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in the assignments of error calling for such Joseph J. Tunney, of Philadelphia, Pa., proof. A bill of exceptions is prepared with and Richard B. Cavanaugh, of New York general reference to the assignments of er- City, for plaintiff. ror, and inasmuch as the question of venue John W. Speckman, of Philadelphia, Pa., was not raised at the trial, or by any spe- and Irving M. Obrieght and Clair W. Faircific assignment of error, it is not at all sur- bank, both of New York City, for defendprising that proof of venue is not found in ant. the bill of exceptions. Furthermore, had the objection been timely made, no doubt

THOMPSON, District Judge. Upon an the court would have permitted the govern- application filed April 4, 1924, patent No. ment to supply the defect before submitting 1,500,026 was on July 1, 1924, issued to the the case to the jury. The sufficiency of the defendant, the Lansdale Silk Hosiery Comevidence to support the verdict in other respects will not be considered, when raised pany, as assignee of Edward Mendelsohn,

the inventor. This patent is for a method of for the first time in the appellate court, except to prevent a plain and obvious 'mis- treating silk stockings to give them a more

sheer appearance and greater strength, by carriage of justice. Bilboa et al. v. United States (C. C. A.) 287 F. 125; Deupree v.

a process consisting of soaking them in waUnited States (C. C. A.) 2 F.(20) 44 (de- of alum and afterwards treating them with a

ter containing about 5 per cent. by weight cided October 27, 1924). No such exceptional case is presented ing to harden and make more compact the

solution of soap in water; the purpose behere, and the judgment is therefore affirmed. fiber of the threads, preventing the fiber of

the thread from catching in sharp objects, and enabling the thread to slide more freely

in the woven stocking. The action of the CARPENTER CHEMICAL CO. V. LANS- soap upon the alum deposited in the threads DALE SILK HOSIERY CO.

of the stocking is claimed to form an insolu(District Court, E. D. Pennsylvania. Decem- ble coating. ber 5, 1924.)

The plaintiff claims that it is the rightful No. 3135.

owner of the invention covered by the pat

ent, by reason of the fact that the inventor, 1. Patents Cw328 – 1,500,026, process for

treating silk stockings, issued to defendant Mendelsohn, had, prior to the application as inventor's assignee, held substantially same for the patent, assigned to it the invention as that assigned to plaintiff by same inventor.

covered thereby and an application for a Mendelsohn patent, No. 1,500,026, for method of treating silk' stockings after manu- patent thereon long prior to the application facture, by process consisting of soaking them for the patent issued. From the pleadings, in water containing alum, and afterwards treating them with a solution of soap and wa

the affidavits, and exhibits accompanying the ter, issued to defendant as inventor's assignee, motion for a preliminary injunction, I find held, on motion for preliminary injunction, sub- the following facts : stantially the same as invention of similar process for treatment of silk in the thread or Mendelsohn, prior to June 21, 1922, claimskein prior to manufacture into stockings, assigned by same inventor to plaintif, for patent ed to be the inventor and owner of a chemfor which application had been made prior to ical formula to be used for the treatment of application for defendant's patent.

silk stockings or other fabric, so as to make 2. Patents @m183—Preliminary injunction is- them more sheer and durable. He negotiatsued to restrain assignment of right to practice invention, but not to prevent defendant and demonstrated the use of his formula

ed with Irving S. Carpenter, of New York, itself from practicing invention.

Where process covered by defendant's pat- for making an alum solution, with which he ent is shown, on motion for preliminary injunc. treated silk stockings by saturating them in assigned by defendant's assignor to plaintiff, the solution, and, after drying, washing the and where application for patent for invention stockings in a soap solution, and obtained tion for defendant's patent,

and where defend- satisfactory results. Mr. Carpenter then ant is financially responsible, court will not agreed to finance an application for letters by preliminary injunction prohibit the defend

patent, and an application for patent was ant from practicing the invention, but will enjoin the licensing or granting of such right to filed on June 21, 1922, being serial No. 570,others.

