and others v. STOLZENBACH and others.
w: D. PenntJYlioania.
July 2, 1886.)
PATENTS FOR INvENTIONs-INFRINGEMENT-LACHES AS A BAR TO AN ACCOUNT FOR PROFITS.
To a bill to restrain infringement of a patent the defendants by plea set up a claim of right to use the patented apparatus in question, and the grounds thereof. The plaintiff having neglected for over two years to reply or set the plea down for hearing. the court, under equity rule 38, decreed that he was to be deemed to admit its truth and sufficiency, and that the bill be dismissed. The defendants were then suffered to continue to use the apparatus for nearly two years more, before a second (the present) suit was brought to restrain them. Held, that the court would not decree an account of profits, the defendants having acted under a bona fide claim of right, and there being on the other side acquiescence and inexcusable laches in seeking redress.
The proofs disclosing an established license fee of $1,000, held, further,that the amount of such fee was 8 just measure of compensation for the infringe· ment.
In Equity. D. F. Patterson, for complainants. Geo. H. Christy, for defendants. ACHESON, J. If it be conceded that where a profit or saving is shown to have accrued to an infringer beyond the amount of the established license fee for the use of the patented machine, the patentee suing in equity for an account of profits is not ordinarily to be limited to such fee; and assuming that the evidence discloses with sufficient clearness the number of bushels of sand treated by the patented apparatus on the dredging-boat Wharton McKnight, and the amount of the savings to the defendantl:l thereby effected,-it still remains to be considered whether the defendants are justly chargeable with profits, in view of the exceptional circumstances of this case. In the first place, be it observed, the defendants were not wanton infringers. They acted under a bona fide claim of right to use the invention, based on the late partnership relations and dealings between the patentee, the plaintiff Keller, and the defendant Pfeil. It is true, the decision of the court has been adverse to that claim, (20 Fed. Rep. 47;) but the question of right was fairly debatable. and the proofs left the integrity untouched. And then, in the second place, the plaintiffs' demands may well be moderated by reason of the laches imputable to them. The history of the case is this: The patented apparatus was put on the Wharton McKnight in the spring of 187lJ. Very shortly thereafter Keller'brought suit in this court against Pfeil and his associates. to restrain its use. To the bill the defendants filed a plea setting up Pfeil's claim of right to use the apparatus, and the grounds thereof. The plaintiff failed to reply to the plea. and, for a period of more than two years, neglected to move v.28F.no.1-6
in the cause, or put it in a condition for further prosecution; and
eventually, on May 10. 1881, after notice, and under the provisions of the thirty-eighth equity rule, the court adjudged and decreed that the plaintiff was to be deemed to have admitted the truth and sufficiency of the plea, and that the bill be dismissed. The defend. ants were then suffered to continue the use of the apparatus on the Wharton McKnight for a period of nearly two years before the present suit was brought, on April 9, 188:3. Now, we have, indeed, decided that the decree dismissing the former bill for want of prosecution was no bar to this suit, but it by no means follows that it is to be without influence when we come to deal with the question of the extent of the relief which should be extended to the plaintiffs. The decree proceeded on the ground of the acknowledged truth and sufficiency of the plea implied by the plaintiff's inaction. The dismissal of his bill on this ground certainly left Keller in no better condition than he would have been if, with full knowledge of Pfeil's use of the patented apparatus on the Wharton McKnight under a claim of right, he had made no move by suit or otherwise to restrain him. Moreover, the dismissal of Keller's bill was followed by two years of acquiescence in the defendants' use of the invention on said boat. Thus, the tendency of Keller's course of conduct during the space of nearly four years was directly to encourage the defendants in the continued use of the apparatus. A court of equity always discountenances laches. Hence, in McLean v. Fleming, 96 U. S.245, it was held that while the plaintiff was entitled to an injunction to restrain infringement of his trade-mark, yet, by reason of his long-cantin ned acquiescence and unreasonable delay in seeking relief, he was not entitled to an account for profits. This principle was applied in New York Grape Sugar 00'0 v. Buffalo Grape Sugar 00·· 24 Fed. Rep. 604, to a suit for the infringement of letters patent. In Harrison v. Taylor,l1 Jur. (N. S.) 408, a delay of less than a year in bringing suit to enjoin infringement of a trademark was adjudged to be good ground for refusing a decree for an account of profits.I!'urthermore, relief of this nature has sometimes been denied by a court of equity simply on the ground that the infringement was without fraudulent intent. McLean v. Fleming, supra; Moet v. Oouston, a3 Beav. 578; Edelsten v. Edelsten, 1 De Gex, J. & S.185; Mer1'ia,m v. Smith, 11 Fed. Rep. 588. Now, in the present case, we have not only inexcusable laches on the part of the plaintiffs, but also the element of entire good faith on the part of the defendants. The plaintiffs' claim, then, to profits is altogether destitute of equity. It appears that as early as 1879 KellAr began to grant licenses; and there is satisfactory evidence showing bis fixed license fee to be $1,000 for the use oLhis apparatus on one Substantial justice, then, will be done by decreeing compensation to the plaintiffs on the basis of such license fee, and. in adoptingthiQ
OSCEOLA MANUF'G CO. V. PIE.
