et al. "'.
«(hiro'Uit Court, E. D. Mi88oUN, E. D. May 4, 1889.)
COURTS-JUltlSDICTION OF STATE COURTS-SLANDER OF TP'LE TO PATENT.
The state courts have jurisdiction of a bill alleging that complainants are the , owners ofa patented device: that defendant owns a similar patent, and has published, and is about to publish,:a notice that device is /1,n . Infringement of defendant's patent; that such publication is false. and known by defendant to be false; that it is made maliciously, and with intent to injure complainants' business; and fraying an injunction to restrain such furtber publication. Th.e question 0 infringement is not the sole, nor even the pri.Ilcipal, i,ssue in such case.
InEquity,:,' On application for 'preliminary injulwtion. . The bill alleged in st,bstance tha,t complainants were the owners of a patep.t for a cel'tain device; defendant was also devices; that the the' proprietor of several Plttents for defendant had published a notice that the device c()nstrqcted l>y the complainants was an infringement of defendant's patents; tha,t the statement 80 made was false, and known to, the defendant to be thepublicationwas made maliciously, and with intent to in,the compl/linants in,'their business of mariqfacturing and selling smoke-preventing devices. . It further averred that defendant was about to send out other similar !;lotices to customers of the coniplainants; and" in view of the premises the bill that an fujunction might issue L ' " to restrain them from so doing. Paul' BakeweU, for. complainants.' , Jarne8"/.J. Blair, for defendant.
THAYER, J. is clearly a bill to the of a libel that injuriously affects businesEI. It is averred that the notice.aent out by the defendant is false in that it states that the; smoke.copsuming device made by Flintis an infringement upon letters patent granted to Hutchinson; that defendant knew the statement, to be false, an,d willfully and rnaliciouslysent it to 011e of complainants' tomE;lrs ,with intent ,to injure complainants. Unquestionably cour!&have jI;Irisdiction of such suits, unless the fact that the statemellt rnad,e w:ithr:eferenpe toa patentEldarticle ,deprives; the state .andv.ests it jn the federal cOllrt. ,.1R that fa,ct sufficient to oust. the state court of jurisdiction, and vest it in the federal court, although citizens.of Missollri?;"J think not. The wrong complained of consists in the intentional publication of. a statement known to be false, with intent to injure complainants' b'l],siness, wh,ich statement has a natural tendency to work such injury. The right of action does not grow out of the patent law, but is given by the common law. Benton v. Pratt, 2 Wend. 385; White v. Merritt, 7 N. Y. 352; Townsh. Sland. & Lib. § 206, and cases cited. That the statement made affects the sale of a patented device is purely accidental. The right to sue
worild TIbeT circulated 'affected sale or foi' an nil! patented. 'It may not be necessary bn the trial of the; case to whether complain/lOts' is or is not, an infringement ofdefendant's patent. 'Defendant may rest its on the ground that it believed it t9 be an and 'that 'it acted in good faith in the assertion ofa.8upposed legal right: In no aspect of the caSe can the question ofinfringement be regardecf'iie the sole, or even the cardinal, issue. , It is a question that may arise incidentally, if defendant justifies the publication of the notice on the ground that the statements contained therein are true. But, even if the case should assume that complexion on a plea of justification, it would not, in my opinion, oust the 'state court of jurisdiction. It has several times been held, that the state courts are not ousted of their ordinary jurisdiction merely bpcause the trial of the case may involve the determination of some question under .the patent laws. III Middlebrook V:" Broadbent,47N. Y. 443, a bill to rescind a contract and cancel a note was held to be rightfully entertained by a state court, although the trial involved the question of the validity of a patent.' In Snow v. Judson, 38 Barb. 21Q"a suit to recover damages for the publication ora; libel affecting plaintiff's business was entertained by a state court, although it incidentally involved the question whether an article sold by was an infringement of a patentbelonging to the defendant. These caSes are affirmed in, the later case of Hovey v. Pencil Co., 57 N. Y. 124. In the last case, however, thejurisdictioll ofthe state court was denied becallsethe complaint was so framed that the only issue presented was whether the article manufactured by plaintiff was an infringement of defendant's patent.. The complaint did not aver that thepttblication complained of was uttered maliciously with a view of injuring plaintiff's business, hence it could not be entertained as a bill to restrain the publication ofa libel over which the smte ,court would have had jurisdiction, even though the trial involved incidentally, or might involve, the determinaticn of a question of infringement. In the case at bar comphtinants have been very careful to allege the falsity of the publication complained of, knowledge of such fact on the defendant's part" and malice inducing the publication; thus making out a cause of action in the nature of slander of title over which the state courts have jurisdiction, and this court has not jurisdiction, unless the parties are citi, zens of different states. The case of Smith v. McClelland, 11 Bush,'524, contains nothing in opposition· to these views. 'In that case' plaintiff sued on a note, and defendant, by way of set-off,sought to recover damages sustained by the infringement of letters patent belonging to him'. The court held that it had no jurisdiction over the set-off, and accordingly dismissed it. The difference between that case and the one is. obvious. The well-known case of Manufacturing Co. v. Vulcanite Co., 13 Blatchf. 375, (also cited by complainants,) is not in point. So far as case has any relevancy, it appears to me to be a decision against the complainants, in that it holds that injuries done tathe trade, profits, or business of a manufacturer by the publication of a libel do not fall
within the. preventive scope of the patent laws. Injuries of that character IUust be redressed by ordinary common-law methods, and jurisdiction to afford such redress must be acquired by the federal courts by virtue of diverse citizenship. AS.,at present advised I am of the opinion that complainants are in the wrong forum to obtain relief for the injury described in the bill,and I shall for that reason refuse an injunction, regardless of what the affidavits disclose.
