215 U.S. Argument for the Hygienic Chemical Companies.

131 Fed. Rep. 483; aff'd 138 Fed. Rep. 54; certiorari denied, 199 U.S. 608.

The Clotworthy deposition should have been received. A court may take judicial cognizance of its own records in a former litigation, especially one in which present parties were privies. Butler v. Eaton, 141 U. S. 240; Aspen Mining Co. v. Billings, 150 U. S. 31, 38; Cramer v. Washington, 168 U. S. 124, 129; Re Boardman, 169 U. S. 39, 44; Bresnahan v. Tripp Co., 72 Fed. Rep. 920; Cushman Box Co. v. Goddard, 97 Fed. Rep. 664; Des Moines Nav. Co. v. Homestead Co., 123 U. S. 552; United States v. Des Moines Nav. Co., 142 U. S. 510; National Co. v. Dayton Co., 95 Fed. Rep. 991, 996. Both the Hygienic companies were "parties" to the test suit. 3 Robinson on Patents, § 1176; Robbins v. Chicago, 4 Wall. 657; Penfield v. Potts, 126 Fed. Rep. 475, 480; Cromwell v. Sac County, 94 U.S. 351.

Mr. Edwin T. Rice, with whom Mr. Willard Parker Butler was on the brief, for the Hygienic Chemical Companies:

Privity was not shown between either of the Hygienic companies and the defendant on the test suit. Privity must be affirmatively shown. Johnson v. Powers, 139 U. S. 156; Litchfield v. Goodnow, 123 U. S. 549; Theller v. Hershey, 89 Fed. Rep. 575; Felting Co. v. Asbestos Co., 4 Fed. Rep. 816; Telephone Co. v. Telephone Co., 27 Fed. Rep. 663; Miller v. Tobacco Co., 7 Fed. Rep. 91; Eagle Co. v. Bradley Co., 50 Fed. Rep. 193; S. C., 57 Fed. Rep. 980; Box Co. v. Paper Co., 95 Fed. Rep. 991; Lane v. Wells, 99 Fed. Rep. 286.

The Circuit Court of Appeals of the Second Court erred in taking judicial notice of matters outside the record. Stanley v. McElrath, 86 California, 449; Downing v. Howlett, 6 Colo. App. 291; Adler v. Lang, 26 Mo. App. 226; Grace v. Ballou, 4 S. D. 333; Re Manderson, 51 Fed. Rep. 501; Streeter v. Streeter 43 Illinois, 155; Taylor v. Adams, 115 Illinois, 570; Loomis v. Griffin, 78 Iowa, 482; Granger v. Griffin, 78 Iowa, 759; Banks v. Burnam, 61 Missouri, 76; Spurlock v. Mo. Pac. Ry.,

76 Missouri, 67; Daniel v. Bellany, 91 N. C. 78; People v. De La Guerra, 24 California, 73; State v. Edwards, 19 Missouri, 674; Baker v. Mygatt, 14 Iowa, 131; Allison v. Insurance Co., 104 N. W. Rep. 753; Re Osborne, 115 Fed. Rep. 1; Bank v. Taylor, 86 Ill. App. 388; Ralphs v. Hensler, 97 California, 296; McCormick v. Herndon, 67 Wisconsin, 648; Enix v. Miller, 54 Iowa, 551; Eyster v. Gaff, 91 U. S. 521; State v. Wilson, 39 Mo. App. 114; Water Co. v. Cowles, 31 California, 215; 1 Wharton on Evidence, § 326.

The chemical company failed to make out a prima facie case. Bates v. Coe, 98 U. S. 31, 49; Royer v. Chicago Mfg. Co., 20 Fed. Rep. 853.

The extract from the Clotworthy deposition was inadmissible as against the Hygienic companies. Street Railway Co. v. Gumby, 99 Fed. Rep. 192; Chase's Stephen's Evidence, 2d ed., Art. 32; Greenleaf on Evidence, § 163; Insurance Co. v. Commissioners, 117 Fed. Rep. 82.

MR. JUSTICE HOLMES delivered the opinion of the court.

These are two suits in equity brought by the Rumford Chemical Company for the infringement of a patent for baking powders; one, No. 9, brought in the Third Circuit, New Jersey, against the Hygienic Chemical Company, a corporation of that State; the other, No. 121, brought in the Second Circuit, New York, against a New York corporation of the same name. The two cases were tried on substantially the same record and evidence, with the result that in New Jersey the bill was dismissed by the Circuit Court of Appeals, 154 Fed. Rep. 65; 83 C. C. A. 177, but in New York the bill was sustained. 159 Fed. Rep. 436; 86 C. C. A. 416. Writs of certiorari were granted by this court.

