Badische Anilin & Soda Fabrik v. A. Klipstein & Co.

• Decision Date: 12 October 1903
• Citation: 125 F. 543
• Parties: BADISCHE ANILIN & SODA FABRIK v. A. KLIPSTEIN & CO. et al.
• Court: U.S. District Court — Southern District of New York

125 F. 543

BADISCHE ANILIN & SODA FABRIK v. A. KLIPSTEIN & CO. et al.

United States Circuit Court, S.D. New York.

October 12, 1903

Gifford & Bull, for complainant

Forbes & Haviland, for defendants.

LACOMBE Circuit Judge.

Defendants object to the maintenance of the suit on the ground that there is 'no proof of the incorporation of the complainant, and therefore of its capacity to sue. ' Counsel for complainant contends that such objection can be raised only by a special plea in abatement or bar. This question of practice need not be passed upon, since upon the record of incorporation of complainant is proved. A corporation is an artificial person. Its birth is regulated by the laws of the sovereignty which permits it to be created. What acts of private and official persons, what documents and records, shall operate to create a corporation are settled by the laws-- usually by the statute laws--of the state which fathers it. No one can tell whether or not a corporation has been created unless he be familiar with the law of such state. One familiar with such law can easily determine the question. When the question of incorporation is raised, touching an alleged foreign corporation, the inquiry calls for proof of the law of a foreign country. The nature of such proof was discussed by the Court of Appeals in this Circuit in Herbst v. S.S. Asiatic Prince, 108 F 289, 47 C.C.A. 328, from which the following excerpt is taken:

'The law of a foreign county (is) proved here by calling its lawyers * * * and interrogating them. That has been done in this case, with a result which certainly warrants the conclusion that the proof is overwhelmingly the one way. It is true that as to the law of Brazil the only witness called by the claimant was a young lawyer, but his statements are direct, positive, and reiterated, * * * and there is no reason apparent why his statements should not be accepted.'

In the case of The Asiatic Prince, the law sought to be proved was contrary to that prevailing in all other maritime countries. The court proceeds:

'There was abundant opportunity to take the testimony of some other lawyer, * * * if the statements of claimant's witness were inaccurate; * * * but libelant has contented himself with printing copious excerpts from the statute law of Brazil, which he insists do not sustain the witness' statement. * * * Such a method of criticising the testimony of a foreign lawyer as to the law which prevails in his country is unpersuasive. There is much more than the text of a statutory enactment to be considered. Departmental regulations, administrative construction, judicial exposition, are often quite as important. The text of the act of Congress of February 26, 1885, c. 164, 23 Stat. 332 (U.S. Comp. St. 1901, p. 1290), might well convey to a jurist in some foreign country a different meaning from that which it conveys to a lawyer here, who is familiary with Holy Trinity Church v. U.S., 143 U.S. 457 (12 Sup.Ct. 511, 36 L.Ed. 226).' In the case at bar the law for the introduction of the General German Commercial Code into the grand duchy of Baden, and a part of said Code, are set forth. Exemplified or sworn copies are also produced of the articles of association of the complainant company, of a certain request by such company for entry in the commercial register at Mannheim, and of two entries in such register-- one relative to the organization of the company, and the other to an extension of its term. Two German lawyers, duly qualified as experts, were sworn on behalf of the complainant, and testified that such acts, documents, and records, under the German law, were competent to make of the associates a corporation for an unlimited period, with capacity to sue and to be sued. This is certainly prima facie evidence of incorporation, and, in the absence of any evidence to the contrary (no expert in German law was called by defendants), must be taken as conclusive. The brief submitted on behalf of defendants contains an elaborate and ingenious analysis of the German law, but it is not proof of what that law is, under the decision in The Asiatic Prince, supra.

