PRA.TT V. WILCOX MANUF'G CO.
Patent No. 112,868, to Van Vleck, is relied on as anticipating the seventh claim. In the machine of tw.s patent, for coiling bed springs, a single section is coiled at each end, and the wire operated on is the means for bringing the sliding blocks together. This machine does net have the twister wheels, nor the treadle lever and cord for bringing the sliding blocks together. Norton's patent, No. 106,951, is also referred to. This machine is for coiling wire bells in scroll forms. It does not have the two sliding blocks, nor the two twister wheels of this seventh claim. Other patents were offered in evidence by the defendant, but as they were not urged at the hearing I have not considered them. The second claim of complainant's patent, No. 259,677, is:
"(2) In a machine for formir.g interlocking eyes and knots on check-row chains for corn planters, the combination of the hollow shafts, J, J', arranged opposite each other, the springs, s, arranged therein, and the hollow spindles, L, L, aITanged within the shafts and acted on by the said springs, and having their projecting ends constructed to turn the ends of the wires, said spindles having independent longitudinal movement Within, but revolving with the shafts, substantially as described."
Putnam's patent, No. 187,776, is relied on as anticipating this daim. This patent is for winding short wires along the length of a long or main wire, leaving the ends of the short wires to project for barbs. A machine for coiling barbs on a main wire must necessarily be a different machine than one which has only one wire cut into lengths to operate on, and to interlock the ends so as to form knots, and also permit the folding up of the chain thus formed. Neither machine can do the work of the other. The Putnam mao chine has only one hollow shaft It does not have any hollow 8pindles, and it does not have the combination or operation of the second claim. No machines similar to those of the complainant's patents have been shown in the prior art, and the claims are all dearly valid. The evidence shows that the defendant became familiar with this class of machines while building them for the complainant, and he was enabled to make mechanical changes, such as would occur to a skilled meohanic in the use of equivalents, but upon the evidence of the experts, and a comparison of the machines, my conclusion is that the defendant's machines infringe each of the claims in controversy. Let a decree for the complainant be entered in accordance with the prayer of the bill.
PHATT et al. V. WILCOX MANUF'G Co. (CirCUit Court, N. D. Illinois. December 29, 1893.) 1.
JUDGMENT-RES JUDICATA-WAIVER BY STIPULATION.
The conclusiveness of a judgment sustaining a patent is waived by a stipulation fixing the amount of damages, and providing that if no appeai is prosecuted defendant shall not be estopped from raising again any questions necessary to a full determination of the merits In any suit then pending, or thereafter to be brought. An agreement by two firms manufacturing under patents reiating to the same SUbject-matter that neither will interfere with the other in the manufacture of the inventions set forth in their respective patents,
PATENTS.,...!NFRINGEMENT-EsTOPPEL BY CONTRACT.
·t£DllIRAL 1tEPORTER:; vol. 64.
: \YiH. .the otheraga11lst thtrd paJ1;ies, operates to dis.quaUfy'one .party from, ll.9!1u1ring WlYtight to prosecute the other for any alleged;ln(ringemelitaJ.'ising frOm operating under the patents of the latter. ,.' .. " ,. .,
A firm, having the rigbt to manufacture under a patent agreed with another firm ·. 9:wning rival patents. that it would not interfere with the latter, and each woillaprotect the Qther against third parties. Afterwards, the first-mentioned firm was merged in a corporation which succeeded to aUtts rights under the patent. Held., that the corporation took those rights burdenedwitll the .}imItations and obligations imposed contract.,' : by
INCORPORATION':"-EFFECT ON EXISTING CONTRACTS.
