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Supporting Hoffman's denial of the alleged contract is the inherent improbability of appellant being turned out of a business of which he was one-fourth owner, without demanding something that would evidence his ownership—an improbability increased by the fact that when his compensation as manager was under negotiation he was not content with an oral contract, but required, and obtained, a written contract. It is hard, too, to believe that throughout ten years appellant would show no interest in his alleged ownership-a lack of interest that continued even after the sale of the property to the United Gas & Electric Company, for nearly a year. We are unable to find that the alleged agreement is established by the proof. On this state of the proof, the decree below must be



(Circuit Court of Appeals, Ninth Circuit. February 11, 1907.)

No. 1,199.

REMOVAL OF CAUSES-CITIZENSHIP OF PARTIES-SUIT BETWEEN NONRESIDENTS. A suit in a state court, in which neither of the parties is a citizen or resident of the state, and which could not, therefore, have been originally brought in a federal court, is not removable.

[Ed. Note. For cases in point, see Cent. Dig. vol. 42, Removal of Causes, §§ 30, 31.]

In Error to the Circuit Court of the United States for the Northern District of California.

J. S. Chapman and Frank McGowan, for plaintiff in error.

J. C. Campbell, W. H. Metson, C. H. Oatman, and F. C. Drew, for defendant in error.

Before GILBERT and ROSS, Circuit Judges.

ROSS, Circuit Judge. This action was originally brought in one of the superior courts of the state of California by the defendant in error to recover for goods, wares, and merchandise by it sold and delivered to the plaintiff in error. The defendant in error being a corporation of the state of Illinois, and therefore a citizen of that state, and the plaintiff in error being a corporation of the state of Nevada, and therefore a citizen of that state, the latter moved the state court for the transfer of the action, because of such diverse citizenship of the parties, to the United States Circuit Court for the Northern District of California, and, upon the filing of the petition and a bond, the case was so removed and tried in the court below, resulting in a verdict and judgment in favor of the plaintiff in the action, from which court the case was brought here for review by writ of error.

Neither party to the action being at the time of its commencement a citizen or resident of the state of California, we must, without reference to the merits of the controversy, upon the authority of the case of Ex parte Abram C. Wisner, 27 Sup. Ct. 150, 51 L. Ed. —, decided by the Supreme Court December 10, 1906 (Advance Sheets), reverse

the judgment, with costs to the defendant in error, and with directions to the court below to remand the case to the state court from which it came, for lack of jurisdiction of the federal court over it. Ordered accordingly.


(Circuit Court of Appeals, Third Circuit. January 16, 1907.)

No. 60.


The granting of a preliminary injunction restraining infringement of a patent by a former licensee thereunder held within the discretion of the court where the validity of the patent had been sustained by a Circuit Court of Appeals and the defense was its invalidity by reason of anticipation.

[Ed. Note.--For cases in point, see Cent. Dig. vol. 38, Patents, §§ 473, 474.]

Appeal from the Circuit Court of the United States for the District of New Jersey.

The following is the opinion of the Circuit Court by Lanning, District Judge:


This cause comes before the court on bill and affidavits. One of the two complainants, the Dececo Company, is the owner of the Frame and Neff Patent, No. 425,416, dated April 15, 1890, for an improvement in water-closets. patent was sustained by the Circuit Court of Appeals of the First Circuit in Dececo Company v. George E. Gilchrist Company, 125 Fed. 293, 60 C. C. A. 207. Shortly after the decision in that case the Dececo Company entered into a contract with the Potteries Selling Company, the other one of the complainants, granting to the Potteries Selling Company an exclusive license to manufacture, use, and sell the invention set forth in the patent within and throughout the United States. The charge against the defendant is an infringement of the patent by manufacturing and selling a closet embodying the invention described in the patent. The defense set up is that of invalidity of the patent. The contention is that the Waring closet, exhibited at the hearing, the essential features of which are described in patent No. 266.404, dated October 24, 1882, was an anticipation of the patent in suit. The Waring patent was not referred to in the opinion of the Circuit Court of Appeals in the Gilchrist Case. In form of construction it differs materially from the closet described in the patent in suit, and also from the closet which the proofs before me show the defendant has been manufacturing and selling. The closet which the defendant is manufacturing and selling is precisely like that which prior to March 28, 1906, it manufactured and sold under a sublicense granted to it by the Potteries Selling Company, and which it then stamped as an invention covered by the patent in suit, and is also very similar to the closet the sale of which was enjoined in the Gilchrist Suit.

