The refusal of a court to charge in the words of counsel a principle or rule of law which is fairly and clearly given to the jury for their guidance in the words of the court is not error, and the judgment below must be, and it is, affirmed.

(236 Fed. 221)

TOMPKINS v. ST. REGIS PAPER CO.

(Circuit Court of Appeals, Second Circuit. July 1, 1916.)

1. PATENTS

No. 279.

280-SUIT FOR INFRINGEMENT-EQUITY JURISDICTION. Where suit for infringement is brought upon a patent which has expired, a court of equity ordinarily has no jurisdiction; but there may be special circumstances which give it jurisdiction, as where the facts alleged show that complainant has sustained no damages which could be recovered at law and his only remedy is by a suit to obtain an accounting for profits.

[Ed. Note.-For other cases, see Patents, Cent. Dig. § 439; Dec. Dig. € 280.]

2. PATENTS

289-SUIT FOR INFRINGEMENT-LACHES.

A suit for infringement by an assignee of a patent may be barred by the laches of his assignor, which has the same effect as his own.

[Ed. Note.-For other cases, see Patents, Cent. Dig. §§ 467-469; Dec. Dig. 289.]

3. PATENTS 289-SUIT FOR INFRINGEMENT-LACHES.

Acquiescence and laches, however long, on the part of a patentee, may be excused by satisfactory proof that he had no knowledge or means of knowledge that his patent was being infringed, but poverty alone is not a sufficient excuse for delay in asserting his rights.

[Ed. Note. For other cases, see Patents, Cent. Dig. §§ 467-469; Dec. Dig. 289.]

4. PATENTS

289-SUIT FOR INFRINGEMENT-LACHES.

Delay in prosecuting other infringers while the validity of a patent is in active litigation does not constitute laches.

[Ed. Note.-For other cases, see Patents, Cent. Dig. §§ 467-469; Dec. Dig. 289.] 5. PATENTS

STOCK.

328-VALIDITY AND INFRINGEMENT-PROCESS OF MAKING PAPER The Tompkins patent, No. 458,135, for a process of making paper pulp, in view of the prior art, and especially of patent No. 340,640 to the same patentee, is void for lack of patentable novelty; also, held not infringed.

Appeal from the District Court of the United States for the Northern District of New York.

Suit in equity by John D. Tompkins against the St. Regis Paper Company. Decree for defendant, and complainant appeals. Affirmed. For opinion below, see 226 Fed. 744.

The defendant is a corporation organized and existing under the laws of the state of New York, and it has its principal office and regular place of business at Watertown, in the county of Jefferson and state of New York.

The complainant is a citizen of the United States and a resident of the state of New York. He alleges that he was the first and sole inventor of cer

For other cases see same topic & KEY-NUMBER in all Key-Numbered Digests & Indexes

tain new and useful improvements in the process of making paper pulp, and that United States patent No. 458,135 was issued to him therefor, dated August 18, 1891.

The complainant alleges that the defendant has infringed the patent above referred to, and he asks an injunction and that defendant may be decreed to account for and pay over the gains and profits realized by the defendant, and in addition the damages or treble the amount of the damages as the court may determine.

The court below, in a carefully prepared and exhaustive opinion of 28 printed pages, dismissed the bill on the ground that the patent sued upon was anticipated in the prior art, and particularly by letters patent No. 340,640 granted to the complainant on April 27, 1886, and also upon the ground that even if letters patent No. 458,135 had been valid the complainant had not infringed. From that decree this appeal was taken.

A. Page Smith, of Albany, N. Y. (Edwin J. Prindle, of New York City, of counsel), for appellant.

W. K. Richardson, of New York City (W. B. Van Allen, of New York City, on the brief), for appellee.

Before COXE, WARD, and ROGERS, Circuit Judges.

ROGERS, Circuit Judge (after stating the facts as above). The art to which the invention of the patent in suit relates is that of so treating fibrous vegetable substances as to prepare them to be made into paper. The raw materials used in the manufacture of paper comprise wood pulp, rags, straw, hemp, flax, jute, and so forth. From these materials come the cellulose fibers, matted or felted into a sheet, of which paper consists. It is necessary to free the cellulose fibers from all incrusting matter from which they must be isolated and set free. This is accomplished by cooking the raw materials with chemicals. The patent in suit relates to the art or process of treating fibrous and other kindred materials for their conversion into paper stock.

The patentee has been a manufacturer of a wrapping paper made from straw. There is testimony in the record showing that at one time he stood at the head of the manufacturers of straw wrapping paper. His paper was sold from New York to San Francisco, and he was esteemed "a sort of peer in the business."

