desirable dye-stuffs, and could be worked practically and profitably to that end, it was sought to control the market for the product in the United States by obtaining this reissue No. 4,321.

We have not deemed it necessary to consider more particularly the question whether the reissued patent, No. 4,321, is or is not for a different invention from that described in the original patent. It certainly is, unless the product claimed in the reissue is precisely that product, and no other, which the process described in the original patent produces. There can be no better evidence, as against the appellee, of what that product is, than the declarations of the original patent itself, and of the patentees elsewhere, as already shown. Nor have we deemed it necessary to inquire or determine whether, even if the product claimed in the reissue were the same as that which the process described in the original patent produces, it could have been made the subject of a reissued patent at the time when, and under the circumstances in which, this reissue was made. It is so clear that the defendants are not shown to have infringed that we have not deemed it necessary to consider other questions any further.

It results, from these considerations, that if the claim of No. 4,321 is to be construed so broadly as to cover the defendant's article, it is wider in its scope than the original actual invention of Graebe and Liebermann, and wider than anything indicated in the specification of the original patent; and that, if it is to be construed so as to cover only the product which the process described in it will produce, it is not shown that the defendant's article is that product, or can be practically produced by that process. In either view the decree of the circuit court must be reversed, and the case be remanded to that court, with direction to dismiss the bill of complaint.


text: Talk:Cochrane v. Badische Anilin Soda Fabrik/Opinion of the Court

license: Creative Commons - Attribution Share-Alike - https://creativecommons.org/licenses/by-sa/4.0/


text:
Armour v. Hahn

Byron Sherry and ''Thos. P. Fenlon'', for defendant in error.

This is an action brought by Hahn against Armour and others (of whom Armour alone was served with process) to recover damages for injuries suffered by the plaintiff while employed as a carpenter in the erection of a building for the defendants. The petition alleged that the plaintiff was and long had been in the defendant's employ as a carpenter, and while at work, together with others, in building an addition to a large packing-house owned and occupied by the defendants, was directed by them and their agents to take a joist and place it on the outer ends of sticks of timber inserted in and projecting from the wall of the new building; that while arranging and adjusting the joist, in accordance with the instructions of the defendants and their agents, it became necessary for him to step out upon one of the projecting timbers; that, immediately upon placing one foot upon the projecting timber, and while stooping over to arrange the joist, and without any notice, warning, or reason to believe that the projecting timber was insecure or unsafe, and without any fault or neglect on his part, the timber gave away, precipitating him from the top of the wall 34 feet to the platform beneath; that the defendants, well knowing the danger, negligently and wrongfully directed him to go out upon the projecting timber to arrange the joist, without advising him of the danger; and that by reason of the negligence of the defendants, in not having secured the projecting timber to the wall, and in not notifying him of its dangerous condition, he suffered great bodily injuries.

The testimony introduced for the plaintiff at the trial was in substance as follows: The plaintiff was engaged with 12 or 13 other carpenters, all paid by the day, in the erection of the new building. Bricklayers and other laborers were also at work upon it. The plaintiff was employed and paid by one Alcutt, the superintendent of the packing-house. One Fitzgerald was foreman of the carpenters, but not of the other workmen. The plaintiff, who had been working on one end of the roof, went to the other end, and was there set to work by the foreman upon the cornice. The cornice was made by inserting in the brick wall (which was thirteen inches thick) at intervals of eight or nine feet, and at right angles with it, sticks of timber projecting about sixteen inches from the wall, and by placing on the outer ends of those timbers, and parallel to the wall, joists sixteen or eighteen feet long and two and a half inches wide. The plaintiff and another of the carpenters were directed by their foreman to take a joist and put it out in its proper place on the projecting timbers. They took it and laid it upon those timbers. The foreman told them to push the joist out to the end of the timbers, but did not tell them to go out. Each man pushed out his end of the joist. The plaintiff, in order to reach over and place the joist, sat down with both feet on one of the projecting timbers, one foot on the part of it inside the wall, and the other foot on the part outside, when the timber tipped over, and caused the plaintiff to fall some 34 feet to the platform below, and to suffer the injuries sued for. The wall had just been bricked up on each side of this timber to a level with its upper surface, but no bricks had been laid over it. The foreman stood eight or ten feet further in; there was a space for the bricklayers to build up the wall, and they were working upon it. The plaintiff testified that he helped to put some of the sticks of timber in the old wall, and spiked them to the girders; that he did not know who put this stick of timber in the new wall; that it appeared to be secure; that if it had been fastened he could have stepped out upon it without danger; that if he had kept both feet inside the wall, he could have pushed the joist out, but could not have seen whether it was in the proper place; that he could see that the timber was not spiked, but could not see whether it was fastened; that it could not be spiked then; and that 'the usual way of doing it was putting this timber in, and leaving it that way temporarily, and afterwards building the wall up over it.' There was also evidence of the extent of the plaintiff's injuries.

