New York Filter Mfg. Co. v. Jackson

• Decision Date: 27 December 1898
• Docket Number: 4,159.
• Parties: NEW YORK FILTER MFG. CO. v. JACKSON.
• Court: U.S. District Court — Eastern District of Missouri

91 F. 422

NEW YORK FILTER MFG. CO. v. JACKSON.

No. 4,159.

United States Circuit Court, E.D. Missouri, Eastern Division.

December 27, 1898

John M Holmes and John R. Bennett, for complainant.

Noble &amp Shields and Geo. W. Taussig, for defendant.

ADAMS District Judge.

This is an application for a preliminary injunction to restrain the defendant from infringing letters patent of the United States, No. 293,740, for an improvement in the art of filtration of water. The title to the patent is shown to be in the complainant, and its validity has been sustained after a full hearing, on the merits, in the contested suit of New York Filter Co. v. O. H. Jewell Filter Co., in the circuit court of the United States for the Southern district of New York. 61 F. 840; 62 F. 582. It has also been sustained by the United States circuit court of appeals for the Second circuit in an appeal from the decree rendered in the last-cited case. 13 C.C.A. 380, 66 F. 152. It has also been sustained in the suit of New York Filter Mfg. Co. v. Niagara Falls Waterworks Co., both in the trial court and on appeal in the circuit court of appeals for the Second circuit, on an application for a preliminary injunction. 77 F. 900; 26 C.C.A. 252, 80 F. 924. It has also been sustained in the case of New York Filter Mfg. Co. v. Elmira Waterworks Co., in the Northern district of New York, on an application for a preliminary injunction (82 F. 459; 83 F. 1013), and also in the case of Same Complainant v. Loomis-Manning Filter Co., 91 F. 421. In the several opinions pronounced in these cases, every conceivable question affecting the validity of the patent in question seems to have been considered, and, notwithstanding vigorous defenses made in each case, the result has in all instances been the same. The validity of the patent has been upheld, and injunctions have been granted against its infringement. Under well-settled rules of comity, the matter of the validity of the patent is no longer an open question upon a motion for a preliminary injunction, unless some new defense is interposed, and the evidence offered to support it is 'so cogent and persuasive as to impress the court with the conviction that, if it had been presented and considered in the former case, it would probably have availed to a contrary conclusion. ' Electric Mfg. Co. v. Edison Electric Light Co., 10 C.C.A. 106, 18 U.S.App. 641, 61 F. 834; Wanamaker v. Enterprise Mfg. Co., 3 C.C.A. 672, 53 F. 791, and cases cited. It is contended by counsel for defendant that the case at bar is brought within this exception, by reason of the facts disclosed in the affidavit of the defendant, to the effect that four gentlemen, residents of New Orleans, named Gardiner, Raynor, Eastwick, and Golding, are familiar with certain facts showing that Isaac Smith Hyatt, the patentee of the patent in suit, was not the first discoverer or inventor of the process of complainant's patent (consisting of introducing into the inflow of water to the filter a stream of coagulating fluid), but that, on the contrary, these gentlemen, or some of them, originally imparted information of this process to Isaac Smith Hyatt prior to the time of his application for a patent. Much was said in argument of this motion concerning the disappearance of certain evidence showing the facts disclosed by the New Orleans witnesses from the files of a suit first instituted on this patent in New Jersey, and also concerning the conduct of attorneys in some of the several cases already adverted to, in keeping part of court records in their offices, so that they were not available to counsel for defendant in preparing a defense to this motion. But all these matters are foreign to the inquiry now before the court. The controlling question to be considered is, were the facts disclosed by the New Orleans witnesses before the court or courts which have heretofore passed upon this patent? It does not admit of debate that they were not only before the circuit court and the circuit court of appeals in the former cases adjudicating this patent, but were considered and disposed of adversely to the defendant's contention. The court of appeals says in the case against the Niagara Falls Waterworks Company, supra:

'The affidavits of three gentlemen, that the beneficial character of salts of iron as a reagent was suggested by one or more of them to Mr. Hyatt during his experiments in New Orleans prior to his application for a patent, are inconsequential.'

Judge Shipman, in the case against the O. H. Jewell Filter Company, supra, says:

'The New Orleans affidavits are, in my opinion, unimportant. The information which they contain is unsubstantial in character.'

In the light of the proofs in this case, showing that the facts known to the New Orleans witnesses were brought before the several courts, and in the light of the manifest consideration and disposition of the defense predicated on such facts in the former adjudication concerning this patent, this court ought to be, and, in my opinion, is, foreclosed, in passing upon this motion for a preliminary injunction, from entering upon any original consideration of such facts. I may well repeat the pertinent language employed by Judge Shipman in the case against the Niagara Falls Waterworks Company at an early state of the litigation on this patent:

'It is believed that after an exhaustive litigation upon a patent which is of known importance and has been widely advertised, and after its careful re-examination and a favorable adjudication upon its validity by the appellate court, this class of paper affidavits in regard to priority by individuals ought not to be permitted to delay the owner of the patent from receiving the advantages which accrue from his successful struggle with infringers.'

It is next argued...