Chisholm v. Johnson

• Decision Date: 07 January 1901
• Docket Number: 197.
• Citation: 106 F. 191
• Parties: CHISHOLM et al. v. JOHNSON.
• Court: U.S. District Court — District of Delaware

106 F. 191

CHISHOLM et al. v. JOHNSON.

No. 197.

United States Circuit Court, D. Delaware.

January 7, 1901

Syllabus by the Court.

Claim 5 of letters patent No. 387,318, granted to Robert P. Scott August 7, 1888, for improvements in machines for hulling and separating green peas, sustained, but held not to have been infringed.

Letters patent No. 421,244, granted to Charles P. Chisholm and John A. Chisholm, February 11, 1890, for improvements in the method of hulling green peas, sustained, and held to have been infringed as to both of its claims.

Claim 2 of letters patent No. 499,397, granted to Robert P. Scott June 13, 1893, for a process of gathering and hulling green peas from the vines, sustained, and held to have been infringed.

Claims 1, 2, 3, 4, 5 and 6 of letters patent No. 500,299, granted to Robert P. Scott, Charles P. Chisholm and John A. Chisholm June 27, 1893, for improvements in pea-hulling machines, sustained, and held to have been infringed.

An unexpected, insignificant and accidental use of a process, not appreciated or understood at the time, cannot operate to anticipate or invalidate a patent subsequently granted for such process.

Patent No. 421,244 does not cover the mere function or result of the operation of mechanical apparatus, but the invention of a new and specific application of the forces of nature for the advancement of the art of hulling green peas, and is for a true process.

Whether the objection of misjoinder or multifariousness can or cannot properly be taken by way of answer, the court sua sponte may give effect to it whenever that course is deemed conducive to the due and convenient administration of justice.

In a suit in equity for the infringement of a patent an exclusive licensee properly may for the protection of his own interests, and in many cases must, be joined with the legal owner of the patent as co-complainant; and generally, where the legal title to a patent is vested solely in one person and a suit in equity is brought for infringement, seeking an injunction and an account, the legal owner and those possessing equitable rights which may be affected by the litigation, should join as complainants.

The bill, having averred that all the inventions covered by the four patents in suit were capable of conjoint use in the same structure, and that the defendant so used the same in the infringements complained of, was not demurrable on the ground of multifariousness by reason of the joinder of patents; and the complainants having proved infringement by the conjoint use of inventions covered by three of the patents, although failing to prove infringement of the remaining patent in suit, are entitled to relief.

While the joinder of patent owners as complainants, where some of them have no legal ownership of or legal interest in some of the patents sued on, is a course which generally should not be encouraged, and while it appears that one of the complainants is the sole owner of two of the patents in suit, and the three complainants are the joint owners or owners in common of the remaining two, the objection or misjoinder of parties cannot, on the facts disclosed in this case, be sustained.

Gustav Bissing and Henry A. Seymour, for complainants.

R. S. Taylor, for defendant.

BRADFORD District Judge.

The bill charges infringement of four patents, namely, patent No. 387,318, dated August 7, 1888, granted to the complainant Robert P. Scott, patent No. 499,397, dated June 13, 1893, also granted to the same complainant, patent No. 421,244, dated February 11, 1890, granted to the complainants Charles P. Chisholm and John A. Chisholm, and patent No. 500,299, dated June 27, 1893, granted to all the complainants. All these patents relate to processes or machinery for hulling green peas.

It appears from the evidence that the practical application of the inventions covered by the patents in suit has to a phenomenal extent revolutionized the art of hulling green peas. In 1886 practically all the green peas hulled in this country were hulled by hand. In 1888 of all the green peas hulled in this country for canners, estimated at 1,000,000 cases, about one-half were hulled by the process and machinery of these patents or some of them. In 1889 the proportion rose to about two-thirds, and since 1891 substantially all green peas hulled in this country for canners have been hulled by such process and machinery, less than one per cent. being hulled by hand.

