-490

)fEDERAL REPORTER,

vol. 39.

ELECTRICAL ACCUMULATOR

,

.

'D. JULIEN EmCTRIC CO. .

(Oircuit Oourt, 8. D. New York. .July 22, 188!J.)
1.

PATENTS' FOR INVENTIONS-PRACTICE-REHEARING.

.

et ale /

In an action for the infringement of a patent, an unusually faIl and explfcit notice was given that a disclaimer would in certain contingencies be insisted upon.. It was.suggested by the proof, and on the hearing even went so far as to suggest the form of the disclaimer. It was never intimated that the record did not sufficiently present the' question. Held, that a rehear' ing would not be granted defendants to enable them to take additional teg· timony and contest the complainant's right tQflle a disclaimer up om grounds not mentioned at the trial.
2.

SAME.

A rehearing was also asked for on the ground that the court erred in holding that the patent, as limited by the disclaimer, disclosed invention. for the reason that the patented device had no advantage over similar devices produced by other means. Several affidavits were presented. none of which stated any new facts except one. and that was controverted by two affidavits produced by complainant. He!d that. in view of the conflict, and of the facts that the point had been carefully considered on the trial, and that defendants strenuously insisted on the right to use complainant's structures. a rehearing would be denied.

In Equity. On petition for rehearing and demurrer thereto. former opinion, see 38 Fed. Rep. 117. Frederic H. Betts, for complainant. Thomas W. Osborn and Edmund Wetmore, for defendants.

For

COXE, J. A rehearing is asked upon"the following principal grounds: First. The court was in error in holding that the patent, as limited by the disclaimer, discloses invention; for the reason that an electrode to which the active material is applied in the form of a paint, paste, or cement has no advantages over electrodes otherwise mechanically coated. This proposition the defendants seek to establish by further experiments, and by the opinions of experts. Second. On the ground of newly-dis{lovered. evidence. Third. Because the complainant should not have been permitted to file a disclaimer. When this enormous record was taken up for examination the court confidently entertained the conviction that it presented a controversy in which nothing relevant to the art in question, which human ingenuity and diligence could supply, had been ·omitted, and that no proposition of law or fact, actual or contingent, which was germane to the subject, had been neglected or unexplained. Where time and labor have been so lavishly expended, where the pres-entation of the cause has been so thorough, and where every opportunity has been offered counsel to present their views, the court should be unusually reluctant to reconsider a conclusion deliberately reached. The administration of the law will become vexatious and intolerable if, upon slight pretexts or unsubstantial grounds, parties are permitted, because the decision changes to some extent the status of the controversy, to try again and again issues which were, or which might have been, disposed of at the hearing. The notice that a disclaimer

ELEcrRICAL ACCUMULATOR CO. t1. JULIEN ELEcrRIC CO.

491

would, in certain contingencies, be insisted upon, was unusually full and explicit. It was suggested by the proof, and at the hearing the defendants were clearly advised, that a disclaimer might be necessary, the complainant even going so far as to suggest its form. The question was orally argued. It was again discussed in the learned and hensive brief submitted by the defendants, and the right to file a claimer was strenuously controverted. And yet during all this time it was never intimated-as the facts are now recalled-that the record did not sufficiently present the question. That position was taken for the first time after the decision was filed,-nearly five months from the time that actual notice of the proposed disclaimer was first given. The affidavits attached to the petition contain the opinion of several scientific gentlemen to the effect that the first ground for rehearing is well founded. No new facts are presented, except in one instance, and their verity is denied by two affiants for the complainant. Moreover, it appears that upon this proposition the complainant's experts absolutely disagree with the defendants' experts,-a situation not wholly novel in patent causes. If, therefore, the application were granted, it is altogether probable that, after the parties had been put to the trouble and expense of producing another volume of opinions, the court would be constrained to reach the same result as before. The very question now presented was at that time carefully considered. It was thought then, and it is thought now, that Faure's electrodes have certain characteristics so plain that no scientific testimony is necessary to emphasize them, which distinguish them from preceding structures, and that there is room enough in the art for his restricted invention, even after giving Mr. Brush full credit for his experiments. If it be true that Faure's batteries are inferior to or no better than others, the question naturally suggests itself: Why are not the defendants content to use the other batteries? The injunction can do them no harm, and, if they can establish their position before the master, it is not easy to see how they can be seriously injured by an award of damages. The anxiety displayed to use Faure's invention is surely incompatible with the theory that other supports are as good or better than his. Regarding the Pulvermacher patents, it may well be doubted whether a sufficient excuse has been presented for not having before fered them in evidence; but, evan wera this otherwise, it is entirely clear that they contribute no new fact to the art. It is not pretended that they relate to secondary batteries. What they show as to primary batteries was sufficiently demonstrated before. The subsequent patents granted to Faure may be invalid because of the patent in suit. But, even were they properly in evidence, it is not easy to see why the patent in suit should be invalidated or a disclaimer refused because of them. After an examination of the authorities upon the question of disclaimer, no precedent is found for the practice now suggested by the defendants. The usual course has been followed in this cause. The defendants have had a fair hearing. To open again, in this court, the door of disputation, would he unjust to the complainant. If the defendants deem themselves aggrieved, their remedy is by appeal. A rehearing is denied.

492

FEDJ;;RAL REPORTER,

vol. 39.

SOUTHERN 'WHITE LEAD CO.

v. COIT et al.

(Circuit Court, N. D. Illinois.

TRADE-MARKS-WHAT BE PnoTEcTED.

February 20, 1888.)

A manufacturer of white lead in Chicago will be enjoined from the use of the words "White Lead, St. Louis," except as to preparations of white lead manufactured there. such use tending to deceive and defraud the puhlic and complainant, a manufacturer of lead in St. Louis.

In Equity. The Southern White Lead Company filed a bill to enjoin W. A. Coit and others from using the words" St. Louis," with the words" warranted strictly pure white lead in pure linseed oil," to designate lead which was not pure, made in Chicago. Banning & Banning, for complainant. Fairchild & Blackman, for defendants.
BLODGETT, J., (orally.) This case stands upon precisely the same facts as the ease of same cOlIlplainant against Cary, decided by Judge GRESHAM about a year ago, (25' Fed. Rep. 125;) and, in principle, is on all fours with the case of Association v. Piza, 24 Fed. Rep. 149. The complainant lIlay therefore prepare a decree in accordance with the prayer of the bill, enjoining the defendants from the use of the words, Southern or "South 'Western White Lead, St. Louis," or "Southern White Lead Co., St. Louis." or "St. Louis," except as to preparations of white lead manufactured, put up, or sold at St. Louis. The principle involved is that the defendant's white lead purports to be manufactured in St. Louis, when in fact it is manufactured in Chicago, and thereby tends to ,deceive and defraud the public and the complainant, who is a manufacturer of white lead in St. Louis, inasmuch as the defendant's lead is not pure, and is not made in St. Louis.

MANOHISA

v.

CARD.

(District Court, D. Squtlt Carolina.

July 16, 1889.)

1.

SHIPPING-DEMURRAGE.

A steam-ship was chartered to carry baled cotton or other lawful freight, the loading to be by a stevedore selected by the charterer, at the vessel's expense, and under the master's direction. She was to carry a full load, at fixed rates. Fifteen days were given for loading, lay days to begin 24 hours after written notice by the master to the charterer that she was in dock, ready for loading. On December 17th the master gave the charterer's clerk and agent proper notice of her readiness, and that the lay days would begin on the next day. The charterer's witnesses stated that either the master or super-