16 Blatchf. 397 | U.S. Circuit Court for the District of Southern New York | 1879
The bill in this case was filed in May, 1875. It named as defendants Charles T. Raynolds, Thomas B. Hidden, Leonard Richardson and Edward L. Molineux, as members of and composing the firm of C. T. Raynolds & Co. In August, 1875, Aquila Rich was added as a defendant, as a member of said firm. In June, 1875, the four defendants oviginal'y made such put in an answer to the bill, which set forth that Rich was a member of the firm. The answer was sworn to by the defendant Richardson, and the name of George F. Martens was appended to it as attorney for the defendants, above the signature and oath of Richardson. The answer set up that Bouvet was not the original and first invent- or of the patented invention, and other de-fences. A replication was filed to the answer. The taking of proofs for the plaintiffs began January 10th, 1876. The defendants took proofs on several days in March and April, 1876, Mr. Martens conducting ihe examination a part of the time, and Mr. Whitney a part of the time. The plaintiffs put in rebutting evidence on three daj*s in April, 1876. The case was then ready for hearing. In October, 1876, a motion was made on the part of the defendants for leave to put in evidence on their part a French patent granted to Martin de Lignac, dated May 19th, 1847, No. 5,630, and the certificates of addition forming part thereof, and a French patent granted to one-Dupas, dated December 2d. 1S47. This motion was founded on two affidavits, one made by Mr. Whitney, the defendants’ counsel, and the other by the defendant Richardson, both of tb^m sworn to üio 2d of October, 1876. The affidavit of Mr. "Whitney set forth, “that he is an attorney and counsellor at law residing and doing business in the city of New York; that he has been attorney in fact for tile defendants in the above entitled action, from the inception of said action, and that, since about the month of May last, he has been counsel for said defendants; that he has been fully familiar with the progress of the said action, and with the nature of the testimony produced therein by, or available to, the said defendants, in said action; that neither he, nor, to the best of his knowledge and bel’ef, any other person connected with said action in behalf of defendants, was aware that the French patent granted to Martin de Lignac, May 19th, 1847, No. 5,630, and the certificates of addition forming part thereof, contained
On the 16th of October, 1878, the defendants gave notice of an application to this court for leave to file a bill for the purpose of having the proceedings in this suit, and especially the decree therein, reviewed, reversed and set aside, and that all proceedings had therein and thereunder be vacated and set aside, and that no further proceedings be had therein or thereunder, and that the answer in this suit be amended by setting up the new matter set forth in a petition on which such application was founded, and that this suit be reheard. The said petition is sworn to by all the defendants except Rich. The petition sets forth that the said decree has been enrolled; that the injunction under • it was served July 2d, 1878; that the. accounting is being proceeded with; “that, since the time of pronouncing said decree, your petitioners have discovered new matter of consequence in the said cause,” partieulai’ly the French patent of Dupas, dated December 2d, 1847, and the addition thereto dated March 14th, 1848, and the French patent to De Lig-nac, dated May 19th, 1847, and the addition thereto dated December 6th, 1847, and the second addition thereto dated February 19th, 1848; and that, if the said two French patents had been read in evidence and considered by the court, said decree would almost certainly not have been made, but it would have been decided either that the plaintiffs’ patent was void for want of novelty, or that the defendants did not infringe it The petition sets forth the reason for so stating, founded on a comparison of the contents of the Dupas and De Lignac patents with the plaintiffs’ patent It also states, that, when this suit was brought, the defendants referred the matter of defending the suit and doing all things requisite therefor, to the defendant Richardson, as the one among them the best qualified to take charge of such matter, he having the supervision of the cans made, used and sold by the defendants. It then proceeds: “And Leonard Richardson, one of your petitioners, says, and the other of your petitioners say, upon information and belief, that the said Richardson immediately consulted James A. Whitney, Esq., of New York City, formerly their attorney and counsel in the said suit, whom your petitioners were recommended to employ, to advise them and defend the suit, by one G. H. Chur-nock, the inventor and patentee of the can used by your petitioners, Mr. Whitney having •solicited his said patent and others relating
This application is mji.de on the ground that the French patents to Dupas and De Lignac are an answer to the charge of infringement, and that the decision of the court, on final hearing, would have been different, If the proofs had embraced those patents. In regard to the omission to introduce those patents into the proofs, it is con-, tended, (1.) that the defendants were ignorant of the existence of those patents until after the proofs were closed; (2.) that they did not know of their relevancy and materiality until after the decree was made, and after they had employed their present counsel; (3.) that the ignorance of the defendants and the insufficiency of the application made in October, 1876, to admit said patents in evidence, were solely due to the inexperience and lack of legal knowledge of Mr. Whitney, so -that the defendants were not advised as to the necessity of searching for those patents, nor as to their legal effect when found, and the rules of practice of the court were not followed in the application made for their admission in evidence; (4.) that, in the selection of Mr. Whitney, the defendants were misled and mistaken, and were ignorant of the fact that he was not authorized ana qualified to perform the duty which he undertook.
