Leggett v. Standard Oil Co

• Decision Date: 10 May 1893
• Docket Number: No. 225,225
• Parties: LEGGETT v. STANDARD OIL CO
• Court: U.S. Supreme Court

149 U.S. 287

13 S.Ct. 902

37 L.Ed. 737

LEGGETT

v STANDARD OIL CO.

No. 225.

May 10, 1893.

Edmund Wetmore, for appellant.

Chas. C. Beaman and Jos. H. Choate, for appellee.

Mr. Justice JACKSON delivered the opinion of the court.

This is a suit in equity, brought April 8, 1887, in the circuit court of the United States for the southern district of New York, by Edward W. Leggett, a citizen of New York, against the Standard Oil Company, an Ohio corporation, for the alleged infringement of reissued letters patent No. 5,785, granted to the complainant March 10, 1874, for an 'improvement in lining oil barrels with glue.'

The original patent, No. 143,770, was issued October 21, 1873. The specification and claim of this original patent are as follows:

'Be it known that I, Edward Wright Leggett, of the city, county, and state of New York, have invented an improved process of coating or lining the inside of barrels, casks, etc., for the purpose of rendering the same impervious to water, oil, or any contained substance, of which the following is a specification:

'This invention relates to that class of processes employed for the coating or lining of the insides of barrels for the above-mentioned purpose, and consists in preparing from any suitable glutinous substance glue, said glue being permitted to attain but a certain consistency, and then applied directly as a coating or lining.

'In carrying out my invention I proceed as follows: Take any of the materials from which glue may be made, and proceed in the usual or any suitable manner for the manufacture of glue until the soup has attained a certain consistency.

'This consistency must be considerably less than that which is required wherein semifluid, solid, or cake glue is to be produced, and while it is in this half-finished state, so to speak, it is applied directly to the inside of the barrel or cask, where, after due evaporation, it will be found that said cask or barrel is lined thoroughly and completely with glue, inasmuch as a pressure of steam generated by the heat applied is sufficient to force the thin glutinous fluid well into the pores and recesses of the wood, thus insuring a perfect lining.

'I am aware that barrels, etc., have been lined or coated with glue when said glue has been subjected to process of reduction by dilution from its original consistency to a sufficiently liquid state, but I am not aware of any process wherein the glutinous material has heen permitted to attain only its proper consistency and then applied directly, thus saving the time, labor, and expense heretofore employed by continuing the manufacture of the glutinous soup until it has attained a semifluid or gelatinous consistency, thus necessitating a reduction by dilution and reheating before it is fit for application, as set forth in this specification, traveling over, as it were, the same ground, backward and forward, two or three times, whereas by my process this trouble is entirely dispensed with by operating as within described.

'This invention has nothing to do with the glue-lined barrel as an article of manufacture, but relates particularly to a new and inexpensive process of constructing a glue-lined barrel, cask, etc.

'Heretofore the glue has been taken in its complete state as an article of manufacture, has been reheated, diluted, and then applied, but such a process necessarily carries with it all the expense of preparing the glue at first as an article of trade or commerce.

'My process contemplates taking the glue when at a proper consistency, and applying it to the inside of the package, permitting it to harden for the first time upon that surface.

'I claim as my invention:

'The within-described process of coating or lining the inside of barrels, casks, etc., with glue, wherein the glutinous material, instead of being produced by reduction from a previously solid state, is permitted to attain only a certain liquid consistency, and is then applied to the package, and permitted to harden thereon for the first time, substantially as herein set forth and described.'

An application for the reissue of this patent was filed February 2, 1874, and contained substantially the same specification. It repeated the claim of the original patent, and, in addition thereto, made a second claim for 'a barrel, cask,' etc., 'coated or sized by the material any by the mode or process substantially as herein described.' On February 6, 1874, the examiner rejected the second claim thus made, for the reason 'that a barrel coated by the process described has no features or characters to distinguish it from a barrel coated with glue as prepared in the ordinary way.' Thereafter the patentee amended the specification on which the reissue was applied for by inserting the following:

'The distinguishing feature of this improvement may be found on examination to be the superior integrity of the lining by the use of soup glue. By its peculiar character it is more freely absorbed by the wood, penetrating into fiber deeper than by the ordinary mode. Hence the sizing or coating is not only upon the surface, but penetrates into the wood, thereby presenting a thicker covering to the action of the oil, and this sizing is not liable to be broken off or cracked in handling the cask, as part of the coating is absorbed into the fiber and cells of the wood, which gives additional strength to it.'

The reissue was thereupon allowed March 10, 1874, with a second claim for 'a barrel, cask, etc., coated or sized by the material and by the mode or process whereby it is absorbed into and strengthened by the wood fiber, substantially as herein described.'

In both the original and reissued patents the specifications disclaim any idea or invention in a glue-lined barrel as such. The first claim of the reissue, like the first claim of the original, is limited to a process, and the specification of the original declares that the invention 'relates particularly to a new and inexpensive process of constructing a glue-lined barrel, cask, etc.' The reissued specification broadens this description by adding at this point the following words: 'Better adapted to the purpose designed by coating and sizing, as set forth, than by the ordinary means;' and by the additional paragraph in the specification of the reissue, above recited.

Among the defenses set up in the answer were (1) noninfringement; (2) want of patentable novelty in the invention; (3) anticipation thereof by various other specified American patents; and (4) prior use of the patented process by a large number of persons in New York, Pennsylvania, Ohio, and Massachusetts, whose names are given.

After replication filed, and after some of the proofs had been taken by the respondent on the question of prior use of the patented invention by other persons, the complainant, by leave of court, filed an amended bill, setting up, in addition to the averments of the original bill, the claim that, prior to the issue of his original patent, he had disclosed his secret or process to the defendant company on its promise that no use would be made of the process, or any part of it, without his consent; but that the defendant, disregarding this promise, did use said process without his permission, and thereby violated its said agreement with him, by reason whereof the defendant, in equity, should be estopped from denying or in any way questioning the validity of the complainant's invention and the letters patent issued therefor.

The defendant filed, a supplemental answer, denying the new averments of the amended bill, and interposed the defenses of the statute of limitations and of laches, so far as the amended bill sought or attempted to hold it liable in any way on the alleged promise not to use complainant's secret or process. Replication having been filed, and voluminous proofs taken on the questions presented by the pleadings, the court, on the hearing upon the merits, entered a decree dismissing the complainant's bill with costs. From that...