036, for improvement in methods of treating

silk. In Equity. Suit by the Carpenter Chem- The method described in the specification ical Company against the Lansdale Silk Ho- is for treating the silk thread while in skeins siery Company. On motion for preliminary or in any other loose form with a solution of injunction. Granted in part.

alum of 5 to 10 per cent. in strength, this 2 F.(20) 976 to be followed, after drying, with the weav- invention of the chemicals employed by the ing of the stocking, and, after weaving, with plaintiff. washing in a soap solution, so that the soap On May 15, 1923, the defendant entered will react with the alum in the threads to into an agreement with Lehn & Fink to form an aluminum stearate, to increase the purchase not less than 400 pounds of “Keepsheer and the wearing quality of the fiber. it” per month for a period of 12 months,

On August 7, 1922, Mendelsohn assigned and agreed to treat all of the silk stockings to Carpenter and Charles D. Levin each an manufactured by it in accordance with the equal one-third ownership in the chemical method set out in the directions supplied formula, to be used for the treatment of silk with "Keepit.” stockings or other silk fabrics. The parties

The article known as “Keepit,” prepared agreed to form a corporation for the purpose in accordance with the formula invented and of acquiring all rights to the formula, all owned by Mendelsohn, was put up in packpatents to be issued thereunder, and to man- ages for sale by retailers, with directions for ufacturing articles in connection therewith. its use which are substantially similar in The Carpenter Chemical Company having method to that set out in the specification been organized, Carpenter, Levin, and Men- for the patent issued July 21, 1924. They delsohn entered into an agreement with the contain the following directions, which are Carpenter Chemical Company by which, aft- pertinent: er reciting that the assignors are the proprie- "(1) Dissolve the entire contents in one tors of a certain formula or method of man- quart of warm water. (2) Soak the hose in ufacturing, a certain useful and marketable the whole solution for at least half an hour. chemical formula for the treatment of silk (3) Hang up and dry thoroughly.

(4) Aftstockings and silk fabrics, which is known er drying, and before wearing, wash with any under the name of "Keepit," they assigned good soap. (5) Rinse in warm clean water. the exclusive right to the method of manu- This will leave the stockings sheer, soft, and facture, and the chemical formula known as lustrous." "Keepit," to manufacture or otherwise mar- It also contains the inscription, under the ket the same, and all rights of patent or trade-mark: “Prevents runs in silk hose. trade-mark or registration whatever, and Life insurance for silk stockings." agreed that they would not disclose the secret After Ullman obtained the right to act as of the composition or the formula, and exclusive salesman, to the manufacturers of would not make or compound for sale, or be silk hosiery, of the invention, and the dein any way interested in compounding for fendant had made the yearly contract above sale or selling, the said chemical formula, or referred to, the latter proceeded to adveranything of a similar nature assigned for tise that its hosiery or silk stockings were a like purpose.

treated with “Keepit” and to extol the merOn August 28, 1922, Mendelsohn assigned its thereof, and Mendelsohn visited the deto the Carpenter Chemical Company the full fendant's plant and gave instructions as to and exclusive right to the invention set forth the practice and method of the invention. in his application for patent filed June 21, At the end of the yearly agreement with 1922, and the assignment was duly recorded Ullman on May 3, 1923, and that with the in the Patent Office. On September 15, 1922, defendant on May 15, 1923, the agreements the Carpenter Chemical Company filed its were not renewed. On April 3, 1924, Meriapplication in the Patent Office for the reg- delsohn, being vice president and director of istration of the trade mark in the word the plaintiff corporation, filed through the "Keepit," for a chemical preparation used same patent attorney who had represented to treat silk to prolong its wearing quality, him in his application of June 21, 1922, an which was duly registered on May 8, 1923. application for the patent, upon which pat

