DICKERSON V. DE LA VERGNE REFRIGERA1'ING MACHINE CO.
directinterestin maintaining his patent, both because he is under obligations to doso, either moral or legal, or both, and also because his own ,!ncome from the royalties w0uld be abridged, as the proof shows it has been, largely by the infringement. A decree may therefore be entered finding that the defendant infringes the fourth claim, and for an accounting.
f1. DE LA VERGNE REFRIGERATING MACHINE
«()ircuit (Jourt, 8. D. N6'lJJYork. March 5, 1888.)
PATENTS FOR INvENTIONS-:-INFRINGEMENT-1NJUNCTION'-WHEN GRANTED.
In an application for a preliminary injunction to restrain the manufacture of machines alleged to infringe letters patent, when the defendants admit the validity of the patent, if, construed, as they insist, but insist that they do not infri'nge; and say that if the patent be construed as plaintiffs insist, theya4· mit that machines infringe, but deny the validity of the patent. for want of novelty,-the complainant is not entitled to an injunction until he shows a f0t:mer adjudication in favor of his letters patent, or an equivalent.
The letters patent und'er which the complainants seek to enjoin defendants wereissued July 22, 1884, to one Buckert, fot refrigerating machines. After , the p-ant of this patent, one Block filed an application for improvement,s in , refrigerating machines. and in an interference which was declared and tasted in the patent-office, the defendants in this proceeding were the real parties, paying all the expenses of the interference. In that proceeding Block llled a,motion to dissolvElthe interference, attacking Suckert',s patents on , several grounds, but the motion was dismissed because of (1) laches in filing it; and (2) the insufficiency of the grounds; and the contest was decidildin favor of Suekert. Held, that the only question raised by the interference was as to which was the prior invelltor. and this decision was not equivalent to an ,adjuj:li'cation: in favor of the patent, and would not justify a preliminary in· jUJ;lction in'an action whete' the patent was assailed for want of novelty.
In Equity. On bill for preliminary injunction. This is an application niadeby Edward N. Dickerson, Jr., trustee, and others, to restrain the De la Vergne Refrigerating Machine Company ,from manUfacturing refrigerating machines alleged to be an infringement ofletters patent No. 302,294, granted July 22, 1884, to Julius J. Suckert, under whom the complainants claim. Dickeraoo Ct Dickerson, for complainants. Banning & Eanning, (George Harding, Edmund Wetmore, and William A. ,JP/nner, (jf counsel,) for defendant De la Vergne Refrigerating Machine Company. ' A. P. Fitch, for defendant Ehret.
LACOMBE, J. This is an application for a preliminary injunction to restrain the manufacture and sale of refrigerating machines,which it is .contended infringe several of the claims under ,letters patent No. 302,. 294, granted July 22, 1884, to Julius J. Suckert, and which have passed by mesne conveyances to the plaintiffs. The defendants qualifiedly dis'putethevalidity of the patent, and qualifiedly deny infringement. In
other words, if the patent is construed as they insist it should be, they admit its validity, but assert that they do not infringe; if, however, it be construed as plaintiffs insist it should be, then defendants admit that their machines infringe, but assert that the patent is void for want of novelty. The argument on the physics of the case has been adjourned till after examination of the other questions, b'lt it has been sufficiently developed to show that on this branch of the case there arises a conflict susceptible of elaborate and extended discussion, and not determinable without careful deliberation. By this defense the validity of complainants' patent is questioned with sufficient directness to require them to establish to the satisfaction of the court that there is such a presumption in favor of its validIty as will, under the decisions, warrant the issuing of a preliminary injunction. .. Patents are granted after examination by, and under the allowance of, officials whose business it is to critically examine the applications there.for in connection with outstanding patents and the state of the art. The letters patent which evidence the favorable decision of these officials in that regard are prima facie valid. The experience of the courts, however, with these 'patent-office decisions seems not to have been altogether happy, and we find them repeatedly declining to concede that a presumption of validity arises from the unattended letters patent. "Under the uniform ruling of the courts of the United States for more than half a century, if there has been no decision on the patent by a United States court, 00 the merits, the partyis driven to show that his patent went into use, undisputed, for a sufficient time to raise a prima facie case in his favor." Manufacturing Co. v. White, 1 Fed. Rep. 604. And see White v. Manufacturing Co.· 3 Fed. Rep. 161; Manufacturing Co. v. Charles Parker Co., 17 Fed. Rep. 240; DeVer Warner v. Bassett, 7 Fed. Rep. 468; Potter v. Muller, 2 Fish. Pat. Cas. 465; Tappan v. Bank-Note Co., ld. 195; Machine Co. v. Williams, ld. 135; NO'ith v. Kershaw, 4 BIatchf. 70. Careful s,=,arch has not disclosed any decision of this circuit repudiating . this rule as the guide to be followed upon motions for preliminary injunctions, although in other Circuits it is not always adhered to. Manufacturing Co. v. Deering, 20 Fed. Rep. 795; Foster v. Oros8in,23 Fed. Rep. 400. In the last-cited case JUdge CARPENTER refers to two authorities in this circuit as in accord with his decision, but, upon examination, they will be found not inconsistent with rule above quoted. Thus, ,in: Lantern Co. v. Miller, 8 Fed.: Rep. 315, Judge SHIPMAN, it is true, granted a preliminary injunction. He held, however, that the plaintiffs must, upon such a motion, establish the infringement beyond reasonable doubt, and that, as such question often depends upon the proper con,struction of the patent, its claims should ordinarily have been construed by a flourt of competent jurisdiotion, or should have been practically construeliby the consent and aoquiescence of that part of the public which is cognirant of the extent of the monopol)'. Such construction he found in the case before him in a decision on part of the claims, and in the fact that in another suit an elaborate argument in support of the
DICKERSON'll. DE LA VERGNE REFRIGERATING MACHINE CO.
