Klein v. Russell
| Decision Date | 01 October 1873 |
| Parties | KLEIN v. RUSSELL |
| Court | U.S. Supreme Court |
ERROR to the Circuit Court for the Northern District of New York; in which court one Russell, a glover, of Gloversville New York, brought suit against Klein, glover in the same place, for an infringement of a patent. The plaintiff got a verdict; the defendant having in the course of the trial taken various exceptions, on which the case was now here.
The case was thus:
In August, 1869, Russell obtained a patent for a new and useful improved process of treating leather so as to render it suitable for the manufacture of gloves. The specification said:
'My invention consists in a novel treatment of what is known as 'bark-tanned lamb or sheep skin,' an article used by bookbinders, and which, while sufficiently soft and supple for the purposes of their trade, is too harsh and stiff for glove-making and a variety of other purposes. This objection is removed by my treatment of the article, and the leather rendered so soft and free, yet full in respect of body, as to adapt it, among other purposes or uses, to the making of what are termed 'dogskin gloves.'
'The process I adopt, and which constitutes my invention, is as follows: I take of 'fat liquor' obtained in scouring deerskin after tanning in oil, say ten gallons, and warm the same by heating to or near the boiling-point. I then add to such heated fat liquor eight ounces of sal soda, twelve ounces of common salt, one pint of soft-soap, and four ounces of Venetian red, and stir and mix these several ingredients with the fat liquor. This forms the treating mixture or compound; and when made in the foregoing quantity will suffice for five or six dozen skins, but of course such quantity may be more or less varied, as may also the proportions of the ingredients; and the Venetian red or other coloring matter is modified or omitted as desired.
'To effect the treatment hereinbefore referred to, of the barktanned lamb or sheep skins, I lay said skin on a table or other suitable surface, and rub the above-described compound on to both sides of it, using for the purpose a horse or other suitable brush or rubber, by which it can be worked into the skin, that is afterward hung out to dry, and subsequently 'staked,' when the character of the skin will be found entirely changed from harshness to softness, and in other respects, thereby adapting it to the manufacture of gloves of the description previously named and to a variety of other purposes for which said skin was not suitable prior to the treatment of it I have herein described.'
The claim was thus:
'What is here claimed and desired to be secured by letters-patent is the process substantially as herein described, of treating bark-tanned lamb or sheep skin by means of a compound composed and applied essentially as specified.'
On the 1st of February, 1870, Russell got a reissue of this patent under the thirteenth section of the Patent Act,2 which permits a patentee, whenever any patent is 'inoperative or invalid by reason of a defective or insufficient description or specification, or by reason of the patentee claiming in his specification as his own invention more than he had a right to claim as new, if the error has arisen by inadvertency, accident, or mistake,' to apply for a new patent, and in such case authorizes a new patent to be issued for 'the same invention,' in accordance with the patentee's corrected description and specification.
In the reissue, the invention having been described exactly as in the original patent, the specification said:
'The principal feature of the invention consists in the employment of what is known amongst tanners and others as 'fat liquor,' which is ordinarily obtained by scouring deerskins after tanning in oil, but which, when it is not convenient to obtain in this manner, may be produced as a liquor having the same character obtained by the cutting of oil with a suitable alkali.
'In treating leather with the 'fat liquor' it is desirable to heat the latter to or near the boiling-point, and it is preferred to use the same in connection with other ingredients. Thus, for instance, there may be added to each ten gallons of such heated fat liquor eight ounces of sal soda, twelve ounces common salt, one pint of soft soap or an equivalent quantity of hard soap, and four ounces of Venetian red, such ingredients to be well stirred and mixed with the fat liquor.
'This forms a good treating mixture or compound, and, when made in the foregoing quantity, will suffice for five or six dozen skins; but, of course, such quantity may be more or less varied, as may also the proportions of the ingredients, and the Venetian red, or other coloring matter be modified or omitted as desired.
The claim was thus:
'What is here claimed and desired to be secured by letterspatent is:
'1. The employment of fat liquor in the treatment of leater substantially as specified.
Upon this reissue Russell sued Klein as an infringer. His allegation was that bark-tanned leather before his treatment of it was harsh, 'squeaky,' and unsuitable for gloves; but that by his process, which, as he alleged, included heating the fat liquor, the 'squeak' was removed, and the leather rendered soft, pliable, and suitable for a fine glove; that the treatment costing little greatly enhanced the value of the leather, and furnished a cheaper material for gloves than any other of the same quality and value.
The plaintiff's charge of infringement was wholly confined to the use of his process, including heat; and there was no allegation that the defendant had violated the plaintiff's rights by using fat liquor without heating it.
