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departure from the original, within the rule established by the recent decisions of the supreme court.
The defendant does not claim that its manufacture differs from the Chase method, except in the following particulars: The beveling die and the groove in the roll are so constructed that the bevel is stamped or impressed in the metal; and the metal displaced by the operation, instead of being spread laterally, is forced partly upwards on each side and partly forward of the point. The superfluous metal is afterwards sheared off as in the Chase method.. The nail is also formed without longitudinal curvature. We doubt if, in practice, the defendant has succeeded in effecting either of these variations. The samples of its finished nails in the case show a decided curvature lengthwise, and in many of the exhibits of its nails which have passed through the beveling operation only, inspection plainly indicates a lateral spreading of the metal about the point. It is also obvious that it is mechanically impossible to impress the nail with the beveling die without at the same time spreading the metal under and on each side of it, to a greater or less extent, laterally. It is likewise true that the beveling, no less than the curving, operation of the Chase method is included in and secured by the patent. We are of opinion that the defendant's method of beveling the point is a substantial equivalent of the same operation in the Chase method. Exactly the same result is produced in both cases. The defendant's nail, when finished, cannot be distinguished in any of its features from the Chase nail. The slight difference in the process is immaterial. The two are in substance identical.
Other defenses are that the Chase invention was anticipated in the Gooding patent, No. 5,489, dated March 28, 1848, and in the Polsey patent, No. 62,682, dated March 5, 1867. These inventions were among the first rude attempts in the art of producing horse-shoe nails by machinery. The evidence shows that they were never of any real utility, and were never put to any practical use in making nails. In the specifications of the Chase patent the inventor refers to the Polsey patent, No. 62,682, and carefully distinguishes his invention from
It is sufficient to remark that we find nothing in either of these patents which describes the simple and effective processes of the Chase invention.
The entry in each case will be decree for the complainant.
DAVIS v. SMITH.
(Circuit Court, D. Massachusetts, March 18, 1884.)
PATENTS FOR INVENTOR8-EXPIRATION OF IT-DEMORRER.
Demurrer to bill for profits and damages, filed against an infringer one day before the patent expired, sustained, and bill dismissed, with costs; following Root v. Ry. Co. 105 Ú. S. 189, and Birdell v. Comstock, 15 FED. REP. 395.
Demurrer to Bill.
LOWELL, J. This bill, for profits and damages against an infringer of the plaintiff's patent, was filed one day before the patent expired. The defendant demurs for want of equity; and his demurrer must be sustained. No equitable discovery or relief is sought by the bill beyond or different from that which is usual in ordinary patent causes. The plaintiff could not expect the court to grant a restraining order, which must expire before it could, by reasonable diligence, be served, nor was one prayed for. An injunction was impossible for want of time to notify the defendant. The case, therefore, comes within Root v. Ry. Co. 105 U. S. 189; Burdell v. Comstock, 15 FED. REP. 395; Betts v. Gallais, L. R. 10 Eq. 392. Demurrer sustained. Bill dismissed, with costs,
MATTHEWS v. SPANGENBERG and another.
(Circuit Court, 8. D. New York. April 25, 1882.)
1. PATENTS FOR INVENTIONS-EVIDENCE-MOTION TO SUPPRESS.
Where evidence has been taken and filed out of time, but no motion to sup
press has been filed, it may be considered. 2. SAME-REISSUE No. 9,028—CLAIMS 5 AND 7 VOID.
Claims 5 and 7 of reissued letters patent No. 9,028, granted January 6, 1880, to John Matthews, for soda-water apparatus, are anticipated by letters patent
No. 44,645, granted to A. J. Morse, October 11, 1864, for a syrup fountain. 3. SAME-CLAIMS 4, 6, 8, AND 9 VALID-INFRINGEMENT-DISCLAIMER.
As the parts of the thing patented in the fourth, sixth, eighth, and ninth claims, which have been infringed, are definitely distinguishable from the parts claimed in the fifth and seventh claims, and the latter claims were made by mistake, without any willful default, or intent to defraud or mislead the public, and complainant has not been unreasonably negligent in not entering a disclaimer as to such parts, he may, on entering a disclaimer, maintain a suit for infringement, but without costs
WHEELER, J. This suit is brought upon reissued letters patent No. 9,028, dated January 6, 1880, granted to the orator upon the surrender of original letters patent No. 50,255, dated October 3, 1865, for soda-water apparatus. The defense relied upon is that the de. fendants purchased the apparatus used by them of William Gee, who afterwards settled with the orator; that the patent is void for want of novelty; and that they do not infringe. The original patent is not in evidence.
Some of the defendants' evidence was taken and filed out of time. No motion to suppress it has been filed. The orator objects to its consideration; and the defendants ask that it be considered, or the time extended to cover its taking. As no motion to suppress has been filed, it is allowed to stand and is considered. Wooster v. Clark, 9 FED. REP. 854, is relied upon by the orator on this point, but in that case there was a motion to suppress.
The case does not show that the defendants purchased their apparatus of Gee before he settled with the orator, and therefore entirely fails to show that he settled with the orator for the sales to the defendants. They stand by themselves, independently of Gee. Steam Stone-cutter Co. v. Windsor Manuf'g Co. 17 Blatchf. C. C. 24. That defense fails for want of proof.
