BOBBIE
JENNISON.
887
doubts in favor, of the plaintiffs, in view of the large number of devices offered in evidence, all of which have been adjudged by different courts to be.infringements ,of their invention, and some of "hich bear a much more distant resemblance to theirs than does the device used by the defendants here., ,Our' conclQsion upon the whole case is that the ants hate infringed thesecoud claim of plaintiffs' patent, and there must :bea decree in their favor for an with the usuall'eftlrence to a master to assess their damages.
HOaBIE
et
0),. 1'· .TENNISON.
(OirC'!Lit Oourt, E. D. Michigan. 'March," '1S89.)
Piuwft Pelt mBNTIoNs-IN1'RINGEMENT-YIOLATION 01' 'rBUITORIAL RIGBTlI. , , Tht! sale of a patel1ted. article by an aSlligqee of the patent within his own terri· '(St/lZabusbt/.·'fh,e Ooun.)
tOry carries the right'to 118e it whhin territory owned by another, though l1i be known to both parties' that a use out6ide 1ihe.,vendor'sterritory is intended.,
action ofletters patept No. 45,201, issued to orie Wyckoff, November 22,1864, for ,proveJllellt in gaB 811dr pipes. .1'h<:l cp.se W8jl before the court of facts:, .' .}?laintiffs were thel\;f;lupon suPs,tantially 'signeElS Qf the patent fQrNew York, New and l,llLthe stAtes:tlorth of.the CarqIine.s,and canied,()n business as manufacturers .o{thepa.tented N. Y., with,suffilfienl facilities for supply.ing the market.iJ;lI.all. tlle territof)<owned 'hi them.' Defendant's of llimselfan4 one, Ayra\llt, was the ll,ssignee ,firm, which .had -for ,the. of,MichigaIl and othetaVJ.tes, the . ,at :aay Qjty"in firm ,did business qq.ring thel/;rf:jater part ,*e firm &: Co., whi,cr .' at the years 1,877, 187.8. ,anq 1879.: Ayrault, J'enD.!i&.Qp. & Co. were in turp. succeeded, , P/!-I:t of .188h by, a ,cqrporation located at and,. 9"'nJog naHle qf ,the MIChIgan PIpe Company. Two suits have cimieqtprough to by . ,}}resent as.. territorial. owners of the .. Pfttent, , fo,r to, charged in this. of the firm ofAYl'ault, Smith, & Co., and tq"e o,ther against the s)lits, were in. the porthe.ru.liisYork, qecided by Judge COXE, whose decision.is JriQt o( N:o; question was in this case "ith _ tlIe title. of n4?r the validity of the patent, b:ut t4e)egality of a,certQ.in sale. of pipe made by the < 1.6;tb ,ofApJ,'il, J880, AnqrflW Harvey & Son, ,@fJ ;wrote tl;1eAef'¥lQp.nts closed a; cdn,tract:to ,w;th pipe,.
888
FEDERAL
vol. 40.
know the lowest cash price for wood casing for steam-pipe, :adding:' "I [Aridrew eXpect to leave the city in a few days, and wish to an answer before going." On the following day defendant's firm answered, stating they would sell them what steam-pipe casing they might needat $20 ller thousand feet, board measure, etc. Negotiations seem to have taken pla,ce at that time between \Harveyand the Hartford Steam' Company, of COnnecticut, for laying a quantity of. in that city; for, on the 5th of Muy, Mr. Loomi!!; secretary of the ,company, writes to Harvey & Son, accepting their proposition, and asking them to get prices of wood pipe, and send to him, "so we can get some ordered, and when they will commence to deliver it." On the 12th of Maya contract was signed between the defendant's firm and Harvey & Son, by the terms of whie-h defendant agreed tapay to Harvey & Son a commission of 10 on all orders,sent and also upon all orders they niight 'influence to take the casing, at the rate of $20 per ,Bay City. On the same .day this contract was ,sigped defendant's firm write Harvey & Son, giving,the rate from Bay City to ,·Hartford·. at $55 a,car, ,and saying that their understanding was. that, under the arrangement made with defendant, Harvey & Son should make their ,best efforts to tpm all their trade to defendant'& firm, expres,sing,t,ne hope' hear tTomthem$Oon in reference to the Hartford. order·. " ; .' , On the same day a statement of prices for different sizes of casing was. made