AMERICAN BELL TEL. CO. tI. KITSELL.
AMERICAN BELL TEL.
(Oircuit Oourt, S.
n. New York.
July 10, 1888.)
PATENTS FOR INVENTIONS-INFRINGEMENT-RELIEF-DESTRUCTION OF INFI'<lNGING ARTICLE.
In a suit for infringement of patent, it not appearing that defendant had and clandestinely set about to appropriate the patented invention, and hnot appearing probable from his past conduct that he would attempt to use the infringing articles in the future, and there being nothing to indicate thatthe infringing articles could be readily used surreptitiously. to the injury of complainant, defendant will not be required to deliver them over to complainant, to be destroyed, in addition to the relief ordinarily granted in such suits. . .
In Equity. On motion for additional relief. James J; Storrow, and Henry G. Atwnter, for complainant.
It is familiar that a court of equity, besides declaring a deed void, may (and usually does) order the physical thing to be delivered up and physically canceled, as a more sure and certain way of making sure that its decree is obeyed, although in a sense this deprives the defendant of his property in the paper. But de minimis non C7.l1'at lex. In this case it appears from the confessed allegations, and is indeed obvious from the character of the instruments--'(1) That if they exist, there is great danger that they may go into other hands. where they will get into secret use, and cannot be traced. This difficulty does in fact continually arise. (2) That the physical thing is of no value except as a means of infringing 'the patent. It is not worth the labor of taking it apart to sell for junk. (0) That it is of no value because, being made as an infringement, it cannot be used after the patents have expired. Moreover, the rule that the infringing thing under such circullJstances is to be destroyed, is well settled by the supreme court, and in the Englishci>urts of eqUity. Publication cases: In Prince Albe1't ". Stmnge, 2 De Gex & S. 652, (1849.) the plaintIff had etched certain plates for his amusement. The defendant obtained the plates surreptitiously, printed certain impressions from them, and issued a catalogue of them. The court restrained him, and ordered both the impressions and the catalogue to be delivered to the clerk to be destroyed. In DrlM'Y v. Ewing, 1 Bond, 554. JUdge LEAVITT ordered the plates and the prints to be delIvered to the clerk. This was not under the penalty clauses of the statute, (the suit was In equity.) but was within the equity power of the court. Patent Birdsell v. Shaliol. 112 U. S. 487, 5 Sup. Ct. Rep. 244: "But an infringer does not. by paying damages for making and llsing a machine iI,l infringement of a patent, acquire any right himself to the futUre use of the maChine; On the contrary, he may, in Ilddition to the payment of damages for past infringement, be restrained by injunction from future use, and, when the whole machine is an infringement of the patent, be ordered to deliver it up to be destroyed;" citing Needham v. Oxley, 8 Law 'r. (N. S.) 604, (1863;) F'r-em'son v. Loe, L. R. 9 Ch. 67. (1878. ) In F'rem'son v. Loe that very eminent patent law jUdge, Sir GEORGE JESSELL, then M. R" decided that the plaintiff's patent, had been infringed, and said: "1 also order the defehuant either to deliver up to the plamtiff, 01' to destroy in his presence, any machine in his possession or power." In Needham v. Oxley, 8 Law T. (N. S.) 604, (1863.)it appeared that the defendant's large machine infringed only by the presence of a particular combinatiou· in one part, and that the machine could
be altered and used so as not to infringe. On this ground alone, the courl (Y. C. Sir W. PAGE: W:oon) declined to order the destructiop of the whole machine. saying that "the defendant might still use for other purposes the sevllral parts of his machine.". But the court ordered that" tht'y should be marked in some way. so as to enable the plaintiff at any time to follow them." In Betts v. De Vitfe. 34 Law J. Ch. 289, the same judge. in a case where those peCUliar circumstances did not exist, ordered that the machines be destroyed in the of the plaintiff. Infringing instruments, made during the life of a patent, cannot be u'sed after itEi expiration. The complaiuant has the exclusive right to make, use, and sell, and this right cannot be adequately protected if infringing devices made during the running of the ent can be afterwal"ds used or sold. That would allow an illegally made device to be beneficially enjoyed by the infringer. A patentee's complete protection demands that no one should be able to get any benefit from an article made in violation of his rights, although it is not sold or used in violation of them. This point has been frequently adjudged both in England and this country. Crossley v. (}a.s-Light, Go.,. 1 Webst· .Pat, Cas. 119; B01'ing Co. v. l$heldon, 18 Blaich!. 52-146,2 Fell. Rep. 353; Mower Co. v. Harvester Co., 24 Fed. Rep. 739; Belting Co. v. MagotQan, 27 Fed. Rep. Ill.
