The New York herald. [volume] (New York [N.Y.]) 1840-1920, 1852-10-09
John EaskiDs, William sudson, anS James A. porr


have not been made parties
Haskins was but mere hcensee o. the cam
plainant; and although such licensees may 90 nene-
fitted indirectly nv decree IN favor 81 coupltnant,
tney are moi necessary parties Besi les, ne agree
ment WITH Haskins, if not surrendered 70 plaintiff,
has been long abandoned, and cannot be hfoked -
affect the merits Of this case n ouy manner
The assign ments 10 Dorr and JudsOn contain Ger
tain words, which. il taken alone, would convey
legal title 70 certain undivided interests il the
patents but when we examine the whole instra-
ment, il clearly appears tEat the Intention OF tle
parties was lot Go convey the legal title 90 any
portion of the patent Is reserves the whole and
sole power Of disposal and, consequently, t.le TO
Goodyear. Derr and JudsoR are ceSfu, qup trusts,
entitled TO share Of the profits made by snch sales
The defendant has dealt With Goodyear Dor aud
Jadson are no parties to the contract The iDjgno-
tion, If decreed. may be beneficial TO them, and
they may be entitled 10 a share OF the damages
recovered in their settlement with Gooiyelc
We do not think that they are necessary
as parties, in order that the Court may
make full and final decree They were
present in Court, are willing to be made par
ties on the record, if necessary, and if any diff
Guilty should be anticipated on that subject, the
Court will suspend the decree till they are made
parties, and consent to be bound by it. See Story,
on Ed pl S2T We do not, therefore, consider
this Oifc ulty as such one rs should stand in the
way Of our proceeding to final decree in this case.
II. Another objection which the defendant re-
sists the decree for injunction is, that the COM
plainan has not established his title at law 1t has
been argued by the counsel for defendant that the
verdict of jury the question of the validity Of
patent is absolutely required by the practice Of
Courts OF Chancery, before granting final I'M unc-
ton and that this is right or privilege which
the Court is bound to accord to the defendant, when
the answer takes issue on this point.
l. is true that in England the Chancellor will
generally not grant final and perpetual injunction
in patent cases, when the answer denies the va
ldity Of the patent, without sending the parties to
law to have that question decided But even there
he n or roctia
founded more on convenience than necessity II
always rests the sonnd discretion of the Court.
A trial at law is ordered by Chancellor to inform
his conscience; not because either party may de-
mand it as right, or that Court Of Equity is in
competent to judge Of questions of fact, Of legal
titles.
In the courts of the United States, the practice is
by no means so general as in England, or as it would
be here il the trouble Of trying issues at law de-
volved upon different court
Cases involving inquiries into the most omplex
and difficult questions of mechanics and philosophy
are becoming numerous in the courts Often aues-
tions Of originality, and Infringement of patents, do
not depend so much on the credibiity of witnesses
or the weight Of oral testimony, as on the appica-
ton OF principles OF science and law to admitted
facts. 1t is true, that in matters Of opinion, both
mechanics and learned professors will differ widely.
But still the question is not to be decided by the
ber credibiity, or respectabty, of such witnesses;
but BY the force and weight Of the reasons given for
their respective opinions It is no reflection on trial
ten out OF twelve jurors do not understand the prin-
cpes of science. mathematics, philosophy neces-
sary to correct judgment of the Besides much
of the time Of the courts is lost, where twelve men
agreed, the conscience of the Chancellor instead Of
feeling enlightened, rejects it altogether.
select or special jury of philosophers, if they
Dc got would .bs perhaps not salts
involving the validity Of Morses telegraph patents
which was heard in Philadelphia, final injunction
was decreed without verdict, to establish the pa
tents; and many other cases might be cited from
DINER circuits, II necessary, In support Of this prac
tice, showing that the courts of the United States
do not always consider it proper exercise Of their
discretion to order ouch Issues to be tried at law
before granting final injuucsi lion.
In the present case there are many reasons why
the Court will not thus exercise their discretion
Because this case has been set down for final
hearing on the exhibits and proofs, without any
motion or order of the Court for such an issue.
After patient hearing of very able counsel
and careful consideration Of the testimony, the
Court feel no doubt or difficulty on these questions
which would be removed or confirmed by verdict
3 1t would require three or four weeks, at least,
to try this case before jury, if this library Of testi
months, if the witnesses were examined rica uoce,
as they probably would be and, after all this ex-
penditure of time and labor, it is even more than
probable, that from the confusion created by tho
great length of the testimony and argument in
court, or the force and effect Of those urged from
without TO verdict would be obtained, and most GER
tainly none that would alter the present conviction
Of the Court.
4. But even tit were the right of the defendant
to demand such issue in ordinary cases. there are
sufficient reasons why it should not be accorded in
this.
the plaintiffs patents soon after they we're Issued
Actions at law we're brought against him and his
agents the cases were prepared for trial the de-
fendant found he could not defend himself, and
hn rnn1 20 ..s,-x ..,I- IL
suits ; he paid damages for his infringements
he purchased q license to use plaintiffs disco
very in the manufacture o: shirred goods
he covenanted not to use it in the manufacture of
any other than the articles specified in his licenses
he does not allege any mistake Misrepresentation,
or the discovery ofany new evidence or fact since that
time, or that any one but himself disputes the
plainants rights. or invades them with impuuity.
All these facts are apparent on the face Of the plead
ings, and do not entite the defendant to any claim
OF favor in the use of discretion, to any ac-
tion of the Court which will add to its enormous
expenses, and greatly protract the results of this
ILL., Without recurring the aid Of Jury, we shall
therefore proceed examine the questions, both of
fact and law which fleet the validity Of complain
ant $ patents.
The patents are themselves sufficient prin, facte
evidence that the patentees the original inven
tiers or dscoverers Of the things patented and that
the same are new and useful Since the patent act
of 1896, the Commissioner Of the Patent Office acts
2uas, juoicialy on these subjects. He is bound to
inquire and decide them, before granting patent.
But as they proceed, ps'te, their action is no.
conclusive those who we're not parties to the pro-
ceedng The burthen of proof therefore. lies on the
defendant, TO show that any other persons than Hay
ward and Goodyear were the original inventors or
discovers Of the things patented
To give history of the various experiments on
the substance called caoutchouc or india rubber and
OF their success failure, previous to those Of Hay
ward and Goodyear, or to notice particularly the
testimony Of each of the hundred witnesses who
have betn examined, would require us to add
another to the nun erous volumes which slre idy
cunber this case Being unwilling to infict on
ourselves the labor Of writing. aud others that Of
hearing CT readit such treatise, we shall not at
tempt to yndicate the correctness of decision by
anai5 zing the testimony, and arraying the volume.
page, and folio, which iustifes our CONCLUSIONS but
shall merely state the results to which we have ar
rived, after careful consideration Of the whole case
Previous to the years 1884 and '35 many expert
mtnts had been made, and much capital expended
in attempts TO manufacture caoutchouc or india rub.
Der; or rather to employ il in the manufacture OF