Eastern Dynamite Co. v. Keystone Powder Mfg. Co.

• Decision Date: 01 September 1908
• Docket Number: 20-1906.
• Citation: 164 F. 47
• Parties: EASTERN DYNAMITE CO. v. KEYSTONE POWDER MFG. CO.
• Court: U.S. District Court — Middle District of Pennsylvania

164 F. 47

EASTERN DYNAMITE CO. v. KEYSTONE POWDER MFG. CO.

No. 20-1906.

United States Circuit Court, M.D. Pennsylvania.

September 1, 1908

George J. Harding, for complainant.

George R. Hamlin, for defendant.

ARCHBALD District Judge.

The first thing is to settle the complainant's title, which is questioned. By agreement in writing, while the application for the patent in suit was pending, J. C. Schrader, the patentee, covenanted and agreed to assign to the Eastern Dynamite Company, the complainant here, its successor and assigns, the letters patent which had been applied for, when they should be granted, and to execute all necessary and proper papers and do all acts requisite to invest the said company with full title to the invention and patent. Having died before this was complied with, and letters patent having issued to him September 10, 1901, meantime, an assignment of the patent, in conformity with the agreement and of all claims for infringement under it, was duly executed to the complainant by Amelia H. Schrader, his executrix, January 16 1906, which assignment was forthwith acknowledged, and eventually put on record in the patent office, and is now produced and proved by the subscribing witnesses, due delivery of it being presumed from these circumstances.

Against the prima facie proof of title so made out, the defendants offered in evidence a certified copy of the record in the patent office of a paper purporting to be an agreement bearing date April 11, 1889, between J. C. Schrader and R. S penniman of the one part, and the Repauno Chemical Company of Wilmington, Del., and the Atlantic Dynamite Company, of San Francisco, Cal., of the other part, a summary of which is reproduced in the margin. ^[1] This paper, according to the record, was acknowledged before a notary public the same day that it bears date, and was recorded in the patent office December 30, 1890.

Objection was made to its admission because it had not been properly proved, and the objection seems to be well taken. No doubt by act of Congress (Rev. St. Sec. 892 (U.S. Comp. St. 1901, p. 673))

'Written or printed copies of any records, papers or drawings, belonging to the patent office * * * authenticated by the seal, and certified by the commissioner or acting commissioner, shall be evidence in all cases wherein the originals could be evidence.'

But this merely dispenses with the production of the record, a certified copy from it being made the equivalent. It does not establish the due execution or genuineness of a paper which happens to be found there, which must still be proved in the usual way. Nor is this affected by the act of March 3, 1897, c. 391, Sec. 5, 29 Stat. 692 (U.S. Comp. St. 1901, p. 3387), which provides that, if any assignment, grant, or conveyance of a patent shall be acknowledged before a notary public, or certain other designated officers, 'the certificate of such acknowledgment under the hand and official seal of such notary or other officer, shall be prima facie evidence of the execution of such assignment, grant, or conveyance. ' An assignment so authenticated does not have to be otherwise proved, as by calling the subscribing witnesses, or by proof of the handwriting of the party who executed it. But the document itself must still be produced, and not a certified copy taken from the record, which in no respect is made a substitute. For the purpose of notice, an assignment of a patent is required to be recorded within three months, and if not so recorded is made void as against a subsequent purchaser or mortgagee for value, without notice. Rev. St. Sec. 4898 (U.S. Comp. St. 1901, p. 3387). But, while constructive notice may be effectively provided for in this way, parties being thereby put upon inquiry, inquiry is by no means excused, nor can the record alone be relied on to make out title, however it may be resorted to, to trace it. No doubt there are authorities entitled to respect which hold otherwise (Dederick v. Agricultural Co. (C.C.) 26 F. 763; Natl. Folding Box Co. v. American Paper Pail Co. (C.C.) 55 F. 488; Standard Elevator Co. v. Crane Elevator Co., 76 F. 767, 22 C.C.A. 549); but not, in my judgment, with reason, the correct view being the other

way (Paine v. Trask, 56 F. 233, 5 C.C.A. 497; Mayor v. American Cable Railroad, 60 F. 1016, 9 C.C.A. 336). The case is not to be ruled by analogy with the recording of deeds for the alienation of real estate, which depends upon the effect of local statutes, where, as in Pennsylvania for instance, an exemplification of the record is expressly made evidence, 'as valid and effectual in law as the original deeds themselves.' 1 Brightly's Dig. p. 472, par. 74. Congress might have so provided, but the fact is that it has not done so, and that is the end of it.