Bill by Elias E. Pratt and E. C.' Stearns & Co. against the Wilcox Manufacturing· Company. Hay Wilkinson C. lJinthicum, for complainants. Pickard & Jackson, for defendant. .,
, J.;,.", ':.,
Circuit, Judge: The complainants ,bring suit for the alleg-etl J 'infringement 2, and" 3 of reissued letters patent to EliasE. Pratt, No. 7,795, dated July 17, 1877, the original of which Jtitters patent were,issued December 5,' 1876, and numbered On :the 13th, of January, 1887, the com.plainant Pratt en-oored 1nM a contract with the firm ofE. C. Stearns & Co. by which were' 'authorized to bring suit for infringement of the said the letters 'patent with respect to door hangers containing and embodying theiu\l'entions supposed to be covered by the patent; Stearns & Co. to bear the expense. of the suit, and to share in the ,net proceeds oflthe recovery. It· was further agreed that if the patent should .by the court, and.hangers for house doors provided'withelongated ;as described in. the patent, should be held to ih;fringe snch letters patent, then Stearns & Co. were to have exclusive right for the whole of the United States and the territories, during the period of the patent, to manufacture and vend, and :manufacture 'and sell, door hangers for domestic purposes>under such letters patent. In an action brought in the United States circuit court for the Eastern district of Pennsylvania, by CQmplainant Pratt against Doyd and Supplee, the patent was sustained by decree rendered on the 10th of December, 1889. Afterwards a suit was brought by Pratt against Wright and Dana, in the circuit court of the ·United States for the Northern district of New York, before Judge Wallace, who, in deference to the Pennsylvania decree, on the 9th of July, 1890, rendered an interlocutOry decree sp,staining t,he, patent. The defendants in that suit were selling cert.ain door hangers manufactured by the Wilcox Manufacturing COmpany, the defendant in this suit; and the latter intervened in tliatl'l'Q,it, to protect the defendant therein, and contest the validity qf the patent.. '"Within the ruling in the case of David Bradley Manufg Co. v. Eagle' Manuf'gJ(lo:, 6C.0:1\:: 661,,57 Fed. 980, the defendant would 'validity of the patent with'respect be concluded from or presented, and as to to. everjYgroundi which.imight. have been presented; but in that suit ,the:parti<esjon the 3d 'of March, 1898,uagreed upoDithe amount
PRATT V" WlLCOXMAiNOF'a '00.
of damages to be entered in final decree, and stipulated that in the event that no appeal should be prosecuted the Wilcox Manufacturing Company should not be estopped by the judgment from raising again any and all questions necessary for a full determination of the merits in any suit or suits then pending, or which might thereafter be brought, on the Pratt patent. It is undoubtedly competent for parties to waive the conclusiveness of a judgment, and the matter is therefore, pursuant to the stipulation, still at large between the parties. On the 20th of December, 1881, the Wilcox Manufacturing Company was the exclusive licensee of the owners under patents No. 202,587, dated April 16, 1878, and No. 241,882, dated May 24, 1881, and the firm of E. C. Stearns' & Co. was the sole owner of the letters patent No. 186,388, granted to Warren E. Warner, dated January 16, 1877. These patents all related to door hangers. On that day the said parties and the Richards, owners of the patents controlled by the Wilcox Company, entered into an agreement by which the Wilcox Company and the said Richards authorized Stearns & Co. to sue all parties infringing the letters patent owned by the Wilcox Company, and appointed Stearns & Co. their' attorney in fact for that purpose; and Stearns & Co. were to pay all the expenses of such suit, and diligently to prosecute the same; and Stearns & Co. authorized the Wilcox Company and Richards to bring suit against parties infringing letters patent 186,388 in their name, the Wilcox Company and the Richards to pay the expenses of the suits, and to diligently prosecute the same. In case of recovery in any suits brought, the expense should be deducted from the amount recovered, and the balance paid to the party owning the patent. It was further provided by that agreement that neither party should en· gage in the manufacture of door hangers like or similar to those manufactured by said parties, respectively, under the respective pat· ents which they controlled, without the consent of the other party, and neither party should grant licenses to any other person to manufacture door hangers containing and embodying the features set forth and claimed in the patents owned and controlled by them, for use, or to be used, for sliding door hangers; the agreement to remain in force during the life of the patents, and to be binding upon the heirs and legal representatives of either partY,-with right, however, to either party, for good cause, to cancel the agreement, first giving a statement in writing of the grounds of cancellation, and allowing the parties 60 days within which to perform. The firm of E. C. Stearns & Co. was merged suBsequently into the corporation (now one of the complainants) of E. O. Stearns & 00., but that corporation acquired all its title to the patent in suit, and all its rights thereunder, through the agreement made with the firm of E. C. Stearns & 00. by Pratt, and is, as I conceive, bound by that agreement. The contract with the defendant was substantially an agreement by which each party agreed not to interfere with the other in the manufacture of the inventions set forth in their respective patents, but to protect each other. It was an alli· ance offensive and defensive. In other words, Stearns & Co. sane·
DDERAL BEl'OR'l'ER,. vol.