out andgiveuto lIarvey,which Harvey &'Son sCIon after inclosed to the HartfordCompati1in their letter of May 17th\and on June 3d LoomiswritestoHarvey,sll.yihg that perhlips it was better to only give'orders' foroue-half at presellt, and get firm at it. A memorandum of same date, was sent by hitiiof the pipe \Yhich would· be required. , He also $8.1,8 that prices of wood pipe are too high; wants him to get. it reduced, and make !IS good a contract for, freight as possi'hIe. of June Harvey telegraphed to defendant's firm re-. questing Ayfaultto come down to petrol'ton the first train ,for an ordf'll'. On the following day an order in writing was signed by Harvey &; Elon for wooden pipe casing, to be shipped "to the Hartford Supply Compaq,y;" the items being the samee':xactly, and one·half the quantity (except in 'one instarice,) specified in Loomis' meil10randum of June 3d. On the 18th of. June, Mr. Loomis, secretary of the company. sends directly to defElndant's firm an order, in add,itionto the order given by Harvey &; remaining one-half of the casing specified in thememorandum of June 3d.' The furthercorrespontiencebetween the par. ties relates. to the thaoner in which the pipe-was to b'ej18id for, New . Yotk drafta remitted directly from Hartford to defendant's firm, which remitted to Harvey & Son their check for tIre lOper cent. commission agreed between them in their contract ,of May 12th. An additional ' for: 3,000 feet· casing, was given fd' defendant's firm by date of July 30th; an(f'some,6ther smaUorders, given in thesame'p1amier, followed' before the close of the season. The pipe was Call laid down,under Harvey's direction;' in the streetsof'Hartford.
BOBBIE 11. oTJ::NNI80N.
889
James A. Allen and A. P. Jacobs, for plaintiffs. George H. Lothrop and Wm. Jennison, for defendant.
f
BROWN, J. Plaintiffs'position in this case is that there was either a sale of the steam-pipe to Harvey & Son, with the knowledge that they were to resell to the Hartford Company, in which case the defendant would be held liable as an infringer, under the ruling .in Hatch v. Hall, 30 Fed. Rep. 613, and Hatch v. Adams, 22 Fed. Rep. 434; or that Harvey was the agent of Ayrault, Jennison & Co. in selling to the Company, and that such sale was made in the state of Connecticut, in violation of plaintiffs' rights as the assignee of this territory. But about the only evidence which tends to show an agency on the part of Harvey is the agreement of May 12th, wherein Ayrault, Jennison & Co. agreed to pay Harvey & Son a commission of 10 per cent. upon all.orders they might obtain for this casing. This agreement, however,· was made a month after Harvey had·· notified them of his proposed contract to put in four miles of pipe for the Hartford Company, and a week after. his proposed contract.with such company had been accepted; and was undoubtedly made for the purpose of securing Harvey's influence in the sale of the pipe, not only in Hartford, but in other eastern cities. It is pertinent in this connection to notice that, on the 8th o.f May, Harvey wrote to Loomis, saying that he wail sending all over for prices for iron pipe tobe delivered at Hartford. In fact, Harvey, in his testimony, states that, before he· had any communication. upon the subject with the Hartford Ayrault, Jennison & Co., he had closed the Steam Company to lay several miles of pipe for them. On the day fol", lowing his contract of May 12th, Harvey writes to Loomie: "I have been up to Saginaw, and have made inquiries prices. and the best that they will do now is $20 per thousand, boardme.asure, delivered pn board Cars at Saginaw. But this company have split partnership,and will be two firms manufacturing this next week. and I aIll figuring with the.IlJ both, and will try to get it cneaper. I am also liguring about freight from -different points. 80 as to get the cheapest freight to Hartford." .
