CELLULOID MANUF'G Co. v. AMERICAN ZYLONITE Co. et al. (Circuit Court, S. D. New York. April 18, 1888.) PATENTS FOR INVENTIONS-INVENTION-CELLULOID. The discovery by Stevens that fusel oil was an efficient and cheap solvent of camphor, in conjunction with nitro-cellulose, was patentable, although it was known previously that fusel oil was a solvent of camphor, and that various essential oils could be used in conjunction with camphor in the manufacture of pyroxyline. In Equity. Bill for infringement of patent. C. Wyllys Betts and Frederic H. Betts, for complainant. WALLACE, J. Stevens was the first to discover the value of fusel oil as a solvent of camphor in conjunction with nitro-cellulose. It was known previously that fusel oil was a solvent of camphor, and that various essential oils could be used in conjunction with camphor in the manufacture of pyroxyline; but some of these oils were not efficient, and some were useless as substitutes for the menstrua used in producing the conversion of pyroxyline when mixed with camphor. It is doubtless true that by experimenting with the whole list of essential oils any competent chemist could have ascertained that fusel oil would, while acting as a solvent of the camphor, be efficient in producing the proper conversion of pyroxyline, and could have reached the discovery by a process of exclusion. But this is not enough to defeat a patent. By his experiments Stevens obtained a menstruum which gave a better result than the menstrua previously used, and at less expense. The fact that alcohol had been used for many years as a menstruum, when a cheaper solvent could have been used, and would have been, if the availability of fusel oil as a substitute had been obvious to those skilled in the art, is inconsistent with the suggestion that nothing but the mere exercise of judgment was involved in selecting it as a substitute. There should be a decree for the complainant. WELLING V. La Bau. Circuit Court, S. D. New York. June 18, 1888. PATENTS FOR INVENTIONS-INFRINGEMENT-PRACTICE-MASTER'S REPORT-RE VIEW. In suit for infringement of a patent, the issue being referred to a master as to whether defendant's alleged infringing article is composed of equal parts of talc and shellac, there being proof that defendant consumed in his business nearly equal amounts of each, and plaintiff's experts testifying positively, and defendant's by fair implication, that defendant's article is composed of the two ingredients in equal parts, the master's decision to that effect will not be disturbed. In Equity. On motion for a rehearing. See, This was a suit by William M. Welling against John H. La Bau for infringement of a patent. The report of the master in favor of the complainant was, on the 25th of February, 1888, confirmed, and the defendant's exceptions thereto were overruled. 34 Fed. Rep. 40. also, 12 Fed. Rep. 875, 32 Fed. Rep. 293, and infra. The defendant now moves for a rehearing upon the sole ground that the court fell into error in not sustaining the exception to the master's third finding of fact, which is as follows: "That the said white checks so manufactured and sold by the defendant, assuming the fiber white to be talc, contained shellac and tale in substantially equal parts." Frederic H. Betts, for complainant. Lucien Birdseye and James C. Cloyd, for defendant. COXE, J. To what was said upon the argument but little need be added further than the statement that, after a re-examination of the record, in the light of the elaborate argument and brief addressed to this single proposition, the court adheres to the conclusion that there is sufficient evidence to sustain the master's finding The reasoning of the defendant, it is thought, gives undue prominence to the testimony produced by him, and practically ignores that of the complainant. The master might have credited the former, but evidently he was not convinced of its truth, and was therefore justified in rejecting it, and in accepting as true the statements of the complainant and his witness, confirmed as some of them were by the defendant's testimony. The analysis of the experts, that of Prof. Chandler positively, and that of Dr. Ledoux by fair implication, show the white checks to be composed of shellac and tale in substantially equal parts. In addition to this there was proof that during the period in question the defendant had consumed in his business nearly equal amounts of these ingredients,-about 16,000 pounds of each. The question was one of fact, and the master's decision, sustained as it is by evidence, ought not to be disturbed. The motion is denied. WELLING V. LA BAU. (Circuit Court, S. D. New York. June 19, 1888.) 