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]