The defence was want of novelty. The case was heard before the district judge, sitting on the circuit. Numerous witnesses in behalf of the defendant swore that the application of fat liquor to leather, for the purpose of making it soft and pliable, had been known and in more or less use for many years; though they did not swear clearly that the application of fat liquor in a heated state with the effects which, in that state, it produced had been thus known or in use; and there was no proof by them of any use of fat liquor since the plaintiff's process had been patented otherwise than by heating the ingredients. Nor did they all swear so fully that the application and value of it was known in regard to bark-tanned skins; a good deal of their testimony relating to oil-tanned skins; and some of it to tanning raw skins or skins imperfectly tanned. Some stated that fat liquor heated near the boiling-point and so applied would ruin the skins.
On the other hand, numerous witnesses of the plaintiff, glovers, at Gloversville, and elsewhere, more or less familiar with the glove business in the vicinity, and during the term of alleged prior knowledge spoken of by the witnesses of the defendant, testified that they had no knowledge of such leather as that which the plaintiff produced till about the date of his patent; that then the kind of leather produced by him with heated fat oils, &c., went into extensive use, and that there was a great demand for it in the market. Some of these witnesses stated that heating the fat liquor to the boiling-point and allowing it to cool so as to make it capable of being worked in, did not destroy its properties. And the testimony of the witnesses of the defendant on cross-examination, tended perhaps to show that their knowledge of the means of softening leather at all by fat oils was very imperfect, and that what product was produced from bark-tanned skins was much inferior to that produced by the plaintiff; and was still affected with 'squeak,' and could not be used for the better sorts of glove; and that while they had experimented with heated fat oil, they had nver brought any of their ideas to a practical use, and had abandoned them.
In the course of the trial, one Uriel Case, a witness of the defendant, having testified as to the manner in which skins were treated twenty years ago, which manner the defendant asserted was substantially like the patented process; and having testified further that he had treated skins in this manner for twenty years until after the issue of the plaintiff's patent, was asked by the plaintiff——
'Did the plaintiff come and forbid you going on?'
A question to which the defendant objected as immaterial, incompetent, and as calling for the declaration of the plaintiff. But the court allowed the question to be put; the defendant excepting. The witness stated that the plaintiff did not forbid him, but asked him, 'Are you not interfering with my patent?' and that he, the witness, 'might have told him that he had a way of his own of fixing bark-tanned skins,' 'that he did not remember having said anything about its being an old thing, or having been done so twenty years ago.'
So too, one Place, a witness of the defendant, having disclosed on cross-examination the...
To continue reading
Request your trial
-
Carson v. American Smelting & Refining Co.
... ... v ... Winton (C.C.) 104 F. 815; Hunt v. Cassidy, 53 ... F. 257, 3 C.C.A. 525; Heinz v. Cohn, 207 F. 547, 125 ... C.C.A. 197; Klein v. Russell, 19 Wall. 466, 22 L.Ed ... 116; Los Alamitos v. Carroll, 173 F. 280, 97 C.C.A ... 446; Lalance v. Habermann (C.C.) 53 F. 378; ... ...
-
Phillips v. Awh Corp.
...would preserve the patent's validity. That is the rationale that gave rise to the maxim in the first place. In Klein v. Russell, 86 U.S. (19 Wall.) 433, 466, 22 L.Ed. 116 (1873), the owner of a reissued patent argued for a narrow construction of the patent, while the accused infringer argue......
-
Etter, In re
...Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 932 (Fed.Cir.1984), citing Klein v. Russell, 86 U.S. (19 Wall.) 433, 466, 22 L.Ed. 116 (1874); Turrill v. Michigan, S. & N.I. R.R., 68 U.S. (1 Wall.) 491, 510, 17 L.Ed. 668 (1864). Claims in reexamination, on ......
-
Scott Paper Co v. Marcalus Mfg Co
...as to restrict them to so much of the invention described by the specifications as is not exhibited by the prior art. Klein v. Russell, 19 Wall. 433, 466, 467, 22 L.Ed. 116; Garneau v. Dozier, 102 U.S. 230, 26 L.Ed. 133; Wollensak v. Reiher, 115 U.S. 87, 5 S.Ct. 1132, 29 L.Ed. 355; Beidler ......
-
Construing patent claims according to their "interpretive community": a call for an attorney-plus-artisan perspective.
...success are such as to entitle the inventor to broad claims and to a liberal construction of those which he has made."); Klein v. Russell, 86 U.S. 433, 466 (1873) ("The court should proceed in a liberal spirit, so as to sustain the patent and the construction claimed by the patentee himself......