At the close of the evidence for the plaintiff, a demurrer to that evidence, upon the ground that it proved no cause of action, was filed by the defendant, in accordance with the following provision of the statutes of Kansas:

'The party on whom rests the burden of the issues must first produce his evidence; after he has closed his evidence, the adverse party may interpose and file a demurrer thereto, upon the ground that no cause of action or defense is proved. If the court shall sustain the demurrer, such judgment shall be rendered for the party demurring, as the state of the pleadings or the proof shall demand; if the demurrer be overruled, the adverse party will then produce his evidence.' Laws Kan. 1872, c. 162, § 1, cl. 3.

The demurrer was argued and submitted to the court, and overruled. The defendant excepted to the ruling. No further evidence was introduced by either party at the trial. The case was submitted, under instructions excepted to by the defendant, and which it is unnecessary to state, to the jury, who returned a verdict for the plaintiff in the sum of $7,500. Judgment was rendered on the verdict, and the defendant sued out this writ of error.

Mr. J. Brumback (with whom was Mr. Wallace Pratt) for plaintiff in error.

Mr. Thomas P. Fenlon (with whom was Mr. Byron Sherry) for defendant in error.

[Argument of Counsel on Pages 316-318 intentionally omitted]

GRAY, J.

title: Armour v. Hahn


text: Talk:Armour v. Hahn

title: Talk:Armour v. Hahn


text:
Armour v. Hahn/Opinion of the Court

This court is of the opinion that the circuit court erred in not rendering judgment for the defendant on his demurrer to the plaintiff's evidence. There was no evidence tending to prove any negligence on the part of the firm of which the defendant was a member, or of their superintendent, or of the foreman of the gang of carpenters. The obligation of a master to provide reasonably safe places and structures for his servants to work upon does not impose upon him the duty, as towards them, of keeping a building, which they are employed in erecting, in a safe condition at every moment of their work, so far as its safety depends upon the due performance of that work by them and their fellows. The plaintiff was not a minor, employed in work which was strange to him, but was a man of full age, engaged in ordinary work of his trade as a carpenter. The evidence tended to show that he and one of his comrades were directed by their foreman to push the joist out on the projecting sticks of timber, not that he told them to go out themselves. The projecting timber upon which the plaintiff placed his foot was inserted in a wall which was in the course of being built, and which at the time had been bricked up only so far as to be on a level with the upper surface of the timber. The usual course, as the plaintiff himself testified, was to put the timber in, and leave it in that way temporarily, and afterwards build the wall up over it. It is not pretended that the stick of timber was in itself unsound or unsuitable for its purpose. If it was at the time insecure, it was either by reason of the risks ordinarily incident to the state of things in the unfinished condition of the building, or else by reason of some negligence of one of the carpenters or bricklayers, all of whom were employed and paid by the same master, and were working in the course of their employment at the same place and time, with an immediate common object, the erection of the building, and therefore, within the strictest limits of the rule of law upon the subject, fellow servants, one of whom cannot maintain an action for injuries caused by the negligence of another against their common master. Hough v. ''Ry. Co. 100 U.S. 213; Randall v. Baltimore & O. R. R.'' 109 U.S. 478; S.C.. 3 SUP. CT. REP. 322.

The judgment of the circuit court must therefore be reversed, and the case remanded for further proceeding in conformity with this opinion.

title: Armour v. Hahn/Opinion of the Court


text: Talk:Armour v. Hahn/Opinion of the Court


text:
Turner Seymour Manufacturing Company v. Dover Stamping Company

John S. Beach and John K. Beach, for appellant.

