POPE MANUF'G CO. V. GORMULLY & JEI!'FREY MANUF'G CO.
unless the justice of the case, as drawn from all its facts, demands it. Hence there must not only be a.n entire absence of fraud, but an equal absence of oppressiveness, and if a decree would operate more hardly than it should on the defendant. this would be sufficient reason for withholding it." This rule cited from the text-books is abundantly supported by the adjudged cases. Race v. Weston, 86 Ill. 94; Frisby v. Ballance, 4 Scam. 299; Mortlock v. BuJler, 10 Ves.292; Willan v. Willan, 16 Vest 83; Joynes v.Statham,3 Atk. 388. We think there can be no doubt that this contract, if enforced according to its letter and spirit, would act oppressively and unjustly upon this defendant. He is a competing manufacturer in the same field with the complainant. He is the owner of patents which the cpmplainant has acquiesced in. his right to use in conducting his business, and covering many, if not all, the features in his machines enumerated in the ninth article of the contract; and we cannot but look upon this article and the other provisions of the contract as a cunning device to bind this defendant, not only in a manner which he did not comprehend or understand at the time he executed the agreement, but also in a maliner which would be contrary to public policy; as we think the courts should certainly not favor any efforts on the part of patentees or owners of patents to obtain by indirection or subterfuge an admission as to the validity of their pat,ents which ties the hands and cripples the energies of a competitor. Many of these patents held by complainant, and perhaps all of them, may be for their specific devices, but the law should not encourage parties holding such patents to invent or devise schemes by which toobtain admissions, directly or indirectly, of the validity of their patents, so as to foreclose investigation and discussion upon the question of thei\. validity; and hence we simply Bay that this contract seems to be so oppressive, and so unjust and inequitable in its terms, and so contrary to -sound public policy, that it ought not to be enforced in a court of equity, .even if the defendant fully understood and comprehended the force and import of every paragraph of it. The bill is therefore dismissed for want of equity.
& JEFFREY (No. 830.)
Co. et al.
(Oircuit Oourt. No D. lllinoiB. April 30, 1888.)
:1. PATENTS FOR INVENTIONS-SCOPE OF CLAm-BICYCLE SEA'rs. The first and second claims of letters patent No. 252,280, of January 10,
1882, to-Curtis9 H. Veeder, for a "seat for bicycles," are: "(1} A suspension saddle, constructed with a flexible portion. and having an under springin two or more parts, to which the flexible portion is attached at either end. and whicb, metallic .parts. are extensible.... (2) "In a ve. oc.ipede seat. the combination of plates .'ld clamps, stop and adjusting bolts." The patent also contains a dlsclaimer limiting the claim solely to the "improved form of spring," Held, in -view of the disclaimer, that the patent IDustbe restricted to the form of spring
,shown; of both suspen,jli.9j1and as applied. to sad ,. dies, beingold In the art, as evidenced 1;lythe Engli$ patent of and , Brown of;J)ilX, 1878, the Shire of May 26, 1879, ,and the Fowler patents of May,lS80, and OGtober, 1 8 8 1 , ' "
The second ",1 aim of patent No. 197,289, of November 20, 1877, to A. L" G. M., and 0, E. Pl\ters, for an "anti-friction journal-box," is "the bearings with the shoulders beveled orl1Otched, combined with the nut. odte equivalent, correspondingly beveled or notched. " Held,'in view of the prior state of the art, as evidenced by the English patent of 1853 to Chinnock, and ,the American patellts of 1868 to Jewett a,nd Leach, of 1870 to Alcott, and of ,'1872 td Huse ahd Vernon, that the claim must be strictly confined to the de'vicesisht>wn,viz., a beveled nut for the adjustment of heveled rollers, and that it, did nOt cover a lateral adjustment for ball-bearings by meanS of a nut,
8. SAlJE-yELQI'IPEDE BA;NDLES. ,,',' , ' " In letters patent No. 245,542, of August 9, 1881, to Thomas W. Moran, for "handles for velocipedes," the improvement consists in affixing by the device a ball of rub1;ler to the ends or the velocipede handles. Held, if ,not void for want of invention, restricted, in view of the prior state of the art, as evidenced by the English patent of July, 1877, to Barrison, to the specific device shown. 4. SAMlIl-,UANDLE-BARS. ,'" , . Thellnly feature covered by letters patent No. 810,776, of January 13, 1885, to'William P Benham, for "improvements in velocipedes," is the idea of an . undivided handle-bar, and the means by which the bl\r is fastened to the steering,head.' Held, that the undivided handle· bar was a mere steering-bar witholl-t;Qovelty; and that the patentable novelty, if any, was confined, to the ,means 'by which the handle-bat was locked to the steering-head.
