24.0 BnADLEY
FEDEUALnEronTEn.
& Hunn.um
"MANUF'G CO.
v.
THE CHARLES PARKER CO.
(Ui1'cuit Court, D. Connecticut. 1.
July 17, 1883.)
PATENTS FOR INVENTIONS-IN.JUNCTION PffiNOENTE LITE-INFllTNGE'IE:!"T.
An injunction peitdente lit!!, to restrain a defendant from the infringement of a pateni w II not be granted wh"n the vUliJity of sueh patent has never Geen judicially determined and is in duuut. The questions in regard to the validity of tne pjall1tiiI's patent, and which prevent a prcl,minary injunction, stated.
2.
SAME.
:Motion for Preliminary Injunction. Cllas. E. Mitchell and O. fl. Pl ttt, for plaintiff. Chas. n. Ingersoll, [or defendant. . SHIP3IAN, J. Tilis is It motion for a preliminary i:nf'unction to restrain the defendant from the infringement, pendente lite, of reissued letters patent, dated April 20. 1877, to the plaintiff, as assignee of John A. Evarts, for an imprvvem3nt in extension lamp fixtures. The original patent was dated October 31, 1876. 'fhe invention related to an improvement in the class of lamp fixtures which is so constructed that the lamp and shade, when suspended, can be drawn down together and will rest at (hfforent elevations. In the original "in a weighted ring, specification the invention was said to which forms su b:ltantially a crown for the shade when the two are together stlspended hyone end of chains or cords over pulleys from the support above, combined with a shade-holder attached to the sejon.l end of the said chains or COl'l13, and the lamp attached to the said shade-holder." 'file claim in the original patent was as follows: .. The comhination of the B. the shalle-ring, A, to which the lamp and shade are attached; the said shade-ring and weight-ring adjustably connected by chains or cOrtls frolll a support a!JOve the said CUllstructed to rest upon or cruwn the shade. all suustantially as describeu."
In the reissue the l11vention is said to cr)11sist in "combining in an extension lamp fixture a silade-ring provided with a device for removably securing the shade to the with the lamp attached to said shade-ring, anel a weight of ring form to serve as a counter-balance; the said ring-shaped weight alld shade-ring connected by chains or corris over a suitahle support above, so that the lamp and Rhade may be drawn down, the weight-ring riling from the shade-ring." The first claim of the reissue is as follows: "The combination, in an extension lamp fixture, of the shade-ring, adevice for remova!llysecuring the sha']e to the rinn', the lamp attached to saill sll<\llering, the ring-shal'ell weight allli cOllnected uy chains or curds over a suppurt above, '3ubstantial1y as described."
In the second claim the shade was added to the combination of the first claim. In view of the history of the original patent in the patent-offiee, and of the original specification, the claims of the reissue should be so construlJd a::l to compel the weight-ring to rest upon or
BRADLEY & HUBBARD MANUF'O CO.
r.
THE CIIARLES PARKER CO.