''Thos. Wm. Clarke and Elias Merwin'', for appellee.

MATTHEWS, J.


text: Talk:Turner Seymour Manufacturing Company v. Dover Stamping Company


text:
Turner Seymour Manufacturing Company v. Dover Stamping Company/Opinion of the Court

This is a bill in equity filed by the appellees as assignees of Timothy Earle, for an injunction and an account against the appellants, as infringers of reissued letters patent No. 6,542, for an improvement in eggbeaters, dated July 13, 1875, for which the application was filed June 8, 1875, the original No. 39,134 dated July 7, 1863. The bill was filed July 14, 1877, an interlocutory decree declaring the infringement and granting a perpetual injunction was pronounced July 9, 1879, and a final decree in favor of the complainants confirming the master's report of the amount of profits made by defendants was entered April 26, 1881. From this decree the present appeal is prosecuted.

The following is a copy of the reissued letters patent, in which the parts in italics are not in the original, and the parts enclosed in [ ] are in the original, and excluded from the reissue:

'To all whom it may concern: Be it known that I, Timothy Earle, of Lincoln, (formerly Smithfield,) in the county of Providence and state of Rhode Island, have invented [a] certain new and useful improvements in egg-beaters; and I do hereby declare that the following specification, taken in connection with the drawing, making a part of the same, is a full, clear, and exact description thereof:

'Figure 1 is a view of the beater. Figure 2 is another view of the same, with the rack which works it shown. Figure 3 is a top view of the same.

'Various devices have been employed for the purpose of beating eggs more expeditiously than by the familiar hand process. One of these devices consists of two wire frames, one within the other, and made to revolve in opposite directions; another consists of a propeller-blade inside of a wire frame, the frame and blades being made to revolve in opposite directions; and still another consists of a propeller-blade, which is made to rotate, while a pair of beaters have at the same time a reciprocating motion. All these machines, and all others with which I am acquainted, possess the common fault that the beaters, whether of wire or of the form of propeller blades, do not cut the yolk and white of the egg, but literally beat them.

'Now, as the albumen of an egg consists of a peculiar thick glary substance, it can be worked more effectually with a cutting instrument than with one which has a blunt edge. In fact, so well is this understood, that housewives [universally] commonly make use of the blade of a knife for the purpose.

'My invention is designed to obviate the difficulty referred to, and consists in the use of a revolving frame, A, formed of thin strips of matal of the form shown, and mounted upon a spindle, B, around which it can freely rotate; and also of an outer fixed frame, C, of the same general form as the inner one, but large enough to permit the inner frame to rotate within it. The outer frame is attached to the spindle, B, and with it furnishes a support or frame for the operative parts of the machine [for it]. The inner frame is further provided with a series of cutters or blades [a, a, a, a,] a, a, etc., arranged in any manner suitable for cutting through the fluid in many different [planes] places. These cutters or blades are simply pieces of sheet-tin or other suitable metal of the width of the inner frame, and are attached to the same by their ends, as is shown, and they are all so placed that their edges shall cut the material to be agitated when the frame, A, is rotated. The blades which form the outer fixed frame, C, are also placed in a similar position, and when the machine is in operation, cut through the current of material which is carried past them by the revolving frame, and thus aid in the operation in a similar manner. Upon the top of the frame A is attached a tooth-wheel, D, through which, by means of the rack, E, figure 3, worked by the hand, a rotary motion is given to the inner frame, A, in alternate directions. The frame, C, at its upper end, is so formed and arranged in relation to the pinion, D, as to leave the proper space between them, upon either side, to receive the rack, E, and serve as a guide or bearing to keep the rack in gear with the pinion; and H, is a circular flange attached to the lower side of the pinion to prevent the rack from falling down.

