EASTERN PAPER-BAG CO. 'V. NIXON
(Circuit Oourt, 8. D. Ohio,
July 27, lSSS.}
PATENTS FOR INVENTIONS-ABANDONMENT-DESCRIPTION OF PROCESS IN PLICATION FOR MACHINE PATENT.
Description of a process in an application for a machine patent does not constitute an abandonment or dedication to the public of such process, so as to obtaining a patent for the process, if estop the inventor fro,m applied for within two years from the date of the machine patent. Following Paper-Bag,Go. v. Paper-Bag 00., 30 Fed. Rep. 63.
2. SAME-INFRINGEMENT-PRELIMINARY INJUNCTION.
Upon motion for a preliminary injunction against the in'fringement of a pat· ent, all the questions arising upqn opposition to said motion having been settled favorably to,complainanttin a SUlt between said complainant and others, in another, court, but a later '. decision of the supreme court in anotber case being thought to conflict with theformer, where the defendants are engaged in an extensive manufacturing' business, which would be entirely broken up by a temporary injunction, so that it could not be restored in case of II final decision in their favor, thus working defendants an irreparable injury, they should be aIlowM to give bond conditioned to satisfythe decree of the court against them for damages by infringement pending the suit, in case any be rendered; and in defa'ultofsudhbond within a fixed time, such injunction should be granted.
In Equity. Motionforpreliminary injunction. Bill by the Eastern Paper-Bag Company against Thomas Nixon and others" to restrain the alleged infringement of letters patent. Livermore & Fisher and B. P. Thurston. for complainant. Parkinson & Parkinson, for respondents. SAGE, J. The complainant cites in support of his motion the opinion of the court in Paper-Bag 00 v. Paper-Bag Co.. 30 Fed. Rep. 63, filed in the circuit court of the United States for the district of Massachusetts, February 17, 1887. The suit was for infringement of letters patent granted to Daniel Apple, May 23, 1882, for a process of making paperbags, and this suit is for infringement of the same patent. In Paper-Bag Co. v. Paper-Bag Co., one of the defenses was that letters patent were granted to the same Daniel Apple on the 31st of August, 1880, for a paper-bag machine, which in operation embodied and exercised the process which was the subject of the paten,t in suit; and that Apple, by,procuring said patent, and omitting to claim or to reserve the right to claim the process involved in -its operation, abandoned to the public anyClaim he might otherwise have ,had to the process subsequently 'patented to him. This proposition isnrged here against the complain'ant'imotion.· It was overruled in Paper-Bag Co. v. Paper-Bag Co. The court said: "The question we have to decide is wl}ether the description of another in'vention in a prior patent by the Same inventor forfeits his right to take out a subsequent fOf such invellti<m. I do not understand that the supreme court have held that such prior description is a dedication to the public of the second in vention. The invention of a machine and a process employed in the use of the machine being different things. it is difficult to Bee how the appli-
EASTERN PAPER-BAG CO. 'V. NIXON.
cation for a 'patent on one should operate as an abandonment of any claim tG a patent on the other, provided, of course, the application for the second patent is made before the statutory forfeiture of two years' prior use has fun. This view is in harmony with the decision of the circuit courts where the question has arisen." The court then cited a number of cases, and concluded as follow". "The patent in suit having been applied for within two years from the date of the machine patent, there was no abandonment of the second invention. though a description of such invention was found in the prior patent." Counsel for complainant, in support of the motion, urge that every point presented here was fully argued upon the hearing of Paper-Bag Co. v. Paper-Bag Co., 30 Fed. Rep. 63, fully considered by the court, and decided in favor of the complainant; and that a decision so arrived at' should be respected and followed on a motion for preliminary injunction in every other Circuit, unless SOUle new matter of law, or some new fact, be introduced by the defense which should receive specialoonsideration. Vulcanite Co. v. Willis, 1 Flip. 388, is cited as establishingtheir proposition as a rule, especially in this circuit. This C9urt needs no rule to incline it to the highest respect for the decision of other federal courts. The rule is :ecognized as founded in comity, necessary 'to the harmony of. the federal judicial system, and, rightly construed and within its proper limits, altogether salutary. Numerous cases could be cited, however, to show that it is neither rigid nor universal in application, and that it is not to be construed to compel a federal judge to put aside his own deliberate and clear conclusion to folIowa decision which he is fully convinced is wrong. Under such a construction, the tendency of the rule would be to greatly impair, if not t(} destroy, the independence of the federal judiciary. But if there be doubt or uncertainty, the previous decision ought to be sufficient t(} settle it. ' Counsel for defendants insist that the decision in Paper-Bag Co. v. Paper-Bag 00., is in direct conflict with the decision of the supreme court in James v. Campbell, 104 U. S. 356; but that case was cited by counsel upon the hearing of Paper-Bag Co. v. Paper-Bag Co., and is referred to and distinguished in the opinion of the court. Counsel for defendants cite Lor.k Co. v. MoslCl', 127 U. S. 354,8 Sup. Ct. Rep. 1148, (decided by the supreme court oftheUnited States, May 14,1888.) In that decision the supreme court, Justice BLATCHFORD delivering the opinion, held that, even where the application for the second patent was pending before the issue of the first, and where the second patent actually issued 28 days after the issue of the first, and where the first disclosed, but dieJ not claim. the process which was the of the second, the second.was invalid, because it involved no patentable invention, in view of what was the subject of the first. The language of the court is as follows: "It is apparent that.the claim for the process in No. 283,136 is merely for the process OJ:: m.ethod of cutting away or removing the metal, so as to permit of the bending, and of doing the bending, and of producing the close joint as v.35F.no.10-48
