228
J'EDBBAL BEPOR',1'EB,
voL 52.
ity ,a simple licensee bas no sucb interest as to make him either a necessary or proper party to a bill filed to. restrain. the infringement of a patent mght. It is, urged, if the lilw be as stated,that it may be gathered from tbebill that the license in question was an exclusive. one. It suffices to say that a careful consideration of the averments of the complaint precludes.any.such construction. Th.EI complaint fails to show that the plUtiesjoined as .plaintLtfs with the paten.tee have any excIusive interest in the monopoly. It, ill insisted; iIJasmuch as it is Il.ll(lged in the bill respondent has been granted by the complainants a license to tbat manufacture lime glass chimneys, that it is estopped, to say that they may not maintain a joint bill against it for manufacturing lead glass without a: license. The respondent, if estopped at all, cannot be,estQpped beyond its license. !tma, be that Dithridge & Co. have acquired such an exclusive right inthe patented invention, so far as relatea,totbe manufacture of lime glass chimneys, that the patentee could not grant to the respondent a license to manufa.cture that sort of glass chimneys,without his licensees joining in it. This concession, however, would by no means prove that Dithridge & Co. had f!.n exclusive license for the manufacture ofleadglass chimneys. Dithridge & Co. are not shown hy,the bill to baveaoquired, either by assignment orlicense, any to practice the invention in the ,mllnufacture of lead glaas;ch4nneys. I have, carefully examined all the caSIlS cited by complaiQlliutB'CQunsel, !Lnd I ,tind none which lend support to the complaint.: a joint one by two one of whom' halil: no inter.est, it follows that the qemurrer must :besustained. When two or JIMre plaintiffs unite in bringing a" joint, action, and the facts stated, .Qo.. DQtshQW a :joint of action in them, a demurrer will lie upon th$! ground thatdQ,complaint does not state facts sufficient to cause. of ..ctiQIl. Ha,rris v; Harris, 61, Ind. 117, on page C()unlle! is so advised, within ,20 129. .XQe . bill may days,'lij>QIil paymeJ;l..tofiillicosts, to and including the filing of the otherwiae, at. ,the expiration of 20days,the bill shall with CQsts, but withot;t prejudi(le. , .'
A1IllllU0A..1!f HEAT INsUUTINGCo., Limited, ee at. Limited. No. So
".
A.
JOHNSTON
& Co.,
(otrcuit· Court 0/
Th4Jrd Circuit.
October 20, 1892.)
.. , Lettel'llpateht No. 17j,425. iesued December' 21, 1875, to'John C. Reed. for a non· llOuducting.covedng:f,,-r .steam, and other pipes," claimed a covering composed of or 'lVrappings of paper saturated with. adhesive material, 'and compressed while formed into tUbular sections "of a thickness of OM half in.cll Qr more, "'SuhStan,tlally as descdbed... A reiss)le 9f the patent-No. 8,<52. August lO, 1.879:-omitted frolll the claims the quoted words. Held. that this was an etil$rgement the claim, rendering the reissue invalid; and that this dect could not be avoided on the theory that a coverinjf of leBS than halt all iIIolr
01' CLA.I¥e·
AMERICAN HEAT INSULATING 00.
fl. A.
,JOHNSTON
& 00.
229
would Dot constitute the "thorough n.onconductor" of the specifications j for, while a less thickness might not be su1llcient for boilers and steam pipes, it manifestly would be for "water and other pipes." 48 Fed. Rep. 446, reversed.