'''My invention also relates to the method of holding the machine in position while it is used. In the previous machines for this purpose the machine has been generally attached to or supported upon and in connection with the vessel which contained the materials to be operated upon, thus requiring a specific kind of vessel for the purpose, which, in effect, formed part of the machine; or the frame of the machine was fixed to some stationary object, with the revolving beater or beaters projecting downwards below the ma- chine into the vessel which contained the matters to be treated, the vessel being held below the machine and entirely detached from it. But by my improvement the machine becomes a separate detached implement which can be used in any vessel, and without any mechanical fastening of the machine to the vessel or to any other object. This part of my invention, therefore, consists in providing the bottom of the fixed frame, C, of the machine with a foot, F, or other suitable support, to rest upon the bottom of the vessel to support the lower part of the machine and raise the revolving-beater frame, A, above the fixed frame, C, sufficiently to permit it to revolve freely; and also providing the top of the machine with a handle, G, by which the machine can be held upright upon the bottom of the vessel by one hand, while the beater-frame is operated by the other, as is described''.

'When the machine is to be used it is placed with its foot, F, resting upon the bottom of the vessel containing the broken eggs. The left hand bears upon the handle, G, and holds the machine in position, The rack, E, held by the handle in the right hand is engaged with the pinion, D, and the proper motion imparted to the frame, A.

'It is obvious that a continuous rotary motion may be easily imparted to the frame A by means of a crank and suitable gearing, and the beneficial effect of the blades or cutters [a, a, a,] A, a, etc., would be obtained as well; but I prefer the method described of communicating motion to the frame, A, for the reason that the machine is more easily cleaned and is more convenient for domestic use.

'[What I claim as my invention and desire to secure by letters patent is the use of a series of cutting edges, a, a, a, a, when attached to a frame, A, which is capable of being rotated substantially as described for the purpose specified.]

'What I claim is: (1) The revolving beater-frame formed of thin plain blades or cutters, arranged to cut edgewise through the material by their rotation, substantially as described. (2) The combination of the fixed frame which contains and supports the operative machinery, provided with a foot or support at the bottom, the handle at the top, and suitable mechanism for rotating the beater, substantially as described.' The following is a copy of figure 2 annexed to the specifications and sufficiently illustrates them:

The cutting portion of the appellant's beater consists of an outer frame and inner frame, each of which is made to revolve around a central spindle by means of a cog-wheel and pinion. Each frame is composed of two curved pieces of tin joined together, or of one piece joined at its two ends so as to make nearly a circle; these pieces are thin, plain, flat pieces of tin, and are so arranged as to cut edgewise through the material by their rotation. In neither the inner nor the outer frame are there any additional blades or cutters like the blades a, a, a, a. It is represented in the following drawing:

The controversy in the circuit court seemed to be mainly on the question of infringement; and that turned on the construction to be given to the first claim of the reissued patent, no point being made as to the second claim. It was insisted by the defendants below that their device was not an infringement of the claim as contained in the original patent, and that a fair construction of the first claim in the reissued patent would limit it substantially to the same thing. In deciding the point, the learned judge holding the circuit court, said:

'The question of infringement of the first claim of the reissued patent depends upon the construction of the claim. If it should be properly limited so as to be confined to the frame with the cutters or blades, which are described in the specification and in the drawings, to-wit: a frame with the cutters a, a, a, a, then there is no infringement; but if the claim is to be construed so as to include a beater frame formed of thin, plain blades, then the invention which is recited in the first claim is found in the defendant's egg-beater.

'The devices which were in use prior to the invention of the plaintiff's assignor were composed of round wire, which, by their rotation, broke rather than cut the material. The part of the invention which is the subject of the first claim consisted in such an introduction of the knife-blade of the housewife, and the mechanism for operating the blade into an egg-beater, that the egg could be rapidly cut, and the egg-matter could be aerated, and be beaten into froth. The original, and also the reissued specification, dwelt upon the particular form of the cutters of the inner frame, and the original claim limited the invention to the cutters a, a, etc., but the scope of the invention was larger, and the principle was embodied in any revolving frame composed of thin and plain, as distinguished from corrugated, cutting surfaces, so arranged as when rotated to cut edgewise through the material, provided the frame was constructed and arranged substantially in the manner described in the specification. It is not claimed that the reissue is void, upon the ground that it is for a different invention from that shown or indicated in the original specification, but such a construction is attempted to be given to the reissued claim as would limit it to the precise language of the surrendered patent. The patent was surrendered because the grant was not co-extensive with the invention, and it would be an unnatural construction of the reissued patent, which should cramp the claim within the limitations which had been discarded. In my opinion, the natural meaning of the words which were used is to be permitted, and, giving to the claim such a freedom of construction, the defendant's device is an infringement.'

