[United States Circuit Court-Northern District of New York.] BARKER v. STOWE. SAME v. NEWHALL. Decided September 2, 1879. 16 O. G., 807. 1. Under Equity Rule 88 an application for rehearing in a patent case cannot be entertained unless made within the term at which final decree was entered and recorded, such cases being appealable to the Supreme Court. 2. An affidavit in support of a motion for a rehearing is not sufficient if it merely states that the party "made every effort to obtain the testimony (rebutting), but was not aware that he could do so," without stating what efforts were made, or that he visited any of the places mentioned or saw any of the persons named in the testimony sought to be rebutted. 3. If the plaintiff is surprised at the testimony of one of his witnesses, he may ask time to investigate in regard to it, on the ground that no notice of it had been set up in the answer. Mr. George E. Buckley for plaintiff. Mr. Walter L. Dailey for defendant. BLATCHFORD, J.: These are motions to vacate the decrees in these causes and to reopen the causes for the admission of further evidence. The decrees were made in the June term, 1878. The plaintiff makes an affidavit that after the defendants had taken their testimony he "made every effort to obtain rebutting testimony, but was not aware that he could do so; that some time after the rendering of the decision herein he was up in the New England States and there found the witnesses whose testimony is embodied in the accompanying affidavits;" that "two of the deponents are Mr. Witherill's brothers and one (Mr. Woodbury) his brother-in-law; one a former partner of Mr.Witherill-that is, of Orrin O. Witherill— upon whose testimony the bills in the above cases where dismissed; that finding that the testimony of said Witherill was directly contradicted by all these deponents, he (deponent), thinking that Mr. Witherill's testimony must have been misunderstood, went to Mr. Witherill in Ohio, and the said Witherill gave to him the affidavit hereto annexed, which specifically defines all the uncertain facts of his former testimony, sets forth a radically different state of facts, and is such an affidavit as, if entered regularly upon the records of the case by way of evidence, would materially affect and change the judgment of this court;" that "this evidence is newly discovered by deponent;" and that "there was nothing in the evidence of Witherill when upon the stand to lead deponent to find this present evidence." Rule 88 in equity provides that No rehearing shall be granted after the term at which the final decree of the court shall have been entered and recorded if an appeal lies to the Supreme Court. These are suits for the infringement of a patent, and, under section 699 of the Revised Statutes, appeals lie to the Supreme Court in them, without regard to the sum or value in dispute. The next term after the term at which the final decrees were entered was the term commencing the second Tuesday of October, 1878, and the motions now under consideration were not given notice of till March, 1879. These motions are motions for rehearings. This would be a sufficient reason for denying the motions. But there is a further difficulty. The affidavits now presented by the plaintiff are those of Orrin O. Witherill, Edwin E. Witherill, of Chesterfield, Massachusetts, a brother of Orrin O. Witherill and associated with him William H. Woodbury; and Otis C. Witherill, in the chainpump business around Plaistow, New Hampshire, Raymond, New Hampshire, and that section; D. L. Tobie, of Lewiston, Maine, who for fiftysix years prior to 1869 lived in New Gloucester, contiguous to Lewiston, and removed to Lewiston in 1869, and has been engaged in the pump business in and about Lewiston for thirty years; Thomas Clark, of Lewiston, Maine, who was in the pump business in Lewiston for ten years before 1879; William D. Ladd, of Manchester, New Hampshire, who from 1866 to 1878 resided in Raymond, New Hampshire; Henry S. Clark, of Toledo, Ohio, who went into the chain-pump business there with Orrin O. Witherill in 1868; A. G. Whittier, of Raymond, New Hampshire, who has resided there for fourteen years last past, and is a brother-in-law of Ladd; George W. Sellars, of Toledo, Ohio; Samuel Brackett, of Lewiston, Maine, who has resided there for thirty years last past; William Sellars, of Toledo, Ohio; William H. Woodbury, of Haverhill, Massachusetts, who resided at Plaistow, New Hampshire, when Orrin O. Witherill resided there, and was his agent in the pump business, and his brother-in-law; Otis C. Witherill, of West Hampton, Massachusetts, a brother of Orrin O. Witherill, and associated with him in the pump business from 1865 to 1871 about Plaistow and Raymond, New Hampshire, and at Lewiston, Maine, and all over that section of country; John H. Seaver, of Plaistow, New Hampshire, who has resided there for thirty-eight years last past; and Elbridge G. Tucker, of Plaistow, New Hampshire. In regard to Orrin O. Witherill's Exhibit A, he testified that he commenced the manufacture of rubber bucket chain-pumps at Plaistow, New Hampshire; that he used Exhibit A from April, 1866, to August, 1866; that he put it into from fifty to one hundred wells wholly in the southeastern part of New Hampshire, one place being Raymond, New Hampshire; and that he put in one for a Mr. Ladd at Raymond. In regard to his Exhibit B, he testified that he made that kind at Plaistow, New Hampshire, from August, 1866, to April, 1867; that he then went to Lewiston, Maine, and made and sold them there for a year; that he put one prior to June, 1870, into a pump at Toledo, Ohio, in a hotel kept by one Sellars; and that Otis C. Witherill, of West Hampton, Massachusetts, Edwin E. Witherill, and William Woodbury, of Plaistow, New Hampshire, and Joshua Brackett, of Lewiston, Maine, bad buckets like Exhibit B. After this testimony was given there was opportunity and occasion for the plaintiff to make inquiries and investigations at Plaistow, Raymond, Lewiston, and Toledo, and there to obtain the evidence of Mr. Ladd, E. E. Witherill, O. C. Witherill, Woodbury, and Brackett. In the affidavits now produced, those relating to the doings of O. O. Witherill at Plaistow are those of E. E. Witherill, Woodbury, O. C. Witherill, Seaver, and Tucker; those relating to his doings at Raymond are those of E. E. Witherill, Ladd, Whittier, and O. C. Witherill; those relating to his doings at Lewiston are those of Tobie, T. Clark, Brackett, and O. C. Witherill; those relating to the hotel at Toledo are those of H. S. Clark, G. W. Sellars, and W. Sellars. These comprise all the affidavits produced by the plaintiff except those of himself and of O. O. Witherill. There is nothing to show that the testimony contained in all of them could not have been produced with reasonable diligence on the first hearing. All that the plaintiff says is that he "made every effort to obtain rebutting testimony, but was not aware that he could do so." He does not state what efforts he made, nor that he visited any one of the places named until after the decision, or saw any one of the persons named in O. O. Witherill's testimony, or caused any inquiry to be made at any one of such places or of any one of such persons. In regard to the affidavit of O. O. Witherill, produced by the plaintiff, it is supplemented by a subsequent affidavit of his produced by the defendants, in which he says that his evidence given when he was examined and cross-examined is substantially true and correct. If the plaintiff was surprised by the testimony of O. O. Witherill, his proper course was to ask for time to investigate in regard to it, on the ground that no notice of it had been set up in the answer. But he did not do that, nor did he set up in the record the want of notice in such a way as to make it available to him. He made his election, and took the risk of the decision, and it is now too late, under the settled rules of practice, for him to obtain relief in this suit. I pass over various defects in the affidavits, such as want of venue, want of notarial seal, verification before a justice of the peace, and verification before the plaintiff's counsel. The motions are denied. [United States Circuit Court-Northern District of Illinois.] IRWIN ET AL. v. MCROBERTS ET AL. Decided July 8, 1879. 16 O. G., 853. 1. On an application for preliminary injunction, a reissued patent containing claims not in the original patent, and alleged to be infringed by the defendant, is to be treated as a new patent, so far as their standing as to acquiescence and acceptance by the public is concerned. 2. That the device patented has never been put on the market as an operative article for sale, nor the patent passed through the ordeal of litigation, nor its validity accepted by the public, are circumstances to be taken into consideration in determining the right of a party to a preliminary injunction. MOTION FOR PRELIMINARY INJUNCTION. Messrs. Coburn & Thacher for complainants. BLODGETT, J.: I am very much impressed with a conviction that the defendants' lantern infringes the claim of the complainants' patents as they are reissued. I do not see, necessarily, any infringement of the plaintiffs' original patent, because the plaintiff did not so broadly claim this bell or deflector, which is one of the important features of the complainants' lantern, in his original patent as in the reissue. It seems to me that the defendants' device around the top of the lantern and below the chimney, by which the air is protected and directed into position, so that it may be drawn without interference from outside currents into the pipes or tubes, is substantially a use of the original bell that was adopted by Mr. Irwin, and especially that it would be an infringement on Irwin's patent of 1870, if that patent is a valid patent. Now, it may be that the Irwin patent of 1870, which to my mind is substantially the defendants' present lantern, would stand on a little different ground. It would at least require a more technical construction to sustain it than it did the Irwin tubular lantern proper, because, as was said in the case of the Irwin patent when it was before this court some three years ago, tubes are older than at the time when Mr. Irwin entered the field, and it is possible when you take the Cochrane device and the Crichfield device and the several others which have been referred to in the proofs in which tubes were used, that you might find in these some suggestion of the Irwin device of 1870. But, certainly, if the Irwin patent of 1870 is valid, I should have no doubt that the defendants' lantern is an infringement on the Irwin patent. There is also a great deal of force in the argument made by the defendants' counsel, that a lantern under the patent of 1870 has never been put on the market as an operative lantern for sale, nor has it passed through the ordeal of litigation or its validity been accepted by the public. With regard to the broader claims in the other patents of Mr. Irwin, under his reissues, they are to be treated as new patents. They have never, as yet, been accepted by the public in the broad sense in which he now asserts them, nor contained or sustained by the courts. There being litigation now pending involving necessarily the questions involved in this case in another district, and in the district where the manufacturer of this lantern resides, it seems to me that is the better place for the litigation to proceed. I will, however, give the complainant an injunction here unless the defendant shall enter into a bond in the penal sum of $10,000, conditional for the payment of all damages which the plaintiff may ultimately recover in case, because that being a case against the original manufacturers, and the original manufacturer having really come here and made himself dominus litus, I think it would be right to condition the bond in that way; or it may be made the other way-a bond may be made to cover such damages as shall be awarded him in this suit. I have on several occasions expressed myself as indisposed to favor this kind of litigation-that is, suits brought against the mere venders of patented goods instead of the manufacturers. I know patentees are much troubled with piracies upon their inventions, and that the law makes the seller liable as well as the maker of infringing goods. But I think the initial litigation, for the purpose of asserting and sustaining the validity of a patent, should be between the patentee and infringing manufacturers. After a patent has been judicially sustained in such a suit, then the patentee should have the full aid of the courts to suppress sales of infringing goods. The defendant here is only an agent receiving goods on consignment, or on commission, or purchasing in the market, it is not disclosed exactly which, and the complainant in this case claims that his patent covers those goods. The manufacturer of those goods, at the time they were made, may not have had that kind of legal notice which a man ought to have to make him liable as an infringer, because non constat they may have been made before this reissue. At the time the Rochester company commenced the manufacture of this lantern the plaintiffs' patent was not as broad as it now is under the reissue. The courts may sustain these new claims as broadly as they are now made; but it is not for the court to intimate whether it will or not. That should be left an entirely open question until the court comes to the hearing, either in this or the other district. But the Patent Office has allowed the patentee to surrender his patent and take the reissue and take these broad claims. That, prima facie, gives the complainant a standing in this court to charge that defendants' lanterns infringe, yet it may appear in the proof that they did infringe at the time that they were actually made and put upon the market, because the patent at that time may not have been so broad as to cover defendants' special device. I think, therefore, while the court has it in its power to allow the defendants to give a bond to protect the rights of the complainants, it is safer to err in that direction than to tie up the defendants by an injunction. I congratulate myself to some extent upon the fact that these patents are now pending before the circuit court of the northern district of New York, where, I presume, they will be tried before Judge Blatch |