United Nickel Co. v. Manhattan Brass Co. of the oxide of nickel, leads to such injurious effect. Potash or soda may be produced in the solution, if the salts of potash or soda are introduced into the solution, unless such care is taken as to the surrounding conditions, that such salts are not decomposed. The patentee points out the fact, that the solution must be so used as to be free from the presence of potash or soda. The salts of potash and soda are not potash and soda, and, unless decomposed, so as to liberate potash and soda, produce no injurious effect. When it is shown that the liberation and consequent presence, but for a minute space of time, of potash and soda, but sufficiently long to produce a precipitation of the oxide of nickel, result from the decomposition of the salts of potash and soda, and produce the injurious consequence referred to, and when it is also shown that those salts, though present, produce no such injury, if not decomposed, it requires very strong evidence to arrive at the conclusion that the patentee, in saying that the solution must be so used as to be free from the presence of potash or soda, meant that it must be so used as to be free from the substances that are not injurious and not free from the substances that are injurious. Yet that is what the court is asked to say. The evidence, instead of being to that effect, is decidedly the other way. The language and proper interpretation of the specification were fully considered in the decision rendered in the case against Harris and Weston, and nothing has been presented to cause any change in the views there expressed. On the contrary, the case on the part of the plaintiffs is fortified by the affidavits of Professor Henry Morton and Professor Charles F. Chandler, chemists of eminence, who were not witnesses in the suit against Harris and Weston. Professor Morton says: "I have examined into the state of the art of nickel plating prior to August, 1869, at which time certain letters patent were granted to Isaac Adams, Junior, for improvements in electro-deposition of I have read said letters patent, bearing date August 3d, 1869, and believe that I understand the same, the processes therein described, and the precautions therein given. From my knowledge of the state of the art prior to the publication of said letters patent, there was nothing in any book United Nickel Co. v. Manhattan Brass Co. or journal that would have given such instruction to one familiar with the processes in use for electro-plating with other metals, as would enable him to successfully practice the art of nickel plating, and I believe that the matter set forth in the above mentioned letters patent first gave to the world a process by which electro-plating with nickel could be practiced as an art. The conditions under which metals may be successfully deposited from their solutions by means of an electro-current, vary greatly with different metals, so that what would be favorable for one metal may be fatal to success with another; and there is no evidence, that, at the date of the Adams patent, anything whatever was known of the particular conditions which are essential to success where nickel is employed. It was well known that nickel could be deposited by the battery, and, in a few instances, good deposits had actually been obtained, but, though it had been stated that a deposit of nickel upon various articles by means of the galvanic current would be very valuable if it could be practically carried on in the arts, yet no such practical electro-plating with nickel had ever been carried on. Repeated attempts had only resulted in as many failures, and the conditions necessary to the successful prosecution of this art had never been made public, nor, as I believe, were they known. read all the quotations offered as exhibits in the suit of these complainants against George J. Harris and Edward Weston, having reference to the electro-deposition of nickel, published prior to August 3d, 1869, and have given especial attention. to the quotation from Muspratt-Stohman's Chemie, Theoretische, Praktische, und Analytische, in Anwendung auf Künste und Gewerbe,' vol. 2, page 1188, published in Braunschweig, in 1866, by C. A. Schwetschte und Sohn, and am certain that there is nothing found in any of these books which would so instruct a practical plater as to enable him to carry on electro-plating with nickel, as a business or practical art. As regards the process given in the work just named, and which, as I understand, is conceded to contain the fullest information about nickel-plating published prior to August 3d, 1869-in the first place, I do not consider that it gives sufficient information to enable a practical nickel plater, by United Nickel Co. v. Manhattan Brass Co. simply following its directions, to make even an efficient nickel plating solution; secondly, it does not even suggest any of the conditions which are necessary to successfully carry on the art of electro-plating with nickel, after a practical solution has been made. Dr. Adams was, in my opinion, the first to establish or discover the conditions under which successful nickel plating can be carried on, and I am convinced, by the result of my own experiments, that the conditions essential to practical success are correctly set forth in his patent of August 3d, 1869, and that it is necessary for the successful