We are quite satisfied that the difference between the original claim and the first claim of the reissued patent, is substantial and not verbal. The former is necessarily limited to the particular device described as a frame, with a series of cutting edges attached in the mode designated, and capable of rotation. The latter embraces every revolving beater-frame, formed of thin plain blades or cutters, arranged to cut edgewise through the material by their rotation. It is immaterial whether or not the latter might have been covered, by the language of the specification, as included in the invention. We are dealing with the claims, and nothing else. And it cannot be successfully contended that the original claim implicitly contained all that is expressed in the claim of the reissued patent. The original claim has been made broader by the reissue, so as to embrace the device used by the appellants, which was not previously an infringement. And that raises the question, whether, under the circumstances disclosed by this record, the reissue is valid. To avoid this question, it is, indeed, contended now by the appellees, that the two claims, under examimation, are identical: that their apparent differences are merely literal; that their meaning is the same; and this conclusion is thought to be reached, not by restraining the reissue to the language of the original, but by a process of construction, by the use of supposed implications, to expand the words of the original so as to cover everything embraced in the reissue; the only alternative, indeed, that could be adopted, to escape the inconsistency of maintaining that claims, which were diverse, upon the question of infringement, were identical, upon the question of the validity of the patent. But, as already intimated, this position is not tenable. There is nothing in the language or recitals of the original patent, nor are there any just and reasonable inferences of which they are susceptible, which justify a construction of the claim, that would embrace any device, much less to include every mechanical and represented in the drawings; much less to include ever mechanical arrangement which embodies a cutting edge with a revolving frame, to cut instead of break the egg material upon which it is meant to operate.

The question then recurs, what are the circumstances which affect the validity of the reissue, and how do they affect it? They are few, but decisive. The original patent was issued July 7, 1863. Eleven years after, in 1874, the competition of the appellant's device became apparent and was felt. In 1875, application was made for the reissue; the original patent was surrendered and the reissued patent granted, July 13, 1875. Here is a delay of nearly 12 years, without the offer of an explanation or excuse, without even the suggestion of inadvertence or mistake in the original application. The only inference that can be drawn is that the discovery and experience of successful competition in 1874 suggested first, and led to the discovery that the original claim did not cover everything that might have been embraced, and was not broad enough to maintain the monopoly desired but not secured. This brings the case directly within the principle of Miller v. Brass Co. 104 U.S. 350, and the numerous others which have followed it, including that of Clements v. Odorless Apparatus Co. 109 U.S. 641, S.C.. 3 SUP. CT. REP. 525, all of which have been decided since the interlocutory decree in this case was pronounced.

For these reasons the decree of the circuit court is reversed, and the cause is remanded, with directions to dismiss the bill; and it is so ordered.


text: Talk:Turner Seymour Manufacturing Company v. Dover Stamping Company/Opinion of the Court


text:
Irvine v. Dunham

'This is to declare that I, William Irvine, of San Francisco, California, am the owner of one undivided half of that certain gold-bearing quartz lode or mine situated on Carson Hill, Calaveras county, California, and known familiarly as the 'Morgan mine,' and that I hold said half interest equally for myself and R. H. Sinton, also of San Francisco, share and share alike; and I hereby promise and bind myself, my heirs, and assigns, whenever said mine shall be sold or otherwise disposed of, to account fully and truly to said Sinton, his heirs, or assigns, for the one-half of all net proceeds of such sale or other disposition of said half interest. All necessary expenses, including counsel fees heretofore incurred, or that may hereafter be incurred, in and about the property, up to the time of such sale or other disposition thereof, to be first paid before division of such proceeds.

'Witness my hand and seal this twenty-eight day of March, A. D. 1874.

'WILLIAM IRVINE. [Seal.]

'Witnesses:

'T. K. WILSON.

'H. J. TILDEN.'