patent so impressed the judge who heard it that he required defendants to file a bond as the condition of refusing the injunction, that suit being subsequently settled by the payment of $210,000. "I am satisfied," says Judge SHIPMAN, "that by virtue of all the recited decisions and the circumstances of this case, the question has been so far settled that I ought not to refuse an injunction upon the ground of non-adjudication." So, too, in Sugar CO. v. Sugar CO., 10 Fed. Rep. 835, Judge WALLACE speaks of the rule that a preliminary injunction would not be granted unless the right secured by the patent was fortified by evidence of an exclusive or recognized enjoyment, or by former adjudications, as "relaxed in more recent practice." Such relaxation, however, he finds only when the validity of the patent is not assailed, and the proof of infringement clear. In the case at bar it cannot be said either that the validity of the. patent is not assailed or that proof of infringement is clear, and there has not been /l. sufficiently long-continued, recognized, and exclusive enjoyment. Inasmuch, therefore, as the wholesome and salutary rule which has for halfa century been followed in deciding applications for preliminary injuIlCtion in patent cases stands unqualified by reported decisions in this it will be.accepted as controlling of this motion. To sustain their claim plaintiff'l must therefore show an adjudication in their favor, or its equivalent. There is no such adjudication, but the pluintiffs contend that its equivalent is found in an interference decision, to which defendants were parties or privies. The letters patent in suit were July 22,1884, upon an application filed December 3, issued to 1883. Subsequently one Louis Block filed an application for a patent for iIl!provement\3 in refrigerating machines, and an interference was declared and .contested in the patent-office between himself and Suckert. Block was in the employ of the De la Vergne Compauy, which paid the expenses of the interference, and was in fact the contesting party. The complainants claim that under these circumstances "every question contested and necessary to be contested in that interference is, at least so far as a preliminary injunction is concerned, refl adjudicata inter partes." The question raised by the interference was whether Suckert or Block was the prior inventor. That question was decided in favor of Suckert, and Block's application fora patent refused. Before the case came on final hearing, Block moved for the sllspension and dissolution of the interference, upon several grounds. The commissioner held that "the motion could not be sustained-First, because there was not sufficient showing why. the motion had not been filed earlier, as contemplated by the rules; and, second, because the grounds are not such as would justify the approval of the motion." Because by tbis motion Block sought to question the validity of Suckert's invention, it is now claimed tbat defendants are estopped from denying such validity on this motion upon any defenses advanced, or within their knowledge at tbe time the patentoffice decided inSuckert's favor. It is not understood that the defendants disputetbe entire validity of plaintiffs' patent. On the contrary, they admit its validity if it be conv.05.1<'.no.2-1O
strued according to their theory; anti contend thatorily if it be given the oConstruction plaintiffs put upon it, is it void for want of novelty. Therefore they insist that there is nothing in their pre!lent position atvariance with the decision in the interference case. Whether this be so or not need not now be considered, unleSs it appears that there has heen a decision in the interference case such as the court will accept as equivalent to an adjudication in support of the patent. As stated above, the courts long ago reached the conclusion that the decisions of the patent-office (being in most cases official opinions formed without the illumination -derived from the vigorousenconnterof private interests) were ordinarily unsatisfactory foundations upon, which to base preliminary injunctions. "fhere are cases, however, in which an application for a patent being in interference with some pending application or unexpired patent, a determination of the questIon of priority of invention is required by statute, (Rev. St.§ 4904,) and is made after an examination, in which the contesting parties have abundant opportunity to offer proof; and argue in tmpport of their respectiveclaimsj' and where. before 'final action, either party has' (nnder the rules) the opportunity to lay before the commissioner any evidence he may have touching the novelty and patentability of the invention. In some of these cases the courts have within the past 10 years .,the official deCision' of the patent-office as sufficient to sustain the presumption ofvaUdity j which is essential to the granting of an injunction. The decisions which the statutes contemplate are determinationsofthe commissioner as to priority of invention, (section 4904,) as to novelty,utility, and patentability, (section 4893,) and are evidenced by the action he takes. Thus, ifthe interference is between two applicants, his issuing of the patent to one determinesalltbese points-in his favor alid against the other. If the interference is between a patentee and an applicant, a decision in