We think the other evidence completely rebuts any presumption of .agency arising from the contract of May 12th. Not only does the correspondence between Harvey and the Hartford Company indicate that he was negotiating with defendant for them, but the pipe· was shipped -directly to them. and, except in the first instance, upon their order,and was paid for by them, as well as the freight from Bay c,'ity to Hartford. The books of Ayrault, Jennison & Co., which were also put in evidence, ;show that the account was kept with the Hartford Steam Company, 8 ,general statement of which account was sent them in a letter of Npvember 19th. Considered in the light of surrounding circumstances, we are not prepared to accept the theory that Harvey & Son were the agents of the defendant, or that the sale of the pipe was made to them.. Indeed. Harvey hitnself swea.rs· that he was acting as the agent of the Hartford {Jompany in getting prices, and that Loomis relied upon bim in. 'tar. We regard the contract of May 12th simply as an·instanceof a'cus-
890 tom which may be common enough anion,g purchasing agentrS,bllf to which no Cdnrt has yet been foundt(;>!end its sanction.' He was evident!y,acting for the Har,tford Company, which was relying upon his judgment, 2eal, and disoretion in Making the purchase, and had no right to take a commissioh from the defendant without' at least disclosing fact to his pal; " Mechem, Ag. §, 943; Insurance Co. v. 1'11BUrance 00., 14 N. Y. 85; Scribner 'v'.' 40 Mich. 375. .As the pipe was delivered by defendant's firm upon the cars at Bay City, upbn the written order either of Harvey & Son or the Hartford Company, there can be no' serious quelltion that this was a sale and deliVery at Bay City, although, if the order had been verbal, it would probably"be held, under the statute of trauds, that 'the property in the pipe did not pass until it had been received and accepted by the steam company in Hartford,. '.Phis was the conclusion of JudgeCoxE in Hobbie v. 27 Fed. Rep. 656" arising' out of a similar transaction by thedefenda:nt. ' See, also,t;. 8: v. Rep. 184; Backman v. JcrdC8j: 55'Bilrb. 468,s.nd:otheroases:cited in Judge CoXE'S opinion. -'I'he cdse;'tDen, reduees itsiJlfitoi.theirdmple question whether: conceding thesltleto have been at Bay Gity, the defendant can beheld as an, infringer by reason of hig krtowledge that the plloperty was to be used in atmitory ,of whi6b plairttifFs.held'a monopoly; for we take it to be clear that iHhesale hlU:l"been made, that is, with the expipe If'lls to be uSed ihdefendant's own territory, there could not be chargeable. Were' this an original we should be strongly' inclined to bold that the vendor of a pa'teWlled article, who sells, the c 8ame for the purpose of or knowing that it will be l'esold,orused:in territory belonging to another, is equally The amenable:to suit as if the saLe were made in 8uchother VateJ;1t laws ,give to tbpat8ntee the exclusive right to use, as well as to sell? him; thiS rIght .can be aSSIgnee of who, may ,perhaps possess faCIlItIes.; fjuperior energy, or a larger amount of capital than'hiJ::ilself, may flood his·'terrlwrywith the patented article, by'meaml'ofthe easy device of and passing the, property within the territory owned by himself; !ndeed,The 'gist of the offense to the plaintiffs hi this case cOllsists, not more in, actualsitle 1h their territory, than in the use of the article - sold, Elifilce'1iheiTown market has been impaired to, the .emct amount of the profits' they would 'have realizedtrom such saleihnade by themselves.! -This seems to us' not only a just ' and reasonable.:60nstruction of the 'law{britinlinewith:the long list Of cases whicn:;hola that where a party tnakes one ot more tilerrtents ofll: patented combination;' with the :itltent that',tlieyshall betisedinthe completed combinatioh, he is 'liable as an infrltiger. 'Richardaoo/v. Noyes, 2 Ban. & A; .:J301.0kerv. DOW8,3 Ban. &; A.:'l)lS; (Wallace 'V.' Ho7anea, ,9 Blatchf.651'Slitu'v.JHammo'lld, 1 :HolfueS', 456; ManufactuHng Co.v. Zyllmite 30 Fed Rep/437j.SchneiRep. 403; ,Ttdvtrav. Beyer,' 26 i ,Fe(kRep., 450. ... TIie'&t1preinEHrourt, b<>wever,seera::Uf,to have taken a difl'erent view of
blade
ao.,