The bill also averred that on September 8, 1874, Sinton assigned and conveyed to one George P. Ihrie all his right and title in the mine and declaration of trust, and everything coming, or that might come, to him by virtue thereof; that on March 17, 1875, Irvine and t e owners of the other undivided half of the mine, organized, under the laws of California, a corporate body called the Morgan Mining Company; and that on April 9th following, Irvine and the other persons having an interest in the mine, except Ihrie, sold and conveyed the same to the corporation, and received in consideration thereof shares of stock in the company, in proportion to their interest in the property conveyed, Irvine receiving 10,000 shares for the undivided half held by him for himself, in trust and for Ihrie, as the grantee of Sinton, and that Ihrie then and there became entitled to the one-half of the 10,000 shares. It was further alleged that on June 29, 1875, Ihrie conveyed all his title and interest in the mine and in the 5,000 shares of the stock of the Morgan Mining Company, to Dunham, the complainant, for whose use and benefit Irvine held the shares subject to the payment of the expenses, etc., mentioned in the declaration of trust. The bill further alleged that after the conveyance by Ihrie of his interest in stock of the Morgan Mining Company to the complainant, the latter applied to Irvine for an account of the necessary expenses and fees incurred by him in and about the mine up to the conveyance thereof to the company, and offered to pay him one-half thereof, and demanded a transfer to himself of the shares of stock in the company held in trust for him by Irvine, but Irvine refused to render any account, denied the complainant's right to the stock, or any part of it, denied that he held any stock in trust for complainant, and claimed all of the 10,000 shares as his own, and denied that he was ever trustee in the premises for Sinton, or Ihrie, or the complainant. The bill further averred that the complainant was ready, and that he then offered, to pay into court the one-half of all the expenses and fees paid by Irvine, on account of the mine, up to the conveyance thereof to the Morgan Mining Company, and such further sums as the court might deem equitable and just; that Irvine had it in his power to transfer the stock held in trust by him for the complainant to a bona fide purchaser for value without notice, and that he would do so unless restrained by injunction. The prayer of the bill was that Irvine be decreed to hold in trust for the complainant said 5,000 shares of the capital stock; that the court would declare what sum was justly due to Irvine from the complainant, on account of the necessary expenses, etc., incurred by him in and about the mine, and that upon the payment of the same by complainant to Irvine, the latter might be decreed to assign and transfer said 5,000 shares to him.

The answer of Irvine denied that Sinton was ever the owner of an undivided fourth of said mine, or of any share or interest therein, or any part thereof; denied that Irvine ever held the legal title to the mine, or to any part or share thereof, in trust for himself and Sinton; denied that the undivided half thereof was acquired by himself and Sinton by their common efforts, and at their common expense, for their equal benefit, but averred that he acquired said undivided half for his own sole and exclusive use and benefit, and that Sinton contributed neither effort nor expense towards its acquisition. The answer further averred that Irvine, on March 28, 1874, being about to leave California for a trip to the Atlantic states, to be absent for several months, signed the declaration of trust as a mere gratuity to Sinton, upon the express agreement between him and Sinton that the same should be left in the custody of T. K. Wilson, who was Irvine's attorney, and that it was not to take effect except in case of the death of Irvine upon his proposed journey, and in case he should return to California that the instrument should be delivered up to him; that the instrument was never, in any manner, delivered to Sinton, and that Irvine, after so signing it, did perform his journey, and returned therefrom to the state of California in the month of ugust, 1874. The answer of Irvine was put at issue by general replication.

Upon final hearing the circuit court decreed that Irvine hold, as trustee, for the use and benefit of the complainant, the one-half of 9,997 shares of the capital stock of the Morgan Mining Company, the shares being the gross proceeds received by Irvine as the consideration of a conveyance and disposition by him to the Morgan Mining Company of one-half of the mining property, the half of the stocks so held by Irvine in trust for the complainant being subject to a claim of Irvine for one-half of all the necessary expenses referred to in the declaration of trust, and of assessments on said stock made by the Morgan Mining Company and paid by Irvine. And the court confirmed the report of the master to whom the case had been referred, finding that the one-half of the expenses and assessments paid by Irvine was $14,221.76; and decreed that, upon the payment of that sum by the complainant to Irvine, the latter should assign and transfer to the complainant 4,998 1/2 shares of the capital stock of the Morgan Mining Company. From this decree Irvine appealed.