But, even if the agreement here were properly proved, it would not be effectual to overcome the complainant's title. Assuming that an undertaking, such as it was, to assign all inventions and discoveries which should thereafter be made by Schrader and Penniman, in any way relating to explosive compounds and substances containing nitroglycerin, and to the machinery and appliances used or usable in the manufacture of the same, was broad enough to include a device of the character of that in suit, which is merely a machine for packing explosive gelatin, which may be doubted, and that it is not open to the charge, by reason of its generality, of being a mortgage on future inventive efforts of the parties, which is not favored (Aspinwall Mfg. Co. v. Gill (C.C.) 32 F. 697, 700), as it might well be regarded; even so, it was not such an instrument as is covered by the statute, and was not entitled, in consequence, to be put on record, and if not, it conveyed no notice of its terms to the complainant, who thus took title without regard to it. It is well established that the recording of an instrument not provided for by the recording acts conveys no notice. 24 Am. & Eng.Encycl. Law(2d Ed.) 24, 141; Burck v. Taylor, 152 U.S. 634, 14 Sup.Ct. 696, 38 L.Ed. 578; Heister v. Fortner, 2 Bin.(Pa.) 40, 4 Am.Dec. 417. And, no assignment of an unpatented invention being authorized or required to be recorded-- unless it be an assignment on which a patent is to directly issue-- an agreement to assign a patent not yet obtained is not within the statute, and recording it amounts to nothing. Wright v. Randel (C.C.) 8 Fed. 591, 599; New York Paper Bag Co. v. Union Paper Bag Co. (C.C.) 32 F. 783, 788; Regan Vapor Engine Co. v. Pacific Gas Engine Co., 49 F. 68, 1 C.C.A. 169. Nor, therefore, is a certified copy of it evidence, even if, contrary to the views above expressed, such copy might be in other cases.

Independent of these considerations, and giving to the copy of the agreement the full force and effect contended for, it is claimed that whatever title or interest was thereby acquired by the Repauno Chemical Company or the Atlantic Dynamite Company is now vested in the complainants by sundry mesne conveyances and transfers. But the evidence as to this is not so complete as it might be, although not open to some of the objections made to it, which incline to be hypercritical; and I will not therefore go into it. It is sufficient to observe that, for the reasons given, the record of the agreement, which is now sought to be set up as proof of a possible outstanding title in others, was no notice to the complainants of its contents, and interposed no impediment to their taking title, as they did, through the assignment from the executrix of the patentee, which thus invested them with the full and complete ownership.

This clears the way for the examination of the patent. Explosive gelatin, which it concerns, is put up for use in the form of cartridges about eight inches long and of varying thicknesses, the material being put through a so-called packing machine and turned out from the nozzle in a continuous sausage-like rope, which is cut up and inclosed in waterproof paper bags or skins, for convenience of use and handling. The gelatin has the consistency of putty, with a grain like brown sugar, and in the somewhat primitive type of machine known as the 'Sundstrom,' extensively employed at the time of the patent, the material was fed intermittently into a rectangular hopper, from the bottom of which it was forced through a nozzle by a horizontally revolving shaft and screw, the gelatin, on account of its sluggish character, being pressed down upon the screw by a platen or plunger, fitted to the hopper, and operated by hand, by a screw and lever, after the manner of the ordinary screw press. There were two serious objections to this however. In the first place, each time after the hopper had been filled and exhausted, it was necessary to discontinue the operation, raise and remove the plunger-- a slow and by no means simple matter-- and, having refilled the hopper, resume the process again. And in the next place, owing to the low temperature at which the gelatin explodes, great care had to be exercised lest it should go off, as it easily might, under the heat generated by the pressure or delivery of it by the plunger, beyond the capacity of the packing screw to take. The object of the invention in suit was to obviate these difficulties; the operation being made continuous, the material being fed uninterruptedly into the unobstructed mouth of the hopper as fast as it is taken care of by the packing screw below and the pressure on it being at the same time automatically regulated and relieved by the screw-feed mechanism by which it is delivered. The hopper and packing screw with its nozzle and case are retained, but the hopper is in the form of an inverted cone, having interior converging ribs, within which is a centrally located,...