Wrapping paper made from straw was of coarse texture and inferior in strength as compared with manila and wood pulp papers which began to displace it and prices commenced to decline. The patentee's mill was so situated that he could not advantageously get wood pulp, and he began to experiment to see if he could not improve the quality of his straw product.

There appear to have been three principal ways of cooking paper stock. One way has been by the soda process, used for soft woods. By that process wood is run through a chipping machine reducing it to chips three-eighths of an inch thick; the chips are put into a boileriron digester and boiled with caustic soda liquor. This leaves the fiber free, the noncellulose matters of the wood being decomposed by or combined with the soda.

Another way has been by the sulphite process. Under this process wood chips are boiled in a steel digester containing a solution of bisulphite of lime or bisulphite of calcium. The bisulphite solution is

made by passing sulphurous acid gas up through towers filled with limestone and at the same time water is trickled through the limestone. Another way has been by the sulphate process. This consists in boiling wood chips in a digester under pressure in a solution of sodium sulphate containing some caustic soda and carbonate of soda.

In the patent in suit the paper stock is cooked by the sulphite pro

cess.

This patent is only one of a group of patents taken out by Tompkins for processes and apparatus for treating pulp in a digester. None of them, Tompkins testified, ever got beyond use at his own mill. There are five of the Tompkins patents. The first of his patents is No. 340,640, which was applied for on July 2, 1885, and was granted on April 27, 1886. The patent in suit was the last of the five he took out and was granted on August 18, 1891.

[1] Before considering the merits of this patent, it will be necessary to dispose of some preliminary questions. It appears that this suit was commenced on August 7, 1912, when the bill was filed. As patents can only be extended by a special act of Congress and no such act is shown to have been passed respecting this patent, it is assumed the patent expired on August 18, 1908. This suit was therefore brought four years after the patent expired. Where suit is brought upon a patent which has expired, a court of equity ordinarily has no jurisdiction. An injunction does not issue in such cases. Huntington Dry Pulverized Co. v. Virginia-Carolina Chemical Co. (C. C. 1902) 121 Fed. 136. And if the suit is one to compel an infringer to account for the profits realized during the period of infringement and to pay damages there is ordinarily a complete remedy at law. See Root v. Railway Co., 105 U. S. 189, 26 L. Ed. 975 (1881), where this question was elaborately considered.

But in Tompkins v. International Paper Co., 183 Fed. 773, 106 C. C. A. 529 (1910), we held a bill was not demurrable which was filed three days before the patent expired, and which alleged that during the six years next prior to the filing of the bill complainant had not made, used, nor sold his process nor any part thereof, nor had he sustained any actual damage during such period by the enjoyment of the invention by others. It seemed to us in that case that the patentee's remedy at law was inadequate under the circumstances, because at law the patentee could not recover more than nominal damages while in equity he could recover the actual profits; and because at law he could not prove loss of license fees and he had no established license fees; and because he could not show that he lost sales as he was not in fact selling at all; and because he could not show reduction in prices through competition as there was no competition; and because he could not show that his market was destroyed by the infringer, as he was not undertaking to establish a market. The fact that in that case the bill was filed three days prior to the expiration, and in the case at bar was brought four years after the expiration of the patent, is immaterial, provided the other facts alleged in the bill show a similar condition to that disclosed in Tompkins v. International Paper Company and which led this court to the conclusion that it reached in that case.

The bill in this case avers that during the six years preceding the filing of the bill the plaintiff did not use the patented process nor sustain any damage from infringement, and we think this brings the case within the doctrine of Tompkins v. International Paper Company.

[2] The defendant also urges that the present suit cannot be maintained because of the complainant's gross laches, inasmuch as the process he claims under his patent-the quick cook process-had been used for many years before he brought his first suit, being in notorious and unconcealed use by many paper manufacturers in this country, and that it was used as early as 1895. The claim is that as these various sulphite mills were permitted, all these years, to keep on "infringing," the complainant has no right now by a suit begun in August, 1912, to come in and ask for profits and damages from the "infringement." The fact that the complainant did not have the title during the whole period of delay does not excuse laches, if laches there has been, as the courts hold that the negligence or acquiescence of a former owner has the same effect upon the assignee's rights as his own neglect or acquiescence. Woodmanse, etc., Mfg. Co. v. Williams, 68 Fed. 489, 15 C. C. A. 520; New York Grape Sugar Co. v. Buffalo Grape Sugar Co. (C. C.) 24 Fed. 604.

