NATIONAL HAT-POUNCING MACHINE CO. V. HEDDEN.
is as to which, title should prevail, the bill should make Sweet a party, and should contain appropriate allegations to show complainant's equitable title prior in point of time to the title of the defendants, and notice to defendants of the complainant's rights. The plea is 'allowed,with costs. Leave is granted to the plainant to move to amend his bill.
NAtIONAL HiT-POUNCING MAOHINE
SAME '0. BROWN.
(C'Wcuit (JOW1't, D. New Jersey. December S, 1886.)
PATENTS FO'll !:NVENTIONa---SUIT Fon INFRINGEMENT-DECREE NOT CONCLUSIVR AGAINST ANOTHER DEFENDANT MAKING A NEW CLAIM.
. After the validity of apatent has been established in a suit, it may always be shown, in another suit on the patent against another defendant, and even in answer to an application for a Preliminary injunction, that the right claimed by the plahitiff in the new suit was not fairly in controversy in the former suit.
SAME-PRELIMINARY IN,ruNCTION NOT' GRANTED.
In an action for an infr:ingement of a patent, where there is doubt. as to the priority of the invention, if the defendants are amply responsible. and the plaintiff sells lic.enses for a royalty, so that there will be no diffi.culty in ascertaining the damage, a preliminary injunction will be denied.
In Equity. Motion for preliminary injunction. Eugene Tredwell, for A. Keasbey, contrq,.
WALES,J'. Motion is made in each of these cases for apreliminary injunction on letters patent granted to Rlldolf Eickemeyer, November 23, 1869,No. 97,178; also on letters patent granted to Ed. Olund B. Taylor, October 21, 1879, No. 220,889j-both patents being for improvements in maqhines for pouncing hats. Complainant is owner by assignment of these patents, and sues for their infringement by defendants. The sec()nd claim of the Eickemeyer patent, and the fifth claim of the Taylor patent, are the only claims relied on in these motions. The second claim of the first patent is for "the arrangement and combination of a rotating pouncing cylinder with a. vertic,al Rupporting horn, substantially as described, whereby the to support the tip, side, crown, or brim supporting horn q!ay during. the operation of the hat." The fifth claim of the second patent is for "the combination of the support for the hat and the self-feeding pounciIlg cylinder, whereby the hat is drawn over t.he B, in the directioI,l of the motion of the pouncing cylinder. "
The validity of the second claim of the Eickemeyer patent has been sustained by the United States circuit court for the district of chusetts, at the suit of this complainant against William R Thom and others, begun July 10; 1879, and decided November 6, 1885'; But none of the defendants bere were parties to that suit. Hedden & Co. admit that they used the Eickemeyer machine, under a license from the complainant, from 1878 to the end of 1882, and that they paid royalties at the rate of six cents per dozen for fur hats, and three cents per dozen for wool hats; that in the latter part of 1882 they purchased a machine from the defendant Brown which would pounce instead of r£tquiring two operatipns,a hat aHover at one one for the brim, and another for the body of the hat, as in the meyer machine; and thatthereupQn they;gave notice to the agent of the complainant that they would no longer pay royalties for the use of its machine. They also assert that they did not know, and were never informed by the complainant, that its machine would pounce a hat allover at one operation. Thel'e w.as no concealment by Hedden & Co. of their acts,and they assigned the reason just stated for tuting the. Brown machine. , Brown claims that he had construCted his machine at .least a year before the date of the Eickemeyer patent, and, of course, long prior to the Taylor patent, on which he had pounced hundreds of dozens of hats; pouncing each hat allove,!: at one operatidn, thereby anticipating the inventions of the patents now in controversy. When these motions were first submitted to the court in May of the present year it was represented by the defendants that the machine now sought to be enjoined was seen in use by the complainant's agent in December, 1882, and no explanation was made in the moving papers for the delay in applying for an injunction for nearly four years; but upon the intimation of the court that, as the papers stood, an injunction could not issue in consequence of the laches of the complainant, further time was allowed for proof in excuse and justification of the delay. The excuse is that the complainant was waiting the reo sult of the litigation in Massachusetts before prosecuting the users of the Brown machine, which is identical with the Taylor machine, and that the latter was decided to be an infringement of the Eickemeyer patent; that the complainant believed the case against Thom and others to be a test case, and that the trade generally would submit to its decision. A's a general rule, this would constitute a satisfactory reason for delay. Green v. Barney, 19 Fed. Rep. 420. But, admitting this, Hedden & Co. contend that the suit in the Massachusetts district was founded on three patents, and that only the second claim of one of these was sustained by the court, and that the machine now usp,d by them is substantially the same which was made by'Brown in "1868. They further say that thGY have used this machine only in their business as manufacturers, and are amply responsible to pay all damages