Philip J. O'Reilly, for defendant. Such provision is contrary to an elementary principle of equity procedure. The complainants ask that the defendant's telephone apparatus be ordered to be delivered to them" to be destroyed.... In other .words, they ask that t.he defendant's property be forfeited.·. It is familiar law that such an order will not be granted by a conrt ofequjty. Stevens v.(}lad,ding, 17 How. 447; iStevenB. v. (lady, 2 Curt. 200;Cllapman v. Ferry, 12 Fed. Rep. 693. Such a provision is not included in the statute that for recoveries at law plaintiff can recover damages, and in infringement suits. In the court may enterjudgmentop the verdict "for any sum above the amount found.by the verdict as the actual damages sustained, "', III '" not exceed-:ing three times the amount of sucb verdict." Rev. St. U. S. § 4919. In suits. in equity, Rev. St. § 4921 prOVides that the court shall have power (1) to injunctions according to the course and principles of courts of equity, to prevent the violation of anY right secured by patent on such terms as the court may· deem reasonable;" (2) to decree an account of defendant's profits and assessment of complainant's damages, and to increase such damages as in an action at law. This is all th!tt the complainants are entitled to ask. Indt*'.d, this is all the court can decree, for such is all that the law has empow. ered its chosen tribunal to gran.t, "E,l»pressio unius ewclusio alterius. Bloomer y. McQuewan.14How. 539; Chwprnan V,Ferry, Such provision would in effect re-enact a statute which was abolished in 1793. The legislation on the flubject of patents shows. that ever since 1793 congress has limited recoveries. to damages, profits,and injunction. (a) The first act, that of 1790, by section 4 pro"ided that the ,defendant sllould pay 8uch damages as should be assessed);>y a jury, and also forfeit the infringing "rt.icles. (b) The second act, that 00.793. repealed the act of 1790, and by section 5 provided that the defendant should pay.a sum" eq ual to three times the price for which the pll\intiff" had licensed others. (0) The third act, that of 1800, repeil1ed section 50f the.act of 1793, and provided that the defendant should pay to the patentee "8 sum equal to three times the damages sustained by him." (d) The fourth act, that of 1836, repealed fon;ner acts, and, by section 14,empow:ered the court to render jUdgment for any sum above the am,ount found by the verdict. as the !lctusl damages sustained by the plaintiff, not exceeding three times such amount. (e) The fifth act, that of repealed the former acts; and by section 59 re-enacted section 14 of the act of
A.MERICAN BELL TEL. CO.
1836. if) TM sixth and present act is that of the !levisI'd Statutes. Wllich repealed all former acts. and 'by section 4919 re-enacted section 59 of the act of 1870. It is undeniable that the court in an action at law would have no power to order the surrender of the articles. And so it is also in a suit in equity. Thtl jurisdiction of the circmt courts in equity over the sUbject of patents did not exist until the act of 1819. Root v. Railway 00·· 105 U. S. 191-193. The provisions of the act of 1819 have been continued in the acts of 1836,1870, and the Revised Statutes, § 629, with no addition other than the provision for damages and profits. enacted in the act of 1870, and in the Revised Statutes, and that no forfeiture can be decreed thereunder. Stevens
Such a provision would contravene the fifth amendment to the constitution, which ordains that no person "shall be deprived of life, liberty, or property without due process of law." Bloomer v Mf1Quewan, supra,' Patterson v. Kentucky. 97 U. S.505; Webber v. Virginia, 103 U. S. 347; In 1'e B1'08nahan, 18 Fed. Rep. 63. .. . Such a provisi.on would in effect make new claims for the patents in suit. The claims of the patents are for combinations, which claims, the law says, are for the combinations, and nothing less. Obviously, a destruction of the instruments would destroy both the combinations and the elements which compose them. Surely, for this reason alone the decree should be refused. Even in England, where the court sometimt's aSSt'rts its power to order the destruction of infringing articles. it is held that such an order will not be granted where the patent for a combination, for the reason that the defendant might still use for other purposes the several parts of his machine. Needham v. Oxley, 8 Law T. (N.S.) 604.