and third claims of letters patent No. 310,776, of January 13,1885, to p:. Benham, for "improvements in velocipedes, ",are (1) "the combinlit!c)"in'lf an undiVided bar, and an open slotted lug. and two sleev,ed nuts, or theirequlvalentll; one on either side the lug, surrounding the bar and l\dapted to to the lug." (3) "In"co:mbination with thehandle·bar. the and adapted operate su?stanti!llly, as and for the purpose set forth." Held, the undIVIded bar bemg VOId for want of novelty, the nse of an undivided handle-bar fa.stened to the steering-head by a method makiJ;lg use of neither the open slotted lug and two-sleeved nuts, nor the, detent,wasb,ot an infringement. , ., ' 6. SAME-'P,,\1.,ENTABILITY-INVENTION-PEDAL BARS. Thefe,ature covered by the second and third claims of 'letters patent No. 823,162, of July 28,1885, to Emmett G. Latta, for in velocipedes, " is the pedal-bar coated with rubber, longitudinally grooved, so as to furnish two bearing surfaces on opposite sides of the groove. Held void for want of novelty, a round grooved rubber-coated pedal-bar being old, as shown by the English patent of January, 1876, to Jackson, and the Harrison patent of 1877, and the change of form by Latta to a polygonal shaped bar involving no invention.
In for infringement. ," " , Before GRESHAM, Circuit Judge, and B:tODGETT, District Judge. Ooburn Thacher, for complainant. , " B. F. ThUT8ton and Offield Towle, for respondent." BLODGE1:T,.,r. The bill in this the defendants with the infringementofthe following patents: (1) Patent No. 252,280, granted to for a ',Iseat 19r (2). ,patent ,No. 197,289, granted November 20,1877, to A.L., G.M., and O. E. Peters, for "an anti-friction journal-boxi"(8) 'patents Nos. 24p,542, gralited DepeLUber 14, 188Q"il-lld August 9, 1881,
POPE MANUF'G CO. V. GORMULI,Y & JEFFRB:Y MANUF'G CO.
respectively, to Thomas W. Moran, for "handles' for velocipedes;" (4) patent No. 240,905, granted May 3, 1884, to John Harrington for an "improvement in bicycles;" (5) patent No. 310,776, granted January 13, 1885, to William P. Benham for "improvements in velocipedes;" (6) patent No. 323,162 granted July 28,1885, to Emmett G. Latta, for an 4'improvement in velocipedes;" (7) patent No. 329,851 ,granted November 3, 1885, to Albert H. Overman for an "improvement in pedals for velocipedes." It is charged that the patents now in question have been duly assigned to, and are now the property of, the complainant. The bill asks for aQ injunction and an accounting for the damages sust.ained by the infringement. We find no proof in the record showinK or attempting to show infringement of the Moran 1880 patent, the Harrington patent, nor the Overman patent, and as complainant's attorneys have not discussed or insisted in their oral or printed arguments thatinfringement is shown as to these patents, we shall give them no further attention. The Veeder patent, No. 252,280, is for an improvement in bicycle saddles, orsests for bicycles; and is stated in the specifications to consist specially in "devices for suspending the leather or other flexible rna.teria! of which the seating surface is composed, and for stretching or ing up the slack in the same, and for connecting the same with the perch or supporting bar for the seat, and by means of which the seat is made adjustable backward and forward over the perch or bar, * * * and consists, first, in a divided metallic spring or supporting plate for the flexible seat; secOnd, in a modification of that portion of said metallic spring . which forms the frame-work for the rear of the seat; third, in mechanism for elongating or extending said metallic spring, so as to take up the slack of tht::.flexible seat." The patent contains eight claims, but infringement is speCifically charged, and insisted upon, only .as to the first and second of these claims, which are as follows: "(1) A suspension saddle, constructed with a flexible portion, C, and 'having an under $pl'ing in two or more parts, B. D, to which the flexible portion is attached at either end, and which metallic parts are extensible, substantially as and fo.. the purposes set ,forth. (2) In a velocipede seat, the combination of plates, Band D, clamp, F, stop b, and adjusting bolt, F', substar as shown and described." The patent contains a disclaimer as follows: "I am aware that a spring has been used to support the seat or saddle of a blcyle. I therefore do not claim the general application of a spring for this purpose; but I do claim the improved form of spring as herein described." The' features of this patent now in controversy are especially the curved spring, which is made in two parts, both ends being curved upward, and the parts connected by a clamp, so that the spring is extensible; and, the flexible seat being attached to these curved ends of the spring, the slack of the seat can be taken up by extending the spring. The Peters patent, No. 197,289, is described in the specifications as 4'an improvement for overcoming the friction of the bearings of all ve"hicles mounted on wheels, and the journals of all revolving shafts, cJI-
