Oliver v. Rumford Chemical Works

On the ninth of June, 1868, reissued letters patent No. 2,979 were granted to the Rumford Chemical Works, a corporation of Rhode Island, for an 'improvement in pulverulent acid for use in the preparation of soda powders, farinaceous food, and for other purposes.' The original patent, No. 14,722, was granted to Eben Norton Horsford, April 22, 1865, for 14 years, for an 'improvement in preparing phosphoric acid as a substitute for other solid acids,' and was reissued to the Rumford Chemical Works, as No. 2,597, May 7, 1867, for an 'improvement in the manufacture of phosphoric acid and phosphates for the use in the preparation of food, and for other purposes.'

The specification of reissue No. 2,979 sets forth the mode of preparing the acid, which is a dry pulverulent acid, described as having the capacity of being intimately mixed with dry alkaline carbonates, or other sensitive chemical compounds, without decomposing them or entering into combination with them, except upon the addition of moisture or the application of artificial heat. It says:

'This requires that the phosphoric acid, or acid phosphates,     be mixed with some neutral agent, as flour or starch, gypsum,      etc., so that action of the acid shall be prevented while      dry, and shall, when moisture or heat is applied, be prompt,      thorough, and equally diffused. * * * It may, among other     uses, be mixed with dry alkaline carbonates, carbonate of      potassa, or carbonate of soda, and remain in this state      without evolution of carbonic acid until moistened or heated,      thus making it a substitute for cream tartar and tartaric      acid in the preparation of yeast powder or baking powder. * *     * It * * * is suited to be employed as the acid ingredient in      the preparation of self-raising farinaceous food. In order to     make an article possessing these qualities, and suited to      this office, it is necessary that a powder should be made      which can be not only evenly comminuted and diluted, but one      which shall have so little affinity for the moisture of the      atmosphere that it may be mixed with flour and bicarbonate of      soda in the practical preparation of self-raising flour.'

The claims of reissue No. 2,979 are four in number, as follows:

'(1) I claim, as a new manufacture, the above-described     pulverulent phosphoric acid. (2) I claim the manufacture of     the above-described pulverulent phosphoric acid, so that it      may be applied in the manner and for the purposes above      described. (3) I claim the mixing, in the preparation of     farinaceous food, with flour, of a powder or powders, such as      described, consisting of ingredients of which phosphoric      acid, or acid phosphates, and alkaline carbonates, are the      active agents for the purpose of liberating carbonic acid, as      described, when subjected to moisture or heat, or both. (4)     The use of phosphoric acid or acid phosphates, when employed      with alkaline carbonates, as a substitute for ferment or      leaven in the preparation of farinaceous food.'

On the first of February, 1869, the following instrument in writing was executed and delivered by the Rumford Chemical Works to one Allen F. Morgan:

'To all people to whom these presents shall come, the Rumford     Chemical Works, a corporation transacting business in East      Providence, in the state of Rhode Island, sends greeting:      Know ye that the said corporation, in consideration of the      agreement, of even date herewith, entered into between it and      Allen F. Morgan, of Memphis, in the county of Shelby and state of      Tennessee, does hereby sell, assign, and transfer unto the      said Allen F. Morgan the right to use, within the territory      described in said agreement, Horsford's patent cream of      tartar substitute, for the purpose of manufacturing within      said territory self-raising cereal flours, with the right to      use and sell the flours so manufactured; to have and hold and      exercise such rights within the limits aforesaid, for and      during the time, and under and subject to the conditions and      limitations, named and specified in the agreement aforesaid,      of even date herewith, to which reference is hereby made as a      part hereof.'

On the same day Morgan executed and delivered to the Rumford Chemical Works the following instrument in writing:

'To all men to whom these presents shall come: Know ye that     because the Rumford Chemical Works, a corporation located at      and doing business in the town of East Providence, in the      state of Rhode Island, has licensed and granted unto Allen F.      Morgan, of the city of Memphis, county of Shelby, and state      of Tennessee, the exclusive right to manufacture, sell, and      use, during the time of five years from the date hereof, the      article known as self-raising flour, from cereals, by the use      of Horsford's patent pulverulent phosphoric acid, in the      following described territory, to-wit: Beginning at the point      where the nothern boundary of the state of Tennessee touches      the Mississippi river; thence southerly along the said river      to and including Vicksburgh; thence easterly along the line      of the Mississippi Southern Railroad to Jackson; thence      northerly along the line of the Mississippi Central Railroad      to Granada; thence north-easterly to the junction of the      eastern boundary line of Alabama with the southern boundary      line of Tennessee; thence along the eastern boundary line of      Middle Tennessee (so called) to the northern boundary line of      Tennessee, and westerly along said boundary line to the point      of beginning,-by an instrument in writing bearing even date      herewith, which is made a part of this agreement, and because      of other good and sufficient reasons moving him thereto that      he has agreed, and by these presents does covenant and agree,      to and with the aforesaid Rumford Chemical Works, that he      will immediately commence the manufacture of self-raising      flour in accordance with the written instructions furnished      by the said Rumford Chemical Works, as to proportions and      quality of flour, and that he will use all his business tact      and skill, and all other means necessary, to introduce and      sell the same, and to make the sale thereof as large as in      any way possible in the territory aforesaid during the      continuance of the license aforesaid, and no longer, and to      sell the said self-raising flour nowhere but in the territory      specified, except upon the written consent of the said      Rumford Chemical Works. And I further agree to accept in the     aforesaid license such rights as are covered by the patents      granted to Eben N. Horsford, and by him assigned to the said      Rumford Chemical Works, and to maintain them at my own cost      and expense in suits at law, whenever it shall be in my      judgment necessary so to do, and to avail myself of such      advice, counsel, and assistance as the said Rumford Chemical      Works may elect to give in said suits; and to purchase all of      the acid used in making our said self-raising flour of the      Rumford Chemical Works, or of their agents as directed; and      that in case of my failure to perform the covenants and      agreements hereby entered into, it shall be lawful for the      said Rumford Chemical Works to annul and revoke their said      license to me, and to terminate this agreement. The use of     said phosphoric acid by families for domestic purposes shall      not be construed as a violation of this agreement.'

On the twelfth of April, 1870, the patent was duly extended for seven years from April 22, 1870. On the twenty-first of May, 1870, the extended term was assigned by Horsford to the Rumford Chemical Works. Morgan died on the nineteenth of April, 1869. In July, 1869, his widow, Kate G. Morgan, was appointed administratrix of his estate. She afterwards intermarried with J. N. Payne. A suit at law was brought in 1875 in the name of the Rumford Chemical Works, for the use of J. N. Payne and his wife, Kate G. Payne, in the circuit court of the United States for the western district of Tennessee, against J. N. Oliver and others, partners constituting the firm of Oliver, Finnie & Co., to recover damages for the infringement by the defendants for the period from April 1, 1870, to February 1, 1874, of the rights of the said Kate G. Payne and her husband under said patent, by making and selling self-raising flour by the use of Horsford's patent pulverulent phosphoric acid in the territory before named. The theory of the suit was that the right of Morgan became vested in his administratrix as a personal asset, and continued under the extension, and that the suit brought would lie for infringements of such right committed prior to the expiration of the five years from February 1, 1869. The suit was tried by a jury and resulted in a verdict for the plaintiffs for $3,538.97 damages, and a judgment in their favor for that amount, with costs. To review that judgment this writ of error is brought.

B. M. Estes and H. T. Ellete, for plaintiff in error.

George Gantt, Isham G. Harris, and Thomas B. Turley, for defendants in error.

[Argument of Counsel from page 80 intentionally omitted]

BLATCHFORD, J.