measure of relief, we act in the spirit of the rule indicated in Burdell v. Denig, 92 U. S. 716. And now, July 2, 1886, the plaintiffs' exception to the master's report is overruled, and the defendants' first and second exceptions thereto are sustained; and it is ordered that a decree be drawn in favor of the plaintiffs for $1,000, with costs of suit.
OSCEOLA MANUF'a Co., Limited, v. PIE and others.
(Circuit Oourt, W. D. Pennsylvania. June 12, 1886.) 1.
PATENTS FOR INVENTIONS-INFRINGEMENT.
Letters patent No, 173,369, granted February 8, 1876, to Sebastian Stutz, for an improvement in car-wheels, construed, and held not to be infringed :.>y the defendants,
SAME-ScOPE OF PATENT.
The self-lubricating principle applied to car-wheels being old, and the invention a mere improvement in a well-known class of wheels, and the claim being for. a combination of designated component parts, "all as shown and. described, " !wld, that the patentee was limited to the particular consuuction ,showl). in. the specification.
In Equity; James 1. Kay and O. H. McKee, for complainants. George Harding and Francis T. Ohambers, for respondents. ACHESON, J. The bill charges the defendants with the infringe. ment of letters patent No. 173,369, granted on February 8, 1876, to Sebastian Stutz, for an invention which, the specification recites, relates to an improvement in the class of car-wheels which are provided with chambers or cavities for holding a lubricant, and from which it is fed or distributed to the friction surfaces of the axle journal. The specification describes the improvement thus:
"The construction of the wheel is as follows: The nave or hub, N, of the wheel terminates at its outer end in a conical cap, AI, which is cast in one piece with the body of the wheel, and provided with a small opening, m, through which the lubricant is introdueed into the reservoir, 0, formed by recessing the inner portion of the hub between the circular ribs or bearingsurfaces, h, h. Grooves or notches, g, are cut in the rib, h, to permit the lubricant (inserted through the hole, m) to find access to the said annular chamber or reservoir, 0. Openings, n, are formed ill the sleeve or box, S, to permit access of the lubl'icant from the reservoir, 0, to the journal, J. 'fhe rear or inner end of the sleeve, S, has a radical flange,f, and the hub, N, is secured theret.o by means of bolts, b, as shown."
The or box, S, is slipped over the axle journal, and secured thereto by ll1eans of a pin and washer or a Bcrew-nut; and tho axle joqrnltl andsleeve,thus united, are inserted in the hub, and, by means' of the bolts, b, pasBing through the flange, 1, of t11e ",leave,
into the hub, the wheel is held in place on the axle. scribing his improvement, the patentee declares:
After thus de-
"By constructing journal-box and hub, and connecting them in the manner shown and described, I secure freer circulation and access of oil to the journal, and adapt the wheel to be removed from the axle with greater convenience."
Then follow, first, a disclaimer, and then the claims, in these words:
"I do not claim a car-wheel provided with a detachable cap or Oil-CUp, nor employment of a perforated journal-box in connection therewith; but what I claim is (1) the combination with the hub, N, having chamber, 0, and oil-passages, g, in its front inner bearing, h, and the oil-holding cap, AI, of the box, S, having the perforati.ons, n, all as shown and described, whereby the lubricant has free circulation around said box, and access to the as specified. (2) The combination with the hub, N. of the journalbox, S, having the radical flange, f, and the screw-bolts, b, as shown and described, for the purpose specified."
