10 F. Cas. 631 | U.S. Circuit Court for the District of Southern Ohio | 1868
The bill alleges an infringement, by the defendant of two reissued patents to Henry B. Goodyear, as administrator of Nelson Goodyear, dated. May 18, 1858, for an improvement in making hard rubber or vulcanite. These reissued patents were extended for seven years from May 6, 1865. The infringement charged consists in the use of hard rubber by the defendant as plates for the insertion of artificial teeth. The bill prays for an injunction and an account of profits. The history of the invention covered by complainant’s patent is briefly this: In June, 1844, Charles Goodyear applied for and obtained a patent for an improvement in the process of preparing India rubber, or caoutchouc. In December, 1849, this patent was surrendered and a reissue granted on an amended specification. And, subsequently, another reissue! was obtained. These patents embrace substantially the mode of producing a soft and plastic article known as vulcanized rubber,by subjecting the rubber, in combination with sulphur and other ingredients, to a high degree of artificial heat. The article produced by this process was called vulcanized India rubber, and was used for the various purposes contemplated by the -inventor. In
Numerous grounds of defense are set up in the defendant’s answer, but those relied on in the argument are as follows: 1. That the reissued patents to Henry B. Goodyear are void, as not being for the same invention as the original. 2. That the reissues were improperly granted. 3. That the fact that the dentists in this vicinity openly and notoriously purchased and used the soft rubber for making hard rubber plates for artificial teeth, is a bar to a suit in fcquity; and that if the complainants have a remedy, it is at law. 4. That no infringement is proved. Before noticing specially these several grounds of defense, it will be proper to remark that the reissued patents, on which this suit is brought, have heretofore been the subjects of litigation, and have been judicially passed upon. And in so far as principles involving the validity of these patents have been settled by these decisions, they will be regarded as final and authoritative on this court. It appears that in the spring of 1861, a suit in equity was brought in the circuit court of the United States for the Southern district of New York, by Goodyear v. New York Gutta Percha & India Rubber Vulcanite Co. [Case No. 5,580], charging an infringement of both the reissued patents of H. B. Goodyear, and praying for an injunction and account. The bill was similar in its frame and averments to that filed in the case before this court The defendants, in their answer, denied the validity of the reissues, alleging they were obtained by fraud, and insisting that Nelson B. Goodyear was not the first and original inventor of vulcanite, or the process of making it The case was elaborately argued before the New York court at October term, 1862; and the court, Judge Nelson presiding, after mature consideration, sustained the validity of the reissues, and awarded a perpetual injunction. In January, 1867, another bill was filed in the same court, in the name of Goodyear v. Waite [Id. 5,587], alleging an infringement of these reissued patents, and praying for an injunction. The answer of the defendants, in that case as in this, denied the validity of the reissues on the grounds of vagueness and insufficiency of the specification; that the reissues were for an invention different from and broader than that claimed in the original patent; and, also, that they were void as being for a process and a product in separate patents for the same invention. The infringement charged was also denied by the answer, and it was also alleged, as a ground of defense, that the complainants, by their long acquiescence in the use of hard rubber by dentists for dental purposes, had abandoned their right to the exclusive use of the article for such purposes, and had dedicated it to the dental profession. This case was strenuously contested. A large mass of testimony was taken by the parties, and it was elaborately argued by distinguished counsel, and finally decided by the learned Judge Nelson, in August last. This decision was made subsequently to the hearing of the motion for a preliminary injunction in the case now pending. The learned judge just named, after taking the case under advisement, decided all the points in controversy in favor of the complainants, granting a perpetual injunction, and a. decree against the defendants for profits.