use of a nickel plating solution, that it should be prepared and used in such a manner as to be free, while the electro-deposition of the nickel is going on, from the presence of potash, soda, alumina, lime or nitric acid, or from any acid or alkaline reaction, and I know, from experiment, that, by a solution so prepared and used, a metallic article can be practically electro-plated with a coating of compact, coherent, tenacious and flexible nickel, of sufficient thickness to protect the metal upon which the deposit is made, from the action of corrosive agents with which the article may come in contact." Professor Chandler gives like testimony in his affidavit. The patent in question has been sustained, on final hearing, in the first and second Circuits. The plaintiffs show that they have granted some sixty licenses under it, in Massachusetts, Connecticut, New York, Ohio, Pennsylvania, Maryland, Maine, and Rhode Island, and that they are willing to grant licenses to responsible manufacturers, on fair and reasonable terms. They are entitled to be protected in their rights, and preliminary injunctions must issue in these cases, as prayed. Dickerson & Beaman, for the complainants. Roscoe Conkling and Frost & Coe, for the defendants. Union Paper Bag Machine Co. v. Pultz and Walkley Co. THE UNION PAPER BAG MACHINE COMPANY ET AL. vs. THE PULTZ AND WALKLEY COMPANY ET AL. IN EQUITY.* The decision in Union Paper Bag Machine Co. v. Pultz and Walkley Co., 15 Blatchf. C. C. R., 160, sustaining the validity of the first claim of the letters patent granted to William Goodale, July 12th, 1859, for improvements in machinery for making paper bags, confirmed. An inoperative and abandoned model, containing a three-cutter knife, existed and was known to the patentee, but he was the first to demonstrate that such a knife would, in an organized machine, cut a blank from a roll of paper in the flat sheet, by a transverse cut, so that the blank, when cut off, would be of the form ready to be folded into a bag. Having done so, he had a right to claim the knife separately. (Before SHIPMAN, J., District of Connecticut, March, 1879.) SHIPMAN, J. Since the opinion in this case was filed (15 Blatchf. C. C. R., 160), the question which will be hereafter considered has been reargued, upon the application of the defendant. The point at issue between the parties is the effect of the patentee's knowledge of the E. W. Goodale model upon the construction of the first claim. It being admitted that such a construction is to be given to the claim as will limit and restrict it to the actual invention which the patentee made, Estabrook v. Dunbar, 10 Off. Gaz. of Pat. Off., 909; Keystone Bridge Co. v. Phenix Iron Co., 95 U. S., 274, the defendants insist, that the invention of William Goodale, which is described in the first claim, consisted simply in his departure from, and improvement upon, the knife found in the E. W. Goodale model, of which knife the patentee is proved to have had knowledge. The precise question is--what was the invention of William Goodale ? *16 Blatchf. C. C. R., 76. Union Paper Bag Machine Co. v. Pultz and Walkley Co. If the E. W. Goodale knife had been an operative and effective piece of mechanism in a machine, the defendants would unquestionably be right, but it was, in fact, simply his idea expressed in a model, and communicated through that model to William Goodale. It was not a perfected but an inchoate invention. But, the defendants say, and this is the thought which runs through the argument of their counsel, that the model fully disclosed to William Goodale that the three-cutter system shown in the model was adequate to cut a bag blank from a roll of paper, suitable to be folded into a bag without further cutting out, and he cannot, therefore, claim broadly such cutting device, per se, but can only claim specific improvements upon the same, which were invented by him, or new combinations. If it is true, as matter of fact, that William Goodale knew that the "three cutter system" was adequate, as a part of an organized machine, to accomplish the result mentioned in the first claim, then his invention was simply an advance in the art, and he can only claim his specific improvement. The proved state of facts is this: An abandoned model of a machine containing the three-cutter system was known and understood by William Goodale, who invented a better cutting mechanism. A model existed, but it had been discarded. The patentee entered the field of invention and attempted to make a paper bag machine. He did not make it in accordance with the model. The model gave him ideas, and these ideas he first worked out to a successful issue. Now it is said the old model was the boundary of his invention, because he knew that the method of the model would have been successful and was adequate to produce a successful result. The error of the defendant consists, as it seems to me, in the position, that the inoperative model, which could not make and never did make a blank, disclosed to William Goodale that its knife was, or could be, an effective cutting instrument in a machine, and that, therefore, his invention consisted solely in departing from the E. W. Goodale knife. The patentee's invention did not consist simply in making an improvement upon a pre-existing invention, because he did not. know, and nobody knew, for nobody had ever made the ex |