The remarkable success which has attended the operation of these patents is fully accounted for by the advantages resulting both to the growers and consumers of green peas. The peas are hulled with practically no injury to them caused by the process. The saving of labor is enormous, one machine of the type shown in patent No. 421,244 doing the work of from 250 to 300 hands. The pea vines with filled pods attached are speedily taken from the field and forthwith subjected to the pea-hulling process, thereby avoiding the danger of spoiling before being canned.

The broad discovery underlying the patents in suit is that the force of impact may be so applied to pods filled with green peas as to burst the pods and release the peas without injury to the latter. The original application for patent No. 421,244, granted to Charles P. Chisholm and John A. Chisholm, for 'Improvements in the Method of Hulling Peas' was filed January 3, 1887, and included the method or process subsequently patented, and also apparatus for the practice of the same. The application was divided and the divisional application, on which the patent was granted, was filed March 2, 1889. In the description the patentees say:

'The object of this invention is to remove green peas from their pods without injury to the peas; and the invention consists in the novel process of accomplishing the above object, as will be more fully hereinafter described and claimed. The desired result may be accomplished by various apparatuses without departing from the spirit of our invention. We have illustrated the preferable apparatus, but without in any way restricting our claims. An apparatus for accomplishing the same result is shown in our application filed January 3, 1887, Serial No. 223,170, of which this is a division.

'We are aware that in addition to the usual mode of shelling peas by hand several processes of accomplishing the same object by machinery have been proposed-- as, for instance, passing the pods between elastic rollers, opening the pods by passing them through the intermeshing fingers, and by rubbing the pods between abrading-surfaces, all of which have been found to bruise and injure a large portion of the peas, and are therefore very objectionable in actual use.

'Now, we have discovered that green peas may be hulled by impact while in free air, and the process of this application is based on this discovery. By 'impact' we mean the striking of a solid body against the pods while the latter are so situated that nothing but the resistance of the air holds them against the action of the solid body.

'The impact may be given by a variety of apparatuses. For instance, a paddle, beater, or impact opener in the hands of a workman, swung with just the proper velocity, impacting the peas while falling through the air, would execute this process; but we prefer the apparatus in the accompanying drawings, in which--Figure 1 is a perspective view with parts broken away; Figure 2 is a cross-section of the same without the outer casing.

'In this apparatus the peas are carried to an elevated position in the upper portion of a revolving cylinder, from whence they drop, and while falling through the air they are struck by the beaters, which revolve preferably in the same direction as the cylinder, but at a much greater rate of speed. The cylinder should revolve at just such a speed as not to carry the pods around by centrifugal force, but carry them up and then drop them, and in falling through the air they are struck by the beaters, which may or may not be covered by some soft material (as rubber or leather) to soften the blow.

'The pods must be struck by a sharp quick blow, which should be just sufficient to crack them open-- that is, to sever the connection of the two half-shells of the pod, the connection of the peas with the pods being severed by the same operation. The air naturally confined in the pods protects the peas from being bruised.'

The claims are as follows:

'1. The improvement in the art of hulling green peas, which consists in removing the same from the pods by impact, substantially as described.

'2. The improvement in the art of hulling green peas, which consists in carrying the filled pods to an elevated position and impacting the filled pods while falling, so as to sever the connections of the two half-shells of the pod and of the peas with the pods at one operation, substantially as described.'

The application for patent No. 387,318, granted to Robert P. Scott for 'Improvements in Machines for Hulling and Separating Green Peas' was filed November 7, 1887, or about ten months after the filing of the original application for the process patent No. 421,244. In the description Scott says:

'My invention has relation to machines for hulling or releasing green peas from their pods or hulls and subsequently separating the same, and is designed as an improvement on the machine forming the subject of an application for Letters Patent filed by Charles P. Chisholm and John A. Chisholm, January 3, 1887, Serial No. 223,170. * * * The object of my invention is to provide for a perfect hulling or removal of peas from their pods and a subsequent separation of said peas from the pods and dirt. * * * The operation of my improved machine is as

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