Hobbie v. Smith

• Decision Date: 10 May 1886
• Citation: 27 F. 656
• Parties: HOBBIE and others v. SMITH and others. [1] SAME v. MICHIGAN PIPE CO.
• Court: U.S. District Court — Northern District of New York

27 F. 656

HOBBIE and others v. SMITH and others. ^[1]

SAME v. MICHIGAN PIPE CO.

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

May 10, 1886

James A. Allen and George Wing, for plaintiffs.

Benjamin H. Williams and Wells W. Leggett, for defendants.

COXE J.

On the twenty-second of November, 1864, letters patent No. 45,201 were issued to Arcalous Wyckoff, of Elmira, New York, for an improvement in gas and water pipes. In the specification the patentee declares:

'This invention consists in the application or use of a composition of sawdust and hard boiled tar in combination with wooden pipes, in such a manner that, by coating said pipes on the inside and outside with the composition, the wood is rendered perfectly impervious to water or gas, and preserved against the injurious influence of moisture from inside or outside. * * * I boil coal or gas tar to such a consistency that it will become had when cooled and mix it with sawdust in about the following proportions coal-tar ten parts, sawdust one part; and this composition while hot, I apply to the pipes,-- both inside and out for gas, and outside only for water. Instead of mixing the coal-tar with sawdust previous to applying the composition to the pipes, the coal-tar, after having been boiled, may be applied first, and the sawdust sprinkled over it; or, instead of this, the pipes, after having been coated with tar, and before the said tar is set, may be rolled in sawdust to take up enough to prevent the pipes from sticking together when piled up, or to the hands when handled, before the composition is perfectly hard.'

The claim is as follows:

'The combination of the composition of hard boiled tar and sawdust with wooden pipes, applied in the manner and for the purpose set forth.'

Plaintiffs were, from May 31, 1876, until November 22, 1881, the date of its expiration, assignees under the patent for New York, New England, New Jersey, Pennsylvania, Delaware, Maryland, Virginia, West Virginia, and the District of Columbia. During the latter part of this period the defendants, first as copartners, and afterwards, with some changes, as a corporation, were assignees for Michigan and other states, having the right to make, use, and sell the patented article within the assigned territory. The defendants have sold large quantities of the patented pipe to parties residing within the territory assigned to the plaintiffs, and it is to recover damages for this alleged infringement that these actions are brought.

The defenses are-- First, that the plaintiffs' title is defective; second, that the patent is void for want of novelty and invention; third, that defendants do not infringe, because the pipe manufactured by them is not covered by the claim of the patent; and also for the reason that all their sales were made at Bay City, Michigan, where they had a right to sell.

The objections urged against plaintiffs' title, though they show much ingenuity, are formal and technical in character. It is said that the patentee is a necessary party for the reason that the assignment from him dated July 31, 1874, contains these words: 'Excepting and reserving, however, the right of said Archalous Wyckoff to use said patents in common with said I. S. Hobbie, Miles Ayrault, and J. A. Hobbie in the state of New York from and after April 1, 1877. ' It will be seen that even if the interpretation contended for by the defendants is placed upon this clause, namely, that the patentee still retains the legal title, it could not defeat the action, for the reason that the reservation relates only to the state of New York. As to the other states the assignment is absolute and perfect. But it would seem to be not an unreasonable construction to say that the patentee having, by the usual words of transfer, divested himself of all right, title, and interest in the patent, desired to provide that, after a certain date, and in a limited field, he should be permitted to use the patent without subjecting himself to an action for infringement. The legal title is transferred to the assignees; a personal right to use is retained by the assignor. The answer is silent as to this objection, and also as to the other alleged defects of title, many, if not all, of which could have been corrected had the plaintiffs been notified prior to the trial. I am inclined to think, therefore, that under the provisions of the state Code, it was the duty of the defendants to apprise the plaintiffs, either by demurrer or in the answer, of their position in this regard.

Although the defendants, sued as they are as trespassers, may not be estopped to dispute the validity of the patent, it is thought that the accusations against it come with poor grace from those who were willing to pay large sums of money to be admitted to its privileges; who have built up a flourishing business, and made large gains, by asserting that the pipe manufactured by them was made pursuant to its specifications; and who, during its life, maintained, both indirectly and by positive assurance, that it was good and valid in law. These considerations, together with the significant fact that there was a full acquiescence on the part of the public,-- that although the patent was regarded as of great value, no one ever disputed its validity,-- should lead the court, in an action of this character, to scrutinize with the utmost care the evidence now offered to overthrow it. The defendants presented some proof tending to show that the patented pipe was used prior to the date of the patent at Elmira, Corning, and other places in the southern part of the state of New York. The burden is upon them to establish this defense beyond a reasonable doubt. Cantrell v. Wallick, 6 Sup.Ct.Rep. 970, (April 12, 1886,) and cases there cited. It suffices to say that, tested by this rule, the proof is insufficient to overthrow the presumption of validity arising from the patent itself.

The further testimony upon this branch of the case may be summarized as follows. It was shown that pitch was known as a preservative of wood long prior to the date of the patent; that it had been used as a coating for wooden pipes; that tarred pipes, rolled in sand, were known as early as 1851; and that sawdust had been known as an absorbent of sticky substances. The field was therefore a narrow one; but the fact remains that sawdust and tar had never before been combined in the manner described in the patent. Wyckoff took a forward step in the path of invention. He made tarred wooden pipes a practical reality. His was not a great discovery, but it was a valuable improvement, entitling him to the rewards of an inventor.

The proposition that the defendants do not infringe because the method adopted by them of rolling the tarred pipes in sawdust is not covered by the patent, cannot be maintained. It is argued that the claim relates only to the coating of pipe with the composition or mixture of hard boiled tar and sawdust. Such a construction would be illiberal and narrow in any case, and especially so when demanded by those who have for years asserted that their pipe was made pursuant to the specification, and protected by the claim, of the patent.

The claim is for the 'the combination of a composition of hard boiled tar and sawdust with wooden pipes, applied in the manner and for the purpose set forth. ' Referring to the description for a full meaning of the claim, (Reed v. Chase, 25 F. 94, 99,) it will be seen that 'the pipes, after having been coated with tar, and before the said tar has set, may be rolled in sawdust. ' This is precisely what the defendants do. The claim, fairly construed, covers this manner of applying the tar and sawdust to the pipes. Neither can the defendants escape the charge of infringement because they use auger borings instead of sawdust. The proof is clear that the two are so nearly identical that the difference is hardly discernible. Surely, one is an exact equivalent for the other.

But the most difficult question involved in this controversy remains to be answered. Were the sales made in Michigan, and...