the bending takes place; such process or method being merely the precess or method invohted in making the article covered by claims 1 and 2, of No. 640. 11'1 other words, claims 1 and 2 of No. 281,640 are each for an article produced bya described method or pt'oeess, and the claim of No. 283,136 is for such method or process of producing such article. The method is a purely mechanical method. No. 281,640 was applied for more than 11 months before No. 283,136 was applied for, and' was issued 28 days before No. 283,136 was issued. There was no patentable invention in 280,136 when it was applied for, in view of what was applied for by claims 1 and 2 of No. 281,640. After a patent is.- granted for an article described as made by causing it to pass through a certain method of operation to prod nee it" as, i l l this case, cutting away the metal in a certain manner, and then bending what is left in a certain mannet', the inventor cannot afterwards, on an independent application, secure a patent for the method or process of cutting away the metal and then bending it so, as to produce the identical article covered by the previons patent, which article was described in, that patent. as produced by the method or process sought, to be covered by taking out the second patent." What effect this decision ought to have upon the decision in Pape:rBag Co. v. Paper-Bag Co., will be reserved for consideration until the final hearing.· For ,the purposes. <if the complainant's motion, at least; this court wiUrecognize and follow. the decision in Pape:r-Bag Co. v. Pape:r-Bag Co. But there are considerations, to which the court will now refer, that will induce the court to decline to grant unqualifiedly the complainlLnt'smption. The defe.nda.nts are engaged in an extensive business,which:wQuld be a.o entirely broken up by a temporary injunction that it could not be reinstated in the event of a decision in their favor upon fina.l hearing, and, in view of the deciSion in .Lock Co. v· MOfkr, this consideration ought not tobe.lost sight of. It was stated by counfor complainant, in the course aLthe argument upon the motion, that the complainant has established a license fee. If the decree, upon final hearing, be in its. favor, it will therefore have its remedy, by way of royalty. To stop the works of the defendants now, without offering to them alternative, might be to inflict upon them irreparable damage. The language of Justice GRIER, in Parke:r v. Sears, 1 Fish. Pat. Cas. 93, is applicable here (page 101:) ,':" The chief object of issuing such,writs before the final hearing ot: the cause is .to prevent irreparable mischief, not to give the complainant the means ·of coercing a compromise on his own terms. from the inevitable injury that deman ufactories. ,j fendants must suffer by the stoppage of these mills Also, page 103: "'To such a demand we may well use the language of· Lord CoTTE;NHAM, in Neilson v. Thompson, 1 Webst. Pat. Cas. 275: 'It seeIns to me that stopping the works und-er the circumstancesis just inverting the purpose for which an injunction used. An injunction is used for the purpose of pl'eventing mischief. This would be using the injunction for the purpdse of creating mischief, because the plaintiff call not possibly be injured.'" See, also, Judge LoWELL, in Potter v. Whitney, 1 Low. 87. "And even when the title is clear, yet if there are peculiar circumstances which show that the defendant's interests would be 'very injuriously affected by an injunction, while those of the plaintiff would not be so affected by rafusingit, it may be refused." , .
LIGOWBKY CLAY PIGEON CO. t7. PEORIA TARGET CO.
The order ofthe court will be that the defendants, within 30 days after notification to them of the filing of this ruling ahd of the entry of the or;. der, execute and file with the clerk of the court their bond to the complainant in the Bum of $5,000, conditioned that if the decree onhe court be against them they will fully and truly account for and pay to the complainant such damages, profits, or royalty as the court may find and decree against them by reason oftheir use of complainant's patented process pending this suit. In default of such bond the complainant's motion will, upon application, be granted.
LIGOWSKY CLAY PIGEON CO. 'D. PEORIA TARGET
Co. et ale
(Oircuit Oourt, N. D. lllinoi8. June 30, 1888.)
PATENTS FOR INVENTIONS-INF1UNGEMENT-FLYING TARGETS.
Reissued patent No. 10.122. granted May 28,1882, to the Lfgowsky Clay Pigeon Company, the original being No. 231,919. granted September 7.1880, to George Llgowsky, for a flying target, the novelty whereof is in throwing tll4;g'jlt}rpm th«: trap by means of a tongue of thin metal inserted in a slot In the perIpheral rIm of a concave target, and placed in the jaws of the trap, an essential feature being the separation of the tongue from the target, is not infrinl'l'ed by a target without such tongue or slot. thrown by means of two lugs on the peripheral rim of a target similarly shaped, clasped and held by a qlampforming part of the throwing arm of the trap.
In Equity. Injunction against infringement of patent. This was a bill filed by the Ligowsky Clay Pigeon Company against the Peoria. Target Company and others, to restrain the infringement of a parent, and to have an account of past infringements. Parkinson & ParkinBon, for complainant. Coburn & Thacher., for defendants.
BLODGETT, J. In this suit complainant seeks for an injunction and accounting by reason of the alleged infringement of reissued patent No. 10,122, granted to the complainant May 23, 1882, for "a flying target," the original patent, No. 231,919, having been granted September 7,1880, to George Ligowsky. The invention covered by the patent is stated to oonsist"In constructing flying targets in such a manner as to cause them to imitate more closely the flight of a bird,as soon as thl' device is projected i'rom a suitable trap or ·sender.' This result is accomplished by giVing to such targets a concave or dish orsauoer shape. whose rim is slotted to receive a tongue of thin sheet metal or other light material, which tongue is to be inserted bet}Veen the jaws of any trap capable of projecting the targ(jt in the mannl'r desired. The target, being thrown by a force thus applied near its periphery. has axial rotation imparted to it that insures the utmost accuracy of flight, wblle the concavity of the device serves to partially imprison the air as suon as the momentum of the target is spent. Consequently the target descends gradually, and is not broken in case it falls on hard ground. ... ... · The