''Jas. M. Johnston and Geo. W. Towle, Jr.'', for appellant.

S. Shellabarger and T. M. Wilson, for appellee.

WOODS, J.

title: Irvine v. Dunham


text: Talk:Irvine v. Dunham

title: Talk:Irvine v. Dunham


text:
Irvine v. Dunham/Opinion of the Court

It is not disputed that the appellee has succeeded to all the rights of Sinton and Ihrie, if they had any, set forth in the bill of complaint. The question of fact at issue between the parties is, whether or not, before the conveyance by the appellant to the Morgan Mining Company of the Morgan mine, he held the title to an undivided fourth of the mine in trust for Sinton. The declaration of trust, signed by Irvine on March 28, 1874, unless impeached, is evidence which settles this question conclusively in favor of the appellee. The appellant, however, contends, as appears from his answer and testimony, that his promise to hold one-fourth of the mine in trust for the complainant was a mere gratuity; that Sinton never paid any money or rendered any services in obtaining title to the mine; that the declaration of trust was never delivered; and that it was to take effect and bind him only in case he never returned from his proposed journey. The burden is on the appellant to make this appear. It is shown by the record that in December, 1869, or January, 1870, the appellant purchased at a tax sale the title to the Morgan mine; that he received a deed therefor dated June 29, 1870, from the sheriff, and was put in possession of the property by a writ of assistance. Prior to the purchase at the tax sale, James G. Fair and A. A. Selover had been in possession of the mine; they claimed that Irvine had purchased the mine at the tax sale for them. Irvine demanded a large sum for his services, and after some delay gave them notice that if they did not accede to his demand he would hold the title for himself. Fair and Selover never paid the sum demanded by appellant, or any part of it, and appear to have abandoned all claim to the property. About this time, Henry D. Bacon and his associates, seven in number, were claiming title to the mine. On April 14, 1873, they compromised their controversy with the appellant by an agreement that he should apply for a patent for the property in his own name, and, having obtained it, should sell the property and divide its proceeds, retaining one-half himself and turning over the other half to Bacon and his associates. The appellant accordingly applied for and obtained a patent in his own name for the property. When the Morgan Mining Company was formed, and the mine was conveyed to it, Bacon and his associates got half the stock in consideration of their interest in the mine held in trust for them by the appellant, who received the other half of the stock.

Without going into a discussion of the evidence we state our opinion to be, after a careful examination of the record, that it is established by the testimony that Sinton, who was an experienced dealer in real proper y, contributed money and aided the appellant by his advice and co-operation in obtaining the tax title to the Morgan mine, and afterwards in getting the patent therefor from the United States, and in compromising the controversy between the appellant and Bacon and his associates in regard to the ownership of the mine; and that the money and services were contributed by Sinton on the agreement and understanding that he and the appellant were to share equally in the results of the enterprise. The fact that Sinton furnished the appellant money on account of the mine is found by the master to whom the case was referred, and no exception was taken to that part of his report. It is established that the appellant, after the compromise with Bacon and others, agreed to hold the title to the undivided half of the mine in trust for himself and Sinton, share and share alike, subject to the payment of the proportion of such undivided half in the costs and expenses incurred in securing title to and managing the property. The declaration signed by the appellant on March 28, 1874, was simply an admission in writing by him of the contract between him and the appellee in relation to their interest in the Morgan mine.

The contention of the appellant that the declaration of trust was a mere gratuity is not sustained by the proof. On the contrary, independently of the declaration, the testimony in the record establishes the trust and its terms as set up in the bill of complaint, and shows that the declaration or trust was not voluntary, but was based on a valuable consideration.