The opinion of Mr. Justice Nelson, in the case just referred to, is before the court, and has been carefully noticed. He decides, in substance, the following points: 1. That the description of the invention of Nelson Goodyear, as contained in the two reissued patents, is sufficiently full, clear, and exact to meet the requirements of the statute. 2. That the invention of Nelson Goodyear, consisting of a process for the production of the article known as hard rubber, was original with him, and properly the subject of a valid patent, both for the process and the product; and that Henry B. Goodyear, as the administrator of Nelson Goodyear, had a right to surrender the original patent for an insufficient description in the specification, and to receive the two reissued patents granted to him. 3. That the evidence did not make out a dedication of the right accruing under such issued patents to the dental profession or the public; and that the use of the hard rubber for dental purposes, by unlicensed persons, might be restrained by the process of injunction, and redress obtained in equity. The issue of infringement does not appear to have been insisted on by the defendants in the New York case, and there is, therefore, no special finding of the court upon it Indeed, it was not denied by counsel in their argument and from the fact that a decree was entered for the complainants, the irresistible inference is, that the infringement was made out to the satisfaction of the court
I have carefully noticed the views and conclusions of Judge Nelson on the points adverted to, and have no hesitancy in adopting them as the views and conclusions of this court, so far as they apply to the questions and issues now beforé it. To restate at length the grounds on which the learned judge placed his decision would be a useless expenditure of time and labor. They are lucidly set forth in his opinion, and I see no necessity for reproducing them. I shall, therefore, confine myself to the points made in the able argument of the defendant’s counsel, not
For the purposes of the opinion under consideration, it will not be necessary to refer specially to the description of the process, claimed in the reissue No. 556, or of the product, as claimed in reissue No. 557. The claim of the first-named patent is as follows: “What I do claim as the invention of the said Nelson Goodyear, and desire to secure by letters patent, is the combining of the sul-phur and the India rubber, or other vulcanizable gum, in proportions substantially as specified, according to the vulcanizing process of Charles Goodyear, for the purpose of producing a substance or manufacture possessing the properties or qualities substantially such as described; and this I claim, whether, the said compound of sulphur and gum be or be not mixed with other ingredients, as set forth.” The claim of the patent. No. 557, is in the following words: “What is claimed as the invention of the said Nelson Goodyear, deceased, and desired to be secured by letters patent, is the new manufacture or substance herein above described, and possessing the substantial properties herein described, and composed of India rubber, or other vulcanizable gum and sulphur, in the proportions substantially such as described, and when incorporated, subjected to a high degree of heat, as set forth; and this I claim, whether the other ingredients be or be not used in the preparation of said manufacture, as herein described.” In both these claims the words “other vufcanizable gums” occur, which are not found in the original patent to Nelson Goodyear. In the body of the specifications of each of the reissues, the words “allied gums” follow after the words “India rubber.” The answer of the defendant sets up these variances between the original patent and the reissues, and insists that the reissues are for a different invention from that covered by the original patent and therefore void. And this view is strenuously urged in the argument of the counsel for the defendant. It may be proper to remark, on this point, that the commissioner of patents has passed upon this question, and by the grant of the reissued patents has given his official sanction to their validity. It is, in effect, his deliberate judgment that the claims of the reissues are not broader than those of the original, and cover substantially the same invention. It is: in accordance with the later decisions of the courts, that the decision of the commissioner is not conclusive upon the substantial identity of the invention claimed in the original and that claimed in a reissue. Yet, for reasons not necessary to be stated, his action may well be regarded as affording a presumption in favor of the validity of the reissue. This presumption, of course, is overcome by evidence of fraud in obtaining the reissue, or a clear repugnancy between the original and. the reissued patents.