The defendants' car-wheel, which is made under letters patent granted on November 2, 1880, to J. N. Watt, differs from the Stutz wheel in these two important particulars, viz. : First. the cap or oilcup is made separate and distinct from the hub or body of the wheel, and is detachable therefrom; and, secondly, the journal-box is not removable. but is cast solid or integral with the hub or body of the wheel. This construction is 80 unlike that described by Stutz that it is conceded nOf to come within the scope of his second claim. It is, however, most earnestly contended that it infringes his first claim. But what does that claim cover? Certainly not the self-lubricating principle applied to car-wheels, for that was old. Confessedly, Stutz' invention was merely an improvement in a well-known.class of wheels having oil-chambers from which the lubricant is supplied to the bearing surfaces, and his specification throughout is only explanatory of his particular mode of constructing and connecting the hub and journal-box. And then we have him expressly disclaiming "a carwheel provided with a detachable cap or oil-cup." With such a specification, and on the heels of such disclaimer, a carefully limited claim would naturally follow. And such is the claim under consideration. Whether, in view of the state of the art as shown by the prior patents, any broader claim was allowable, is a debatable question, which it is not necessary to consider. Turning to the claim as made, it is found to be for a combination of two constituent parts,-one being "the hub. N. having chamber, 0, and oil passages, g. in its front inner bearing, h, and the oilholding cap, AI;" and the other being "the box, S, having the poriorations, n," "all as shown and described." This language is unmistakable. The limitations thereby imposed are in perfect keeping with the scope of the specification, and I do not perceive any modifying effect in the added words, "whereby the lubricant has free Under the circulation around said box, and access to the journal.
LA RUE V. WESTERN ELECTRIC CO.
first claim, then, the patented combination is of the recessed hub, having the cap or oil.holding cup in a single casting with the removable sleeve or journal.box. This interpretation being in accordance with the plain words of the claim, it would not be a sound objection thereto, even were it true that the effect would be to leave no independent subject-matter upon which the second claim could operate. In fact, however, the second claim has a third component in "the screw-bolts, b." I am of opinion that the wheels manufactured by the defendants do not infringe either of the claims of the Stutz patent. Let a decree be drawn dismissing the bill, with costs.
LA RUE V. WESTERN ELECTRIC
(OVrcuit Court, 8. n. N6'1J) York. July 10, 1886.)
PATENT-CLAIM-CONSTRUCTION AND EXTENT OF.
A Clause in the application for a patent, immediately associated with the Claim, either preceding it or following it, and unmistakably designed to state what the inventor intended to secure to himself bl the patent, and to include in his claim, should be construed as a part of the' claim, " and covered by the patent.
SAME-TELEGRAPH KEy-BOUNDER-TORSIONAL SPRING-INFRINGEMENT-lNJUNCTION.
E. obtained a patent for an improvement in "telegraph transmitters." There were four specifications in the claim, in each of which the invention was described as a combination, in a telegraph key, of a torsional spring, by means of a flat strip of metal, with a lever fulcrumed upon it, etc.; and in the preceding clause of the application it was stated that the inventor "did not limit himself to telegraph keys only, * * * as it was equally applicable to relays and sounders." The defendant appropriated and used E.'s combination, and the whole of it, in the sounder. Held, that the patent covered the combination when used in a sounder, and not its use in a key only; and that the defendant's instrument was an infringement, and that the complainants were entitled to an injunction.
Briesen et Steele, for complainant. George P. Barton, for defendant.
BROWN, J. The complainant moves upon the bill and affidavits for a preliminary injunction to restrain the defendant from an alleged infringement of patent No. 270,767, dated January 16, 1883, issued to Edgar A. Edwards, under whom the plaintiff claims for an "improvement in telegraph transmitters." The defendant sets upFirst, want of novelt.v; and, second, that the defendant's instrument is not within the scope of the patent as shown by the "claim." The application in the Edwards patent states as follows: