126 A.D. 928 | N.Y. App. Div. | 1908
There is no doubt in my mind that the defendants are using same process for extracting alcohol from empty barrels as is.used by plaintiff at its factory in Jersey City. I have had some difficulty in differentiating this process from that described in the Peace patent, introduced in evidence, which patented process was in use in Philadelphia before the plaintiff engaged in business. The plaintiff corporation is controlled by the Philadelphia company, which owns the Peace patent, but if the secret process claimed by the plaintiff is the patented process this court has no jurisdiction to enjoin the defendant; resort must be had to the Federal courts. (Continental Store Service Co. v. Clark, 100 N. Y. 365.) Certainly the defendants are using either the patented Peace process or the plaintiff’s secret process. But on re-examining the evidence and the able briefs submitted by the learned counsel for the parties to this litigation, plaintiff and defendants, I reach the conclusion that the plaintiff’s process in use in Jersey city, is different from that described in the Peace patent entitling the plaintiff to protection against surreptitious and fraudulent interference. A “ process” is defined as “A mode of treatment of certain materials to produce a given result; * * * an act or a series of acts performed upon the subject-matter to be transformed and reduced to a different slate or thing.” (Cochrane v. Deener, 4 Otto [94 U. S.], 788.) And the difference between a machine and a process is pointed out in the following language: “ A machine is a thing. A process is an act or a mode of acting. The one is visible to the eye —an object of perpetual observation. The other is a conception of the mind, seen only by its effects when being executed or performed. Either may be the means of producing a useful result. The mixing of certain substances together or the heating of a substance to a certain temperature is a process.” (Tilghman v. Proctor, 12 Otto [102 U. S.] 707.) In Tilghman v. Mitchell (2 Fish, 518) the court says that a process is entitled to protection by patent, and that it is no answer to a claim of violation for defendant to aver that his machine may differ from that of the complainant. In considering the question as to the infringement of a process it is immaterial whether defendant’s machinery is the same as that described by plaintiff, as that forms no part of the invention. The inquiry is, does defendant, whatever his machinery is, produce the same result according to the plaintiff’s process? And in the Proctor Case (supra) the court said: “Perhaps the process is susceptible of being applied in many modes and by the use of many forms of apparatus. The inventor is not hound to describe them all in order to secure to himself the exclusive right to the process, if he is really its inventor or discoverer.” The plaintiff’s secret process, in so far as it differs from, or is an improvement on the process described in the