[3] Acquiescence and laches, however long, on the part of a patentee, may be excused by satisfactory proof that he had no knowledge or means of knowledge that his patent was being infringed. Wortendyke v. White, 30 Fed. Cas. No. 18,050. It has been held that laches is not to be imputed to the owner of a patent because of his failure to prosecute to judgment a suit against an infringer when it appears that the complainant was disabled from carrying on litigation by lack of financial means. Bradford v. Belknap Motor Co. (C. C.) 105 Fed. 63, affirmed in 115 Fed. 711, 53 C. C. A. 293; Davis v. Á. H. Reid Creamery & Dairy Supply Co. (C. C.) 187 Fed. 157, affirmed 195 Fed. 80, 115 C. C. A. 112. But in Hayward v. National Bank, 96 U. S. 611, 618, 24 L. Ed. 855 (1888) the Supreme Court said:

"No sufficient reason is given for the delay in suing. His poverty or pe cuniary embarrassment was not a sufficient excuse for postponing the assertion of his rights.'

That was not a patent case. But the statement was quoted approvingly in Leggett v. Standard Oil Co., 149 U. S. 287, 294, 13 Sup. Ct. 902, 37 L. Ed. 737 (1893), which involved the infringement of a patent, and which is understood as laying down the rule that the poverty or pecuniary embarrassment of a patentee is not a sufficient excuse for postponing the assertion of his rights or preventing the application of the doctrine of laches.

[4] In view of the conclusion which we have reached respecting the validity of the patent, it is not necessary to consider the subject of laches as fully as under other circumstances might be incumbent. We shall therefore not consider in much detail the evidence introduced by the complainant to justify his failure earlier to institute this suit. It may be remarked, however, that in addition to his poverty, his fortune having been lost, the complainant denies that he had positive knowledge of this alleged infringement until 1908, not 1891, as defendant.

mistakenly asserts. And it appears that without delay thereafter he instituted a test suit against a different infringer, the International Paper Company, which was settled in 1911. Delay in prosecuting other infringers while the validity of the patent is in active litigation does not constitute laches. Stearns-Roger Mfg. Co. v. Brown, 114 Fed. 945, 52 C. C. A. 559. Negotiations were then commenced to obtain a settlement with the present defendant. The negotiations being unsuccessful, this suit was instituted in 1912. The complainant insists that prior to 1908 he had continually and persistently but without success endeavored to ascertain whether his patent was being infringed. The court below seems to have been satisfied with the evidence on this branch of the case, for the whole subject was passed over without remark in the opinion which the court rendered. The delay in instituting the present suit between 1908 and 1912 is satisfactorily accounted for by the pendency of the litigation involving the validity of the patent; and, if complainant's testimony is true that he had no actual knowledge of the infringement of his patent prior to 1908, he has satisfactorily explained the delay which unexplained might debar him on the ground of laches from the right to maintain, this action. As the Supreme Court has pointed out, the defense of want of knowledge on the part of one charged with laches is one easily made, easy to prove by the person's own oath, and hard to disprove. There has been and is therefore a tendency to insist that a party, thus alleging a want of knowledge, should have used reasonable diligence to have informed himself of the facts. Foster v. Mansfield, etc., R. Co., 146 U. S. 88, 99, 13 Sup. Ct. 28, 36 L. Ed. 899 (1892). During the period involved the complainant appears to have been inquiring of everybody he met who was connected with the art as to what process was being employed in the mills. It was very difficult to ascertain whether his patent was or was not being infringed, as it was not possible to ascertain it from the form of the apparatus used, or from the raw materials used, or from the nature of the product put out. We therefore are of the opinion that, all things considered, the complainant has not lost his right to maintain this suit on the ground of laches in bringing it.

[5] This brings us to a consideration of the patent. The complainant in his specification for patent No. 458,135, the patent in suit, stated that heretofore it had been the practice to subject vegetable and other kindred material from which paper stock was made to the successive action of various treating-liquids within a closed vessel or digester, and while thus inclosed to bring the treating-liquids into intimate contact with the material by spraying the liquids in a downward direction thereon, or by agitating the mass of material and liquids together, as by rotation of the digester. He added that both methods had been found in practice to be open to objection, the first, by reason of the fact that the downwardly directed streams of liquid served to pack the paper stock material upon the bottom diaphragm of the digester, the effect of which was to transform the material into a strainer or filtering mass, gather the lignine and other material picked up by the treating-liquors upon the top of the mass, and to unevenly affect the material by the treating-liquids.