. This is -not a case of newly discovered evidence. The gravamen of the application is the alleged laches and inexperience and incompetency of Mr. Whitney. If such
The foregoing remarks are based on the assumption that the matter now sought to be introduced would, if it had been in the case, have led to a decision in favor of the defendants. It is well settled, that, in the case of an application, on the ground of newly discovered evidence, to vacate the decree in an equity suit on a patent, and allow the answer to be amended and the case to be retried, the application can be granted only “for the gravest reasons and the plainest proof of the sufficiency of the newly offered evidence to lead the court to a different result.” Buerk V. Imhaeuser [Case No. 2,107]. An examination of the text of the Dupas and De Lignac .patents, in connection with the affidavit of Mr. Copeland, leaves it in great doubt whether the plaintiffs’ invention is anticipated or whether the defendants’ structure is described by Dupas or- De Lignac. This is my conclusion, after considering Mr. Renwick’s affidavit. The original patent to Dupas refers to a way of opening a box oy means of an iron wire, with a looped end, soldered on the cover of the box, but no sufficient or detailed description is given. The addition to the Dupas patent refers to-a mode ot dosing the entire end of a box by applying a thin plate soldered on such end, with a wire ring attached to one end of such plate; and, as Mr. Copeland says, there is also indefinitely described. what appears to be a narrow band of thin metal, with a wire terminating in a ring, the band of metal and the wire being both of them soldered their entire length to the exterior of the box. Mr. Copeland says: “In my opinion, neither the patent nor the addition describes any device with language sufficiently explicit to enable that .particular thing to be constructed by a mechanic, with • the exception, perhaps, of the plate furnished with a ring and dosing the entire end of the box. It does not, in my opinion, describe the invention of the complainants herein.” There is no evidence in the case which outweighs this opinion of Mr. Copeland’s, and my judgment concurs with his.
As to the original patent to De Lignac, it describes the insertion of a band of lead or pewter, easily cut, between the box and its cover. The first addition is of no importance to this case. The second addition is stated, in the title, to consist “of a tin band added to the-lead hoop.” The text says: “As it has1 occurred that boxes having lead or pewter hoops have been damaged by shocks with the tin portions of the boxes, I have been obliged to protect the pewter or lead by a more resistant metal. I have accomplished this in slightly modifying my style of hooped boxes, sufficiently, however, to render this addition to the patent already taken deemed necessary. I have replaced the lead and pewter hoops by a tin band of nearly the same width as the latter. Then I have plentifully soldered this band with lead on the under side to the outside of the cover and of the body of the box. Here the lead solder replaces the original hoop of the first patent, in borrowing from the tin which covers it its resistance to shock. I have been careful to keep the tin band about two centimetres larger than the outer circumference of the box, so that the end of the band, which I terminate by a ring or loop, covers about two centimetres of the part first soldered. When the box is closed, on grasping the ring and pulling, the lead will be easily tom, as, in the former instances, it was easily cut” Mr. Copeland’s view of this language is, that it says that the band of lead to be protected may be replaced by a thick coating of lead solder applied to the under side of the tin band, which is then soldered to the cover and the box, so that, on
The application is refused.