The patent has nine claims. The second and third are not in controversy. Upon all the evidence, it is found that the first claim is not infringed; that the fifth and seventh are anticipated by letters patent No. 44,645, dated October 11, 1864, granted to A. J. Morse, for a syrup fountain; and that the fourth, sixth, eighth, and ninth are not anticipated and have been infringed by the defendants.
The parts of the thing patented in the fourth, sixth, eighth, and ninth claims are definitely distinguishable from the parts claimed in the fifth and seventh claims; and the orator appears to have made the latter claims by mistake, supposing himself to be the original and first inventor of the parts claimed in them, without any willful default, or intent to defraud or mislead the public, and not to have unreasonably neglected to enter a disclaimer of those parts, thus far. Therefore he is entitled to maintain this suit, but without costs, on entering the proper disclaimer. Rev. St. § 4922; Burdett v. Estey, 15 Blatchf. C. C. 349.
On filing a certified copy from the patent-office of the record of a disclaimer by the orator of what is claimed in the fifth and seventh claims, let a decree be entered that the fourth, sixth, eighth, and ninth claims of the patent are valid, that the defendants have in. fringed, and for an injunction and an account, without costs.
SMITH V. STANDARD LAUNDRY MACHINERY Co. and others.
(Circuit Court, 8. D. New York. February 22, 1882.)
PATENT-INFRINGEMENT — BREACH OF CONTRACT OF LICENSE_JURISDICTION OF
Where the owner of a patent grants an exclusive license to a corporation to make and sell the article patented during the term of the patent, requiring sales to be returned monthly and license fees to be paid monthly, and retains the right to terminate by written notice the license, on failure to make returns and payments for three consecutive months, after due service of notice of the termination of the license for failure to make returns, an action for infringement, in which the corporation sets up in its answer that the license was not lawfully terminated, and that it had not sold any of the patented articles, and was not making and selling them, involves a question of infringement, and is cognizable in a federal court, although the parties are citizens of the same state. Wilson v. Sanford, 10 How. 99, and Hartell v. Tilghman, 99 U. S. 547, distinguished.
WHEELER, J. There are two of these cases, brought upon numerous patents described in the respective bills of complaint, and they have been heard together upon the bills, answers, replications, and plaintiff's proofs. The plaintiff, by written agreement, dated July 1, 1874, granted an exclusive license to the Standard Laundry Machinery Company, alone and singly, to manufacture and sell laundry machinery embodying the inprovements patented, to the end of the terms of the patents, the company to make return to the plaintiff of all sales made during each month, on the first of the following montn, and to pay, as a license fee, on or before the tenth of the following month, a sum equal to 8 per cent. of the gross sales of power machinery, and 4 per cent. of the gross sales of hand machinery, so sold. There was a clause in the agreement providing that the plaintiff might terminate the license by serving a written notice upon the company, on failure to make the returns and payments for three consecutive months. May 13, 1879, the plaintiff served notice of termination of the license. The defendants continued to use the pat. ented inventions, and the plaintiff brought these srits for infringements after the notice. The parties are citizens othe same state, so that this court has no jurisdiction except under the patent laws. The defendants insist that those laws give no jurisdiction to decide upon the construction or continuance of the agreement for a license, and that the question of infringement depends wholly upon the agreement, and rest the case here wholly upon this question of jurisdiction. The contract of license itself provides a mode for its own termination; and the plaintiff's case shows that it was terminated in that mode. The defendants do not rest their cases upon the question whether the contract was terminated or not, but, while they insist
that it was not lawfully terminated, answer "that they have not sold any machines embodying the invention for which the complainant has obtained letters patent, as alleged in the complaint, and that defendants are not now manufacturing and selling the said machines.” This raises a question of infringement, arising solely under the patent laws of the United States, of which the United States courts alone have jurisdiction, without reference to citizenship. The decision of the question of the termination of the license might obviate this question of infringement, and it might not; or, rather, it might furnish a mode of determining whether there was any infringement, and it might leave that question to be determined otherwise. If the license was not ended, the acts charged, if done, would not constitute an infringement; if ended, the question would remain whether the acts were done. The question of infringement would always be in the case until decision. This is different from Wilson v. Sandford, 10 How. 99, and Hartell v. Tilghman, 99 U. S. 547, relied upon by defendants. In each of those cases, as treated by the court, there was but one question made between the parties to be decided at all, and that was a question of contract. Neither of those cases seems to control this, and this does seem to involve a controversy of which this court has jurisdiction.
Let there be a decree for an injunction and an account, according to the prayer of the bill, with costs.
SMITH v. STANDARD LAUNDRY MACHINERY Co.
(Circuit Court, 3. D. New York. January 1, 1883.)
PATENTS FOR INVENTIONS-INFRINGEMENT BY CORPORATION-PERSONAL LIABIL
ITY OF PRESIDENT WHO SWEARS TO ANSWER— WANT OF SERVICE.
Where, in an action against a corporation for the infringement of a patent, the president, who is named as one of the defendants, but not personally served, owns all the stock, and swears to and signs the answer, a general appearance being entered in the suit for the defendants without naming them, he is personally liable.
On Exceptions to the Master's Report. The facts appear in the opinion.
H. G. Atwater, for complainant.
WHEELER, J. This cause has now been heard upon the exceptions to the master's report. These exceptions relate principally to the liability of the defendant Lewis at all personally. The grounds of the exception to his liability at all are that he was not so made a party individually that any decree for relief could be made against him, and that the allegations of the bill were not sufficient to be the foun