Appeal from the Circuit Court of the United States for the Western District of Pennsylvania. In Equity. Bill by A. Johnston & Co., Limited, against the American Heat Insulating Company, Limited, and others, for infringement of reissued letters patent No. 8,752, granted August 10, 1879, to John C. Reed, upon original patent No. 171,425, issued to him December 21, 1875. The circuit court sustained the reissue, and entered a decree in favor of complainant. 48 Fed. Rep. 446. Defendant appealed. Reversed. William L. Pierce. for appellants. Jame8 L Kay, (W. Bakewell, on the brief,) for appellee. Before DALLAS, Circuit Judge, and BUTLER and GREEN, District Judges. BUTLER, District Judge. The plaintiff sues as assignee of reissued letters patent No. 8,752, dated August 10, 1879, issued to John C. Reed, to recover for infringement. The invention is an improvement in nonconducting covers for· steam boilers, steam, water, and other pipes. The specifications say: "The invention relates to that class of articles known as 'boiler coverings,' or 'nonconducting coverings for boilers, steam, water, and other pipes.'" After describing the coverings, and the process of manufacturing them, the claims are stll.ted as follows: "(1) A nonconducting covering for boilers, pipes, and other surfaces, composed of layers or wrappings of paper saturated or coated with suitable aUl\esive material, and compreilsed while being formed into tubular sections. substantially as described. (2) As a new article of manufacture, a nonconducting covering for boilers, pipes, and other surfaces, composed of layers or wrappings of paper,saturated 01' coated with suitable adhesive materials, and compressed while being formed into tubular sections divided nally, so as to be placed around the pipes or other surfaces to be covered, substantiliUyas set forth."
The original specifications and patent-u:lsued December 21, 1875"'"'stated the invention as follows: "My invention relates to that class of .articles known as · boiler coverings,' or · nonconducting coverings fol' boilers, steam, watm', and o'thel' pipes;' and it consists in a nonconducting covering, composed of layers or wrappings of paper, preferably rooting paper, saturated with adhesive material, and compressed while being formed into tubular sections of one hall inch or more in ·..
The claim was for "a: new article of manufacture; a nonconducting covering, composed of layers or wrappings of paper saturated with adhesive material, and compressed while being formed into tubular sections oj a thicknes8 of one half inch or more, substantially as shown and described." A fuller statement of the facts is unnecessary to an understanding of our views of the case. . The validity of the reissue is attacked on the allegation that its claims are broader than that of the original.Judged in the light of its terms
iScerta,inlY'true·. The limitation thickis omitteq,. ,.The complainant contends, however, that in the light of the proofs the claims in the sa;nw; as he asserts, a covering of less than half an inch would not constitute "a thorough nonconductor," sucl). as ,tp., that the restI'ictive lanwascinoperative, in construing its claims. vie\V circuit courtadoptE!.d 1 '.!s.it Round? It. BeelDS clear that the not think S.Q he.tookeither of the patents. When applying-Jor 1he original he objected to the liulitation, as the proofs show,but'iWa:s,requireQ."Py theo$ce,to-insert it; and his object in taking th'e reissue seems mainly to have been to get rid of it. It cannot well be doubted that if a covering Qf:llow the limit had been manufactured and used;, subsequcQtJ.y to the 'reissue, he would have objected to it as an infripgement.· If for no qtherpurpose than to avoid uncertainty, the office acted wisely in requiring a definite statement of the thickness ofcoverings sought to be em braced. The language, "a thorough nonconduptor," employed,in the speciii;cations, is indefinite. What is or is is:I1lRtter of individual judgment, about which bare half inch is such, it would be difficult experts will to affirmtpata trifle As much w.ould depend upon the fineness and firmneE¥! of thete2ttl.1re and soUdity of the covering as upon the difference in:thickness." Tlle terms of the original claim, as amended, left nothiI+g !;o" r;rhepatcntee's'rejection of them' subsequently. that the language is important, and seems to be an ,ewphatic that he so His present attitude does not, therefore, commend, itself very strongly to favorable consideration. The court says: "If up to acompadson 0:( what apPl'iarS on the face of the the face of the reissue., it might the omission original patent ,of the words, ·of a thickness of oue balf inch or more,' was a from the material' cMnge, 'and one ereju!licial to the public; but the proofs bring us to a different conclusion. It is shown that a covering of less thickness tban half an inch would lack the necessary nonconducting property. A half inch prevent radiation." covering is too tbin to reWn the lo?ked through the proofs, and cannot so underWe have stand them ... They ptobablyshowtba,ta less thickness would be insufdoubtless the coverings ficient for }oi1er8, and steam conun.only applied. The reissue, however, plainly embraces are coverings, water, hot air, gas, and all other pipes to which their use may be beneficially applied; and we do not find any evidence to justify a thickness of less than half an inch is insufficient forr such purposes. Manifestly, we think, the thinner coverings are sufficientfqrsuch us.es. If not, the burden was on the complainant to prove it. : importance to the complainant's suggestion that of less than half an inch, could not be "conveniently packed for transportation," as described in the specifications. The decree of must thetefore, be reversed and the case remanded withdirections . tp dismiss the bill.,
l1NITEDSTATES
'r. 250
ICBGI!l OIlNAnS.
