RUSSELL V. NEWARK MACHINE CO.
297
and, inasmuch as the testimony furnished by the defendants, upon whom rests the burden of proof, is very slender, and it gives no light in regard to the information which the mechanic gained from the patent, our conclusion is that the defense has not been established. That the invention, if novel, was patentable, is not susceptible of earnest denial. The attackable defects in the patent are those which have already been examined. No testimony was introduced to disprove the prima facie case which the complainant made of infringement by the Haberman Manufacturing Company, which manufactured by the process and sold the product, and by the defendant Mosheim, who only sold the new article of manufacture which was made by the process, and therefore infringed the second elaim. 'l'his claim is for the new article, produced by the process of the first claim. Glue Co. v. Upton, 4 Cliff. 237. The decrees of the circuit court are affirmed.
RUSSELL v.
ARt\. .r..IACHINE CO. et aI.
(District Court, S. D. Ohio, E. D. No. 29.
March 13, 1893.)
1.
PATENTS FOR I"YEXTTONS-VIOLATION OF LAWS-WRONGFUL MAHKIKG.
A person who marks as patented, under letters patent of a certain date and number, a machine which does not in fact contain the invention covered by such patent, is not guilty of violating either clause'l 01' 2 of Rev. St. § 4901, relating to the wrongful marking of articles as patented.
2.
In order to render defendant liable under clause 3 of said section, the burden is upon the plaintiff to show that the llrticle marked "Patented" was not covered by any patent; and this burden is not met by showing that the machine did not contain the invention covered by one patent which was marked upon the same, there being other patents also marked SAME-PLEADTKG.
3.
In a petition to recover penalties under Rev. St. § 4901, an allegation "that said straw-stacking; machine so manufactured, marked, and adverti;;cd by the defplHlunt was not covered by the letters patent granted to Hpnry S. Stone and James 1\1. F. Shepler, February 6,1883, and numbered 271,943, or any otlIPr letters patent of the United States of that date or nunl'lwr," is specific and limited, and cannot be expanded into a general allegation that the machines weee unpatented, so as to bring the case within the third elause of that section.
At Law. Action by Allen Russell against the Newark :Machine Company and others to recover the penalties prescribed by Rev. St. § 4901, forbidding the wrongful marking of articles as patented. ·Judgment for defendants. Rev. St. § 4901, reads as follows: "l']very person who in any manner marks upon anything made, used, 01' sold by him, for which he has not obtained a patent, the namE', 01' any imitation of the name, of any person who has obtained a patent therefor, with{out the consent of such patentee, or his assigns or legal representatives; or
298
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55.:
or; the 'Words 'letters or any word of like import, with i:qtent to counterfeh the mark 0'1' device of the patentee, without having We 'license orC0118ent Of such patentee, or his assi/.,'Ils or legalrepresentativeR; 0)', "\\'ho in any manner marks upon or llffixNI to any unpatentC'd article the word 'patent,' or lIny the S,lUlP is patentl'd,- for the purpose .of deceiving the be liable for everY such offense, to a penalty of not less than one hundl'ed dollars, ,,,ith eosts, one' lhllf of said penalty to the person who shall sue for tIw same, .and the other to the use of the United States, to be recovered by suit in any district eourt of the United States within whose slieh offensenlay have been committed."
inany':mlinner marks Ulloil bJ;'afflxes to any sucrb pafentec;larticle the
Oharles R. Miller, for plaintiff. Staley & Shepherd, for defendants. SAGE, District .;rudge. 1'his is all; action for penalties; nnder section 4901 of the Uevised Statutes of the United States. The plaintiff alleges that Henry P. Stone and .James .M. F. Shepler are the inventors of a new and useful straw-stacking machine,. and on the 6th of February, 1883, letters patent of the United numbered 271,943 were issued to them therefor. He further aHeges that subsequently:"'1'0 wit, between t.1IP first day of January, 18DO, and the first. day of January, 1891, tlIP exact dat.e of which the plaintiff is unable to learn. the defendants the Newark Machine Company and J. P. 1IcCune, president, at the dty of Columbus, in the state of Ohio, in t.he southern dist.rict, and the eastern division thereof, did mallufncture, and cause to be manufaeturpd, a ecl't.ain other straw-stacking machine, in addition to t.he ones heretofore complained of, and did mark, 01' cause the same t.o be marked, 'Letters Pat.ent No. 271,943, February 6, 1883,' llnd advertised, in circulars, and otherwise, that the same was covered by and made in accordance with said letters pat-
"That said straw-staeking machine so manufactured, marked, and advertised by the defendants was not covered by the letters patent granted to Henry S. Stone and James M. F. Shepler, February 6, 1883, and numbeved 271,943, or any other letters patent of the United States of that date or number, of all which said defendants had full knowledge, but the said defendants the Newark Machine Company and J. P. McCune, president, caused the same to be marked, and did so mark the saifl straw-stacking machine, ",1th the intent and for the purpose of deceiving the public."