In Edison Electric Light Company v. Beacon Vacuum Pump & Electrical Company (C. C.) 54 Fed. 678, the Circuit Court for the District of Massachusetts said: "The general rule is that where the validity of a patent has been sustained by prior adjudication, and especially after a long, arduous, and expensive litigation, the only question open on motion for preliminary injunetion in a subsequent suit against another defendant is the question of infringement; the consideration of other defenses being postponed until after final hearing. * ** The only exception to this general rule seems to be where the new evidence is of such a conclusive 'character that, if it had been introduced in the former case, it probably would have led to a different con

clusion. The burden is on the defendant to establish this and every reasonable doubt must be resolved against him." This rule was approved by the Circuit Court of Appeals of this circuit in Philadelphia Trust, Safe Deposit & Insurance Company v. Edison Electric Light Company, 65 Fed. 551, 13 C. C. A. 40, and was followed in the Circuit Court by Judge Acheson in Woodard v. Ellwood Gas Stove & Stamping Co. (C. C.) 68 Fed. 717, and in Tannage Patent Co. v. Adams (C. C.) 77 Fed. 191. I think it should have controlling influence in the decision upon the application now before me. The new evidence of anticipation of the patent in suit, introduced in this case, is not of so convincing a character as to lead this court, on this application, to refuse to abide by the adjudication in the Gilchrist Case. The consideration of that evidence must be reserved for the final hearing.

The defendant asks that, if a preliminary injunction be granted, it shall be stayed upon the execution by the defendant of a proper bond of indemnity. This request must be denied. The defendant until March 28, 1906, was manufacturing and selling closets of the type described in the patent in suit under and by virtue of a sublicense granted to it by the Potteries Selling Company, by the terms of which license it was required to render to the Potteries Selling Company true reports of its manufactures and sales, and to pay thereon the royalties prescribed by the license agreement. The bill and the affidavits annexed thereto show that, while the license of the defendant was in force and unrevoked, it made fraudulent reports to the Potteries Selling Company of the number of closets manufactured and sold by it for the purpose of evading the obligation of the agreement to pay a royalty on each closet manufactured and sold. This fraudulent conduct the defendant has been compelled to admit on being confronted with letters written by an agent of the John Douglas Company, a company admittedly in control of the defendant company. The defendant's request, therefore, does not commend itself to the conscience of a chancellor. It is not in a position to induce this court to permit it to carry on a business for which it may ultimately be required to render an account. The preliminary injunction applied for will be granted.

Edward C. Colston and Clarence E. Mehlhope, for appellant.
Marcus B. May and R. V. Lindabury, for appellees.
Before GRAY and BUFFINGTON, Circuit Judges.

BUFFINGTON, Circuit Judge. The grant or refusal of a preliminary injunction in this case was, under the facts, a question for the sound discretion of the court below. After argument and careful consideration we find nothing to warrant the conclusion on our part that such discretion was not wisely exercised by that court. Its decree will therefore be affirmed. In so doing we refrain from any present discussion of the question involved as such discussion may well await final hearing.


(Circuit Court, D. Rhode Island. February 9, 1907.)

No. 2,677.


The Campbell patent, No. 447,757, for an improvement in incandescent burners and method of using the same, claim 2, which covers the com bination in a portable lamp of a Bunsen burner, a Welsbach mantle, and a gasoline vapor generator, the entire device above the orifice of the generator being that of Welsbach, is void for lack of invention; the gas generator itself being old, and it having been open to the inventor of the Welsbach device to use any known form of gas generator, stationary or portable, to feed his Bunsen burner. If conceded invention, the patent is void for anticipation by the British patent to Siemang, No. 8097, of 1886. In Equity. On final hearing.

Wm. Findlay Brown, Thos. W. Bakewell, Edwards & Angell (Clarence P. Byrnes, of counsel), for complainant.

Redding, Kiddle & Greeley (William A. Redding, of counsel), for defendant.