. The Carpenter Chemical Company then ent No. 1,500,026 was issued on July 1, 1924. made a contract with Lehn & Fink, Inc., of With this application was filed a petition to New York, to manufacture and distribute the the Commissioner that it be made special, chemical compound to the trade. Some time which petition was granted. in the spring of 1923, one A. L. Ullman, who Meanwhile, the application filed June 21, was the New York agent or representative 1922, had been allowed to lag. There had of the defendant, the Lansdale Silk Hosiery been rejection of some claims, and amendCompany, entered into a contract, with ments filed thereto, with the result that, when plaintiff's approval, with Lehn & Fink to act patent No. 1,500,026 was issued, the patent as exclusive salesman to the manufacturers for which the first application had been of silk hosiery in connection with the use and made was still pending. Mendelsohn assigned the patent on his second application to same as that followed in the use of "Keepit" the defendant in consideration of $5,000. under the directions contained on the wrapThe plaintiff, having canceled the original per of that article, and followed by the depower of attorney, filed a power of attor- fendant in its plant in the use of “Keepit," ney to other patent attorneys, who filed while obtaining its supply under its yearly amended claims covering substantially contract through Lehn & Fink's contract those allowed under the second application, with Ullman. I see no reason to differ from which were refused upon the ground that the ruling of the Patent Office that it is imtheir allowance would result in double pat- material, so far as the invention is concernenting.

2 F.(20)-62

ed, whether the process for coating the The principal contention of the plaintiff threads of which the stockings are woven is that the invention protected by the issued with the alum hardening solution, for the patent is the same as that described in the purpose of preventing the pulling out of first application. The first application cov- the fibers and incorporating them more closeered the method of treating silk in the thread ly with the thread, and thereafter fixing the or skein with the alum solution, and subse. alum with the soap solution, is carried out quently, after the weaving into hose, of treat- while the fiber is still in the thread form, or ing the woven article in the soap solution. after it is woven into a fabric. The patent issued describes a method of A further contention on the part of the treating the hose after manufacture in both defendant is that the solution of the first solutions. The defendant earnestly contends application, which was described as a soluthat there is sufficient difference in the two tion of alum, is not identical with that used methods to establish two separate inventions, in the second application, because in the and that the disclosures in the patent are latter the applicant refers to the use of not the same as those of the rejected prior amonium alum, although potassium alum application.

might be employed, and the original appliThis is not the view of the Patent Office. cation refers to the preferable use of ordiThe record of the case in the file wrapper nary potassium alum. I think this distincshows that the Examiner on September 19, tion must be rejected on the doctrine of 1923, rejected certain claims, stating: "It equivalents. is held to be immaterial whether the process On the prima facie case made out by the is carried out while the fiber is still in the evidence before me, the plaintiff has estabthread form or after it is made into a fabric.” lished to my satisfaction that Mendelsohn's And this was reiterated by the Examiner on invention, covered in his second application September 2, 1924, in response to a com- and in the defendant's patent is the same inmunication of the substituted patent attor- vention assigned to the plaintiff and used by neys for the plaintiff, calling the Commis-' it with Mendelsohn's acquiescence and consioner's attention to the facts concerning sent in its direction to the public for the Mendelsohn's assignment of his earlier ap- use of "Keepit” and in the first application. plication and invention to the plaintiff, near- Mendelsohn's conduct shows an intention on ly two years prior to the later application his part for his own gain to place in the under which the patent was assigned to the hands of the defendant what he had already defendant.

sold to the plaintiff. The circumstances conThe disclosures in the specifications of the nected with the dilatory conduct of the protwo applications are identical in most re- ceedings under the first application and the spects. The only marked distinction in the eagerness to obtain a patent at once under description is in the one fact that the first the second application, the conduct of Ullapplication provides for the washing of the man and of the defendant in the use of silk in skeins or threads prior to weaving "Keepit,” in connection with Ullman's exinto fabric or hosiery and the treatment of clusive right for its sale to manufacturers, the manufactured article afterward in the are not, while unexplained, such as to create soap solution, while the specifications in the an impression of the utmost good faith. second application and the claims are for The rejection of the new claims 2, 3, and washing the stockings in the two solutions 4 by the Patent Office is upon two grounds: after they are woven.