WAL]>ACE, J. In refmdng to insert a provision in the decree that the defendant deliver over the infringing instruments to the complainant to be destroyed, notwithstanding the bill, which has been taken as confessed, contains a prayer, among others, for such relief, the refusal is placed not on the want of power of the court to make such a decree, but upon the want of any apparent necessity for making one differing from those ordinarily granted by the courts of this country in suits for the infringement of patent rights. Where the court has power to decree, necessarily it has power to carry its decree into effectual execution; and a court which does not hesitat.e to enforce its process by attachment and imprisonment of the person, and by sequestration of the property of parties, in order to compel obedience, would not hesitate from any consideration of want of power or propriety to order property to be destroyed which has been created in defiance of the rights of another, and is being used in further encroachment upon such rights, whenever it might be eSSential to the ends of justice that this should be done. It is common in England to include such a provision as is asked for in the.decree. Frearwn..v. Loe,
v. Gladding, 17 How. 447.
L. R. 9 Ch. 67; Betts v. De Vitre,34 Law J. Ch. 289; Needhamv. Oxley,
8 Law T. (N. S.) 604. The power of the court to make such a decree is recognized in Birdsell v. Shaliol, 112 U. S. 485, 487,5 Sup. 9t. Rep. 244. An example in close analogy to such a decree is found in the ease of .Emperor v. Day, 2 Giff. 628, where Kossuth, who assumed to be acting as president of Hungary, chosen by the estates of the nation, had caused notes to be prepared, intending to issue them at some future. time as the public paper money of the nation, when lawfully sanctioned by
the diet; and the bill filed against him prayed that the aefendants deliver to the plaintiff, to be destroyed, the plates and the documents printed. the.refrom. The court decreed according to the prayer of the bill. 'In this country the common injunction against making, vending, or using tIle infringing article has generally been found ample to protect the owner of a patent-right; and it is not desirable to put in motion any of the e4 traordinary machinery of the court to attain ends which its simple and familiar process is fully adequate to accomplish. If it appeared that the defendant had mala fide aud clandestinely set about to appropriate theinvention patented, or if it appeared probable from his conduct in the past that he would attempt to use the infringing art:cle in the future,. or even if there were any peculiar circumstances to inclicate that the infringing telephonic instruments could be readily used Surreptitiously to the injury of the complainant, the exceptional decree sought might be granted. As nothing of this kind appears, the complainant mUl/t be content with the remedy given to ordinary suitors. The application savors of oppression.
RUMFORD CHEMICAL WORKS V. MUTH
(Oircuit Oourt, D. Maryland. July 9,1888.) 1.
TRADE-MARKS-WHAT WILL BE PRoTEcTED-"AcID PHOSPHATE.-
Upon a bill for injunction to restrain the use of a trade-mark claimed by complainant in the name, "Acid Phosphate," applied to a medicinal preparation, held, tl;lat the proofs showed that the name was not meaningless and arbitrary. but with reasonable exactness described the characteristics and qualities of the preparation for the purpose for which it was intended to be used, and that, being thus descriptive, it could not be exclusively appropriated by complainant as its trade-mark. 1
It appearing that tho defendants did not make use of any deceptive imitation of complainant's labels and packages, but properly distinguished their preparation from complainant's, and sold it as their own, the injunction was refused. (SlIllabul by the Court.)
Cong1'eitsSp'ring Case, 45 N. Y. 300; Selchow v. Baker, 93 N. Y. 59; Manufaatu1'ing Co; v.Manufacturing 00.,32 Fed. Rep. 94; Benedictine Case, 36 . Alb. Law J. 364; .Lockman v. Reilly. 95 N. Y. 65; Smith v. Sixbury, 25 Hun, 232; Roberts v. Sheldon. 8 Bist.!. 398; Elect1"o-SiliconOo. v. Hazard, 29 Hun, 369; Brewing Co.· 8 Mo. App. 277 j Lee v. Haley, 21 Law T. (N. s.)
1 See Oahn y. Gottschalk. 2 N. Y. Supp, 13; Burton v. Stratton. 12 Fed. Rep. 696, and note; Schneider v. Williams, (N. J.) 14 Atl. Rep. 812.
In Equity. Bill for injunction to restrain the use of the trade-mark, "Acid Phosphate." Rowland Cox and Francis P. Stevens; for complainant, cited. Wotherspoon v. Currie, L. R.5 H. L. 508; Hie1" v. Abrahams, 82 N. Y. 519;