Societe Anonyme du Filtre Chamberland Systeme Pasteur v. Allen

• Decision Date: 31 August 1897
• Docket Number: 1,344.
• Citation: 84 F. 812
• Parties: SOCIETE ANONYME DU FILTRE CHAMBERLAND SYSTEME PASTEUR et al. v. ALLEN et al.
• Court: U.S. District Court — Northern District of Ohio

84 F. 812

SOCIETE ANONYME DU FILTRE CHAMBERLAND SYSTEME PASTEUR et al. v. ALLEN et al.

No. 1,344.

United States Circuit Court, N.D. Ohio, Western Division.

August 31, 1897

This is a bill by the plaintiff as the assignee of Charles Edward Chamberland, claiming as the American patentee of the well-known Pasteur filter. The patent involved is that of February 16, 1886,-- No. 336,385. Besides the ordinary allegations charging infringement against the defendants, the bill contains this allegation: 'And your orators further show that the validity of said letters patent has heretofore been affirmed, after strenuous litigation, by various decrees in equity in several of the circuit courts of the United States and in the circuit court of appeals for the Sixth circuit, and that the public have long and generally acquiesced in that validity. ' The bill then alleges that the defendant Allen had been the agent of the plaintiff the Pasteur-Chamberland Filter Company at Toledo, Ohio; that he became familiar with the business of the company, and built up a profitable business, which he sold out with his principal's consent, but continued in the confidential employment of the principal for the purpose of detecting infringements; that in that way he became familiar with the processes of manufacture and with the business of plaintiff and, after this, produced a counterfeit imitation of the filters made under the patent, and introduced the said counterfeit imitation to the market, greatly to the plaintiff's damage. It contains the usual prayer for injunction, account, plea for damages, etc.

The specifications of the patent, after describing the unsatisfactory condition of filtration through burnt brick and various other materials used for the purpose, states that, however efficient the above-named substances may be for filtering purposes, they do not 'retain all germs or microbes or extremely fine organisms which are in suspension in the water or other liquid, such as in infected blood taken from an animal having died of splenic fever, or generally any blood infected with microbes. * * * My invention is designed more completely to hold back and retain such germs; and it consists of a compound to be used for filtering water, wines beverages, and all liquids generally. ' 'The compound is formed, substantially of clay, or any other suitable clay, and porcelain earth, or its equivalency hereinafter named. The clay is diluted in water, and then mixed with the porcelain earth or its equivalents. The porcelain earth is ground or reduced to fine powder in a suitable mill, after having been previously baked in any suitable kiln. The proportions are from 20 to 40 per cent. of clay to 60 or 80 per cent. of porcelain earth or its equivalents. They may, however, vary more or less. I wish it, however, to be understood, that I do not limit myself to the above-named substances, for the same, or very much the same, results may be attained by using, for instance, silex, magnesia, or its equivalent, instead of porcelain earth. ' 'The above-described compound is preferably intended for filtering liquids under pressure, owing to its being porous but to a small extent; and for this purpose any suitable filtering apparatus may be employed. ' 'The manufacture of the filtering bodies may be effected by casting, molding, or turning, as in the manufacture of pottery ware. The filtering body is then baked in a biscuit or other kiln, in the usual way; the temperature at which it is baked ranging, say, from 1,850 degrees to 2,400 degrees, Fahrenheit. ' 'A filtering body produced from the above compound is homogeneous, and fulfills the required conditions for filtering the hereinbefore named substances, and thereby obtaining the results herein mentioned. ' 'I do not wish to be understood as laying claim, broadly, to the materials hereinabove mentioned as a filtering compound, but only when they are treated as above specified.'

The patentee then claims as follows: 'I claim a filtering compound formed of porcelain earth, baked and reduced to a powder, and pipe clay¢ combined in the proportions set forth, the said compound being baked substantially as set forth.'

