New York Filter Mfg. Co. v. Jackson

• Decision Date: 22 November 1900
• Docket Number: 4,159.
• Parties: NEW YORK FILTER MFG. CO. v. JACKSON.
• Court: U.S. District Court — Eastern District of Missouri

112 F. 678

NEW YORK FILTER MFG. CO. v. JACKSON.

No. 4,159.

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

November 22, 1900

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

George W. Taussig, for defendant.

ADAMS District Judge (orally).

This case is now submitted to the court upon final proofs. It was before the court in 1898 on an application for a preliminary injunction, and an opinion was prepared on that occasion which is found in 91 F. 422. As stated in that opinion, the validity of the patent in suit has been sustained on final hearing upon its merits not only in the circuit court of the United States for the Southern district of New York (New York Filter Co. v. O. H. Jewell Filter Co., 61 F. 840; Id., 62 F. 582), but on appeal of the same case in the circuit court of appeals for the Second circuit. Schwarzwalder v. New York Filter Co., 13 C.C.A. 380 66 F. 152. It has also been sustained in several other suits brought to determine its validity in other circuit courts of New York and in the circuit court of appeals, as stated in the former opinion of this court. The opinions rendered in New York have been exhaustive, and have resulted in each case in sustaining the validity of the patent. I do not know of any other patent which has been the subject of more prolonged litigation, and against which the attacks of its opponents have been more determined and vigorous. It would seem therefore, if any case exists in which considerations of comity should prevail, this is one of them. I intimated strongly at the hearing that my notions of the rule of comity would constrain me to hold this patent valid if I became satisfied that nothing substantially new is presented in this record. Conforming to that intimation, counsel for defendant besides arguing the case with great force on the merits, urgently contends that there is no evidence before the court in this case showing that the several patents put in evidence by the defendant as anticipations or as illustrations of the prior art were before the courts for their consideration in the cases heard and determined in New York. It is argued that the only way to prove that all these patents were considered by those courts is to introduce the full records of those cases. On the contrary, it is contended that it sufficiently appears from the opinions rendered in those cases, not only from specific references to patents, but from the classification of subjects treated in the opinions, that all the alleged anticipating or illustrative patents were before the several courts in New York; and it is also claimed that there is satisfactory proof that the patents relied upon by the defendant were not only involved in those cases, but were fully exploited at their hearings. The evidence on this last-mentioned proposition is that of complainant's experts, William Main and Henry Morton. These witnesses were examined in the case now before the court, and shown to have been employed by complainant in most, if not all, of the suits resulting in the decrees already referred to, in the New York courts, and also shown to have been entirely familiar with the records and proceedings in those cases. After so qualifying the witnesses, they were asked if the patents and publications (naming them) which are offered in evidence by the defendant in this case were involved in the prior litigation in New York. They answered, in substance and effect, that all of them were not only in evidence in the prior litigation, but were relied upon by the defendants in those cases, and were thoroughly exploited by their witnesses. It thus appears (if this kind of evidence is competent to show the fact) that everything...