50
FEDERAL REPOR'l:.ER,
vol. 70.
exists as to him. It is not a pardon,..;.....not an act of amnesty. No charge can be made against him, for it is illegal to even prosecute him, viz. "No person shall be prosecuted." To our mind, the constitutional provision in words and purpose is plain. In the Oounselman Oase, the witness was protected from the manifestly self-criminating answer.s which would have disclosed facts upon which a prosecution, to which he was still left exposed, could be based. But, owing to the act of 1893, no such consequence can ensue if the present petitioner is made to answer. Such being the case, the constitutional provision does not concern him, and if it does not, the act which compels him to testify is not unconstitutional. In reaching this conclusion we have given due regard to the case of U. S. v. James, 60 Fed. 257, where the act was held to be unconstitutional. While we regret to differ from this only federal decision on the matter, we find support for our position in the opinion of the supreme court ·of New Hampshire, in State v. Nowell, 58 N. H. 314, and of the supreme court of California in Ex parte Cohen (Oal.) 38 Pac. 364. The prayer of the petitioner to be discharged will therefore be denied, and.he will be remanded to the custody of the marshal. AOHESON, Oircuit Judge. I entirely concur in the views' expressed by Judge BUFFINGTON in the foregoing opinion. That opinion is so full and satisfactory that I need do little more than announce my concurrence. The act of· February 11, 1893, affords the witness complete immunity from prosecution; and from penalty or forfeiture f01" or on account of the offense to which the questions propounded to him relate, and therefore his answers cannot tend to criminate him. As he cannot be subjected to any prosecution, penalty, or forfeiture, his case is not within either the letter or the spirit of the fifth amendment to the constitution of the United States. UNITED STATES PRINTING CO. v. AMERICANPLAYING-eARD 00.
(Circuit Court, W. D. Michigan, S. D.
July 26, 1895.)
There is patentable invention in forming a new combination of old elements, so as· to produce new and valu&.ble results, In the increased safety and efficiency of the machine, and the great enhancement of the profits resulting from its operation.
2.
SAME-INFRINGEMENT SUITS-PRIOR SETTLEMENT FOR DAMAGES.
A settlement with a manUfactUring. infringer for damages, as distinguished from profits, does not bar the patentee from maintaining a subsequent suit against a user of the manufactured machine. A settlement or judgment for damages relates only to past damages, and has no reference to the future.
3. SAME-NOTICE OF PATENT-PLEADING DEFENSE. Failure to mark the patented machine with notice of the patent is not
available as a defense unless it be set up in the answer and established by proof.
4. SAME-MACHINE FOR PRINTING CARDS.
The Murray patent, No. 381,716, for an improvement in a machine for printing playing cards, held valid and infringed.
UNITED STATES fBINT,ING CO. fl. AMERICAN PLA.YING-CARD 00.
51
This was a suit in equity by the United States Printing Com· pany against the American Playing·Card Company for alleged in· fringement of a patent for an improvement in machines for printing playing cards. Arthur v. Briesen, for complainant. Boudeman & Adams, for defendant. SAGE, District Judge. This suit is for infringement of patent No. 381,716, issued April 24, 1888, to the Russell & Morgan Print· ing Company, as assignee of Samuel J. Murray, for an improve·, ment in a machine for printing cards. The present complainant, the United States Printing Company, is the Russell & Morgan PFinting Company, under a name adopted, under due process of law, on February 20, 1891. The patented improvement is a contrivance for punching play· ing cards. The 52 prints for a complete pack of cards are printed on a single sheet of paper. The sheet is then cut into strips, and fed to the machine, to be punched, one card at a time. This work requires great accuracy, that perfect cards, not distinguishable one from another by the appearance of their backs, or by the sense of touch, ,may be produced. To this end, they must not only be of uniform size, but the design for the back must have an even mar· gin on aU sides, and exactly the same on every card. The com· plainant's machine is an improvement on the Bliss single·feed mao chine, referred to also in the record as the "Bliss & Williams single· feed machine." In that machine the strip of card prints was fed by the hands of the operator directly under the punch, so that on its every downward movement a card was cut out. The punch was held suspended by a spring during the insertion of the strip. The push of the operator's foot upon a treadle threw into action a clutch, and the punch then descended by the action of the main shaft. While in its upward position, a clamp to the left of the die was held open by suitable mechanism, and the strip was inserted under the clamp, and between the jaws of II feeding device, which were opened and closed mechanically. When the operator started the machine, the clamp pressed on the strip, and held it firmly during the process of punching. Simultaneously with the lifting of the punch, the clamp was raised, and the jaws of the feeding device closed on the strip, and moved to the right, in the direction of the punch, far enough to bring the next card slip into pOl,ition. The clamp then closed on the strip, the feeding device returned to its starting point, and the punch was brought down. When all the cards were punched out from the strip, the operator stopped the machine, the clamp and feeding jaws were again automatically held open, a fresh strip was inserted, with its first card under the , punch, and. the machine again set in operation. A suitable gauge was provided to enable the operator to adjust the strip so that the separate cards WOUld. be punched out uniformly, and with even margins. Among the chief disadvantagelil of this machine were the danger to the operator's fingers in feeding the strips, and the lessened
52
J'.EDKRAL REPORTER,
::: ,
"
.
;
UNITED STATES
qO·.
AM:ERICAN PLAYHW-CARD CO.
