Opinion
June 20, 1899.
Appeal from the Circuit Court of the United States for the Western District of Pennsylvania.
This was a suit in equity to enjoin infringement of a patent and for an accounting.
PATENTS — IMPLIED LICENSE TO USE — RIGHTS OF PARTNERSHIP OF WHICH PATENTEE IS A MEMBER.
A patentee of a process for ruby-staining glassware formed a partnership with his father, the sole business of the firm being the coloring of glassware hy the process of the patent, which required, in the treatment of the ware, muffles or kilns of peculiar construction. The partners purchased a plant, and built a number of the muffles, which they used, conducting the business as equal partners, until the patentee's death, after which his father, as his administrator, in good faith and with the approval of the court, sold decedent's interest in the partnership, the value of which depended almost entirely upon the continuance of the business. The purchaser had no knowledge that the process used was patented. The purchaser and the father continued the business in partnership, afterwards admitting another partner, and on the father's death the surviving partners bought his interest. A few additional muffles were also constructed. Two years after the father's death an administratrix d. b. n. was appointed for the estate of the deceased patentee, who commenced suit against the firm for infringement and for an accounting. Held that, under the circumstances shown, the original firm had an implied license to use the process and such number of muffles as might be necessary in carrying on the business in the plant it owned, which rights passed, as the most valuable asset of the business, to the subsequent purchasers, and that a court of equity, on the facts shown, would not deprive them of such rights, especially in view of the long acquiescence of the patentee's representatives.
The present bill in equity is filed by Mrs. Anna E. Mueller, administratrix d. b. n. of the estate of Henry E. Mueller, against Emil F. Mueller and Andrew Stock, co-partners doing business as the Oriental Glass Company, to enjoin infringement of letters patent No. 382,105, issued to said decedent May 1, 1885, for a method of coloring glassware. An accounting is also sought. In the process the glassware is painted with a pigment, and is then burned in a muffle or kiln of a peculiar construction, by methods and means set forth in the patent. The muffles or kilns are of a substantial character, and are built or imbedded in foundations on the ground. On argument several questions were raised, bearing upon the assignments of proportionate interests made by the patentee to different persons pending the original application; of the effect upon those assignments of the substitution of a second application, and the issue of the patent to the applicant on this second application, without mention of his assignees; of the failure of the patentee to record the reassignments made to him by such assignees, and the alleged granting of a license by one of such assignees to one of the respondents, while the ownership of the assigned interest was presumptively in him. In the view we take of this case we have not felt called on to determine these questions, and will pass on to what we regard as the controlling issues, and in doing so will merely state the facts which we deem pertinent thereto. In the fall of 1885 the patentee seems to have perfected the patented process of ruby-staining glass at the glass works of Bryce Bros., in this city, where he worked upon it in connection with his father, C. W. E. Mueller. In the spring of 1886 the Muellers left the employ of Bryce Bros., and, in connection with Florence Werling and Daniel Werling, formed the firm of Mueller, Werling Co., which firm was exclusively engaged in ruby-staining glass by the method afterwards embodied in the patent. Subsequently the Werlings withdrew from the firm, and thereafter the remaining partners, C. W. E. Mueller and Henry E. Mueller, carried on exclusively the same ruby-staining work under the name of the Oriental Glass Company, each partner carrying a one-half interest. On July 19, 1890, Henry Edward Mueller and C. W. E. Mueller purchased, as tenants in common, certain real estate, which was thereafter used by the firm in its operations. An old building stood on it, and a new one was erected, and ten muffles or kilns, specially adapted to carry out the process shown in the patent, were built in the factory by the firm. The patentee took an active interest in the business of the firm (which, as we have said, consisted solely of ruby-staining glass by the patented process), and so continued to do until his death, January 10, 1891.
What were the rights of such firm on the death of the patentee partner? Did his death terminate all rights on the part of the firm, or its surviving member, to use the muffles which had been constructed by the firm's money with the active participation of the patentee? Were these muffles, the sole use and purpose of which depended on the patented process, and the use of which process and muffles alone constituted the business of the firm, — were they, by the death of the patentee, shorn of their usefulness, and resolved into valueless heaps of brick, mortar, and iron bands? Were the business, good will, and assets of the firm to be practically annihilated by a denial of the right to use the apparatus which the firm had built, paid for, and used, with the consent and active paris elaborately drawn, and presents with care the advantages by the use of buckram. The patent contains six claims, the first and broadest of which is as follows: "A hat box or trunk having a lining provided with a rest or support composed of an inner textile material of a springy or elastic nature, such as buckram, and an outer covering of a less resilient nature, as set forth." The defendants have demurred to the bill upon the ground that the letters patent are void for want of invention apparent upon the face of the patent, in view of common and general knowledge. Trunks or hat boxes provided with a frame made of pasteboard or gauze stiffened with wire, upon which a lady's hat can be carried, were well known, and it is also a matter of common knowledge that the bodies of ladies' bonnets are frequently made of buckram, which is a coarse linen cloth, stiffened with glue, or two or three thicknesses glued together. For example, Judge Blatchford, who was examining a patent for a stamped or embossed hat body in Baldwin v. Schultz, 9 Blatchf. 494, Fed. Cas. No. 824, says in his opinion that as early as 1857 bonnet frames were made of two or more thicknesses of muslin stuck together and shaped into the form of a hat by means of smooth dies. The improvement of the patentee was the substitution of a frame of buckram and coarse cloth for a wire and gauze frame, and, although the improvement is stated with much circumstance in the specification, it is a very simple affair, and, inasmuch as everything was told by the patentee except that the frames of bonnets were often made of thicknesses of buckram, the subject of patentability can be as well ascertained upon a demurrer as after proofs have been taken. If the public had not known that bonnet frames could be securely and without injury fast ened by a hat pin thrust through a buckram frame, the patentability of the invention could not be safely attacked, but the patentee simply put into the place of a flimsy frame one which had been known to the milliner as enduring the test of actual use, and the substitution of the improved frame does not rise to the dignity of patentable invention. The demurrer is sustained.