.tioped l,tnd au;thorized the Wilcox Company to manufacture the and to protect them in that right. They have not ,ablJitldonedthe agreement, and I am of opinion that, so long as it force, Stearns & CQ. are notin a position, by any agreement with Pratt or others, to acquire a title or right to interfere with the lllanufacture by the Wilcox Company under the Richards patent. I think it entirely inconsistent with their position to do so. The dut.y of Stearns & Co., under that agreement, was to protect the Wilcox Company in its right to manufacture under the ;Richards patent; and it would be inequitable to permit them, in violatioJ;l.. of .their agreement, to acquire by superior title the right to act in violation of their duty. Davis v. Hamlin, 108 Ill. 39. Thisllgreement was not set up in the New York suit. The record of thQ.t suit is obscure as to whether Stearns & Co. were parties to the Of course, if Pratt was the sole complainant, the defense of lllight not have been available there. But, however th3:t may be, the !!tipulation to which I have referred clearly puts the whole matter a,t large, and renders the defense available here. It is said, however, that Pratt was not a party to that agreement, and tbat is true; but Pratt is a mere nominal party complainant here, having given to E. C. Stearns & Co. the exclusive right to his patent, so far as it affects door hangers for household purposes,. He may, in a technical sense, have the naked title to the patent, 1mt he had no beneficial interest therein, so far as concerns door hangers for domestic purposes. It is also objected that the E. C. Stearns & Co. of this suit is a corporation"While the E. C. Stearns & Co. of the contract was a firm. I need not stop to, comment on this, for, as. I have before remarked! all the title that the corporation had to the Pratt patent was obtailled from the firm, and through an agreement with the firm, of E., C. Stearns & Co. In the hands of the firm that assign· mentand right under the Pratt patent was burdened with the ob· ligation contract with the Wilcox Manufacturing Company, and the complainant corporation took whatever it acquired from the firm of E. C. Stearns & Co. cum onere. I am therefore of the opinion, without inquiring into the subject of the validity of the patent, or .t, no.vel.ty of. t,he inv.ention, or the question of infringement by the defendant, that the complainants cannot maintain their suit, and the bill, will therefore be dismissed.
ROSS v. 0ITY OF MINNEAPOLIS. SAME v. CITY OF ST. PAUL. (CirCUit Court, D. Minnesota. December 3, 1894.)
PATENTS:"""DEVICE FOR RELE,A.SING FIRlll-ENGINE JIORSES-INFRINGEMENT.
Bragg's' pateJit, No. 173;261, for releasing horses in fire-engine houses by a combinll.tlOnoi an electro-magnet, armature, trip levers, and suspended weight acting upon . the latches or fastenings of the horses' stalls, though. describing au electro-magnet in a horizontal position, used with an open cirCUit. held to be infringf'd by in which the electromagnet is arranged vertically, and' a closed or open circuit is employed, with equ,lvaJentmechanical devices in different 'positions. '