this very question in the case of Adams v. Burke, 17 Wall. 453. In this manufact;case an undertaker. purehased patented. coffin lids. of urers, who held the right,from the pateptee to sell ina circle whose radius was iO niiles, having th'e city 'of Boston as a center. The undertaker, however, lived outside of thiscirole; within a territory owned by the plaintiff; and made use of the coffin lids in his business. 'l;he, owner ..of the in whioh he carried. on his business brought' swt ag{linst him as an infringer, and the court held that, the sale having been made bya person who had full right to make,. sell, and use within such !\ll1e.carried it the right to the use of the his own machine without as well as within such territory. The action in this case was brought against the user, but the court artnounced a principle oflawwhich is equally applicable to the seller. lithe user of the article is not liable to the patentee, it is because he purchased it of a person. who had the legal right tc> sell it, and, if, it'w.ere legal for him to bUYj it was equally legal for the other party to sell. In the opinion of the court, as "".ell as·thedissentingopinion in thi8088e, it is stated in substance that the question raised was whether an assignment of a patented inven· tion for,a;;1imited district, such as a city, county, or a state, conferred upon the assignee therlghtto sell the patented article to be used outside of such limited district. We have sought to distinguish this case from the one under consideration, by searching- for evideuce that the sale was made under the belief that the property was to be used within the terri· tory of the seller; but neither in the report of the case in the supreme court, nor in the circuit, (1 Holmes, 40,) i8 there an intimation that the sale was made with the expectation that the property would be used or consumed within the territory. Indeed, the inferenceJrom the fact that the purohase was made by an undertaker, whose place of business' must have been known to the manufacturer, is decidedly the other way. If the sale had been made innocently, the importance ·of this fact would certainly not have escaped the attention of the court and counsel; and we think we are bound to accept the case as authority for the broad prop· osition that the sale of a patented article by an assignee within his own territory carries the right tome it everywhere, notwithstanding the knowledge of both. parties that a .use outside of the territory. is intended. The case was followed by Judge COXE in Robbie v. Smith, 27 Fed. Rep. 656, and by Judge SAWYER in McKay v. Wooster,2 Sawy. 373. It may, per· haps, admit of some doubt, especially in view of the strong dissenting opinion in that case, whether this doctrine will be adhered to should the question ever be reargued; but, of course, the case is the law unto this court, and must be followed, until overruled by the court which pronounced the opinion. 'Ve think it covers the case under consideration, and consequently there must be a judgment for defendant, with costs.
FEDERAL REPORTER,
J6BNSON t1. BROOKLYN & C. R. CO. SAME v. STEINWA.Y& CO. SAhlll:' 'II. LEWIS & FOWLER 'M:A.NUF'G CO. (Oirouit Oouw., E. D. New York-December, 1889.) PATENT!! FQR INVENTIONS..,.I1iFRINGEMENT-R"\ILROAD SWITCHES
H. P. R.
It having been heretofore beld by the court (33 Fed. Rep, 499) that letters patent No. 117,'198,-grantedto ThOmas Newman, c-omplainant's assignor, July 18f l871,for an improvement in swiWhes for horse railroads, were valid, held, that the device ,used by defendants in. this suit was an infringement of such patent, and that the new ,evidence addttced'fnthis eBSe called for no modification of the previous decree.
In, Equity. ' On bill for injunction. Duncan, Curtis & Page, (Robert H. Duncan, of coullsel,) for complainants. Fto8t & Cbe, (Louis W. Ji'roBt, of counsel,) for defendant. LACOMBE, J. 'This patent was before Judge COXE in JohnaO'n v. Rail,. road (h., 33 Fed. Rep. 499. After investigating the state of the art as disclosecl by an examination and comparison of the various patents put in evidence in that case, he reached the conclusion that Newman (com..; plainant's assignor) was the pioneer inventor of a combination, being the first to produce a practical horse-railroad switch, which could be operated by the weight of the draught animals oscillating a tip-table, the verticle movement of which is converted by connecting mechanism into horizontal movem ents of a switch-tongue. Whatever improvements upon Newman's Invention are found in the device used by defendants, the latter is plainly an infringement of his patent when thus broadly construed, is whether or not the state of the and the only point left for art will warrant so broad a construction. This, however, has been dEl-' cided by Judge COXE, and the only question is whether the new evidence presented in 'this case calls for any modification of that decision. Sev·, eral prior pMents,not before him , have, it is true:,.been introduced, but , they do not show, any more clearly an anticipation of the combination of the Newman patent than did the Sansom and Alexander patents, which were considered in the former case. Decree for complainant.