The answer, so far as it is necessary to state its contents, denies that the plaintiff's assignor was the first inventor in this country or elsewhere, or that the alleged invention was not known in this country at the time of his application; denies that the defendant has made, used, or sold any of the compound contained or embodied in the invention set forth and covered by the patent; denies any infringement or injury to the plaintiff. It alleges that the compound has long been well known to those skilled in the pottery art, and names a great many persons acquainted with it before the issuance of the plaintiff's patent; alleges that it was anticipated by many other patents, which are numerously named. It also alleges that the compound was well known to named persons in France, and that it was largely on sale there and elsewhere and in the United States prior to the issuance of this patent; that substantially the same compound and process was in very old and common use among the people in connection with cisterns, wells, the cells of galvanic batteries, etc., and states that it was thoroughly well described in many books of science and art, which are named and described in the pleadings. It alleges that while the patent was pending in the patent office, under the demand of the commissioner of patents, the patentee was required to so limit and confine his claim that he cannot now ask for a construction so broad as that put upon it by the bill, and so broad as to cover the contrivance used by the defendant. The answer denies any acquiescence by the public, and especially denies that the patent has been affirmed by any final decree of any court of the United States, and alleges that the plaintiffs had begun many suits against divers alleged infringers, but had designedly and purposely failed and neglected to prosecute any of them to a final decree. It denies that the defendant Allen was the special or confidential agent of the plaintiffs, except that he says that he was a dealer in filters, and purchased and sold the plaintiffs' filters until he found that they were not marketable, because of their high price, etc.; sets up that the filters manufactured by the plaintiffs have not been marked 'Patented,' as required by law; and pleads also that the alleged invention was patented in Great Britain and in Austria, and that this patent is subject to the life of the patents in those countries respectively, but it does not aver that the patents have expired in either of those countries.

The proof submitted on this motion consists of affidavits, counter affidavits, documentary proof, and the file wrapper of the patent office, certified transcripts from the records of the courts, etc.

Paul A. Staley, for complainants.

Almon Hall, for respondents.

HAMMOND J.

(after stating the facts). When this argument was first presented, there seemed to be no escape from the apparently conclusive precedent found in the case of Blount v. Chamberland Systeme Pasteur, 3 C.C.A. 455, 53 F. 98, in which our own circuit court of appeals had pronounced in favor of the patent, to say nothing of the other cases relied upon where the patent had been involved. That court was then acting under the authority of the case of Watch Co. v. Robbins, 6 U.S.App. 275, 3 C.C.A. 103, 52 F. 337, since overruled in the case of Bissell Carpet-Sweeper Co. v. Goshen Sweeper Co., 19 C.C.A. 25, 72 F. 545. But whether, under the authority of the one or the other of those cases, the judgment in Blount's Case, supra, cannot be taken as at all final, nor in any sense conclusive for our judgment here. Mr. Circuit Judge Jackson, in rendering the opinion, expressly disclaims any consideration of the validity of the patent, further than to ascertain whether the preliminary injunction which had been granted by the circuit court was an improvident exercise of its legal discretion, and, as the case appeared upon that record, he held that it was not; and that is all there was in that case. It is true that in presenting the prima facie case of the plaintiff for a preliminary injunction the court considered particularly the prior patents then in evidence, and pronounced that they were not sufficient as against the prima facie presumptions which had been found in favor of the patent of the plaintiff 'to clearly show its invalidity'; and on the proof then before the court long public acquiescence in the patent was regarded as an important fact towards establishing the plaintiff's prima facie case. But, mainly, the decision seems to have been based upon the defendant's prior business relation to the plaintiff, which it is said 'presented a strong equity in favor of the complainant, if it did not estop him from denying its validity under the authorities.' On the question of infringement, as the question was then before the court, the learned judge says this:

'If, as the appellant's counsel contends, the granular element of the patented compound is confined to baked porcelain earth ground or reduced to fine powder, the question of the infringement would be doubtful; but we are not prepared to hold that this is the proper construction to be placed upon the specification and claim of the patent.'

The court then proceeds upon the face of the patent to hold that it is at least open to a broader construction than that suggested in the quotation from the opinion just made. But it is entirely evident from the opinion itself, and from an inspection of the record in that case, filed in evidence here, that the proof presented and set up in the answer in this case, coming from the...