favor of theapplicalit determines' all these points· in his favor j but a deeision against the applicant does not aarily determine all these points the other way Thus, although satisfied that the applicant was in reality the prior inventor, the commissioner may refuse to issue the patent to him, because sit10e the first patent was issued the patent-office may have become convinced that the subjectmatter was not patentable or novel. The statute, which has given him no power to'recall an issued patent, has provided for no official actioti by which he can pronounce it valid or invalid, except that by granting a patent for the same invention to an interfering applicant he decides the invention to be meritorious, but the first patentee not entitled to it. In the case at bar the patent to Suckert was iSfS'l+ed before Block's application, and the decision rendered under section 4904 declared that, as between them, Suckert Was the prior inventor. Whatever may have been the opinion of the patent-office after the interference asto the patentability and novelty of the invention, the statute has not provided for its officiitl utterance. As to the Block invention; it having been determined that he had taken it from Suckert, his application waS to be deniedon that ground. As to the Suckert patentthe commissioner was j'unctua officii.
DlCE:ERSON ". DE
REFRIGERATING MACHINE CO.
A careful examination of the reported cases which have accepted interference decisions as sufficient to sustain preliminary injunctions fails to show a single one in which the determination accepted in support of the patent was one which was not evidenced by the performance of some official act required by the statute: (1) In Pentlarge v. Beeston, (1877,) 14 Blat<lhf. 352, neither the novelty or patentability of the invention was .assailed. (2) In Greenwood v. Bracher, (1880,) 1 Fed. Rep. 856, the defendant had a patent in 1878. Bigelow (plaintiff's assignor) applied January, 1879. Interference was declared, and patent subsequently issued to Bigelow. (3) Peck v. liindsay, (1880,) 2 Fed. Rep. 688. The report of this case is not very full,.but the granting of reissued to complainant's assignor seems to have been after interference with defendant's assignor. (4) Hollidayv.Pickhardt, (1882,) 12 Fed. Rep. 147. The extremely meager report of this case affords little opportunity for was attacked does analysis. Whether the not appear. Patents were apparently issued both to himself and Caro, (defendant's assignorj) and, as it is stated that upon interference the question'Of priority of invention Was decided in favor of Holliday, his patent was apparently granted after interference. (5) Smith v. Halkyard, (1883,) 16 Fed. Rep. 414. Here interference was declared between two applicants, one of whom raised the point that there had been a prior pUblic USI' of the machine for two years. The subsequent issuance of thepatElOt 'was an official determination of that question. (6) Shuler v. Davia, (l883.) 16 Fed. Rep. 564. Application for ,final decree, and therefore hardly applicable·. Upon interference ,between the, patentee and defendants, the question of priority was determined in his favor. The defense of want of novelty was held by the court to be undoubtedly open to the defendants. (7) Swift v. Jenks, (1884,) 19 Fed. Rep. 641. issued to defendant. Subsequently, after interference, and evidence introduced by defendant tending to show want of novelty, a patent was issued to complainant. (8) Manufacturing Co. v. Collar&: Ouff Co., (1885,) 24 Fed. Rep. 275. , ,In this case interference was between rival claimants before the issue of any patent. (9) Hubel v. Tucker, (1885,) 24 Fed. Rep. 701, deals only with a proceeding under section 4918, between interfering patents. (10) Machine Co. v. Stevenson, (1882,) 11 Fed. Rep. 155. ,A meager report, but, as both parties held patents, and it appeared that there had been an interference, the later one must have been issued after interference. (11) Edward Barr Co. v. Sprinker Co." (1887,) 32 Fed. Rep. 79. The only question determined in this case was as to what privity. The patent sued on was issued after interference. , . ,.An examination of these decisions shows that the courts have hereto: fore been cautious in decisions of the patent-offic,e b interferences ... Their effect is strictly confined to parties and privies. No ()litse, .\8' foul)d in which a preliminary injunction has been granted on the patent-office decision of a questIon raised in interference, wherj:l that dededucible asa necessary implication from statutory action, !ln4ilte,re .i,$no good reason for further. modi(ying the
well-settled rule which requires an adjudicat,ion in court, or public acquiescence, as a necessary prereqUisite to granting the relief here prayed for. The force of an interference decision is also sometimes supplied by the doctrine of estoppel; the party who has received a patent, or who has asked for one, being estopped from subsequently claiming that the subject-matter thereof was not patentable. In the case at bar, however, the defendant's claim is that the patent is void only when it is given the construction which the plaintiffs contend for. 'fhere is not in t:1is anything necessarily inconsistent with an apl'lication for a patent to be construedon defendant's theory. The motion for preliminary injunction should be denied.
