letters, whenever the postmaster has reason to :believe that a fictitious address is being employed by any person for covering forbidden circulation in the mails. As in some instances it might be difficult for the person entitled to the letters to establish his identity, cases may arise where, without fault on his part, the citizen may be subjected to inconvenience and even to loss. The postmaster is not authorized by the regulation to exercise an arbitrary judgment; he is only to require proof of identity when· he has reason to believe that the mails are being used illegitimately. His judgment may be founded upon circumstances with which the owner of the letters has had no connection. Unless some circumstances exist which call for the exercise of his judgment, his action is not within the protection of the regulation. The affidavits furnished in support of the motion on behalf of the plaintiffs are not very satisfactory; but inasmuch as the circumstances which control the action of the postmaster are necessarily such and only such as influence his own judgment, it is not to be assumed that the plaintiffs can definitely know what they are. The plaintiffs are entitled to information to meet the issue tendered by the defendant, and to disprove the existence of any facts or circumstances authorizing him to exercise his judgment in the premises. In this behalf the defendant should be required to furnish a bill of particulars setting forth the facts and circumstances which induced him to believe that 40 Broadway was being used by some person or persons for covering forbidden correspondence in the mails under So fictitious address. Ordered accordingly. ----
TILLINGHAST ". HICKS
(Oircuit Oourt. N. D. New York. 1882.)
PATENTS FOR INVENTIONS-PRELIMINARY INJUNCTION.
Where there was a delay of 10 years between the original patent and the reissue; a controversy as to the validity of the reissue and as to the infringement; no decision of any court establishing the validity of the patent; no royalty or license fees paid to the patentee; no general use or public recognition; no present manufacturing or sale of the patented article; and no allegation of irresponsibility on the part of the defendants,-a preliminary injunction will be refused.
William A. Abbott, for complainant. Esek Cowen, for defendants.
COXE, D. J. Complainant moves for a preliminary injunction in an action brought to restrain the infringement of a patent for an improvement in "railroad-car ventilators." The patent was originally issued January 3, 1871. The claim was as follows:
"The improvement in car ventilators, or dust-guards, which consists in providing the leaves, A and AI, with the right-angled edges, band bl , hinged to the current of air is directed car, substantially as described, by means of which past the joint with the window-jamb or side of the car, as and for the purposes specified."
The patent wall reissued February 15, 1881. In addition to the claim of the original patent, just quoted, the reissue contained the following language:
"(2) The combination with the side of a car of deflectors or dusthaving their hinged edges shielded by a .. break-joint" strip projecting from the car side, to deflect the current of air past the joint and prevent the entrance of dust, substantially as set forth."
A disclaimer was filed by complainant, March 23, 1882,.. To that part of the specification which is in the following words, to-wit: 'It is evident that a close round hinge attached to the inner edge of the deflector would in a measure serve a similar purpose, and yet be within the sC9pe of my invention, which consists in providing the deflectors with such a means of close connection with the car as will direct the current of air past the point of junction with the car when the leaf is extended outward and in use,'''
He also renounces his"Broad claim to a freely-swinging pivoted shield having a flange at its inner or pivoted edge that rests against the side of a car when the shield stands at right angles to the same, and your petitioner desires to explain that are intended to cover hinged deflectors or dust-guards haVing their hinged edges shielded by a strip OIl the car or by a projecting part of the car frame in such manner as to form a' break-joint' so that the entrance of dust cin<j.ers, etc., at the pivoted edges of the deflectors or guards is effectually prevented,"
It is thought that sufficient has been quoted to warrant the defendants in asserting that the complainant's invention, and his own statements regarding it, are involved in some perplexity. Prior to the reissue and disclaimer, and on the twenty-first day of January, 1879, and on the twenty-ninth day of July, 1879, respectively. thedefendant Reynolds was granted two patents for an improvement in "dustguards for car windows." The claim in the second of these patentsthe first is not produced-is in these words:
I' (1) The combination, with a hinged dust-guard, of a guard-strip, E, provided with one or more standing flanges, e, adapted to form a dust-tight joint with said dust-guard, as herein specifled. (2) The combination with the pintle, H, of the socket, C, provided with the spring, D, as and for the purpose herein specified."
