do business in January, 1898. In January, 1898, a New Jersey corporation, having the same name and some of the same directors and officers, was organized. All of the lamps upon which an accounting was ordered, with the exception of two stipulated into the original record upon the question of infringement, were made and sold by this New Jersey corporation. The patents were granted in January, 1899, a year after the New York corporation had ceased to do business, and during all of the period in question it was the New Jersey and not the New York corporation that was infringing the patents. These facts seem to be wholly undisputed. The principal question is whether the master was right in assessing damages against the defendant based upon the sales of the New Jersey corporation. The exceptions clearly present this issue. There seems to be no escape from the conclusion that the complainant has sued the wrong defendant. That the mistake was natural, and, perhaps, inevitable, may be conceded, but the fact remains that the defendant is required to pay $4,000 for the wrong of another party. The damage was done and the profits, if any, were received by the New Jersey company. The New York company, upon the present proof, has made no profits and has done. no injury. How, then, can it be made to pay? The fact that the two corporations have the same name, though tending to confuse. the issue, does not change its legal aspect. In the eye of the law the two companies are distinct and separate entities. If, for instance, the New Jersey company had been incorporated under the name of the "Hoboken Novelty Company" it would seem obvious. that the Acme Electric Lamp Company of New York should not be made to pay for the wrong doing of the Hoboken Company. Or, to push the illustration a step further, assume that a man named Louis A. Jackson was engaged in business at 1659 Broadway until January, 1898, when he moved out and another individual having the same name moved in and a year later began infringing the complainant's patents. Is it not manifest that Jackson No. I cannot be made to pay for the damage done by Jackson No. 2? And, yet, how is the legal aspect of the situation changed because the parties happen to be corporations instead of individuals? The organization of the new corporation having the same name as the old certainly has a suspicious look, but the court is unable to find anything in the record tending to show a collusive design. There could hardly have been a fraudulent intent as to the infringement of the patents, because the New Jersey company was organized a year before the patents were granted. For aught that appears the change was a legitimate one and made for an honest purpose, but assuming it to be merely a juggle it is difficult to see how this fact can avail complainant in the present suit. The New Jersey company is not a party to this action, but it can, of course, be made to pay for its infringement if found liable in a proper suit commenced for that purpose. The court has been unable to discover any theory upon which the corporation defendant can be made to pay for infringements for which, upon the undisputed testimony, it is in no way responsible.

The exceptions which present the question decided are sustained The decree against the defendant corporation should be limited to nominal damages.

WESTINGHOUSE AIR BRAKE CO. v. NEW YORK AIR BRAKE CO.

(Circuit Court, N. D. New York. November 25, 1901.)

No. 6.631.

1. PATENTS-SUIT FOR INFRINGEMENT-DEFENSE OF LACHES.

The defense of laches to a suit for infringement need not be pleaded. 2. SAME.

Where a patent has lain dormant for 15 years, and has been infringed by defendant for 7 years, with the knowledge of complainant, and without a word of protest, a decree for an accounting should not be granted.1 In Equity. Suit for infringement of patent. On final hearing. Frederic H. Betts, George H. Christy, and J. Snowden Bell, for complainant.

Frederick P. Fish and Charles Neave, for defendant.

COXE, District Judge. This is an infringement suit based upon letters patent, No. 270,528, granted to George Westinghouse, Jr., January 9, 1883, for a pressure retaining valve in automatic brake mechanisms. The bill was filed April 4, 1898, and the patent expired January 8, 1900, twenty-one months thereafter. As the patent expired pendente lite no injunction can be granted, and as there is neither proof that the complainant's device was marked "patented," nor proof of actual notice, as required by law (Rev. St. § 4900), it is manifest that there can be no accounting for profits and damages, except, perhaps, from the date of the commencement of the action.

Assuming that the filing of the bill was sufficient notice of infringement under the section referred to, a position which the defendant strenuously denies, the question remains, shall the court retain jurisdiction in order that an account during this brief period may be taken?

The defendant, among other defenses, maintains that the complainant has been guilty of such inexcusable laches as to preclude all relief.