inders, and bearings of machinery. * * * The invention is a combinatiol,1 of rollers or of iron, steel, o,r any suitable metals ,. and suitable in length, size, and or other materials, of sufficient fOlm, which revolve around the spindle or bearing of ,the axle within the hub of the wheel, and around thejournal or bearing of the shaft or cylinder, and within the journal-box, the rollers being independent of thebea,ring: and the hub or * * * To support and keep therpllers from runrlingagainst one another, and thereby producing friction:, .both ends of each are, made with a bearing which goes into rings Qr their equivalents ip. sqch u manner as to allow the rollers to turn freelJ.on their bearings as they revolve around the bearings of the axle o,rshaft." Provision wall malie for making the ,ends of these rollers bevele,<l, sq that the inside end would bear against a corresponding bevel,onAhe shoulder of the axle; while the outside. ends of the rollers would bear upon an adjulltible nut secured upon the outer end of the axle, so as to adjust the nut to the rollers as they become shortened at the ends by wf:Jar. The patent contains. four claims, but infringement is llpon in this case of the second claim, which is as follows: ,"(2)':Che \)eal;ings, with the shol.llpers beveled or notchpd; combined with beveled or notched, as shown in the nut, or its equivalent, Fig.4."· . I The Moran patent, No. 245,54:&, granted August 9, 1881, is for an "improvement in the handles of bicycles and velqcipedes," and consists in affbdng,\>y the device shown patent, a,ball. of rubber to the ends of the yeJocipede handles.· The patent cQntains three claims,as follows: 0_ a velocipede provided with ruuber ends, as set forth. "(1) The (2) 'fhe handle of a velocipede, in combination with rubber tips sleeved upon its ends as Sjlt forth. (3) A rubber handle for a velocipede, ofa ball and neck, combined III one piece; as set forth." The Benham patent, No. 310,776, is for an improved .;landle-bar for velocipedes or bicycles, and consists of It handle-bar'in one piece, extending from the steering-head. and fastened to the steering-head by the peculiar mechanism shown. The patent contains four claims, and infringement is charged as to the first and third, which are: ' "(1) The comuination of an undivided bar, and an open slotted lug, and two sleeved nuts, or their eqUivalents, one 011 either side the lug, surrounding to lock ,it rigidly to the lug, essentially as set forth." the bar. and, "(3) In cOmpination with the handle.bar, B, the detent. D, constructed and adapted toopel'ate substantially l¥l and for the purposes set forth." The Latta patent, No. 323,162, relates, in the language of the specifications, to certain improvements in the "construction of the pedals of moreparticlJ.larly to that class of pedals in velocipedes,or,bicycles, which a serrated steel bar is combined with the rubber pedal.bar in such pedal can be changed from a rubber pedal to a serrated manner that or rat-trap pedal, as may be des.ired. . The object of my invention is to combine a pedal bar of this character in a compact form, and in a simple manner, whereby the pedal can be readily changed from a rubber to
POPE MANUF'G CO. fl. GORMULLY & JEFFREY MANUF'G CO.
a serrated or rat-trap pedal, or 8 rubber and rat-trap pedal combined, and to so construct the parts whereby the pedal bars are more elastic and yielding to the foot than those now in use, and whereby the bearing surfaces are increased and the weight of the bars are reduced at the same time." The patent contains eight claims, and infringement is charged as to the second and third, which are as follows:
U(2) The combination, with the pedal-frame, of a rubber pedal-bar, H, provided with a central longitudinal groove, h, and two bearing surfaces, h', on opposite sides of the groove, h, substantially as set forth. (3) The combination, with a pedal fl'ame, of a rubber pedal-bar, H, pivoted to the frame by a rod, i, and provided on each of its sides with a longitudinal groove, h, and two bearing faces, h', h', on opposite sides of the groove, whereby the bar, H, is adapted to receive the pressure at its sides or edges, and be compressed on opposite sides of the rod, i, sUbstantially as set forth."
