
    JOHN R. WILLIAMS CO. et al. v. MILLER, DUBRUL & PETERS MFG. CO.
    (Circuit Court, S. D. New York.
    May 6, 1901.)
    REHEARING — NEWLY-DlSCOVERED EVIDENCE.
    Wliere an interlocutory decree has been rendered sustaining a patent, and a motion for rehearing made because of the expiration of a British patent covering- the invention, not before in the record, and which expired before suit was brought, which fact was not known to either party until after the hearing, defendant will be allowed to amend his ans-wer setting- up such patent, subject to the replication on file, and both parties allowed to take evidence in relation thereto.
    On Application for Rehearing.
    For former opinion, see 107 Fed. 290.
    Charles G. Grill and Livingston Grifford, for plaintiffs.
    E. 31. Marble, for defendant.
   WHEELER, District Judge.

A decision having been made herein providing for an interlocutory decree sustaining the first claim of patent No. 261,819, and the first and third claims of No. 315,408, granted to Oscar llammerstein, a motion for rehearing has been made because the object of the first patent was broader than the decision indicates in upholding it, and because of I he expiration of a British patent covering the invention of the other, not before in the record. The specification of the first patent does mention wrappers for cigarettes, and “covering packages of all kinds, such as lozenges and ihe like,” which would include paper, and claims founded upon which might be anticipated by the use of paper, but the first claim is confined strictly to wrapper tobacco for cigars, in the use of which it had not been anticipated by any such process or method. The application for the other patent was filed by Oscar llammerstein, July 10, 1883. He made an assignment of all his “entire right in and to the said invention, and any letters patent that may be granted therefor,” to Mai vine llammerstein, July 17, 1883. The British patent No. 3,611 was granted for 14 years, on a communication from abroad by Oscar llammerstein, February 19, 1884; the assignment was recorded October 24,1884; and the United States patent ivas granted for 17 years to Oscar llammerstein, assignor, April 7, 1885; and the British patent expired February 19, 1898, before this suit was brought.

The British patent covers two other patents of Hammerstein, and question is made whether the construction of this part of the British patent, in connection with the other two, would he the same as that of this United States patent aione, and the affidavits of experts have been taken, respectively, by the parties upon that question. The devices of that part of the British patent would seem clearly to infringe these claims of this one, and the invention of (his patent appears to have been well patented there, within the meaning of the statute. Commercial Mfg. Co. v. Fairbank Canning Co., 135 U. S. 176, 10 Sup. Ct. 718, 34 L. Ed. 88.

But Hobbs v. Beach (March 5, 1901) 94 O. G. 2357, 21 Sup. Ct. 409, is relied upon as showing that, after Oscar Hammerstein had assigned the invention to Malvine Hammerstein, he could not take out a foreign patent that would limit the United States patent granted to her as his assignee. That foreign patentee appears, however, to have been an “intermeddler,” who had no relation to the American patentee, and was an adverse claimant. Undoubtedly, the foreign patentee must be the same in source of title, or right, or consent. Walk. Pat. §§ 162, 163; 3 Rob. Pat. § 1043. Oscar Hammerstein was the inventor and a patentee, although only as assignor, in the United States patent. Malvine Hammerstein stood in the same right from the same source. This case does not seem to fall within the principle of that, or so clearly within it that the chance to try the question should be denied. Neither party appears to have known about the British patent till after the hearing, or to have been seriously in fault in not discovering it. Under the circumstances, it seems most just that it should be admitted into the case, but not to the prejudice of the decree for an account to the time of its expiration.

Let the answer be amended setting up the British patent, subject to the replication now on file, within five days; the patent and defendants’ evidence relating thereto to be filed within ten days after; and the plaintiffs’ evidence relating thereto within ten days after that, — all without prejudice to the accounting.  