From the date of the patent to the commencement of the suit, a period of 15 years, the complainant did no act and uttered no word indicating that it considered the patent valid and valuable and that it intended to call infringers to account. There is some testimony of a vague and shadowy character that a suit was brought against an infringer in Illinois, but the date when it was commenced and the result of the litigation is left wholly to conjecture. So far as the record discloses the complainant could not have acted with

1 Laches as a defense in suits for infringement, see notes to Taylor v. Spindle Co., 22 C. C. A. 211; Richardson v. D. M. Osborne & Co., 36 C. C. A. 613.

greater indifference had no patent been issued. Since 1891 the defendant, and every one else who desired to do so, has used the pressure retaining valve with impunity. The complainant has known of this use and has looked on without the least token of dissent.

There is nothing to show that the defendant knew that the device was patented. As stated above the complainant omitted to give even the statutory notice, by failing to mark the valves "patented." In short, the conduct of the complainant from first to last has been such as to encourage the defendant in the belief that the valve was not patented, or, if it were, that the patent was invalid or was one which the complainant did not intend to enforce.

It would be in conflict with the well-known principles of equity to permit the complainant to collect damages for a use which it tolerated and almost invited. The defendant was justified in the belief that the valve was public property. The complainant knew of its use for seven years and never made the slightest objection. This supineness, indifference and silence are wholly without legal excuse. The usual plea of poverty is not available, and the suggestion that the complainant was too busy in conducting other litigation with defendant to spare any time to protect or enforce the patent in suit can hardly be regarded as closing the debate. The commencement of an infringement suit to enforce a patent for a device so simple would not have unduly taxed the powers of the most incompetent clerk in the office of any one of the complainant's solicitors.

The acceptance of the proposition, that the complainant, with all its vast resources, was unable to bring such a suit during the few years following 1891, assumes the existence of an innocent credulity which the court, in justice to all, feels, compelled to disclaim. Indeed, if the court may consider other suits between these parties, it would seem that the complainant cannot fairly be charged with inactivity in asserting and protecting its rights wherever they were considered worth protecting.

The defense of laches need not be pleaded. Richards v. Mackall, 124 U. S. 183, 187, 8 Sup. Ct. 437, 31 L. Ed. 396; Sullivan v. Railroad Co., 94 U. S. 806, 811, 24 L. Ed. 324; Manufacturing Co. v. Williams, 15 C. C. A. 520, 68 Fed. 489, 494; Walk. Pat. § 597.

Where a patent has lain dormant for 15 years and has been infringed by the defendant for 7 years with the knowledge of the complainant and without a word of protest a decree for an accounting should not be granted.

The bill is dismissed.

ELECTRIC SMELTING & ALUMINUM CO. v. PITTSBURGH
REDUCTION CO.

(Circuit Court, W. D. New York. October 22, 1901.)

PATENTS INFRINGEMENT-PROCESS FOR REDUCTION OF ALUMINUM Ores. The Bradley patents, No. 464.933 and No. 468,148, relating to a process for the reduction of highly refractory and nonconductive metallic ores in an unfused state by electrolysis, some of the claims having specific

reference to the application of such process to the separation of aluminum from its ores, are not infringed by the process of the Hall patent, No. 400,766, for the reduction of aluminum ores. The Bradley process consists essentially in passing an electrical current through a mass of ore, such current having a sufficient strength and intensity to fuse the ore, and to effect its continuous and progressive decomposition, while the essential feature of the Hall process, which has given it great commercial value, is the employment of a bath of fused cryolite, in which alumina readily dissolves. Such bath has a greater electrolytic stability than the alumina, and the latter, when in solution, is decomposed by passing through the mass an electrical current not having sufficient intensity to effect the decomposition of the bath, which is kept in a fused condition by the heat incidentally developed in the process of electrolysis, and used with repeated charges of alumina. In such process there is not only a different employment of ingredients from that of Bradley, and an entirely new method of operation, but far better results are attained; and, conceding that Bradley was the first to point out the method by which progressive fusion and electrolysis was made practicable, in view of the prior art and of the doubtful utility of his process, which has never been put into commercial use, his patents cannot be given a broad construction, as embodying a pioneer invention, to cover the process of Hall, which has superseded all others and resulted in a remarkable increase in the production and use of aluminum.