First, because they are drawn to new matter, [1] The case as now presented on motion inasmuch as the application, as originally for preliminary injunction sufficiently es- filed, described only the treatment of threads, tablishes for the purposes of the motion that while these claims are drawn to the treatthe invention of Mendelsohn, as disclosed ment of fabric. This is somewhat inconin his second application, is substantially the sistent with the holding of the Patent Office

2 F.(20) 979 that it is immaterial whether the process is spect to the allowance or rejection of claims carried out while the fiber is still in thread

which may become, either primarily or ulti

mately, charges against a bankrupt estate, even form or after it has been made into fabric. though the suit in the state court is brought These claims, together with new claim 1, are

by state officers assuming to act on behalf of

the state. also rejected on the patent to Mendelsohn, No. 1,500,026. While the Examiner reiter- 2. Bankruptcy Om 296–Prosecution of suit in

state court enjoined. ates in this rejection his holding of immateri

Officers of a state commenced an action in ality as to when the process was carried out,

a state court against the sureties on a bond it is indicated with some force that, if the given by a trustee in bankruptcy, with the apMendelsohn patent had not been allowed, proval of the court, to secure performance of a

contract with the state, which contract, also the plaintiff would have been entitled to a

with the approval of the court, he abandoned. patent on claims for carrying out the pro- The bankrupt estate was liable for any sum cess on the thread before being formed into which might be recovered from the sureties. a fabric, which, if applied for in time, would rupt estate against the state, arising out of have anticipated the claims allowed on the transactions prior to the bankruptcy. Held,

that the adjudication of such matters was withlater application. Upon the showing here

Upon the showing here in the exclusive jurisdiction of the court of made, the plaintiff is entitled to a prelim- bankruptcy, and that prosecution of the suit in inary injunction restraining the defendant the state court would be enjoined. from selling, assigning, or in any manner whatsoever incumbering the right or title to In Bankruptcy. In the Matter of The the patent it holds by assignment from Men- Montevallo Mining Company, bankrupt. delsohn and the invention thereof pending On petition of David Roberts, Jr., trustee, the determination of the suit.

against Harwell G. Davis, Attorney GenUpon the facts shown by ex parte affida- eral, and L. A. Boyd, President of the State vits on motion for preliminary injunction, Board of Convict Supervisors, of the State and taking into consideration the question of Alabama, for an injunction, and on moof irreparable injury, I am not convinced tion of respondents to dismiss the petition. that a preliminary injunction should issue, Motion denied, and injunction granted. except from such acts as would properly be See, also, 278 F. 989. construed as threatening and intimidating

David Roberts, Jr., as trustee of the Monthe plaintiff's customers. So far as appears tevallo Mining Company, the bankrupt, by from the evidence, no threats which justify his petition shows that the Montevallo Minthe interference of the court have been made. ing Company was adjudicated a bankrupt in

[2] As prima facie the evidence shows the District Court of the United States for that the defendant is financially responsible, the Southern Division of the Northern Disand a preliminary injunction, if the defend- trict of Alabama on January 25, 1922, and ant should prevail on final hearing, would that said bankrupt estate is now being adno doubt cause it irreparable injury, the in- ministered in that court. Roberts was apjunction will not prohibit the defendant from practicing the invention.

As to li pointed trustee on February 14, 1922, and

is now acting as such trustee. Hon. Harcensing or granting to others the right to well G. Davis, Attorney General of the practice the invention, the defendant will be

state, and Hon. L. A. Boyd, President of enjoined, with the right, however, to apply the State Board of Convict Supervisors, for modification of such clause in the injunc- residents of Montgomery county, Ala., are tion order, if occasion should arise. The made respondents to the petition. The amount of injunction bond will be fixed upon American Surety Company and the Union application. Counsel may present a decree in accord- ing business in Montgomery county, Ala.,

Counsel may present a decree in accord. Indemnity Company, each a corporation doance with this opinion.

are also made respondents.

Pursuant to the orders of said bankruptcy court the trustee operated the properties of

the bankrupt, a coal mine in Shelby county, in re MONTEVALLO MINING CO. Ala., as a going concern, and in such opera

tion made use of the convicts of the state of ROBERTS V. DAVIS, Atty. Gen., et al.

Alabama under a contract with the state (District Court, M. D. Alabama, N. D. No made in the name of the state by said L. A. vember 29, 1924.)

