AMERICAN PAPER BARREL
clearly proven that the defendants did not, in fact, construct an indicator in this form, and reduce it to actual use, until after it had been successfully accomplished by Parshall, nor until after the date of his patent. The mere drawing, therefore, cannot be allowed to have the effect of depriving Parshall of his title of being the first and original inventor." In this case Tucker was diligent in perfecting his invention, and it was given to the public before the date of Taylor's patent. ' Let each bill be dismissed.
AMERIOAN PAPER BARREL Co. v. LARAWAY. Nos. 516, 517.)1
July 16, 1886.)
PATENTS FOR INVENTIONS-INJUNCTION-INVENTOR ESTOPPED TO DENVORIGINALITY OF HIS INVENTION.
On a motion for a preliminary injunction to restrain an inventor and assignor of letters patent from infringing them, he is estopped to deny that he was the first inventor. The owner of letters patent for two counties in New York would not have the right to manufacture the patented machines in Boston for use in Ohio. The fact that United States patents are not limited upon their face to expire with the life of a prior English patent is not held, in the second circuit, to affect their validity.
SAME-TERRITORIAL INTERESTS-RIGHTS OF OWNERS OF.
So SAME-LIMITATION OF UNITED STATES PATENT TO EXPIRE WITH PRIOR ENGLISH
SAME-PRACTICE-AFFIDAVITS FILED OUT OF TIME NOT CONSIDERED.
Where, by stipulation, the time within which evidence to show cause upon motions for preliminary injunctions was limited to expire on a certain date, and the hearing was to be had as soon thereafter as the court could give it, held, that affidavits tiled after such date. without any stipulation or order of court permitting it, could not be considered. That the patent sued on has expired by reason of the expiration of foreign p'1tents for the same invention, is an original defense, and should not be left to be introduced as surrebuttal.
SAME-MATTERS OF DEFENSE-ORIGINAL, WHAT ARE.
SAME-CONSTRUCTION OF CLAIM-INFIUNGEMENT.
A patent on a machine for making barrel heads from paper pulp contained a claim for "the combination of the piston, the resisting surface opposed to the piston, and the laterally removable matrix case. all substantially as de· scribed." The specification described the matrix case as made in sectipns, pivoted or hinged Held, that the hinged features of the matrix were not a part of thIS claim, and that said claim was infringed byacombination of the same parts, operating in the same way, although the matrix CaS6 was made of a single piece.
Motions for Preliminary Injunctions.
Etlited by Charles C. Linthicum, Esq., of the Chicago bar.
William E. Simonds, for plaintiff. David G. Gordon and Charles E. Mitchell, for defendant.
SHIPMAN, J. These are two motions for preliminary injunctions in the above-entitled cases. No. 516 is a. bill in equity to restrain the infringement of three letters patent, Nos. 206,396,243,677, and 243,· 678, respectively dated July 30, 1878, June 28, 1881, and June 28, 1881, all granted to the defendant, and assigned by him to the plaintiff; the first two being for improvements in the manufacture of barrel heads and other articles from paper pulp, and the third being for machinery for monlding barrels from paper pulp. No. 517 is a bill' in equity to restrain the infringement of letters patent No. 258,236, dated May 23, 1882, issued to the defendant and Dwight Slate, assignees to the plaintiff, for a machine for moulding barrel hea.ds from pulp. On August 1, 1876, the defendant assigned to the plaintiff, a corporation established for the purpose of manufacturing barrels from pulp, an invention specified in an application for a patent which had previously been made, and agreed to assign to it all inventions, applicable to paper pulp vessels, which he might make during seveu years from that date. In pursuance of that agreement the patents in suit were assigned. From August, 1876, to January, 1884, the defendant was a director in said corporation, and, during substantially 'the same period, was in its employ as superintendent of machinery npon a salary varying from $1,000 to $2,500 per annum. The salary ceased on December 15, 1883. A serious difficulty seems to have existed between the defendant and S. M. Hotchkiss, an officer of said cOl'poration, and the former left its service, and for most of the time dince has been occupied in Boston in the manufacture of pulp barrel machinery. On December 2, 1884, two letters patent, Nos. 308,615 and 308,616, for such machinery were issued,-the first to the defend· ant and W. P. Laraway, assignors to the defendant and John F. Seiberling; the second, to the defendant, assignor to the same two persons. SUIT No. 516.