Another remark seems proper in this connection. In the case of Goodyear v. Waite, before referred to, as having been heard before-Judge Nelson, and decided by him, although this point as understood by this court, was distinctly made in the defendant’s answer as an objection to the reissued patents, it was not urged in the argument by his counsel, and was not noticed in the opinion of the judge. The plain reference from this is, that the counsel did not regard it as a sustainable defense, and that such also was the view of the learned judge who decided it. The argument of counsel on this point is, that the words “other allied gums,” used in the specification, and the words “other vulcanizable gums,” in the claims of the reissues, are mere interpolations, and import a claim, not only broader than the original, but which, if they had been inserted in the original, would have invalidated, the patent It is insisted that in the reissues the patentee claims the application of his process to other vulcanizable or allied gums which had- not been known, and of which he could, therefore, have no knowledge; and in doing so describes an invention broader than, and differing from, the original. The doctrine is a familiar one, and well settled, that the invention described and claimed in a reissue must be the same as originally patented. And if, by a fair construction, the specification and claim are for something substantially different from those of the original, the patent is void. Do these reissues fall within the scope of this
The principle is conceded that a patent for a mechanical structure or contrivance, producing a- new and useful result is no protection against the use of an invention producing the same result by appliances and on principles-substantially different from the patented invention. The rights of the patentee or proprietor of the patent are only invaded by a result like that of his .invention, effected by what are substantially the same means. And. so in the case of patented chemical combinations; the exclusive right to the invention imports nothing bu1 protection against the use of the same, or substantially the same elementa compounded and treated on principles substantially the same as those of the patented article. In brief, a patent right does not cover every possible mode of accomplishing the result proposed by an inventor. And this, as I understand them, is the extent of the decisions of the supreme court, cited by the learned counsel for the defendant. The soundness of the doctrine established by that court is not doubted, but its application to the present case is not so obvious. If the claims of a reissued patent clearly imply an expansion of the invention beyond the claims of the original patent, there is always ground for a presumption that there was a fraudulent intent to anticipate and cover subsequent inventions, and thus bar the door against patents for all subsequent discoveries. This is clearly against the policy of our patent-right system, and has been wisely condemned by the uniform decisions of the courts of the United States. This is the import of the decision of the supreme court of the United States in Burr v. Duryea, 1 Wall. [68 U. S.] 534, and other cases cited by the defendant’s counsel. But I can not see that the claims of these reissues are of the character which will bring them within the scope of these cases.
I have examined attentively the ruling of the court in the case of Goodyear v. Providence Rubber Co. [Case No. 5,583], claimed by counsel to be decisive authority against the validity of these reissues. The case was before Mr. Justice Clifford, holding the circuit court of the United States for the district of Rhode Island, in 1864. The suit was for an infringement of the reissued patents to Charles Goodyear for his process of making soft or plastic rubber by vulcanization. The claim of the original patent and the first reissue was for the process of treating and curing caoutchouc or India rubber; but, in the reissue of I860, the words, “or other vul-
On the question of infringement, there seems to be nothing in the case calling for a minute and extended investigation. In the cases referred to in a previous part of this opinion, establishing the validity of these reissued patents, the infringement alleged does not seem to have been controverted, and the ■decrees entered clearly imply that the fact of infringement was made out. In Waite’s Case the infringement charged was the manufacture and use of hard rubber by dentists as the foundation for artificial teeth. The allegations in the bill were substantially, if not literally, identical with those in this bill, and the answer was the same. And the court in that case decreed a perpetual injunction. But the counsel for the defendant in this case takes issue on the question of infringement, insisting that the fact is not technically made out by the evidence. He claims that the defendant denies in his answer, under •oath, that he has infringed, and that the complainant has proved the fact only by one witness; and, therefore, the court can not find the fact of infringement Now, the first remark on this point is, that the defendant’s .answer does not contain an explicit denial ■of the infringement. It is evasive in its character. He admits, substantially, the use ■of hard rubber, made by the process of baking the soft or plastic rubber, for dental purposes, but denies the .process is that described and claimed in the reissued patents. But he adduces no proof that the hard rubber has been or can be made by any means ■or process variant from that covered by the reissues. And, in the absence of such proof, there is at least a fair presumption that the hard rubber used was the article as claimed and described in the reissues. And it may aiso be remarked, that a denial of the infringement is wholy inconsistent with the theory of the defense set up in the answer, and mainly, relied on by counsel. That defense is not that the defendant has not used the hard rubber for dental purposes, but that he had a right to use it by the implied dedication of such right to the dental profession. This ground of defense is, by a clear implication, an admission of the infringement