&,3
any right to the future use of tJie machine,- and that, on the con· trary, he might, in addition to the payment of damages for past be restrained by injunction from . further use, and, when the whole machine is an infringement of the patent, be 01'-, dered to deliver it up to be destroyed. That case has been cited with approval in Callaghan v. Myers, 46 O. G. 565, 128 U. S. 617, 665, 9 Sup. Ot. -177; Tuttle v. Matthews, 36 O. G. 694, 28 Fed. 98; Bragg v. City of Stockton, 27 Fed. 509, 510; Filter Co. v. Schwarzwalder, 58 Fed. 577, 579; Kelley v. Manufacturing Co., 54 O. G. 659, 44 Fed. 19; Mill Co. v. Coombs, 48 O. G. 255, 39 Fed.803; and Thompson v. Bank Note 00., 45 O. G. 347, 35 Fed. 203-205. The cases to the contrary cited by defendant were decided prior ,to Birdsell v. Shaliol, and are virtually overruled by that case. Where a patentee takes a decree for profits against a manufacturing infringer, he thereby sets the manufactured machine free. The distinction is obvious. In such cases the profits of the infringer are full compensation to the complainant for the wrong done him by the unauthorized manufacture and sale of the infringing machine; but, where there is merely a settlement Qr judgment for damages, it is only for damages in the past, and has no relation to the future. It was also objected upon the hearing that defendant was not liable, in view of the alleged failure to mark the patented machine with notice of the patent. That is a matter of defense which was not pleaded, and which, to be available, must beset up in the answer, and established by proof. Rob. Pat. § 1046; Goodyear v. Allyn, 6 Blatchf.38. 1 In that case Judge Blatchford said that there were several answers to this objection, which was first made there, as it is here, on the hearing: First. That it did not appear by the bill that the plaintiffs,. or either of them, had ever made or vended any articles under the patent, and that that fact was not shown by the defendants. Second. If that fact had appeared, either by bill or otherwise,. it would be for the defendants to show a failure by the plaintiffs to mark, as required, the articles made or vended, and then the burden of proof would be on the pla.intiffs to show that,before suit was brought, the defendants were duly notified that, they were infringing that patent, and that they continued, after such notice, to make or vend the article patented. Third. That the failure to mark would only have the effect to prevent the recovery of damages. It would not affect the ri'ghtto an injunction. Judge Blatchford also held that it was questionable whether the statute would apply to a suit in equity, because damages could not be recovered in equity. That ruling, however, was under the patent act of 1836, which did not provide for damages in causes in equity, as tMstatute nOw in force does provide. This defense was not pleaded; and it appears in evidence that the defendant company was, before they procured their'infringingmachines, notified of the complainairrlil patent, a copyo! which was shown to them,and that tl;:tey .. i {,
i' .
»4
FEDE:RAL REPORTER,
were warned that they must steer clear of it. That defense is, there--tore, not well taken. The decree will be for the complainant, for an injunction and 8J)J account. NATIONAL HEELING-MACH. CO. et at v. ABBOTT. ' , (Circuit Court. D. Massachusetts. No. 495. October 10. 1005.)
IN TnusT- ESTOPPEL. Where an assignment of a patent purports to be In trust, but the trust' not declared on "the face of the instrument, the assignor is bound in-, equity, (on account of the difficulties and hazards of persons dealing with. the trustee, in ascertainIng his powers), to act in good faith, so as to prevent strangers from being prejudiced by his acquiescence. and an estoppel easily arises against him. ,T
'S
be filled out by his attorney with matter relating to his patent, and the attorney,contrary to his Intention. Inserts an asSignment of the whole patent to himself, in trust. the owner is estopped, so far as concerns Innocent'. strangers acquiring llcenses from ,him, to deny his right to ,fill out the assignment as was actually done. 1J. BAME-'-SUCCESSIVE LICENSES.
It the owner of a patent signs in blank a paper whIch he knows Is to·
SIGNED IN BLANK-EsTOPPEL.
,
Where a license given under' a patent' was, by Its temis, exclusive, and'contained a provision that the granting ofa new license to another should, operate as lit canceIlation of it, and afterwards the samewp,s surrendered, and new llcenses in the Same terms issued in succcssion, to other parties,_ held, thiit the last licensee stood in the same position as If, Instead' of successive licenses, there had been an assignment of the original license with,' the assent of the owner of the patent, and was entitled to all the rights· and equities possessed by any of his predecessors. for 13 years by patent owners, who have assigned their patent', In trust, to Inquire into the terms of licenses known to have been granted' to third parties by thelr'trustee, estops them to deny knowledge of thecontents of such llcenses.
4. BAMm-EsTOPj;>EI,.
This was a bill in equity by the National Heeling-Machine Com· pany andrthe Ross Heel Company against William T.Abbott for alleged infringement of letters patent No. 220,920, issued October 28, 1879, to Henry A. Henderson and Hollis C. Paine, for ,an improvement in heel-trimming machines. An injunction pendente lite was granted February 2, 1895. The cause is now before the court on, final hearing. John Lowell and Clarke & Raymond, for complainants. Lund, Davis & Welch, for defendant. PUTNAM, Circuit J:udge. Theoretically, the granting of an In-, terlocutory Inj\lnction in a cause in equity does not prejndice a hearing on bill, answer, and proofs; but it is not always certain that & court which has heard pr:eUminary motions on a hasty, and perhaps partial, grouping of the facts, can, when it comes to the final disposition of the suit, erase the impressions previously gathered. The,