The important novel features of construction contained in the machinery which is described in Nos.,206,396 and 243,677 are specified by the patentee as follows:
"First, the idea or principle of perforated movable walls, which will compress the pulp, and' express the water; second, the combination of the side cowpress6rs with the cOmpressors; thil'd, the mould, so construCted that the sides and one end of the hollow article can be formed and compressed at once." ,
The important feature of No. 243,678 wa.s a matrix, cornposed of hinged inner staves and outer staves radia,lly moving inwardly; the interspaces being provided for by, interstaves, both inner staves and
AMERICAN PAPER BARREl,
outer staves being perforated; the outer face of the inner staves, and the inner face of the outer staves, being grooved, and covered with a finely-perforated mould face. The defendant sets up in his affidavit a variety of defenses, viz. : That the claims of Nos. 243,677 and 243,678 were anticipated by a patent to Wheeler & Jerome; that the machine described and claimed in No. 243,678 was in public and open use in Medina, New York, for two years before the date of the application for said patent; that the defendant is equitably entitled to have the title to the three patents for the counties of Orleans and Niagara, in the state of New York, conveyed to him, which the plaintiff refuses to do; that the plaintiff aquiesced in the defendant's manufacture; that he is a workman employed by the day, and has no interest in the new machine; that a British patent to one Lake, dated June 25, 1877, was granted for the subject-matter of the three patents, and that the American patents are not limited on their face to expire with the Lake patent, and are therefore void; and that the new machine does not infringe. Mr. Laraway's antagonism against the persons with whom he was formerly associated has led him to unnecessarily decry his own inventions. No time need be spent upon the alleged anticipation by the Wheeler & Jerome patent. Mr. Laraway was the assignor of the patents in conttoversy, and upon this motion he is estopped from saying that he was not the first inventor. Indeed, this point was not made in the argument. The alleged public use of the Medina machine is in conflict with Mr. Laraway's statements as an applicant for a patent, and with his testimony upon a question of interference. The affidavits in the case lead me to the opinion that his former statements were correct. Considerable space is given in the affidavits to the alleged equitable title of Laraway to two New York counties. I do not deem it wise to settle this difference upon ex parte affidavits. If the defendant's claim is true it affords no excuse for his manufacturing in Boston infringing machines to be used in Ohio; and, as it is stoutly denied, the doctrine that he who seeks equity must do equity will hardly allow a court to permit the defendant to continue infringement until the merits of this controversy have been thoroughly ascertained. The points in regard to acquiescence by the plaintiff, or that Laraway is employed by the day, and has no interest in the machine, are not of sufficient importance to &pend time upon. His position in regard to the infringing mechanism is:very different from that of a person who works under the orders of another, without any pecun. iary interest in the machine upon which he works. The fact that United States patents are not limited upon their face to expire with the life of a prior English patent is not held, in this circuit, to affect the validity of the United States patents. Ganan :V. Pound Manuj'g 00 .· 23 Fed. Rep. 185.
The qnestion of infringement is the one of importance. If the defendant has built in Boston but one set of machinery, it was at one time constructed in accordance with his patent, No. 308,615, of December 2, 1884. He says that the machine "which is complained of" is not in accordance with that patent, in that it does not have the interspace compressors therein described, but has, instead, the spring plates of the Wheeler & Jerome patent, and that these interspace compressors are un perforated. He intends it to be understood that he has been engaged upon only one set of machinery. If that is true, it is also true that the machine contained, in July, 1885, the interspace compressors of patent 206,396, and was made like the other two patents in controversy, and had the continuous series of perforated external side compressors of No. 243,677, and that it infringed the third claim of No. 206,396, the first, second, and third claims of No. 243,677, and all the claims of No. 243,678. If the defendant has altered the original machine in accordance with the statements in his affidavit, it infringes the first, second, and fifth claims of No. 243,678. I do not thoroughly understand Mr. Laraway's account of the construction of the machine, so far as the fifth claim is concerned. Ilis affidavit does not give a clear statement of the way in which he makes the inner core; but, 80 far as I can understand it, the fifth claim is infringed. The orders to show cause upon these motions were dated March 18, 1886, and were returnable on March 26th. On that day, upon the defendant's motion for further time, it was ordered that he should have till April 5th to file answering evidence, and that the plaintiff should have until April 9th to file rebutting evidence. On April 5th the respective counsel stipulated that the defendant should have till April 12th to file his evidence, and that the plaintiff should have till April 19th to file rebutting evidence, "and that hearing shall then be had as soon as the court will hear us." Affidavits on both sides were filed accordingly On April 30,1886, without any further stipulation, and without any order or consent of the court, the defendant filed seven affidavits in reply to the plaintiff's rebutting affidavits, and which relate to some one of the defenses which have been mentioned, other than non.infringement. They are mostly cumulative; in some instances stating alleged facts in addition to those previously stated. The case must rest entirely npon the affidavits that were previously presented. In them the defendant should have stated his entire defense, which should not be divided into fragments. The defendant also filed, on April 30th, a Canadian patent issued to him October 11, 1876, for five years, which it is said was for the same invention described in the three American patents, and, having expired, the American patents expired also in October, 1881, three and one·half months after two of them were issued. This was an original defense, and should not have been left to matters of surre· buttal. Ample time was given for the preparation of the defense.