But there is the positive testimony of one witness that the defendant, Berry, and all the other defendants against whom suits are pending in this court, distinctly admitted the preparation and the use of the hard rubber for dental purposes. As the denial of the infringement in the answer of the defendant •is not positive, and the testimony of the Witness referred to is strongly corroborated by other facts and considerations bearing on the question of infringement, the fact is made out to the satisfaction of the court. Upon that issue there is hardly room for a doubt. There is every reason to conclude that hard rubber for dental purposes has been in general use by the profession. It is in evidence that fully three-fifths of the dentists in the United States are licensed under the Goodyear patent; and this fact evinces not only the appreciation of the profession of the article, but its very general use. Those refusing to take licenses evidently Intend to place their defense, not on the ground that they did not use the article, but on the ground of the invalidity of the patent and the dedication of its use to the dental profession. But it is insisted in the argument of the defendant’s counsel, though not set up In the answer as a defense, that the defendant now uses in his profession a hard rubber or compound, made under a patent to Edwin L. Simpson, granted October 10, 1806. It is claimed that the process and the product under this patent are essentially different from the claims of the Nelson Goodyear patent, and therefore not an infringement of that patent. This defense, it is obvious, applies only to the issue of infringement. But it is not perceived, if sustained by the testimony, that it is an answer to the claim of the complainants as made in their bill. If the defendant has infringed by the use of the Goodyear hard rubber, he is liable to account for such infringement, though he may have discontinued the use of the article charged as an infringement of the Goodyear reissues. If an infringement of the complainants’ rights under these reissues is made out, the cessation to use the infringing article is no bar to an injunction and a decree for an account. I understand the law to be well settled, that, under the circumstances stated, the party whose rights have been invaded may claim protection against future infringements, and is not obliged to rest on the fact that the party has ceased
The claim of the patent is: “Combining the within described vulcanizing compound with India rubber, in the proportion herein named, and substantially in the manner and for the purposes herein specified.” The claim of the Nelson Goodyear patent, and the reissues under it, have been stated, and need not here be reproduced. Now, Simpson, in his specification and claim, does not pretend that by his process he does not produce the article known as hard rubber, or that it is made without the use of sulphur, as required by the Goodyear patent. The claim is, in substance, an improvement upon the known process for its production by the introduction of gum benzoin, to deprive the hard rubber of its sulphurous taste and odor, and thus-render it more acceptable for dental purposes. The process of vulcanization is substantially the same as that described in the-Goodyear patent, and the product the same, with the exception that it is tasteless and odorless. As to the identity of the processes-under the Goodyear and Simpson patents, the complainant has offered the testimony of four learned chemical experts, who have severally tested the elements of the products-of both patents by a rigid analysis. These experiments have been conducted withaview to ascertain the precise ingredients and their proportions in the compound described in the Simpson patent Without stopping to state the details of these analyses, as set forth in the testimony of these experts, it is sufficient to say that they harmonize more nearly than could be expected in the results attained. They find that the compound described by Simpson, when vulcanized, contains about four ounces of sulphur to sixteen ounces of rubber. Thus it is made clear that the article produced under the Simpson claim is vulcanized by essentially the same process, and has very near the same proportions of-sulphur and rubber as claimed in the Goodyear patent. These are the vulcanizing agents named in that patent, when subject to the action of heat. The same ingredients and the same processes are claimed by the Simpson patent, and the product of the two is essentially the same.
I can have no hesitation, therefore, in holding that the use, for -dental purposes, of hard rubber plates made under the Simpson patent, is an infringement of the Nelson Goodyear patent; and,in no aspect of the case is the defendant relieved from liability as an Infringer by asserting the use of the product under the Simpson patent. While it is probably true that Simpson has made a valuable discovery in introducing into his compound-an ingredient which, by its vaporizing prop erties, prevents the unpleasant taste and odor of the vulcanized rubber, when used as plates for artificial teeth, and for this invention may have been well entitled to a
[For other cases involving this patent, see note to Goodyear v. Mullee, Case No. 5,577.]