The defendants rested on the plaintiff's evidence, and the question in both suits was whether a prima facie case had been made out. It did not appear that the defendants made or sold baking powders as such, but the New Jersey Company did make acid phosphates for baking powders and other pur

poses, and the New York Company sold the great part of its products. The plaintiff contended that this acid phosphate had the characteristics described in its patent, and was made and sold for use in baking powders, and that the manufacture and sale were an infringement of its rights. A previous decision, Rumford Chemical Works v. New York Baking Powder Co., 134 Fed. Rep. 385; 67 C. C. A. 367, establishing the patent, was relied upon as a test case by which the defendants were bound, but, except the final decree, entered after the beginning of the present suits, the record was not put in. It would seem, from a late case, that the plaintiff was correct in point of fact, Provident Chemical Works v. Hygienic Chemical Co., 170 Fed. Rep. 523, but the question here must be discussed, of course, on the evidence before the court below. The question is material as bearing upon the admissibility of the evidence of one Clotworthy, since dead, given in the suit against the New York Baking Powder Company, upon which the plaintiff relied.

Clotworthy was the president and general manager of the Clotworthy Chemical Company and was a manufacturer of baking powder. He testified to the purchase from the Hygienic Company of New York of a barrel of granular acid phosphate, shown to be similar to that described in the plaintiff's patent. A bill from the New Jersey Company and a receipt from the New York Company also were produced and put in. The courts in both circuits rightly regarded this as the most important, if not the only evidence to make out the infringement alleged. Therefore it was necessary that the plaintiff should prove that the defendants were privy to the New York Baking Powder Company's case.

To prove privity Heller, the president of the defendant companies, was called and asked as to his testimony on the former occasion. He admitted that he then had testified that "we are manufacturers of granulated acid phosphate and are selling to the trade in the same way as" the former defendants; also that he had testified that "we have [undertaken to assist in bearing the burdens of this defence and have contributed to

the defence] financially and otherwise." By the natural interpretation of the word in the connection in which it was used 'we' embraced the New Jersey company, and fairly may be argued to have meant both. Heller swore that these answers were true, but with the qualification that he did not think that the New Jersey corporation contributed financially, and that he did not remember whether it did otherwise. All the courts agree that the privity of the New Jersey corporation was not made out. Probably all, and at least the Circuit Court of Appeals and the Circuit Court for the Third Circuit, 148 Fed. Rep. 862, agree that if Clotworthy's testimony is excluded infringement is not proved. We should not revise this finding of both courts on the facts, and therefore it follows that the New Jersey decree must be affirmed. The evidence on both sides is discussed in 148 Fed. Rep. 862.

It appears that the New York company contributed to the expenses of the former case. But that fact alone is not enough to warrant a different result. The agreement disclosed in 170 Fed. Rep. 523, was not before the court. We may reject as extravagant the suggestion that the contribution may have been made from charitable motives, and assume that it was induced by reasons of business and indirect interest, but it was not shown that as between the present and former defendants either Hygienic company had the right to intermeddle in any way in the conduct of the case. The Hygienic Companies would have been glad to see the Rumford patent declared void and were willing to pay something to that end. That was all and that did not make them privies, and therefore the Clotworthy deposition was not admissible against them. Litchfield v. Goodnow, 123 U. S. 549, 550. Whether if it had been admitted, infringement could have been inferred from the sale of a barrel of granular acid phosphate to a manufacturer of baking powder need not be considered. There was other evidence in the case.

Decree in No. 9 affirmed. Decree in No. 121 reversed.

STEWARD v. AMERICAN LAVA COMPANY.
MORITZ KIRCHBERGER v. AMERICAN LAVA
COMPANY.

CERTIORARI TO THE CIRCUIT COURT OF APPEALS FOR THE
SIXTH CIRCUIT.

Nos. 27, 28. Argued November 10, 11, 1909.-Decided November 29, 1909.

A patent cannot be sustained when the theory and method are introduced for the first time in unverified amended specifications.

The patent for a tip for acetylene gas burners, and for the process of burning acetylene gas, held to be void by the court below and by this court because the tip was not new, the description too indefinite, the amended specifications, which were unverified, brought in new matter and the claims for processes so called were only claims for the functions of the described tip.

155 Fed. Rep. 731, and 155 Fed. Rep. 740, affirmed.

THE facts are stated in the opinion.

Mr. Charles Neave, with whom Mr. F. P. Fish and Mr. William G. McKnight were on the brief, for petitioners.

Mr. Louis C. Raegener for respondents.

MR. JUSTICE HOLMES delivered the opinion of the court.

These are bills in equity brought by the petitioners to restrain the infringement of Letters Patent No. 589342, issued to the assignee of Edward J. Dolan, and dated August 31, 1897. The patent was held invalid by the Circuit Court of Appeals for the Sixth Circuit. American Lava Co. v. Steward, 155 Fed. Rep. 731 and 740; S. C., 84 C. C. A. 157 and 166. It had been sustained by the Circuit Court of Appeals for the Second Circuit, Kirchberger v. American Acetylene Burner Co., 128 Fed. Rep. 599; S. C., 64 C. C. A. 107, and a writ of certiorari was granted by this court to the first-mentioned Circuit Court of Appeals.

The patent, so far as it comes in question here, is for a tip for acetylene gas burners and for the process of burning acetyVOL. CCXV-11