The patent sued upon was before this court in Badische Anilin v. Kalle (C.C.) 94 F. 163. It was sustained in all particulars, and infringement found of claims 1, 2, and 4, the same involved here. The Kalle Case was appealed to the Court of Appeals in this circuit, and the decision below was affirmed. 104 F. 802, 44 C.C.A. 201. According to well-settled practice, the earlier decision in this court is to be followed here, and the decision of the Court of Appeals is, of course, controlling upon this court. The Kalle Case was vigorously contested by counsel of great ability and large experience. The record presented was elaborate and of great length; a large mass of documentary evidence, patents, and publications was put in; and 11 experts testified on behalf of the defendants. The briefs submitted were exhaustive and highly technical, the oral arguments in both courts were extended far beyond the usual time allowance, and the opinions of both courts are exceptionally long and elaborate. Decision under such circumstances means something, and the first question presented here is precisely what it does mean. Defendants advance the proposition, which no one will dispute, that, since the judgment of a court is founded on facts, it is authority only as to the facts upon which it is founded. But defendants' counsel go further, and insist that it must be taken that those facts are such only as are found stated in the opinion. If the important distinction between fundamental facts and facts which are merely probative be carefully observed, this proposition, also, might be conceded; but they seem to ignore all such distinction, and to contend that, as to every individual, specific fact of which the record affords proof, but which is not found restated as a fact in the opinion, the court before whom similar issues are again presented may treat it as new, in the sense that it has not been passed upon by the court which first tried the issue. To illustrate: If, in a suit upon a patent, 17 alleged anticipating patents are set up, and the court, in its opinion, discusses only 2 of them, which it thinks most nearly approach the invention of the plaintiff, another court dealing with the same patent is not to assume that the first court considered the other 15 alleged anticipating patents, nor that it held that they neither anticipated nor narrowed the field of invention too much to leave room for plaintiff's device to stand. Such a practice would make patent litigation interminable, and would be intolerable alike to litigants, to the bar, and to the courts. The rule is well settled that, when a patent has once been sustained by an appellate court, a subordinate court, dealing with the same patent subsequently, inquires first whether the second record contains anything not before the appellate court (whether mentioned in its opinion or not), and, if it finds something new, inquires next whether the new matter is of such a character that it may fairly be supposed that the appellate court would have reached a different conclusion, had it been advised of its existence. It is unfortunate that defendants have failed to appreciate this rule. Counsel have given a great amount of time, though, and labor to the preparation of an elaborate and highly technical brief and argument, the greater part of which might be most helpful on a motion for reargument of the Kalle Case, but which, to a court situated as this is, is necessarily unpersuasive and to be disregarded.

It is unnecessary here to set forth the patent, or to discuss the invention to which Julius made claim. The specifications have been most fully quoted from and the prior state of the art set forth in the opinions in the Kalle Case. It is to be assumed that no one will undertake to read this opinion who has not familiarized himself with the earlier ones. It will be sufficient, therefore, to take up the subject where the Kalle Case left it, and see whether there is any new evidence as to anticipation or the prior art, and what such evidence amounts to. In the Kalle Case it was held that Julius was the first to give to the public a safranine azo naphthol, which although unsulphonated, was soluble in water. That record contained prior patents and publications which disclosed unsulphonated safranine azo naphthol, and set forth formulas for producing it. The literature of the art, however, whenever it made a statement as to such characteristic, referred to it as insoluble in water. Some of the earlier publications made no such statement (i.e., as to whether or not it was water-soluble), but their statements of formulas lacked definiteness. As to one or more ingredients, in the language of the court, they 'left a blank,' which the art, so far as set forth in literature, did not tell any one how to fill so as to get a soluble product. There was much testimony as to the theories, experiments, and practice of foreign chemists and dyemakers, all of which the court held, under section 4923, Rev. St. U.S. (U.S. Comp. St. 1901, p. 3396), was not to be taken into account. It was shown as to some of these imperfect formulas, that, 'if the blank be filled with a certain quantity of caustic soda, * * * the result will be water-soluble safranine azo naphthol; but, if the blank be filled with a certain larger quantity of caustic soda, the result will be water-insoluble safranine azo naphthol. ' The Court of Appeals held that to defeat the patent by reference to what had taken place in a foreign county-- in other words, by showing that the art had information which would instruct the experimenter to 'fill the blank' as Julius filled it-- ...