AMERICAN PAPER BARREL CO. '11. LARAWAY.
I 2haJl not, therefore, consider the questions that may arise upon this patent. SUIT No. 517. The matrix case of No. 258,236 is thus described by the patentee in his specification:
"It consists, speaking generally, of a band or ring, which forms the periphery, exterior, or circumference of the barrel head, which is within or forms a part of the piston chamber while a barrel head is being formed, has the barrel head formed within it, and, after the head is formed. is removed from the piston chamber, carrying the barrel head, and the barrel head then taken from it. This hoop, ring, or band is made in sections, k, k, k ' , k', pivoted or hinged together. Sections k. k. are pivoted together by pivot. I. Sections k l · k', are hinged to sections. k, k, by pivots. l', I', in order that the hoop may be opened to remove a barrel head. This banel head is in shape a disk, with a turned-Up peripheral rim; in other and general terms, a round box with very low walls or sides. "
The first claim of the patent, and the only one which is said to be infringed, is as follows: "The combination of the piston, the resisting surface opposed to the piston, and the laterally removable matrix case, all substantially as described, and for the purpose specified." The defendant says, in substance, that the part of his machine which corresponds to the matrix case, the whole machine being described in No. 30:3,616, is It shallow pan, called in the patent "a drawer," formed from a single piece of metal, having flaring sides, and removable vertically from the machine when the barrel head has been formed. His machine has the piston and the resisting surface of No. 258,236. It has a laterally removable matrix case or pan, made of a single piece, instead of being made in sections,. because the barrel head is shaped differently from that of the former patent; but the hinged feature of the matrix case is not a part of the first claim. There is no substantial difference between ·the two devices, so far as the first claim is concerned. Let there be a temporary injunction reRtraining the infringement of the third claim of No. 206,396, the first, second, and third claims of 243,677, the five claims of 243,678, and the first claim of 258,236. v.28F.no.2-10
COLGATE V. WESTERN ELECTRIO MANUF'G CO.t
(Circuit Oourt, S.JJ.New York. July 19,1886.)
PATENTS FOR INVENTIONS-DAMAGES FOR 1NJ'RmGEMENT-RoYALTY-LrCENBB :F'EE.
Royalty paid by licensees for the right to use a patented invention is not evidence of damages sustained by the patentee by the sale of the patented article sufficient to authorize a recovery.
SAME-RIGHTS UNDER. DISTINGUISHED-INFRINGEMENT OF THESE RIGHTS.
The value of some patents consists principally in the right to use the invention; the value of others, in the right to sell; and infringement by selling and infringement by use of the patented article are essentially different invasions of the patented property.
SAME-ROYALTY FOR EXCLUSIVlIl LICENSE NOT EVIDENCE OF DAMAGE BY 00CASIONAL .SALES.
Royalty paid for the whole monopoly of selling and manufacturing under a patent is not sufficient evidence of the value of the right to make occasional sales in a particular territory. Le Bau v. Hawkin8, 2 Barn. & Adol. 561.
An exclusive licensee may well afford to pay a much larger consideration for the property right than the patentee could command from purchasers of a license to compete with other sellers. -
SAME-LICENSE TO MANUFACTURE AND SELL-COVENANT NOT TO CHASERS FROM LICENSEE.
A covenant not to sue purchasers of the licensee, contained in a license to manufacture and sell a patented article, operates, by way of estoppel, to Ucense the purchaser to use such article.
6. SAME. . A covenant not to sue purcha!lers from a licensee having the right to make and sell a patented article is equivalent to a license to sell, and transfer to purchl;l.sers the right to use, the article. 7. SAME-ROYALTY PAID FOR SUCH RIGHT NOT CRITERION OF VALUE OF ORDIRoyalty paid fora license to manufacture and sell, and containing a covenant by pMentee not to sue purchasers from licensee, is not the criterion of valua of an ordinary selling right. because the right to sell might be of insig' nificant value without such covenant.
NARY SELLING RIGHT.
In Equity. Betts, Atterbury et Betts, for complainant. George P. Barton, for defendant.
WALLACE, J. The J;Ilaster has awarded damages to the complainant, upon an accounting for the infringement of his patent for insulated wire, upon the basis of a royalty. The infringement by the defendant consisted in the sale of the article. The proofs for the com· plainant may show that he has an established license fee for the use of his invention, but they wholly fail to show that he has any uniform established license fee for the right to sell the article. The complainant testifies, in general terms, that he has an established license fee, and grants licenses to sell his invention for a royalty of 10 per cent. upon the gross cost of the article sold; but he names as
IEdited by Charles C. Linthicum, Esq., of the Chicago bar.