241
crown the shade, meaning thereby the sllade-ring. No adjudication upon the patent has ever been had. The invention has had great commercial success, and I shall assume that the validity of the patent has been, in substance, acquiesced in from its date to the time of its infringement by the defendant, which has recently entered upon the manufacture of a substantial imitation of the Evarts fixture, to the serious injury of the plaintiff. A temporary injunction must, therefore, be ordered, unless the de. fendant can show that, notwithstanding the acquiescence of the public, a fair and substantial question eKists in regard to the validity of the patent, and that, therefore, it is proper that its validity should not be prejudged by an injunction order, although the defendant has been until recently a stranger to the lamp business, and is seriLlusly injuring its neighbors by this new rivalry. The main question which the defendant presents is that of patent. ability, in view of the state of the art. The tendency of late decisions of the supreme court is to the effect that this qnesti6n is one which is to be examined with increased care. v. Gmucl St., etc., R. Co. 24 O. G. 1:19; [So C. 2 Sup. Ct. Rep. 661;J Atlantic Wurks V. Brady, 23 O. G. 1330; [So C. 2 Sup. Ct. Rep. 225.] The theory of the defendant, and the two questions wbich, it seems to me, are of sufficient importance to call for a stay of judgment un.il final hearing, may be stated as follows: The Mitchell, Vance & Co. fixture, which precede:! the Evarts invention, "empluyed a metal shade. tu which the lamp-holder was riveted, so that it became a fixed and permanent part of the lampholder. The end of two chains was attached to this shade. The chains, passing over pulleys abMe. thence down, were attached to a ringshaped weight, which would set down upon the top of the shade," the weight being of the same circumference with the shade-top. The constrnction was not adapted to a glass or removable.shade. The actual invention of Evarts was the adaptation of this constrnction to the necessities of a porcelain shade, and consisted in the same arrangement of ring-shaped weight and chains in connection with the metallic rim which received the neck of the shade, and to which was di.rectly attached the lamp-holder. The rim or ring of the shade was provided with a sct-screw, so that the porcelain p'trt of the shade could be disconnected from the rim for convenience in packing. The defendant says that this porcelain shade, with its metallic rim and lampholder directly attached thereto, was a well-known method of COIlstruction, and that when once the idea of a ring-shaped weight, of the same diameter with the top of the shade, suitably connected by chains with the shade-top, which was also firmly connected with the lamp-holder, was known, the method of adapting the invention to the necessities of porcelain shadlJs W'lS a matter of the common knowl. edge of a maker of lamp fixlured. AtltLlttic Works v. Brady, supra. v.17,no.3-1G
242
FEDERAL REPORTER.
The second point is a more technical one, and is founded upon tho 104U. S. principle which is thus stated in Pickering v. ' 310. "In a patentable combination of old elements, all the constituents must so enter iato it as that each qualities every other. * * * It [the cumbination] must form either a new machine of a distinct character and function, or prodnce a result nue to the joint and co-operating action of all the elements, amI which is not mere adding together uf separate contributions."
The defendant says that the object of this was so to construct a porcelain extension lamp fixture that the lamp and could together be raised or lowered at the will of the operator, and would remain in position at any desired point; that a device for removably securing the 5hade to the ring contributes nothing to this result, and does not enter into the combination so as to keep or cooperate with the other elements. I am of opinion that, in view of the nature of these questions,-the first more partwularly,-it is proper that an injunction should not be granted.
EMERY
and another v. CAVANAGH. June 4, 1883.)
{Oil'cuit Court, 8. D. New York. PATEXT8
Fon
INVENTIONS-PUBLIC USE.
Public use of an invention. unless by the patentee himself, for profit, or by his consent or allowance, will not work a forfeiture of his title, as forfeiture is not favored unless it clearly appears that the usc was soleI," for profit, and not with a view of further improvements or of ascertaining its defects, or,for any other purpose of experiment in rCclueing the invention to practice.
In Equity. Wm. A. lIIaeleod and George Harding, for plaintiff. Wm. S. Lezcis and Lucien Birdseye, for defendant. .SHlP}IAN, J. This is a bill in equity to restrain the alleged infrmgement of letters patent, grantetl February 10, 1874, to N. J. Simonds and E. R. Emery, for imnroved lD,achinery for moulding heelstiiIenings for boots and 5hoe5. - The plaintiffs are the owners of the patent, and John R. Moffitt is one of their licensees. The defendant was licensed by l\Ir. Moffitt to use t""o machines in accordance ",ith his patent of June 20, 1876. This license was revoked on Augnst 7,1 F<78, but thti defendant continued to use the machines. The alleged infringement in this suit consists in the use by the defendant, since the revocation of his license, in the two )Ioffitt machines, of the C:"vices claimed in the first and fOllrth claims of the Simonds Knery patent. The infringement theMoffitt patent isthe subJect of another action, which was tried at the same time with the present suit. The daims of the Simonds which ar:3 said to Laye been infrirlged,are as follows': '