The defenses interposed are: (1) That the patents in question are void ior want of nO\'eltYi (2) that the defendants do not infringe. Complainant insists that defendants, by certain license contracts made by complainant to the defendant Gormul1y, dated June 13, 1883, and December 1, 1884, have admitted the validity of each and all the 'patents involved in this suit, and the title of complainant thereto; that although said licenses are in terms only to defendant Gormully, yet defendant Jeffrey was, in fact, interested in the business of Gormul1y as an actual partner, and that the defendant the Gormully & Jeffrey Manufacturing Company is a corporation organized and operated only for the convenience of said Gormully and Jeffrey, and that said Gormully and Jeffrey are the sole owners of its stock and managers of its affairs, and that therefore all the defendants in this case are by virtue of said license contracts estopped to deny the validity of said patents, or either of them, or any claim thereof, and are also estopped to deny complainant's title to said patents or either of them. In the preceding case, (No. 824, ante, 877,) we fUlly discussed the chamcter of these licenses, and considered the question as to how far they are binding, and came to the conclusion that these license contracts ceased to operate upon and bind the defendant Gormully after the termination and surrender thereof; and as the same proofs in regard to the validity· of the saiel contracts are before in this case, we again say that our conclusion is that the defendant Gormully accepted said license contracts with the mistaken belief and derstanding that they terminated and became wholly inoperative on the 1st <lay of April, 1886, and that thenceforward all his relations with and obligations to complainant by virtue of said license contracts ceased and were at an end. and hence that it would be inequitable to enforce said license contracts against Gormully, the licensee, after such terminationj and, as the defendants Jeffrey and the Gormully & Jeffrey Manufacturing Company, by complainant's own showing, were only bound by these contracts through Gormully, they are not estopped to contest the validity of these patents any more than Gormully himself is so bound. We therefore turn to the consideration ofthe issues made upon the pat.entfj themselves. . .
,Jln'tegurd to the Veeder patent, there ,ean be no dQubt, .)ye think,.that it'wasLintended to contain not only the idea of a by thtnmspells10n of some flexible material, like leather or cloth, but also bf so thatfby extending the bellrings or suspension points; of the saddle as the seat material became str:etched or slacked, thlt slack might be taken up; and this element of extensibility was obtained through his peculiar extensible springs, or his double spring, if be so called, coupled together in the' center, and capable of being elongated or extended.. The proof shows that idea of a suspensionsaddlewas not new with Veeder; and, without discussing all the pat.. etiufcitedby the defendants as anticipatory of the Veederdevice, iUs sufficient to.say thatin the English parent of Lamplugh and Brown,of July, 1878, an extension seat is shown in at least three differentforl1ls; the spring upon whlch the rear end of the seat is' suspended being movable, so that the,principle of extenRibility .is clearly ,shown in this patent. So in the Shire patent.of May 26, 1879, a suspension seat is shown .'Yith facilities for extending or taking up the slll,ck, ,M.d the Same feature is,shoW1;1 the Fowler patent orMay,J880,andtllelater Fowler patent qfOctQber; 1881. therefore, that the principles QfSIlSpensionand extensibility are bbth: old inihe art, the:only inquiry lef1.is:VI ' hether the, defelldant uses spring shown byt4e,Veeder patent and a simple inspection'of the defendants' saddle shows that, while it may be said to contain the feature of suspensionaIl<lextensibility by means of certain deVices whereby it ,is connectedwitl;:\ .and held to .the backbone of th(l bicycle,. or' seat of the tricycle,. yet itdoeEl not contain the spring shown in the Veeder patent; and as the Veeder patent must be restricted by the disclaimer.to the form of spring shown in that patent, and as suspended saddles, were old before Veed,er, it is suffiqientto that the defendants do 'not use thatJorm of spfipg, and hence do not infringe the Veeder patent. . ,. . . Neither the complainant nor the use the Peters patent as it is shown and described in the they do not 11se with as d,escribed, and shown in the a.nd drawings,-butthecontention on the part of the complainant is that this patent is the'germ, so to speak, of aU the ball-bearing devices whic:l;:l have a provision for lateral adjustment, to.compensate for the wear, and that the shown in tha;t patent are but ar,lOtber form. of baIlor globular,bearings, and thatP-eters was the first to show a means Qflaterally adjusting these bearings, whether the bearing was in"tl;:\e form of.a roller ora ball. The defendants? machines have ball-be;1ring"l in th.e main wheel, the rear wheel,and tbe:treadles, the balls being held in grodves or channels, and there being in all their journal-boxes an ment·for, llliteral adjustment; but defendants contend*at devices for lat· eral adjuBtmentof these bearings old, long before the Petel,'s patent, and the proof'shows tha.t :inl853 Qne.. Qhinnock received: a patent in England on ablm-bearing whic!l had provision for alataral adjustment by means. of a nut, ,while the American patent to .Alcott, in 1870, shows the same feature of adjustability, and by substantially the saml;)