The admitted facts in the case are: .(1) That letters patent of the United States were on Febrnary G, 1883, issued to Henry S. Stone and James M. F. Shepler, and numbered 271,943, and that Allen nussell is now the owner of au
undivided one fourth. (2) That the defendants, without authority or right derived from the or their assignee, branded "Upon the stackers made bv theUlwithin the southern district of Ohio the .date and number of patellt. -._ _ " · (3) That the stackers so branded by the _ defendants did not contain the improvements set forth and ,claimed)n said letters patent. (4) TlLat tp,edefen\laAts, in .their said patented embqdlCd m theIr "ImperIal" stacker;'andwarned' the public against using, straw stackers containing the same unless: manufa ctured by them.
299
(5J That in December, 1885, the defendants obtained from W. H. Johnson a license to use certain letters patent, but not the one involved in this suit. (6) That Johnson acquired title to the patents for which he issued the license to the defendants from C. E. Merrifield, and that in cireulars previously issued by Merrifield & Co. they claimed to own, not only the patents for which Johnson issued a license to the defendants, but also the patent involved in this suit. The case does not come within the first or the second clause of section 4901, because it is admitted that the machines made and sold by the defendants did not contain the improvements set forth and claimed in said letters patent. The plaintiff relies upon the third clause of the section, contending that the evidence establishes that the machines manufactured by the defendants, and marked "Patented February 6, 1883, No. 271,943," were not patented of that date and number, and that there is no evidence to show that they were patented under, or made in compliance with, any of the other patents branded thereon. But there is no allegation in the petition that the defendants' machines were unpatented. '['he only allegation is that they were not covered by the patent granted to Stone and Shepler, February 6, 1883, and numbered 271,943, or any other patent of that date, which is It specific and limited allegation, and cannot be expanded by construction into a general allegation that they were unpatented, so as to bring the case within the provisions of the third clause of section 4901. Besides, there is no proof that they were not patented, and the burden is upon the plaintiff. It is stipulated that they were marked as patented under seven patents, of which No. 271,943 was one. The evidence is that the defendants manufactured the Imperial straw stacker under a license obtained indirectly from C. E. Merrifield & Co., who by a printed circular, which is in e,;dence, described the same as manufactured under seven patents, including No. 271,943, and cautioned all persons from buying or using machines infringing any claims of the same. It is also in evidence that defendants acquired 80 Imperial stackers manufactured by Merrifield & Co. or their licensees, and that those stackers were marked exactly as defendants marked the stackers of their own manufacture. The testimony of defendant John McCune, president of the defendant company, is that he always believed that the company had a right to use the marks of patent No. 271,943; always supposed that that patent was included in their license until the latter part of 1891, when, examining the license for the first time, he discovered that it was not included, and that after that time they never used the mark of that patent. Certain letters written by the plaintiff and by his attorneys to the defendants and their attorneys are in evidence, which, it is claimed, raise a presumption of the guilty knowledge of defendants sufficient to overcome the direct evidence of Mr. McCune. The first letter was written by plaintiff. It is dated "Indianapolis, 26th of March, 1888." He notifies the defendant company that he claims to own at least a half interest in the patents under which it was building
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vol. 55.
the Imperial straw stacker, aug, forbidding it to continue the manu·1factuiUe, advises that he shall hold it,liable for daJJJ,ages. In the second letter, dated 24th of F('bruary, loSH1, his attorneY requests I the attorney for the defendant company to inform him from whom ,that company received license or authority to use patent No. 271,H43. ,In the third letter, dated "Canton, Ohio, September 30, 1891," plaintiff's attorney, then recently employed, refers to the defendant company's marking its machines as manufactured under patent N(). 271,948, issued Febru3.J·y G, and, stating that he had not i had opportunity to examine the machines to ascertain whetll<:r they ,were covered by that patent, requests, on behalf of the plaintiff, that if they are doing so they will discontinue its use, and arrangc 'for pa;yment therefor. Not receiving any answer, he calls attention to that letter by a letter dated October 12, 1891, to which, on October 13th, the defendant company answered that it was not using the patent referred to in the letter of September 30th. Then came a letter under date of October 15, 1891, from the plaintiff's attorney, acknowledging the defendant's disclaimer of present use, but inquiring whether it had used the patented device at any time since the date of the patent, to whieh, on the 17th of October, the defendant company answered in the negative. There is nothing in any of these letters that sugp;ests that the defendant company was marking an unpatented artiel<\ contrary to the provisions of section 4901. All the letters indicate that the plaintiff claimed ·to own certain rights under patent No. 271,943, and that he intended to hold the defendants liable for infringement. Granting that .the fact of marking upon or affixing to an unpatented artiele the !word "patent" casts upon the person so the burden of proving that he was not guilty of any intent to defraud, the rule does not apply in this casc; and, if it did, th<:re is nothing in the evidence tending to overcome the testimony of }\JeCune that there was no ·such intent on the part of the defendants. 'fhis case is not affected .by the rule in DeveraJl v. Banker, 45 O. G. 591, cited for the plain. tiff, that where a manufactured article contains, in addition to what is described and claimed in patents owned by the manufaeturer, something new, substantial, and valuable in the market, he has no right, simply beeause the new article embodies the invention covered by those patents, to mark it, as a whole, "Patented." In that case it appeared aflirmatively that the artiele marked "Patented" was something more than was claimed in the patent offered as covering it, and that it "accomplished, and was d<:'sig-ned to accomplish, a further purpose." In this ease it appears from the evidence that the article was marked with the number and date of each of the seven patents named in the lieense under which the defendant company claimed that it was manufactured and sold, and, although it is stipulated that it did not contain the imr)"ovements set forth in patent No. 271,943,-one of the seven,-the stipulation does not include the other six, and there is no evidenee even ..tending to show that it was not covered by them, nor is there any showing that it was in fact in any part unpatented. No case for the plaintiff isnlade out. 'fhe judgment will be for the defendants.
PITTSBURGH REDL'CTION CO.
v.
COWLES ELECTRIC S. & A. CO.
301
PITTSBURGH RIJDUCTIOX CO. v. COWLl<JS ELEOTRIC SMELTING & AI,UMINU)1 CO.
(Oircuit Oourt, N. D. Ohio, E. D. January 20, 1893.) No. 4,869.
PATENTS FOR INVENTIONS-A1I1'ICIPATION-·ALUMINUM BY ELECTROLYSIS.
Letters patent No. 400,7GG, gl'llnted April 2, 188!l, to Charles M. Hall, for an improved process of reducing aluminum by electrolysis, which process consists in dissolving alumina in a fused bath of the fluOlides of aluminum and of some metal more electro-positive than aluminum, and then passing an electric current through the fused mass, wherdly the aluminum of the alumina is precipitated at the cathode and its oxygen liberated at the anode; the bath meanwhile being unaffected aB to its chemical composition. One De Ville, in a work on aluminum, published in 1859, described a process of coating copper with aluminum, in ,vhich the bath is the double chloride of aluminum and sodium, the cathode a bar of copper, and the anode a bar of aluminum. 'When the current is passed through the bath the chloride of aluminum is decomposed, the aluminum is deposited on the copper, and the chlorine gas, freed at the anode, attl1cks the bar of aluminnm, and forms the chloride again, thus keeping the bath constant. Held, this ,vas clearly no anticipation of Hall's patent. De Ville described a modification of this procE'ss, in which the bath is cryolite,-a double fluoride of aluminum and sodium,-and the anode a compact mixture of carbon and alumina, which, upon the passage of the current, gives the following reaction: The fluoride of aluminum is decomposed, its aluminum precipitated at the cathode and the fluorine at the luwde, where it combines with the aluminum of the alumina, to form again the fluoride, and sets free its oxygen, whieh combinE'S with the carbon to form carbonic oxide. Held, that this is not an anticipation of the Hall patent, inasmuch as the electrolyte is not dissolved alumina, as in tho patent, but is the fluoride of aluminum,-one component of the bath itself; and the bath does not remain constant, but requires continuous renewal by the electro-chemical solution of the alumina of the anode.
SAME.
Even though the alumina from the anode in the De Ville process waEl dissolved in the bath and electrolyzed, he made no note of the fact, and it must be deemed an accident, which he failed to observe, and therefore it would not constitute any anticipation of the patented process. In order to show that the Hall process was identical with that of De Ville, the theory WaB advanced that in the former the electrolyte is not the dissolved alumina, but the fluoride of aluminum of the bath; and that, when this fluoride is decomposed, the fluorine attacks the dissolved alumina, drives off the oxygen to the anode, and unites with the aluminum remaining, thus restoring the bath. Held that, even if this were true, the Hall process would still be patentable for the regeneI'lltion of the bath accomplished by it is complete, and free from the escape of the corrosive fluorine gas, which renders the De Ville process a failure for commercial purposes. This theory of the reactions in the Hall process is, however, shown to to be invalid by the facts that the alumina dissolves without any evidencH of chemical ;LCtion; that the action of the current gives no evidence or other products of decomposition than aluminum and oxygen; and that, as scon as the alumina is eXhausted. th,) resistance to the current is doubl\ld, indicating that the electL'olytehas been changed; and, mo:reover, the theory contains a in aB8uming, on the hand, tha.t the dissolved alumina will be decomposed by the fluoride of aluminum, and,
4.
5.