BROWN, District Judge. This suit is for infringement of letters patent No. 447,757, granted March 10, 1891, on an application filed March 5, 1889, to Harry C. Campbell, for an improvement in incandescent burners and method of using the same. The opinion of this court denying a petition for a preliminary injunction may be found in 140 Fed. 348.

The principal defenses are that the patent is void for want of invention, and that both the British specification of Cooper, No. 420, of 1883, and the British patent to Siemang, No. 8097, of 1886, exhibit a substantial representation of the patented invention in such full, clear, and exact terms as to enable any person skilled in the art or science to which it appertains, without the necessity of making any experiments, to practice the invention.

The claims are as follows:

"(1) The method of employing hydrocarbon fluids for illuminating purposes herein described-that is to say, vaporizing the hydrocarbon liquid by heat, and causing the heated vapor to pass in a fine stream under considerable pressure through an air-mixing chamber, and igniting the heated mixture of hydrocarbon fluid and air in presence of a refractory substance capable of incandescence, substantially as described.

"(2) The combination, in one device, as a portable incandescent lamp, of a Bunsen burner, an incandescent filamentary substance, and a self-generating and heating-gas attachment, substantially as described."

The complainant's argument is based upon claim 2, which describes the elements of Campbell's combination, "an incandescent filamentary substance" (by which he means a Welsbach mantle), a Bunsen burner, and a self-generating and heating-gas attachment. The self-generating and heating-gas attachment constitutes the only novelty in apparatus. Campbell admits that the whole device above the jet orifice of the gas apparatus was procured from the Welsbach Company.

The Welsbach incandescent mantle has been recognized as a most important invention, and our primary inquiry is whether the Campbell patent shows any invention other than that of Welsbach.

It is well known that, in producing light by the Welsbach apparatus, illuminating gas is used, not to produce light by its combustion, but to produce a blue flame of high temperature, which heats the mantle to incandescence, thus furnishing light. The substance of the Welsbach invention was the production of a mantle that could be heated to incandescence. The means for supplying the necessary heat were at hand in the well-known Bunsen burner. A Bunsen burner, as well as the incandescent mantle, was comprised in the Welsbach apparatus. It has been very clearly shown by this defendant that it was well known that a Bunsen burner could be supplied either with ordinary illuminating gas or with gasoline vapor generated from a portable device. The combination of a portable gasoline vapor-producing device and a Bunsen burner was well known. Thus, in patent No. 219,737, of 1879, to Kellog, is shown a portable gasoline-fed Bunsen burner which is described by complainant's expert as "a rather well-arranged device for burning hydrocarbon vapor and to produce the Bunsen flame." At the hearing, a Welsbach mantle was heated to incandescence by a lamp of this kind.

As was noted in the previous decision, in a former suit upon this patent by this complainant against Best ([C. C.] 137 Fed. 940), it was contended that none of the devices of the prior art was capable of heating the Welsbach mantle to incandescence. Such a contention is out of the question in this case. The defendant has demonstrated the existence of many gasoline-fed Bunsen burners prior to Campbell's invention.

The complainant first contends that, though the Welsbach mantle was old, and though a gasoline-fed Bunsen burner was old, Campbell's conception that they could be combined so as to produce a portable incandescent lamp was an inventive conception. If so, it must be because it was something not fairly comprehended in the scope of Welsbach's important invention. It seems a fair test of whether there is anything in Campbell's combination, which was not already in substance in the Welsbach invention, to inquire whether the inventor of the Welsbach mantle could have been precluded from using it upon a Bunsen burner fed with gasoline vapor from a portable generator, after he had already demonstrated that it could be heated to incandescence on a Bunsen burner using ordinary illuminating gas. If Campbell's thought of supplying the Welsbach apparatus, comprising mantle and Bunsen burner, with gasoline vapor from a portable generator, arose to the height of an invention, it follows that the inventor of the Welsbach mantle could not have used what would seem to be an equivalent means of heating.

Can there be a fair doubt that, upon a contest between the inventor of the Welsbach mantle and Campbell, it would have been held that any known type of heater commonly used for producing high temperaures was merely an equivalent for the heater used by Welsbach? Assuming that the Bunsen burner used by Welsbach to heat his mantle

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