ON MOTION FOR RlllHlllARING.
(May 23, 1888.)
LACOM;Blll, J. The precise point raised on this motion for reaJgument is thus stated by complainants:
"The question under discussion is whether this decision of the court is correct, namely, that when, in an interference proceeding between a granted patent and an applicant, a patent is granted to the applicant, then the patentability of the SUbject-matter is so established by the decision that on a motion for preliminary injunction the original patentee cannot be permitted to con· trovert it by anything known to him during the interference; but that when, under those circumstances, the patent is refused to the applicant, he is permitted to set up, on a motion for preliminary injunction, that the subjectmatter for which he applied for a patent is not patentable by reason of facts known to him when he was asserting patentability on the interference. 'fhis proposition is affirmed in the decision, and is founded upon the supposition that in the latter cage the patentability of the subject.matter was not' necessarily' decided in the patent-office, and in thfl former case it was. There is no othe1' reason given for the two cases, and if that reason is not well-founded, then the discrimination must fall."
The decision in the former case, above set forth, is one which the statute expressly requires the patent-office to make. The decision in the other case is or.e which the patent-office has by its rules of procedure required itself to make. Whether this distinction is, as complainants conarbitrary one, or whether it does ilf fact connote a subtend, a stantial dIfference in tbe attitude of the patent-office towards questions which it is required by exp:"ess statute to answer, and towards those which it volunteers to ask and answer, it is still a perfectly apparent distinction. 0,1 one side or other of the line indicated each case as it a:ises can be at once grouped. In the opinion heretofore filed authoritIes were. cited to the proposition that under the uniform ruling of the courts of the United States formore than half a century, if there had been no decision on the patent by a United States court,on the merits, a preliminary injunction would be refused, except where the complainant showed sufficient acquiescence by the public, or where the validity of the patent was not attacked or needed no argument in its sup-
SHERMAM V. NUTT.
port. This ruling was accepted as a "wholesome and salutary one." Within the past 10 years, however, numerous decisions in this and other circuits have accepted certain determinations of the patent-office as the equivalent of a decision on the merits by a federal court. Whether, in view of the present current of decision in the supreme court, and of the character of many of the patents which are presented for adjudication, these determinations should hereafter be accorded the same weight as heretofore, need not now be considered. It seemed sufficient, for the purposes of the motion for a preliminary injunction, to show that all the patent-office determinations up to this time accepted by the courts had been such as a statute required that office to make. The denial of complainants' motion in the case at bar was but a refusal to advance the existing rule beyond the limit already reached, or to give the same weight to determinations made by the patent-office solely because of the requirements of its own procedure. Though the line between these two groups may be arbitrary, it is well defined, and, having followed the authorities up to such line, this court now declines to take the step which will establish a precedent .for passing it.
SHERMAN 'IJ. NUTT.
(Oircuit Court, IJ. Connecticut. May 23, i888.)
PATENTS FOR INVENTIONS-THREATENED INFRINGEMENT-INJUNCTION.
Under Rev. St. U. S. § 4921, providing that "the several courts vested with jurisdiction of cases arising under the patent laws shall. have power to grant injunctions, according to the course and principles of courts of equity. to prevent the violation of any right secured by patent," a bill in equity will lie in the·circuit court between parties who are residents of the same state to prevent an anticipated infringement of a patent, no infringement having actually occurred.
In Equity. On demurrer to bill. Suit. brought by George B. Sherman against Joseph Nutt to restrain -infringement of a patent. Wm. Edgar Simonds, for plaintiff. Morris Seymour, for defendant· . SHIPMAN, J. This is a general demurrer to a bill in equity for an injunction against the infringement of letters patent, which are owned by the plaintiff. The patent is for an improvement which was jointly invented by the plaintiff and defendant, who made joint application for a patent. Pending the application, the defendant assigned to the plaintiff all his interest in said invention and said patent. The parties are .citizens of this state. The bill alleges that the defendant is now con.structing, in this state, a machine, with full intent to use the same, in infringement of said patent, and it is infringing-and will infringe upon