fOl'Jlled in substantially the same way, only that the spiral spring pushes, while the flat spring pulls. For these reasons, the respondents' machine is an infringement of the second claim of complainant's patent. The third claim of the patent is as follows:
"The pipe box, E, having longitudinal ribs, combined with the 8tirrup, G, having corresponding grooves and a clamping device, substantially as described."
The evidence does not satisfy me that there is any novelty in this particular combination. In respect to this claim, the evidence of respondents'expert seems apt and reasonable:
- '''l'he question is, is this invention, or mere selection and skill? It is quite common in machinery to have one part bolted and adjustible to another under conditions in which slipping would be very undesirable; and it has long been quite COII.lmon, under such circumstances, to groove or rib the contracting surfaces to prevent such slipping. I have been personally familiar with such ribs and grooves long prior to the date of the patent in suit, both upon cylindrical surfaoes. and fiat surfaces. And in agricultural implements the expedient is often I cannot et present, without extended research, find an example ot Such ribs and grooves applied to circumferential surfaces, but I find inplltent 183,610, in Fig. 5, the same system of ribs and grooves applied to ftatsurfaces bolted together. In the rotary tumblers of safe locks, the inner part of the twilbler adjnsts rotarily to the outer part; and for twenty-five Yeal'll, to mJ<' knowledge, theengagillg surfaces, cylindrical in form, have been ribbed and grooved. Under this circumstance, I am strongly inclined to believethat the provision of Stover's pipe box and sleeves with ribs and grooves was not an invention of a novelty, but was a mere adaptation of a well-known mechanical equivalent."
The finding of the court will be that the first and third claims of complainant's patent are void, that the second claim is valid, and that respondents infringe the second claim; and the decree will be for an injunction and accounting, with the usual order of reference.
ADAMS & WESTLAKE MANUF'G CO. v. WESTLAKE.
(Circuit Court, E. D. New York. December 16, 1892.)
PATENTS ll'OR INVENTIONS-LICENSE-INJUNCTION.
A bill by the licensee under a patent to enjoin the licensor from manufacturing the goods contrary to his agreement cannot be maintained when it appears that the licensee himself has ceased to manufacture any goods under the license.
Where the owner of a patent has execnted a licpnse to a corporation, agreeing not himself to manufacture or allow the use of his name in the mllnufacture'of goods which will come in competition with those made by the licensee, the latter cannot enjoin him from manufacturing or allowing the use of his,name in the manufacture of goods which come in competition with those made by another corporation, to which the licensee has exeI cuted a license, when such other corporation is not a party to the proceedings, and wh plaintilf does not allege that it is damaged by reason of the m competition with its licensee. In a contract, whereby the owner of a patent licensed a corporation to manufacture thereunder, it was stipUlated that upon the request of the said corporation (naming it) the agreement might be extended for the term of five additional years "from and after January 1, 1891," upon the Slime
CONTRACTS-OPTION TO EXTEND-ExERCISE OF OPTION.
ADAMS &: WESTLAKE MANUF'G CO. V. WESTLAKE.
terms. Before the expiration of the original term of the cdhtract the licensor received a letter, signed by a person describing himself as the attorney for'the licensee and for another corporation, in which notice was given "that my clients elect to extend for the period of five years from December 01, 1891, their contracts with you, dated February 2, 1886," Held, that this notice was not a valid exercise of the option to extend, for it was given in behalf of an additional party, who was no party to the contract, and provided for an extension of six years, while the contract only allowed an extension for five years.
In Equity. Bill by the Adams & Westlake Manufacturing Company against William Westlake to enjoin alleged violations of a contract granting a license to manufacture under a patent owned him. Injunction denied. """etmore & Jenner, for complainant. Wing, Shoudy & Putnam, for defendant.