1. PATENTS FOR INVENTIONS-INFRINGEMENT-MOTION TO INCREASE DAMAGES -EVIDENCE. Where, in a suit for infringement, for the first time upon the hearing of exceptions to a master's report upon the accounting the objection has been presented that the reissue patent is void, and, the original patent not having been put in evidence, the court has held that though the reissue is manifestly void the evidence cannot be considered because of the inexcusable laches of defendant in failing to present it to the court at an earlier day, yet on motion for the court, in its discretion, to increase the damages under Rev. St. U. S. SS 4919, 4921, the fact that the patent is void should be taken into consideration. In a suit for infringement of a patent, where the defense, though active and annoying to complainant, has not been, in a legal sense, wanton or unjustifiable, the defendant having unquestionably considered himself in the right and having acted fairly and honestly towards his adversary, a motion for the court to increase the damages, as it is allowed in its discretion to do, under Rev. St. U. S. §§ 4919, 4921, should not be granted. In Equity. On motion to increase the damages for infringement of complainant's letters patent under Revised Statutes of the United States, sections 4919 and 4921, referred to in the opinion, section 4919 provides: "Damages for the infringement of any patent may be recovered by action on the case in the name of the party interested, either as patentee, assignee, or grantee, and whenever in any such action a verdict is rendered for the plaintiff, the court may enter judgment thereon for any sum above the amount found by the verdict as the actual damages sustained, according to the circumstances of the case, not exceeding three times the amount of such verdict, together with the costs." Section 4921 provides, among other things, as follows: "Upon a decree being rendered in any such case for an infringement, the complainant shall be entitled to recover, in addition to the profits to be accounted for by the defendant, the damages the complainant has sustained thereby; and the court shall assess the same or cause the same to be assessed under its direction. And the court shall have the same power to increase such damages, in its discretion, 'as is given to increase the damages found by verdicts in actions in the nature of actions of trespass upon the case." Frederick H. Betts, for complainant. Lucien Birdseye and James C. Cloyd, for defendant. COXE, J. This is a motion to increase the damages in an equity action for the infringement of a patent, under sections 4919, 4921, Rev. St. The facts appear sufficiently in 12 Fed. Rep 875, 32 Fec Rep. 293, 34 Fed. Rep. 40, and ante, 301. The complainant bases the application upon the long pendency of the controversy, the persistent resistence of the defendant, the voluminous. record, and the large sums, in all $6,738, paid by complainant in the prosecution of the suit. It is also argued that the master's report is most conservative, and it is obvious from the testimony that the complainant has suffered enormous damages, for which no compensation is given, owing to the difficulty of making legal proof thereof. On the other hand, it is urged that the delay in terminating the controversy was not attributable to any fault of the defendant; that the propriety and wisdom of the defense interposed by him is demonstrated by the fact that, although the bill was based upon six patents, the complainant succeeded upon one only, and that one is now conceded to be void. The defendant insists further that he was warranted in contesting the proceedings before the master, as shown by the fact that the complainant, though seeking to recover upon a great number of articles manufactured by the defendant, was limited by the master to a subdivision of a single variety of goods. Although the defense that the patent was void as a reissue was set up in the answer, the original patent was not put in evidence. The court, upon the hearing of the exceptions to the master's report, decided that the reissue was manifestly void, but that it was then too late to consider the evidence, for the reason that the defendant had been guilty of inexcusable laches in not presenting it to the court at an earlier day. But when the court is asked to exercise an exceptional discretion, and compel the defendant to pay extraordinary damages, it is surely the duty of the court to take into consideration the fact that the patent upon which the application is founded is void, even though the proof which demonstrates its invalidity is then, for the first time, brought to the attention. of the court. Upon other grounds, also, the motion must be denied. It is true that this litigation has been protracted, laborious, and expensive. It is true that complainant's decree is not compensative, when compared with the labor put forth in obtaining it. But it is thought that the defendant's course, though annoying to the complainant, was not, in a legal sense, wanton, unjustifiable, or vexatious. There