Steinfur Patents Corporation v. J. Meyerson, Inc., 4940

• Decision Date: 09 September 1931
• Docket Number: 4988.,No. 4940,4989,4939,4940
• Parties: STEINFUR PATENTS CORPORATION v. J. MEYERSON, Inc., et al. SAME v. ICELAND FUR DYEING CO. et al. SAME v. WILLIAM BEYER, Inc., et al. SAME v. KARTEN et al.
• Court: U.S. District Court — Eastern District of New York

56 F.2d 372 (1931)

STEINFUR PATENTS CORPORATION v. J. MEYERSON, Inc., et al.

SAME v. ICELAND FUR DYEING CO. et al.

SAME v. WILLIAM BEYER, Inc., et al.

SAME v. KARTEN et al.

Nos. 4940, 4939, 4989, 4988.

District Court, E. D. New York.

September 9, 1931.

COPYRIGHT MATERIAL OMITTED

Edward M. Evarts, Christopher C. Cousins, and Morris H. Wolsky, all of New York City, for plaintiff.

Alexander A. Mayper and Frederick Breitenfeld, both of New York City, for defendants.

CAMPBELL, District Judge.

The four above actions were tried separately, but for convenience they were briefed together.

The issues involved therein are largely the same, differing of course in each action as to the alleged infringement and in some other particulars that will be noted.

Each action is brought by the plaintiff in equity for relief by injunction and damages for the alleged infringement of patent No. 1,564,378, issued by the United States Patent Office to Hyman Stein, William E. Austin, and Irving Liebowitz, assignors to Stein Fur Dyeing Company, Inc., for improvement in bleached and dyed furs and the like, and dated December 8, 1925, and patent No. 1,573,200, issued by the United States Patent Office to Hyman Stein, William E. Austin, and Irving Liebowitz, assignors to Stein Fur Dyeing Company, Inc., for improvement in bleaching and dyeing furs and the like, and dated February 16, 1926.

The applications for both patents were filed on May 3, 1924.

On the 2d day of January, 1929, both patents were duly assigned by Stein Fur Dyeing Company, Inc., to Fur Patents Corporation, which last-named corporation, on March 21, 1929, duly changed its name to Steinfur Patents Corporation, the plaintiff in this action, by a certificate filed in the office of the secretary of state of the state of New York, and its title to the patents in suit is unquestioned.

These suits are each based on all the claims of each of the said patents in suit.

The defendants in each case interposed answers raising the defenses of invalidity by reason of inoperativeness and anticipation by prior publications and noninfringement, and in the two last above-entitled actions, to wit, against William Beyer, Inc., et al., and against Samuel A. Karten et al., respectively, the defendants interposed answers raising the issue of invalidity of the patents by anticipation by prior use.

In the first and second above-entitled actions against J. Meyerson, Inc., et al. and against Iceland Fur Dyeing Company et al., respectively, the defendants attempted to plead anticipations by prior use, but failed to make such plea of anticipation in accordance with the requirements of section 4920 of the Revised Statutes (35 USCA § 69), and the evidence offered in those actions to sustain the plea of anticipation was refused by the court, and therefore in those cases there is no question of anticipation by prior use to be considered.

Both patents in suit have previously been involved in litigation in this district, in a case entitled Stein Fur Dyeing Co., Inc., v. Windsor Fur Dyeing Co., Inc. (Equity No. 3315), in which after trial I held both patents in suit to be valid and infringed. 31 F.(2d) 128.

No appeal was taken from the decree entered in that suit.

Both patents in suit were also involved in litigation in this district in two other cases, namely, Steinfur Patents Corporation v. Meisel-Galland Co., Inc., et al. (Equity No. 4941),¹ and Steinfur Patents Corporation v. Sealect Fur Dyeing Co., Inc., Aaron Gellen and Philip Gellen (Equity No. 4938),¹ in which inquests were taken before this court, Judge Byers presiding, and interlocutory decrees entered on the 22d day of October, 1930.

In the case against Meisel-Galland Company, Inc., et al., the plaintiff having waived an accounting, a final decree was entered on the 9th day of December, 1930.

All of the defendants in each of the above-entitled actions, as well as the defendants in the aforesaid cases, against Meisel-Galland Company, Inc., et al., and against Sealect Fur Dyeing Company, Inc., et al., have been members of the Fur Dyers' Alliance, a membership corporation which was organized in June, 1930, to defeat the patents in suit, and have contributed to the defense of all of these actions, including the said actions against Meisel-Galland Company, Inc., et al., and against Sealect Fur Dyeing Company, Inc., et al.