BENEDICT, District Judge. The original bill filed in this case by the Adams & Westlake Manufacturing Company is based upon certain license agreements between thecoillplainant and the ant, whereby the complainant Wa& given the sole and exclusive license to manufacture and sell articles to be made under certain patents issued to the defendant, which agreements, by their terms, were to expire on the 1st day of January, 1891. There seems to be some mistake in the bill respecting the incorporation of the complainant. Not only the bill, but also the supplemental bill, describes the complainant as a corporation organized under the laws of the state of lllin.ois, whereas the contracts set forth in the bill describe the corporation as organized under the laws of the state of Michigan. This mistake is noticeable, becallse there is a corporation which was organized under the laws of the state of Illinois, . and named the Adams & Westlake Company. Rnt that corporation is not alluded to in the ori6>inal bill, and neitb er the original nor the amended bill prays for any protection of that corporation by way of injunction. With that corporation the defendant has made no contract, and he swears that he did not know of the existence of such a corporation until he saw the supplemental bill herein, and never consented to the use of his name by any such named corporation. A temporary injunction was granted ex parte upon the filing of the original bill, which protected the Adams & 'Vestlake Company, but this no doubt arose out of the curious similarity in the names adopted for these two corporations. The temporary injunction was accompanied by an order, returnable on October 25, 1889, to show cause why the injunction should not be continued during the pendency of the action. The hearing of that motion was by consent delayed until November, 1891, and was then brought on by the defendant. As the case then stood, the injunction must necessarily have been denied, for the reason that the contracts set out in the bill as the foundation of the action had at that time expired by their terms. The complainant, however, asserting that an option given by the contracts to extend them to January 1, 1896, had been exercised, and thereby the contracts continued iuforce, leave was granted to file a supplemental bill. Thereupon a supplemental bill was filed, which
set forth an exerciseby1theeomplainantof: the option given by the as 1t'is, a'Verred, the expiration of the contracts WaB bill also contains au,aver,m.6ij.t not contained in .the original bilI, that the Adams & Westlake Company is a licensee of the complainant, engaged in manufacturing sto"Ve boards; and it charges that the defendant is indirectl.rengaged'in manllfactilring stove boards which come into competition with stove boards made by the Adams & Westlake Company. The ea'llSe ,isllowbefore: the court upon 'the original bill, the supplementaLbill,togetherwiththeaffidavits on which the temporary injunction" was granted,. the defen<1aJnt's answer to the bill and to the supplemental bill, and the affidavit of the defendant in opposition to the motion. In this position thl;'l application is substantially an original application for an injunction pendente lite, simila.r to the temporary injunction granted on the original bill. By .injunction asked for, the. complainant seeks to restrain the defendantfrorn manufacturing articles similar. to articles manufactured.by t4e complainant under the license agreements, and to re.from . a cel't¢n No. 354,445, and from granting any license right underllny application pending in the pat· entoffice for letters patent for improvernentsin lamps and their attaebJ;nents,. and from amending or proceeding with the said applicar tion. And the complainant also seeks to restrain the defendant from using or permitting hiS nanie to be.used in any manufacturing busi-; ness,or by any manufitctu.ring ho1lsewp.ich shall make or sell a'r. ' ticles like or similar tq,'allll which shall come into competition with, articlesmade,?rsold & Westlake Company, which cor·, pOration, ,as . Jjef!Jre stated, is distinct from the complainant .corporais no party to this action, ,nor to any of the contracts set; farthjiJ.. .. In regard to the first part of the in-, jUncti()ll fqt, I . 'N:mlark that the bill nowb.ere states that the' engaged in manufacturing any .articles patented by the defendant, the defendant, in his affidavit; states that the com· h.as. g.Q;tle'out ofthe business of manufacturing or selling articles (,lovered "by the license agreements with the defendant, which statement is not disputed., This fact seems fatal to the part of the under consideration.' The if not expressly,oynecessary implication, contemplate the manufacture by the Gomplainant,duringthe existeJ;lce of the contracts, of articles constructed patents, and the payment of a royalty to the defendant. The contjnuance of the complainant in the manufacture was, one important. pa,rt of the arrangement. When the complainant went out of the btisiJless of manufacturing and selling any of those arti(lles it became impossible for the defendant to perfornl its in this particUla.r, and the defendant was at liberty to terminate them. But, if this be otherwise, it is evident that, if the complainant is not engage4 in. :tilannfacturing or selling articles under the defendant's patent,s, no 4J.jvry to the Gomplainant can come from the acts- charged, and the' for the injunction Upon this ground, tMref()re, thatp?i'tionofthe.injunction asked for is denied. That portion" of the i1:J.junction whiGh seeks protection for the
ADAMS & WESTLAKE
Thedefendant His con· tracts are with the, complainant The provision in his contracts with the complainant is that during the term of said agreement he "will not use, or allow or permit his name to be used, in any manufacturing business, or by any manufacturing house which shall make or sell articles like or similar to, or which would come into competition with, the articles made or sold by the Adams & Westlake Manufacturing Company." This provision affords no foundation for an injunction to protect the Adams & Westlake Company against competition. The defendant's contracts do not relate to competition with the Adams & Westlake Company, and that corporation is not a part;}' to the ootion. It is said that the Adams & Westlake Company is a licensee of the complainant, and therefore the complainant has the right, and is charged with the duty, to protect the Adams & Westlake Company from competition by the defendant. But the bare foot that the Adams & Westlake Company is a of the complainant (Which is all that appears here) does not show that the complainant is bound. to protect the Adams & Westlake Company from competition by the defendant. This is not an action for infringement, but to enforce in behalf of the complainant certain agreements between the complainant and defendant. If the Adams & Westlake Company have any rights under any contracts of the defendant, or are in danger of injury from his acts, they should ask such protection by an action of their. own. In this action that corporation and its rights are not before the court. Damage to the complainant by the use of the defendant's name in the manufooture of articles that compete with articles made by the Adams & Westlake Company, if any such there are, is not 'averred. Moreover, when it appears that no articles are made or sold by the complainant under defendant's patents, it is not seen how it could be possible for the defendant to make or sell articles which would come into competition with the complainant in respect to such articles. This portion of the injunction must therefore be denied, upon the ground that the use of the defendant's name in competition with the Adams & Westlake Company is not a violation of the defendant's agreements with complainant, and it does not appear that any injuries to the complainant would result therefrom, There is another ground taken in opposition to this motion which, in my opinion, is fatal to the complainant, namely, that the contracts iOet up in the bill have expired. By their terms the contracts sued on were to expire January 1, 1891, unless extended under the option which the agreement contains. The provision for the extension of the contracts is as follows:
has no contract with the Adams & Westlake Company.