In Equity. Suit for infringement of patents. On final hearing. C. M. Vorce, Frederick H. Betts, and Timothy E. Ellsworth, for complainant.

Thomas W. Bakewell, George H. Christy, Frederick P. Fish, and Norris Morey, for defendant.

HAZEL, District Judge. This is a suit in equity by the Electric Smelting & Aluminum Company against the Pittsburgh Reduction Company to restrain the infringement of two United States letters patent for a process of separating aluminum and for a process of obtaining metals from their ores or compounds by electrolysis. The patents are owned by the complainant under several mesne assignments. The original application for patent was filed by Charles S. Bradley, February 23, 1883; on December 8, 1891, patent No. 464,933 was issued on a division of the original application; and on February 2, 1892, patent No. 468,148 was granted to him. Both patents relate to a process for the reduction of highly refractory and nonconducting metallic ores or compounds in an unfused state by electrolysis; that is, by subjecting the ores or compounds to the action of an electric current, resulting in a fusion of the entire mass of ore, and, while in a state of fusion, by conjoint and simultaneous action of the electric current to separate, disassociate, or decompose the fluid mass, so that the metal contained therein will be gradually deposited at the cathode, then to be drawn from the bottom of the receptacle or basin in which it is contained. Claims 1, 2, and 3 of patent No. 468,148 cover and control the process broadly, while claims 4, 5, and 6 cover and control the process described as specifically applied to the separation of aluminum from its ores. Patent No. 464,933 relates to the same process, but confines its claims to a particular structure used and a special mode of practicing the process. The answer sets up various defenses, among them want of novelty and noninfringement.

The case is of very great importance. The questions involved are of such magnitude and complexity that a great deal of time has been consumed in becoming familiar with the voluminous testimony, consisting of about 3,000 printed pages, including exhibits. The court has proceeded, however, in the hope that, when a decision is rendered, the propositions involved may have received such careful consideration as their importance requires. The claim of the complainant and the various defenses interposed are of a difficult and technical nature. The testimony of the expert witnesses, men of a high reputation in chemistry and electro-metallurgy, is of widely divergent character as to the application of important scientific and electrical principles. A knowledge of the complicated and intricate subjects of chemistry and electricity, and the application of their laws, would seem necessary to a proper disposition of this case. The evidence consumes great space, and should make the questions at issue clear of comprehension. The arguments of counsel generously amplify the copious and discursive opinions of the expert witnesses. Everything appertaining to the discovery for which the patents were granted has been clearly set forth, so that in the consideration of the facts and the law applicable thereto the task of the court may be as clear as the subject will admit. Some of the facts are obscured in more or less uncertainty, and are difficult of solution; but it is hoped that a sufficient understanding of the questions involved has been reached for a proper determination of the controversy.

The process by which aluminum is extracted from its ores has been completely revolutionized. The patent of Hall, used commercially by the defendant, and claimed by complainant to infringe its patents in suit, is No. 400,766, issued April 2, 1889, for a process of reduction of aluminum by electrolysis. This patent unquestionably resulted in the phenomenal reduction in the price of aluminum. In 1886 its price ranged from $5 to $8 per pound, while in 1897 it was from 25 to 30 cents. The entire consumption of aluminum in the United States is supplied by the defendant. From an extremely rare and only occasional employment of this metal in the commercial world, it has become useful in the manufacture of articles for which. theretofore brass, copper, and tin only were known to be serviceable. Its price being reduced to that of copper and brass resulted in the advantageous use of aluminum for many purposes only made possible by the lowered cost of manufacture. It is not seriously disputed that this result was due to the discovery of the Hall process and its subsequent operation. Indeed, immediately after the defendant began its use commercially, manufacturers using other processes ceased to work on account of their inability to profitably make aluminum at the price for which the defendant was able to place its product on sale. What brought about this revolution in the art? Hall's answer is that he was the first to discover a suitable bath material, which, when fused, on account of certain properties contained therein, would at a low temperature freely dissolve alumina; that his bath contained a higher chemical stability than the dissolved alumina itself, so that, by the passage of the electric current, the alumina would be decomposed, and the bath material and its properties left unaffected.