which might be recovered for any infringement of the right of the complainant, if such infringement should be established. Brown contends that as his machine was not before the court in the former suit, and he has had no opportunity of presenting his claim of priority of invention, his rights as a prior inventor have not yet been adjudicated. It has been held to be "well settled that, even after the validityofa patent has been established in ,a suit, and notwithstanding the presumption thereby raised that the patent is valid, it may always be shown in another suit on the patent, against another defendant, and even in &.nswer to an application for a preliminary injunction in such suit, that the right claimed by the plaintiff in tlie new suit walil not, either as to nature or its extent, fairly in controversy iQ. the former suit, or that' material. facts ,were not known or considered when the former sriit was tried, or that there are relevant matters which were not adjudicated in the former suit." Page v. Holmes B'IJ,rglar Alarm Tel. Co., 2 Fed. Rep. 336. T4e affidavits, and counter-affidavits, filed in the present application',are voluminous, contradictory, and conflicting., But facts are of proved or admitted sufficient to create some doubt of granting these motions. It does not satisfactorily appear that i:J;reparable damage will be suffered by the complainant in waiting for. a final decree in either case; and as the complainant does pot use the patents as a monopoly, but sells licenses to others to use them for a. fixed royalty, there will be little difficulty in ascertaining whatever damages it may be entitled to if it finally prevails. Moreover, it is understood that Hedden & Co. are extensively engaged in manufacturing hats, employing a large number of hands in their business, and that a provisional injunction would work greater hardship on them than benefit to the complainant. For these reasons, and in view of the faot that there is some doubt on the question of priority of invention, the injunctions will not be granted, unless the complainant can show to the court that the defendants are not pecuniarily responsible, and al'e not now, or will not in the future be, able to pay any decree that may be rendered agaiust them; in which case it may apply for an order requiring the defendants to enter into a bon), with sureties, in such sum as may be agreed upon by the parties, ot' determined by the court after hearing. In reaching this conclusion the practice is followed which was adopted by this court in Greenwood v. Bracher, 1 Fed. Rep. 861. See, also, New York Grape-sugar Co. v. American Grape-sugar Co., -10 Fed. Rep. 837.
(Diaflrict C()'//,rt. N.D. New York.
October 4, 1886.)
W AGJJ:S-CONTRACT OF SmPMENT-CONFLICTING EVIDENCE. When the contract of shipment is: in parol, the court will, as between sev, ;eral 'versions, adopt the one that is most consistent with common sellse and with, prepondt3rance of testimony.
, In Admiralty. ' The libelant, on the twenty-eighth of April, 1886, shipped as fireman on the steam-barge A. H. Jennie, a Canadian vessel, and, with the exception of three or four days, remained on board until the twenty-sixth of June, 1886. ' He alleges that he was to receive for his services 8S fireman $18 for the first month, and $24 thereafter; that on the fifth of June, 1886, he was made second engineer, which position he filled until the twenty-sixth of June, when he was discharged; that for his services 8S engineer he was to receive $30 per month, the nsnalwages.Therespondent's version of the agreement is that the libelant was·to receive $12 for the first month, and $15 thereafter, pro rata deduction to be made for the time he was absent from his post. ' The agreement was oral. " : admits that he received $10, and it is undisputed that $15.50 was tendered to him on the twenty-sixth of June. That he subsequently received and retained this amount is not denied. He received in all $25.50. Within a day or two after he left the barge, and without warning or notice of the nature of his claim, the libelant caused her to be seized at the port of Buffalo, and there detained until her master procured the necessary bond for her release. Martin Clark, for libelant. G.'S. Potter, for respondent. Can, J. I have carefully examined the testimony presented, and am convinced that the libelant can'not recover. His account of the transaction between himself and the master of the barge is whollY unsupported, 'and is inherently improbable. The respondent's version, on the contrary, besides being in accordance with common sense, is corroborated, in its principal features, by five witnesses. ,!:,he libelant was a young man 21 years of age. He had been a mason's tender, and had done "a little of everything." He never before been upon a vessel. He h'ad never touched a marine engine, and his knowledge of steam-power generally was confined to a threshing-machine and a saw-mill. That a careful master would employ such a person, without any previous knowledge of his capacity, and agree to pay him, after the first month, the wages received by experienced hands, and in about five weeks promote him to the posi1 Reported
by Theodore M. Etting, Esq., of the Philadelphia bar.