the flame was very short. We do not dwell upon the earlier patents in more detail, because we believe that we have said enough to show that the plaintiffs' cannot be sustained.

Decrees affirmed.

Mr. Justice McKenna dissents.

[Supreme Court of the United States.]

RUMFORD CHEMICAL WORKS v. HYGIENIC CHEMICAL COMPANY OF NEW JERSEY. HYGIENIC CHEMICAL COMPANY OF NEW YORK et al. v. RUMFORD CHEMICAL WORKS.

Decided November 29, 1909.

149 O. G., 834.

EVIDENCE-SUIT FOR INFRINGEMENT OF PATENT-FORMER SUIT-PRIVIES.

The mere fact that defendants in a suit for infringement of a patent contributed to the defense in a prior suit on the same patent against other parties, it not being shown that the present defendants had the right to intermeddle in any way in the conduct of that case, does not render them privies to such prior suit, and the testimony of a witness therein, since deceased, is inadmissible against them to establish infringement.

Mr. Philip Mauro and Mr. C. A. L. Massie for the Rumford Chemical Works.

Mr. Edwin T. Rice and Mr. Willard Parker Butler for the Hygienic Chemical Company.

Mr. Justice HOLMES delivered the opinion of the Court.

These are two suits in equity brought by the Rumford Chemical Company for the infringement of a patent for baking powders; one, No. 9, brought in the third circuit, New Jersey, against the Hygienic Chemical Company, a corporation of that State; the other, No. 121, brought in the second circuit, New York, against a New York corporation of the same name. The two cases were tried on substantially the same record and evidence, with the result that in New Jersey the bill was dismissed by the circuit court of appeals, (154 Fed. Rep., 65; 83 C. C. A., 177,) but in New York the bill was sustained. (159 Fed. Rep., 436; 86 C. C. A.. 416.) Writs of certiorari were granted by this Court.

The defendants rested on the plaintiff's evidence and the question in both suits was whether a prima facie case had been made out. It did not appear that the defendants made or sold baking-powders as such, but the New Jersey company did make acid phosphates for baking-powders and other purposes, and the New York company sold the great part of its products. The plaintiff contended that this acid

phosphate had the characteristics described in its patent, and was made and sold for use in baking-powders, and that the manufacture and sale were an infringement of its rights. A previous decision, (Rumford Chemical Works v. New York Baking Powder Co., 134 Fed. Rep., 385; 67 C. C. A., 367,) establishing the patent, was relied upon as a test case by which the defendants were bound, but, except the final decree, entered after the beginning of the present suits, the record was not put in. It would seem, from a late case, that the plaintiff was correct in point of fact, (Provident Chemical Works v. Hygienic Chemical Co., 170 Fed. Rep., 523,) but the question here must be discussed, of course, on the evidence before the court below. The question is material as bearing upon the admissibility of the evidence of one Clotworthy, since dead, given in the suit against the New York Baking Powder Company, upon which the plaintiff relied.

Clotworthy was the president and general manager of the Clotworthy Chemical Company and was a manufacturer of bakingpowder. He testified to the purchase from the Hygienic Company of New York of a barrel of granular acid phosphate, shown to be similar to that described in the plaintiff's patent. A bill from the New Jersey company and a receipt from the New York company also were produced and put in. The courts in both circuits rightly regarded this as the most important, if not the only evidence to make out the infringement alleged. Therefore it was necessary that the plaintiff should prove that the defendants were privy to the New York Baking Powder Company's case.

To prove privity Heller, the president of the defendant companies, was called and asked as to his testimony on the former occasion. He admitted that he then had testified that

we are manufacturers of granulated acid phosphate and are selling to the trade in the same way as

the former defendants; also that he had testified that

we have [undertaken to assist in bearing the burdens of this defense and have contributed to the defense] financially and otherwise.

By the natural interpretation of the word in the connection in which it was used "we" embraced the New Jersey company, and fairly may be argued to have meant both. Heller swore that these answers were true, but with the qualification that he did not think that the New Jersey corporation contributed financially, and that he did not remember whether it did otherwise. All the courts agree that the privity of the New Jersey corporation was not made out. Probably all, and at least the circuit court of appeals and the circuit court for the third circuit, (148 Fed. Rep., 862,) agree that if Clotworthy's testimony is excluded infringement is not proved. We

should not revise this finding of both courts on the facts, and therefore it follows that the New Jersey decree must be affirmed. The evidence on both sides is discussed in 148 Fed. Rep., 862.

It appears that the New York company contributed to the expenses of the former case. But that fact alone is not enough to warrant a different result. The agreement disclosed in 170 Fed. Rep., 523, was not before the court. We may reject as extravagant the suggestion that the contribution may have been made from charitable motives, and assume that it was induced by reasons of business and indirect interest, but it was not shown that as between the present and former defendants either Hygienic company had the right to intermeddle in any way in the conduct of the case. The Hygienic companies would have been glad to see the Rumford patent declared void and were willing to pay something to that end. That was all and that did not make them privies, and therefore the Clotworthy deposition was not admissible against them. (Litchfield v. Goodnow, 123 U. S., 549, 550.) Whether if it had been admitted, infringement could have been inferred from the sale of a barrel of granular acid phosphate to a manufacturer of baking powder need not be considered. There was other evidence in the case.

Decree in No. 9 affirmed. Decree in No. 121 reversed.

DIGEST OF DECISIONS.

[Opinions of the Attorney-General are indicated by a double dagger (‡); decisions of the Supreme Court of the District of Columbia by the letter a; United States District Court by the letter b; United States Circuit Courts by the letter c; Court of Appeals of the District of Columbia by a star (*); United States Circuit Court of Appeals by the letter d; and Supreme Court of the United States by two stars (**).]

ABANDONED APPLICATIONS. See Access to Abandoned Applications. ACCESS TO GRANTED. Where suit is brought on a patent the record of which shows that one of the claims thereof was allowed in a prior application belonging to the same assignee and was transferred to the application on which the patent was granted, Held that the defendants are entitled to inspect and obtain copies of said prior application. In re Marvin Estate Company, 209.

ABANDONED EXPERIMENTS. See Reduction to Practice, 2, 3. INTERFERENCE-PRIORITY.-Where after making a device which while capable of operation was still in a crude stage L. turned it over to the officers of his company, who laid it aside and later set other employees to work to devise a similar improvement, and it was not until he learned of their work that L. took any further interest in his invention, Held that the device made by L. was a mere abandoned experiment. Lawrence v. Voight, 166.

ABANDONMENT OF APPLICATIONS.

1. APPLICATION-SUFFICIENCY OF ACTION-CORRECTION OF FORMAL MATTERS.— Where claims are finally rejected and the formal requirement that the drawings be corrected to meet the requirement of the rule with respect to artistic merit is also made final, the filing of an appeal within the year following the final rejection constitutes a sufficient action to save the case from abandonment, although the drawings have not been amended as required, the formal objection being such as may be corrected after the final decision on the merits. Er parte Proctor, 3. 2. SAME-SAME.-Where an applicant was notified that certain interferences had been decided in his favor and that the case awaited action in response to previous Office actions, the filing of an amendment containing the claims of a patent and requesting an interference therewith is not such action as the condition of the case required and did not operate to stay the running of the year from the date of the previous Office action. Ex parte Curtis, 13.

3. SAME EXCUSE FOR DELAY.-Delay in prosecuting a case occasioned by the fact that the attorney's file of the application was placed in the file of an interference involving a divisional application which was kept in a part of the attorney's office other than that where his application files were kept, so that his attention was not called to it by his clerk until after the expiration of the year, Held unavoidable. Id.

21895-H. Doc. 124, 61-2-37

567

4. REJECTION OF CLAIMS-INSUFFICIENT Response.Where in response to the rejection of ten claims by the Examiner the applicant filed an amendment only two days before the expiration of the year allowed for action in which eight of the rejected claims were canceled, one left unchanged, one amended, and a new claim added, without mentioning the claim which was left intact and without attempting to point out how the amended claim or the new claim differed from the references cited, Held that the amendment was not a proper response and that the application was abandoned, particularly in view of the fact that the record disclosed that after each rejection of the claims since the filing of the application in 1901 applicant had taken the full period allowed by law for amendment and that he also delayed action on the case for one year after he was notified by the Primary Examiner that the application was abandoned. Ex parte Copeland, 51.

5. AMENDMENT SIGNED BY ATTORNEY APPOINTED BY ONE OF TWO JOINT APPLICANTS.-Where in an application filed by joint applicants the only amendment filed within the year after the Examiner's action was an amendment signed by an attorney appointed by only one of such applicants, Held that the application was abandoned. Ex parte De Forest and Horton, 64.

6. SAME

RATIFICATION BY THE OTHER JOINT APPLICANT INSUFFICIENT.— Where an amendment filed within the year allowed by law for action is held to have no standing, on the ground that it was signed by the attorney appointed by only one of two joint applicants, the ratification of such amendment by the other joint applicant after the expiration of the year is not effective to carry the date of the action back to the date of the filing of such amendment. A ratification may not have a retroactive effect to defeat the express provisions of the statute relating to the time within which a party must prosecute an application to save it from abandonment. Id.

7. REVIVAL-VERIFIED SHOWING NECESSARY.-In a petition to revive an abandoned application the bare statement of counsel as to the existence of facts which would excuse the delay is insufficient. A verified showing has been uniformly held by the Office as requisite to the revival of an abandoned application, except where the records of the Office disclose a reason for the delay. Id.

8. DEVICE HELD TO BE INOPERATIVE-SUFFICIENCY OF AMENDMENT.—Where the Examiner rejects the claims of an application on the ground that they cover an inoperative device and requires a demonstration of the utility thereof and within the year allowed by law for responsive action applicant files an argument attempting to show that the device would operate as set forth in the specification, Held that the application is not abandoned for lack of proper prosecution. Ex parte Viniello, 111.

9. FAILURE TO TAKE PROPER ACTION.-Where the Examiner rejected eight claims and just before the expiration of the year the applicant canceled four of these, amended one, pointed out wherein the other three avoided the references, and added two new claims without pointing out how these two were believed to distinguish over the prior art, Held, that the application is abandoned. Ex parte Copeland, 239. 10. SAME-LONG DELAYS.-Where an applicant relies upon his technical right to delay action as long as possible in each instance, he is entitled to no leniency in the application of the rule which provides that prosecution of an application to save it from abandonment must include such proper action as the condition of the case may require. Id.