The appellant contends that the declaration of trust was put in the hands of Wilson as an escrow, to be delivered to Sinton only, in case the appellant died on his proposed journey, and to be redelivered to the appellant in case he returned to California, and that as he did return, the declaration of trust became ineffectual to bind him. This contention amounts to this: that by accepting the declaration of trust upon the terms alleged by the appellant, Sinton agreed that if the appellant returned from his trip to the eastern states he would give up all claim to his share of the property. If such had been the agreement of the parties they would naturally have embodied it in the written instrument. It contains no such stipulation. It is an unqualified and unconditional admission by the appellant that he held the property in trust for Sinton and himself, and that when it was sold or disposed of he would divide its net proceeds equally between Sinton and himself. We find no evidence in the record sufficient to sustain the improbable story that Sinton agreed, in case appellant should return in safety from his trip to the Atlantic states, that he would give up his interest in this valuable property, to secure which he had contributed money and services extending over a period of several years. In other words, we do not find that the declaration of trust was subject to any such condition.

The next contention of the appellant is that the decree should be reversed, because there has been no sale or disposal of his property, and that by the terms of the trust Sinton had only a right to the net proceeds after its sale or disposal. But the record shows that the property had been disposed of by conveyance to the Morgan Mining Company. The deed of the appellant to the company effectually divested him of all title to the property. It became the property of the corporation in which he retained no interest or estate. Mr. Justice BRADLEY in Morgan v. Railroad Co. 1 Woods, 15. The conveyance was therefore a disposal of the property, and whether the consideration was cash or shares of the capital stock of the company, was immaterial. The appellant having parted with the title to the property, was bound to account for its proceeds to the beneficiary of the trust according to the terms of the trust.

The appellant next contends that he is entitled, under the terms of the trust, to hold on to the stock which he received as a consideration for the conveyance of the trust property, until there has been an accounting, and the expenses and counsel fees have been paid. But by his answer he denies the trust; he claims to hold the stock for himself alone; he wants no accounting, and does not offer to account, or to hand over any net proceeds of the property after an accounting. In other words, he seeks to hold on to the trust property until it suits him to execute a trust, the existence of which he denies. Where there is a failure of suitable trustees to perform a trust, either from accident, or from the refusal of the old trustees to act, or from their original or supervenient incapacity to act, or from any other cause, courts of equity will appoint new trustees. Ellison v. Ellison, 6 Ves. 663; Lake v. De Lambert, 4 Ves. 592; Hibbard v. Lamb, Amb. 309; 2 Madd. Pr. Ch. 133; Com. Dig. 'Chancery,' 4 W, 7. No trustee can be more unsuitable than one who not only refuses to act, but denies the trust. When, therefore, appellant denied that he held in trust the stock claimed by the appellee, the latter, having established the trust, was entitled to have, if he demanded it, a new trustee appointed; or, if the appointment of a new trustee were not necessary for the preservation of his rights, to have an account taken by the court of the expenses and assessments with which his share of the trust property was chargeable, and upon their payment to have a transfer to himself of his share of the stock. The decree of the circuit court has given him these rights. There has been an accounting, and the sum with which the appellee's interest in the stock is chargeable has been ascertained, and when the sum so found is paid by appellee, and not till then, the decree of the court requires a transfer to him of his share of the stock. The decree of the court simply executes and winds up a trust, the existence of which it finds, but which the trustee denies and refuses to execute. Both parties got their rights under the decree. It must therefore be affirmed.

title: Irvine v. Dunham/Opinion of the Court


text: Talk:Irvine v. Dunham/Opinion of the Court


text:
Moulor v. American Life Insurance Company

This is an action upon a policy of insurance issued by the American Life Insurance Company of Philadelphia. By its terms the amount insured-$10,000-is payable to Emilie Moulor, the plaintiff in error, her executors, administrators, and assigns, within 60 days after due notice and satisfactory proof of interest and of the death of her husband, the insured, certain indebtedness to the company being first deducted. Upon the first trial there was a verdict for the plaintiff, which was set aside and a new trial awarded. At the next trial the jury were peremptorily instructed to find for the company, and judgment was accordingly entered in its behalf. Upon writ of error to this court that judgment was reversed upon the ground that, as to certain issues arising out of the evidence, the case should have been submitted to the jury. Moulor v. ''Ins. Co.'' 101 U.S. 708. At the last trial there was a verdict and judgment for the defendant.

James Parsons, for plaintiff in error.

Henry Hazlehurst and Isaac Hazlehurst, for defendant in error.

HARLAN, J.


text: Talk:Moulor v. American Life Insurance Company