Boyd, president of the state board of con1. Bankruptcy Om 296–Court has power to vict supervisors, the officer or board authorprotect its jurisdiction over bankrupt estates.

ized to contract in behalf of the state. The A court of bankruptcy cannot yield to a state court its exclusive jurisdiction with re- continued operation of the properties by

the trustee as aforesaid having been proven tioner against the state of Alabama cannot to be wasteful of the assets of the estate, be pleaded in the suit in the circuit court of the trustee, by the authority of said court, Montgomery county, Ala., without consent delivered the convicts back to the state be- of the petitioner. The trustee also reprefore the expiration of the lease contract. sents that, under his agreement with the At the time of making said contract with surety companies, petitioner will be comthe state, and at the latter's instance, and pelled to reimburse said companies to the with the authority of said court, the trustee extent of the amount paid by them in satisexecuted a bond, with the American Surety faction of the judgments obtained. The Company and the Union Indemnity Com- trustee avers in his petition that he cannot pany sureties, guaranteeing the faithful per- consent to the surety companies pleading formance of the convict lease. In the ap- said matters by way of set-off or recoupplication for such bond the trustee obligat- ment, because such matters, as well as the ed himself as such to indemnify the sureties determination of administration costs infor all sums that the companies might be volved therein, are within the exclusive jucompelled to pay on account of such bonds. risdiction of the bankruptcy court, which is

Said Harwell G. Davis and L. A. Boyd, without right to surrender its jurisdiction in their respective official capacities, have over the same. The petitioner also shows begun suit on the bond in the state circuit that, while he has not sufficient assets to court of Montgomery county, Ala., in the pay all claims against the estate, he has name of the state against the surety com- ample assets to pay in full any amount panies, claiming damages, against the first which the court of bankruptcy may deterof $7,000 and against the second of $20,000, mine is due, owing and payable to the state on account of alleged breaches of said bond of Alabama on account of any claims set in delivering back said convicts, for loss of up in said suit. He also insists that such time of said convicts, expenses incident to suits will have the effect of ousting the juremoving and replacing the same, loss of risdiction of the bankruptcy court to hear, crops, damage to furniture, and other things determine, and allow or disallow claims relating to the matter, and it is not disput- against the bankrupt estate, and the extent ed that said suit will be prosecuted by said and priority thereof, and the amount of adofficials to conclusion unless restrained by ministration costs and expenses. this court. It is without dispute that such And by amendment to his petition the properties were on and after the convicts trustee shows that previous to the instituhad been delivered back to the state, leased tion of the suit in the state court there had by the trustee, with authority of the bank- been no ascertainment in the District Court ruptcy court, to the Thomas & Weller Min- in bankruptcy of the merits of said claims ing Company, a corporation, which in turn

set up in the suit in the state court, and and in its own name leased the convicts that petitioner as such trustee is without from the state of Alabama, to be worked authority to pay any amount which may be in the mine property of the bankrupt es- legally due the state of Alabama from the tate. It is not denied on this hearing that estate; also, that the petitioner trustee has there was much valuable machinery belong- not, prior to nor since the institution of said ing to the bankrupt estate, in the mine, suit, made final settlement in said bankruptwhich it is alleged was damaged by the con- cy proceeding of his accounts, ind that no victs to the extent of $20,000. It is shown decree establishing liability against him as that the state of Alabama has filed claim trustee in favor of the state has been renagainst the bankrupt estate, based upon dered; further, that prior to the institution matters and things arising before and at of the suits in the state court no redress the time of the adjudication of the Monte- has been sought against the petitioner, to vallo Mining Company. Further it is al- ascertain the liability claimed in said suit, in leged that the state has received on account order that remedy against the sureties on of said claim $56,000, which is charged to said bond may be pursued, as it is claimed, be a preference over other creditors of the in said suit. Moreover, it is contended by same class, and that the estate has not suf- petitioner that he discontinued the use of ficient assets to pay all claims of such class. the convicts and surrendered them back to

It is also alleged that, if such suit is al- the state of Alabama under order of the Dislowed to proceed to judgment, the rights of trict Court in bankruptcy; furthermore, the petitioner trustee will be prejudiced, in that neither the petitioner nor the sureties that the several claims, counterclaims, set- on the bonds are liable to suit in any other offs, and recoupments in favor of the peti- court for his acts done in performance of

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