231
UNITED STATEs
250KEGB oPN'AtL8:'
(Df.strict Oourt, B. D. OatVorn1.a. September 26, Iml 8B:IPPrN(l--oT!tADB BBTWBIlN AMERICAN PORTS,..;FOBBIGN ,VESSELS.
A,',ot Mar,Ch I, 1817, S4" {pow Re,v, St. S 434i l)p"rOhibits, UPde,r pain of forfeiture, the Of merchandise from one American port to another in foreign vessels. ' Act July 18, 1866, (now Rev. St. 58110,) declares that, if any merchandise "shall at any Jlort of the United States,on the northern, northeastern, or northwestern frontIers thereof," be ona foreign vessel, and taken to a fQreign PQrt, thence reshipped toapy other "port of the United States on said fron. tierS, with intent to evade the provisions of the fourth of the act of 1817, Buoh merchandise shall be seized and forfeited. Held, that while it is a palpable eY'$lion of the act of 1811 to ship goods from New York 1;0 Antwerp in a foreign .essel/and thence reship them in another foreign vessel to San Francisco, such , traD8Ilbipment ia not within the prohibitiOD of either act; when ,the twQ are qontl;lgether. '
Libel to Enforce a of Merchandise. M. T. Allen, U. S. Atty. AndM.UJ Frank, Page Eells, and J. H. Shankland, for Ross, District J udge.This is an by the. United StatElf! to enforce. an alleged forfeiture of certain merchandise on the ground that it was transported from one port of the United States to another port therein, in. (oreign bottoms. The answer of the owner of, the property proceeded against admits, the bringing of it into the port of Redondo, in this district, as alleged in libel, and sets up as a defense that the merchandise was wholly of the produce and manQfacture of the United States, and was shipped from New York in the Belgian ship Waesland, consigned' to a commercial house at Antwerp j that it was there discharged andlandedj that subsequently it wall shipped on the British ship, Kirkcudbrightshire, consignEld to ,the respondent at, San Francisco, Cal., and brought to San Francisco, where it was entered as a manufacture of the United States, which had been exported and returned to this country; that, prior to the departure of the ship Waesland from the port of New York, the resp6ndent procured from the collector of customs and naval officer at that port a certificate of the exportation of the merchandise from that port, and that the consignees thereof at Antwerp, prior to the departure of the ship Kirkcudbrightshire, procured from the consul of the United States at that port a certificate that the said merchandise, bound by the said ship Kirkcudbrightshire to the port of Redondo, consisted of articles of the manufacture of the United States which had not been advanced in value or improved in condition by any process of manufacture or other means. The answer further avers that, at the time the merchandise in question was shipped from New York, the respondent intended to export the :same to a ..foreign country,and thereafter to cause the same to be returned to the United Statesj that the merchandise was at aU times the manufacture oftha United States; and that it was, by the respondent and his agents, r& turned to the United States after having been exported, without having beenadvailced in valueodmproved in condit.ion by any proooB$ of