Mr. Jacob Meyerson and Mr. Benjamin Meyerson were individually defendants in the said action against Meisel-Galland Company, Inc., et al., and named in the decree, and by the injunction were individually enjoined from further infringement.

J. Meyerson, Inc., and William J. Beyer, Inc., were also members of the Fur Dressers' and Fur Dyers' Association, a membership corporation, which paid for the defense in the said case against Windsor Fur Dyeing Company, Inc.

The first (the product) patent in suit, No. 1,564,378, outlines the process described in the second patent in suit, No. 1,573,200, and is for an article of manufacture, a fur skin or the like, described in three stages, claims 1 to 10, inclusive, and 21 and 22 cover the first, the impregnation stage, with the acceleration and protective agent; claims 11 to 16, inclusive, cover the article in the second, the bleached stage, and claims 17 to 20, inclusive, and 23 and 24, cover the article in the bleached and dyed stage.

The second (the process) patent in suit, No. 1,573,200, is for bleaching and dyeing furs and the like, and is described in three stages. Claims 1 to 5, inclusive, cover the first, the preliminary treatment with the reducing compound which is to serve as a protective and accelerating agent in the subsequent bleaching operation. Claims 6 to 14, inclusive, cover the second, the bleaching operation, and claims 15 to 24, inclusive, cover the third, the bleaching and subsequent dyeing operation.

Generally, the process described consists in first subjecting the fur skins, or the like, to a washing or killing operation, and then treating them by immersion with a solution of a protecting and bleach accelerating agent, such as ferrous sulphate, to which may have been added ammonium chloride as a preservative agent. The skins are then rinsed, hydro-extracted, and then immersed in a bleaching solution such as hydrogen peroxide, and the skins rinsed and dried after the bleaching operation is completed.

The treatment of the skins with ferrous sulphate or its equivalent protects the skins from injury by the subsequent bleaching operation, and accelerates the bleaching operation.

The subjecting of naturally relatively dark skins to the bleaching operation by the use of hydrogen peroxide, or its equivalent, results in their attaining a relatively light color, capable of being successfully dyed any color the manufacturer may desire.

It is generally described in the specification of the process patent, No. 1,573,200, as follows: "While not limited thereto, our present invention finds particularly successful application in the bleaching or decolorizing, and subsequent dyeing, of dark colored fur skins which may, by means of the method of the present invention, be bleached or decolorized without impairing the strength or texture of either the leather or the hair of such fur skins, and which may thereafter be dyed the same colors as can at present be applied only to white or very light colored furs, which white or light colored furs are, as well known to those skilled in the art to which the present invention relates, comparatively expensive, the combined bleaching or decolorizing and subsequent dyeing operations requiring, under the conditions of the present invention, only as much time, in the average case, as the ordinary fur dyeing process alone."

The specification further states: "It is, however, to be clearly understood that our invention is not limited to the specific embodiments thereof herein described for purposes of illustration only, and that the process may be applied with almost equal success to the bleaching or decolorizing and subsequent dyeing of other fibrous products, particularly of animal origin, than the fur skins here specifically described."

The specification also says:

"The following is a specific example of one mode of applying the method of the present invention, it being understood, however, that the following description is given merely by way of illustration and that the process is not limited to the specific details of the following illustrative example:

"Brown moufflons are washed or `killed' in an alkaline solution, for example, a solution of sodium carbonate. This washing operation ordinarily requires from about 2 to about 3 hours. The washed or `killed' skins are then rinsed and thoroughly hydro-extracted. The skins are then immersed in a solution of the protective agent, such as in a solution of ferrous sulphate, and there allowed to remain over night. While the strength of the ferrous sulphate solution or its equivalent may vary within considerable limits, we prefer to use an aqueous solution of ferrous sulphate of a strength of from about 0.5 to about 5.0 per cent. of the solid crystallized ferrous sulphate, by weight. Such a solution may or may not contain the stabilizing agent. If a stabilizing agent, such as ammonium chloride, is used, we prefer to use it in an amount approximately equal to the amount of ferrous sulphate used and equalling from about 0.5 to about 5.0 per cent. of ammonium chloride, by weight.

"The fur skins or the like, after having been soaked for from about 8 to about 12 hours in the solution of the protective agent, with or without the addition of the stabilizing agent, are then rinsed and hydro-extracted. The treatment apparently impregnates or fills the voids and interstices of the fibres with the solution of protective agent. The fur skins thus treated are now immersed in a solution of hydrogen peroxide or equivalent bleaching agent. However, in place of hydrogen peroxide, we may use other...