was no moment when the defendant could with safety have abandoned the contest, or been less active in his defense. The proceedings before the master were animated and unusually complicated, but this was due more to the nature of the controversy than to the conduct of either party It cannot be said that the defendant acted in bad faith. The issues before the master were sharply drawn. The testimony was evenly balanced. The defendant unquestionably considered himself in the right, and was justified in pressing his views upon the attention of the master and the court. The mere fact that a defense is unsuccessful does not warrant the court in punishing the defendant for interposing it. If he acts fairly and honestly in resisting the demands of his adversary, he does nothing worthy of censure, even though the debatable ground is contested inch by inch. On the contrary, where it is apparent that the defendant has been acting fraudulently and in bad faith; that he has been "stubbornly litigious;" that his defense is without merit, and is interposed for delay, or to harass and injure the plaintiff and cause him unnecessary annoyance and expense; where, in other words, the defendant's conduct is unlawful, unconscionable, and deserves punishment,-the statutory relief should be given. Unless the cause is one of exceptional hardship, the motion should not be granted. Zane v. Peck, 13 Fed. Rep. 475; Schwarzel v. Holenshade, 3 Fish. Pat. Cas. 116; Brodie v. Mining Co., 4 Fish, Pat. Cas. 137; Guyon v. Serrell, 1 Blatchf. 244; Sanders v. Logan, 2 Fish. Pat. Cas. 167; Livingston v. Woodworth, 15 How. 546; Peek v. Frame, 9 Blatchf. 194. The limited number of reported cases upon this subject is of itself proof of the care with which the courts have exercised the discretion given by the statute. The motion is denied. MCADAMS v. LEVERICH.' (District Court, S. D. New York. May 23, 1888.) SHIPPING-CHARTER-PARTY-DEFECTS IN VESSEL. Libelants chartered respondent's steamer to carry passengers between New York city and Bedloe's island. On delivery of the vessel, defects were found in her engines, which prevented the safe running of the boat. Libelants attempted to repair the defects, but, being unable to do so, returned the vessel, and brought this suit for damages. The defense was that the boat was in good order when delivered, and that the defects were subsequently occasioned by Jibelants' engineer. Held, on the evidence, that the boat, when delivered, was not fit to enter safely upon the service for which she was engaged, through defects in the engines; that, after unsuccessfully attempting to remedy the defects. libelants were justified in returning the boat, and entitled to recover such actual legal damage as could be shown In Admiralty. Libel for breach of charter in delivering vessel unfit for use on route specified in charter. Wilcox, Adams & Macklin, for libelants. Fullerton & Rushmore, for respondent. BROWN, J. On the 31st of March, 1887, the libelants, by written contract of that date, chartered from the respondent "the side-wheel steamer Iona, for the season of 1887, from the 31st day of March, or as soon thereafter as she could be got ready, for the purpose of plying between New York city and Bedloe's island, for the sum of $2,200 for the season, to be delivered to the charterers at Fishkill." By a subsequent modification it was agreed that the steamer should be delivered to the plaintiffs at Communipaw, Jersey City. She was there delivered to the libelants on Saturday, April 2d. The steamer had two compound engines, working independently, one for each wheel. On attempting to use her, it was found that the engines did not work satisfactorily. They would stop upon the center when attempting to back; and once or twice, when the boat careened, they came to a stop without signal. Twice she ran upon the dock because not properly answering the signal to stop. This irregular action occurred on the first day of her trial, after she was delivered at Jersey City, and, according to the evidence, before any changes were made in the attempt to improve her. The engineer in charge of her at that time appears to have been a competent man, accustomed to the use of compound engines, and to handling both together. In consequence of her irregular action but a few trips were made on the first day; and, as she was considered dangerous, she was at once examined by the engineer, and by Mr. Russell, a skilled mechanic, and some changes were made in the eccentrics. It was believed that the pistons leaked through wear. The springs of the rings were found loose, and were tightened; but a complete examination could not be made. The engineer refused to run her, believing her dangerous; and during the fortnight following two other engineers were employed. She was tried 'Reported by Edward G. Benedict, Esq., of the New York bar. v.35F.no.4-20 |