Underwood v. Gerber

• Decision Date: 01 May 1893
• Docket Number: No. 217,217
• Citation: 149 U.S. 224,13 S.Ct. 854,37 L.Ed. 710
• Parties: UNDERWOOD et al. v. GERBER et al
• Court: U.S. Supreme Court

149 U.S. 224

13 S.Ct. 854

37 L.Ed. 710

UNDERWOOD et al.

v GERBER et al.

No. 217.

May 1, 1893.

James A. Hudson and Livingston Gifford, for appellants.

A. v. Briesen, for appellees.

Mr. Justice BLATCHFORD delivered the opinion of the court.

This is a suit in equity, brought in the circuit court of the United States for the eastern district of New York, by John T. Underwood and Frederick W. Underwood, against Henry Gerber and Anton Andreas, founded on the alleged infringement of letters patent No. 348,073, granted to the plaintiffs August 24, 1886, on an application filed March 22, 1886, for a 'reproducing surface for typewriting and manifolding.'

The specification reads as follows:

'Our invention relates to an improved reproducing surface, adapted to be employed for obtaining copies of typewriting, or other printed or written impressions, by means of a typewriter or other printing device, or by the employment of a stylus or other writing means.

'Our improved transfer surface is spread upon a sheet or vehicle, and when so applied is adapted to be employed in place of the articles of trade commonly known and designated as 'carbon paper' or 'semicarbon paper,' which are employed by typewriters and others to produce copies of impressions either obtained by a machine or by a stylus, or other writing means.

'[In carrying out our invention we employ, in the manufacture of our improved transfer service, dyewood solutions, or their active principles, which we filter and precipitate with alkalies and mineral salts, or with alkalies, acids, and mineral salts, or with acids or alkalies alone. After the solution has been filtered the precipitate is removed from the filtering device and dried. The precipitate is then mixed with lard oil and wax, or their equivalents, and the mixture is then ground together in a warm state.

'The dye solutions we prefer to employ are obtained from logwood or haematoxylin, the active principle of logwood, Brazil wood, sapan wood, peach wood, madder, or its active principle, alizarine.

'The proportions we find to answer well in producing our improved surface are as follows: Take one pound of extract of logwood, and dissolve the same in one gallon of water, then add to the solution one pound of soda and one pound of mineral salt, using one of the salts of iron or copper,—preferably, sulphate of copper. The mixture thus obtained is then placed in a filter. After the solution has been filtered the precipitate is removed from the device employed for filtering, and then dried, after which the precipitate is ready for use. To every two pounds of precipitate thus obtained, we add one pound of oil and one pound of wax, and then grind the mixture, in a warm state, in what is commonly known as a 'paint' or other suitable grinding mill. The heated mixture thus obtained is then applied to tissue paper, or other suitable paper or fabric, by means of a sponge or other suitable transferring device.

'The paper or fabric to which our improved surface is to be applied is placed upon a heated table, by preference formed of iron, and heated by steam; but this may be varied.

'In place of employing oil or wax, or both combined, we can employ any other suitable oleaginous matter, or combination of oleaginous matter, having equivalent, or approximately equivalent, properties.]'

The claim is as follows:

'A sheet of material or fabric coated with a composition composed of a precipitate of dye matter, obtained as described, in combination with oil, wax, or oleaginous matter, substantially as and for the purposes set forth.'

The answer sets up as defenses want of novelty and noninfringement. There was a replication, proofs were taken, and the case was brought to a hearing before Judge Lacombe, who entered a decree dismissing the bill. His opinion is reported in 37 Fed. Rep. 682. The plaintiffs have appealed to this court. Since the appeal was taken, Frederick W. Under- wood has died, and John T. Underwood and Hannah E. Underwood, as his executors, have been substituted as coappellants with the surviving appellant, John T. Underwood.

Among the proofs introduced by the defendants was a patent, No. 348,072, granted by the United States to the same persons to whom No. 348,073 was granted, dated August 24, 1886, on an application filed March 22, 1886, the specification of which states as follows: 'Our invention relates to the process of producing a transfer surface adapted to be employed upon a sheet or vehicle to take the place of the articles of trade commonly known and designated as 'carbon papers' or 'semicarbon papers,' which are employed by typewriters or others to produce copies of impressions either obtained by a machine or by a stylus, or other writing means.' Then the specification proceeds in the same words that are contained in brackets in the foregoing specification of No. 348,073, leaving out the words that are in italics, and changing the word 'paint' to 'paint mill.'

The claim of No. 348,072 is as follows:

'The coloring composition herein described for the manufacture of a substitute for carbon paper, composed of a precipitate of dye matter, in combination with oil, wax, or oleaginous matter, substantially as set forth.'

This suit was not brought on No. 348,072. The defendants have made the composition of matter described in both of the patents, and have combined paper with it, as indicated in No. 348,073. The only difference in the two patents is that No. 348,073 is for spreading upon paper the composition described in No. 348,072.

The opinion of the circuit court says that, in view of the earlier patents and publicatlons put in evidence, it was difficult to see what novelty or invention there was in taking a coloring substance already known, and applying it to paper; that, if No. 348,072 had been granted to some person the day before the...