Briefly the difference between complainant's device and the one used by the defendants is this :-complainant's dust-guard, as shown by his drawings, is in one piece, provided with an angular edge, which, when it is extended for use, fits closely against the window-jamb, or against a projection on the wall of the car, thus preventing the ingress of dust. Defendants' dust-guard is in two pieces, the one consisting of a plain flat leltf, the other a metallic strip projecting from the car about a quarter of .an inch, against the outer edge of which the inner edge of the hinged leaf rests. Whether the latter is an infringement of the former is a question which must ultimately be decided in this case. It is only necessary to say, for the purposes of this motion, that the question is not free from doubt. Ten years elapsed before the reissue was applied for. The application was then made with full knowledge of the device of the defendants. Such a long delay would seem to bring the case within the doctrine of Miller v. Bridgeport Brass Co. 21 O. G. 20l. Complainant's acquiescence for so long a period in the terms of the patent as originally stated would operate as a dedication to the public of those improvements not specifically claimed by him. Sheriff v. Fulton, 12 FED. REP, 136. But it is argued that the claim in the original patent is broad enough to cover the device used by the defendants, and that no new principle or combination is stated in the reissue. This position is vehemently combated by the defendants, and they refer to the following language of the patent, which theyenterpret as meaning that although the complainant, in 1871, had in mind a ventilator similar to the defendants' device, he did not deem such an invention practicable, and so did not include it in his claim:
"It has been proposed for many years to have ventilators consisting of the plain, flat leaf, hinged to the outside of the car adjacellt to the windows. Experiments have been made therewith, but, owing to the difficulty of having a joint which, while it would allow the leaf to come in contact flatwise with the side of the car, would also, when at right angle thereto, present a close joint, the common and usual method of hinging has been applied."
These considerations alone might not lead to a denial of the motion; but the complainant, for other reasons, disconnected from the
questions arising on the patents, has failed to bring himself within the rules applicable to these cases. No suit at law or in equity haa ever been commenced by the complainant. His invention has not gone to the com· into public use. No manufacturer has ever paid plainant. His device has not been extensively used on any railroad, nor has it been recognized by the public. It is not asserted that it is now in use anywhere or for sale anywhere. The defendants are large manufacturers and vendors of the ventilators described in the Reynolds patent. To put a stop to this branch of their business would be likely to cause them irreparable injury. There is no allegation that the defendants are irresponsible or nnable to respond in damages should the complainant finally succeed. The granting of an injunction rests in the discretion of the court, having in view all the circumstances of the case,....;,...its effect npon the defendants as well as upon the complainant. If it can be plainly seen that greater mischief will result from granting than from refusing it, the writ should be withheld: No case is cited, and I have been unable to find one, sustaining an injunction where, as in this case, the following facts concur:
(1) A delay of 10 years between the original patent and the reissue; (2) a reissue, and also upon the ques_ controversy as to the amended claim of tion of infringement; (3) an apparent apathy on the part of the patentee regarding his rights for many years following his invention; (4) no decision of any court establishing the validity of the patent; (5) no royalties or license fees paid to the patentee; (6) no general use; (7) no present manufacturing or vending under the patent; (8) no public recognition; (9) large interests of the defendants jeoparded; (10) no allegation of irresponsibility.
On the contrary, the courts have frequently regarded the existence of a few of these circumstances as sufficient to authorize a denial of the application. Fish v. Sewing Machine Co. 12 FED. REP. 495; Neilson v. Thompson, Webst. Pat. Cas. 278; Brown v. Hinkley, 6 Fish. 870; Robertson v. Hill, Id. 468. For these reasons the court would not be warranted in granting a preliminary injunction. Motion denied.
UNITED NICKEL CO.
(Circuit Uourt, D. Massachusetts. August 14, 1882.
PATENT FOR INVENTIONS-INFRINGEMENT-WHO LIABLE.
The only persons who can be held for damages for the infringement of a patent, are ihose who own, or have some interest in the business of making, using, or selling the thing which is an infringement; and an action at law cannot l:e maintained against the directors, shareholders, or workmen of a corporation which Infringes a patented improvement.
This action at law, for damages for the infringement of two patents, was brought November 21, 1877, and was now submitted to the court upon agreed facts. The defendants were the American Nickel Plating Works, a corporation duly organized under the general laws of Massachusetts, th!ee dil'ectors and one stockholder of the company, and one workman. When this action was brought, a suit in equity was pending by the same plaintiffs against the corporation, and one Anthes, which resulted in a final decree for the plaintiffs, not for profits, but for damages assessed at $13,000, and upwards, and a large bill of costs, for which execution has been issued, but in no part satisfied. Judge Shepley, at one term of the court, when the evidence in the equity suit was nearly all taken, ordered this action to stand continued to await the result of that suit. The company has done no business since the injunction was decreed, and is now insolvent. The plaintiffs having some security in this action by attachment of the property of the corporation, which has since been mortgaged, submit that they may prosecute it against the corporation, and against the individuals who are, and were during the infringements, its directors or stockholders, or workmen in its employ. The case finds that Shea had no interest in the business, but was a nickel plater for wages. As to the other defendants, that they were concerned only as officers and stockholders, and as authorizing the defense of the equity suit, which they did in good faith under advice of counsel; except that Allen, as an officer of the company, solicited the business for which the defendant corporation was pursued in the equity suit. T. W. Clarke, for plaintiffs. D. H. Rice, for defendants. LOWELL, C. J. The final decree of this court in the equity suit being for damage'!:! in respect to the very same infringements now in