"E'ourth. The said William Westlake hereby agrees, upon the request of the said Adams and Westlake Manufacturing Company, made on or before expiration of the term of this agref'ment, to extend their license and agreement for the term of five additional years from and after Jannary 1, 1891, upon the same termt:; of payment of as set forth in article three above written; that is, upon payment of $200 per annum during the extended term."
Adams & Westlake Company must also be denied.
That portion of the letter to the defendant dated December 26, and signed "J. H. Raymond, Attorney at Law and in Fact for
the Adams and Westlake Manufacturing Company, and the Adams and Westlake Company," relied on as effecting an extension of the contracts, is as follows:
hI beg to add to my recent letter to you this formal notice that my clients elect to extend for the period of five years from December 31,1891, their contracts "ith you, dated February :.l. 1886, of which notice kindly acknowledge receipt."
So far as appears from the papers before me, the defendant took no notice of this letter, and it has not been claimed that he ever, by any instrument in writing, agreed to an extension of these contracts. In my opinion, the notice above quoted from the letter of J. H. Raymond did not effect an exterudon of the agreements, for two reasons: First, because it was a notice from two corporations that those two corporations "elect to extend their· contracts with you, dated February 2, 1886," when the defendant had no contract with one of these corporations. Furthermore, th!:l notice was that these two corporations elect to extend their contracts. for one year longer than was provided in the contract between the complainant and the defendant. By the contracts an option was given to the complainant to extend the time of the contract for five years from January 1, 1891. The notice sent says that the two corporations mentioned in it elect to extend their contract for five years from December 31, 1891; that is, for one year longer than the complainant's contract stated. It is said that this was an oversight on the part of the writer. If such be the fact, nevertheless, the only notice the defendant ever received related to an extension for five years from December 31, 1891, which he had never agreed to give. In my opinion, such a notice did not effect an extension of the contracts.. The injunction asked for must therefore be denied upon the further ground that the contracts which form. theo foundation of the complainant's bill have expired.
EDISON ELECTUIC lJIGHT CO. et al. v. SAWYER·:Mk"'i ELECTRIO CO. (Cirmlit Court of Appeals, Second Circuit. December 15, 1892.)
owner of letters patent No. 223,898, issued January 27, 1880, to Thomas A. Edison for an incandescent electlic light, having seasonably brought suit in 1885 against the United States Electric Lighting Company for infringement, no other company engaged in manufacturing infringing lamps can complain that the owner of the patent was guilty of laches in not· bringIng suit against them for infringement prior to the decision ot that case in the circuit court, (October 4, 1892,) for all persons interested in having the patent defeated must have been familiar with the litigation, and with the fact that it was very expensive and ardu(,us, and they entered upon their business with an lIDuerstanding of its risks, and of the consequences which woulu befall them as infringers if the patent should be . sustainE'd.
PATENTS FOR INVENTIONS-SUIT FOR INFRINGEMENT-LACHES.
'I'bere are much stronger equities, however, in favor of users who, prior to the deciSion in the circuit court, and at a time when judicial decisions in foreign countries interpreting the patent were in conflic·t, purchased from the infJi.ngers electric lighting plants which require t.he lamps of the pat.· ent for their operation, and who are now willing to accept their