STREAT '11. STEINAH.
(Circuit Court, S. ,D. New York. April 17,1889.)
In a suit for the infringement of a patent, leave to take testimony, the time for taking which has expired. pending another suit for the infringement, of the same patent, and which testimony is alleged to be in addition to that Riven in the former suit and to have been obtained since the decision therein holding the patent void. cannot be to complainant on mere general statements disclosing nothing in regard to its character.
In Equity. On motion by complainant for leave to take testimony. Suit by George Streat against Abraham Sternam, for the infringement of a patent. The time for taking testimony was allowed to expire pend. ingthe decision of Stroot v. White, 35 Fed. Rep. 426, which was for the infringement of the same patent. Betts, Atterbury, Hyde &- Betts, for complainant. Simon Sterne, for defendant. SHIPMAN, J. The motion is denied. The affidavits state that the has obtained further and fuller evidence of the facts relating to his invention since the decision ofBtreat v. White,l and has. other and further proofs to show that he was the true inventor of thlil design, and that the additional proof will show that he was the sole inventor. Neither the general nor the particular facts to which the witnesses will testify are given. nor are any circ\lmstances stated which show the character or the imp<;>rtance of. the testimony, or why it was not introduced l;>efore, or how .it will tend to diminish the weight which was given to the statements of the patentee in his letters to the designer. The motion cannot be granted upon mere general statements, which disclose nothing in regard to the oharacter of .the testimony.
'M·Fed. Rep. 426.
CROUCH II. KEBB.
BREWSTER et 01.
SHULER et al.
(Gi'I'cuit GOU'l't, N. D. New YO'I'k. May 2, 1889.)
CosTB-CoPIES OIl' TESTIMQNY.
Defendants are entitled. in taxing costs, to tax the amount paid by them to the examiner for copies of their own testimony. procured for the necessary purpose of having the record printed; neither the examiner nor the clerk havingany authority to let the original testimony be taken from their possession for that purpose.
In Equity. Appeal from taxation of costs. Philip J. O'ReiUy, for complainants. Martin L. Stover and R. N. Kenyon, for defendants.
CoXE, J. The only question not determined at the argument is whether the defendants are entitled to tax the'amount paid by them to the examiner for copies of their own testimony. 'fhese copies were procured for the purpose of having the record printed. The originals were in the hands of the examiner. He was required to file them with the clerk. Itwould have been a palpable neglect of duty on his part to permit the testimony taken by to go into the hands of a party to the suit, and from·thence to the printer to be mutilated, and perhaps lost. After the papers were filed, the clerk had no authority to permit them to be taken from his office. But the defendants were required to print their record. How, then, were they to proceed except by procuring copies? The disbursement is one which on principle should be allowed. But the precise question arose in 1881, in the Southern district of New York, in Schoerken v. Swift, (unreported.) The disbursement was allowed by the clerk, and, on appeal, his decision was Judge Bt.ATCHFORD. Since, then, it has been the uniform practice, concurred in by the court, to permit such items to be taxed. The bill for printing is allowed at the sum fixed upon the argument.
et al, v. KERR et al,
Texas, San .Anwnio. D. May 9, 1889.,
EQUITY-PLEADING-DEMURRER TO ANSWER.
A demurrer to an answer in equity is not sanctioned by the rules of practice in the federal courts.
In Equity. On dem.urrer to answer. Simpaon & Jameaand Houaton Eroa., for complainants. Wm. Aubrey and OOOa. H. Mayfield, for defendants. MAXEY, J. The complainants, B. L. Crouch, J. T. Lytle, T. M. Daniel.and Edward ;Rutledge, filed their bill in this suit on the 1st day of