IPRAGUEELECTRIC RAILWAY. MOTOR CO. V. NASSAU
cal in color as to preserve the deception. It is true that one cannot obtain exclusive trade-mark rights in color or in form of pack· age, but this case is not one solely for enforcement of a trade-mark. It is likewise true that other manufacturers have employed both the peculiar form, and in .some instances the same color, but clearly distinguished in other respects from complainants' production. Under the circumstances shown, however, there can be no just relief from the unfair competition without a change in color as well. The defendants must be allowed no advantage out of the trade thus obtained wrongfully, but must establish the reputation of their goods upon merit, and without benefit of the imitation. Decree for the complainants may be prepared accordingly.
SPRAGUE ELECTRIC RAILWAY & MOTOR CO. .,. NASSAU ELECTRIC R. CO. (Circuit Court of Appeals, Second Circuit. No. 156.
PATENTS-SUIT FOR INll'RINGEMENT-PRELIMINARY INJUNCTION.
May 25, 1899.)
Where the question of infringement is a doubtful one, and to sustain the claim requires a broader construction of the claims of the patent than has been given in prior adjudications, such question should not be determined on a motion for preliminary injunction.
Appeals from the Circuit Court of the United States for the Eastern District of New York. Frederic H. Betts, for complainant. William H. Kenyon, for defendant. 'Before WALLACE and SHIPMAN, Circuit Judges. PER CURIAM. This is an appeal from an order granting a preliminary injunction restraining the defendant from infringing claims 2 and 6 of letters patent No. 324,892, granted August 25, 1885, to Frank J. Sprague, for an improved electric railway motor, and refusing an injunction restraining the infringement of claim 4 of said letters patent. The defendant has appealed from that part of the order granting the injunction, and the complainant has appealed from that part of it refusing one. The appeal presents the question whether the electric railway motor of the defendant, as m()dified in construction since the decision of this court in the case of Sprague Electric Railway & Motor Co. v. Union Ry. Co., 84 Fed. 641, is an infringement of either of the three claims. When the patent was considered previously by this court, we were of the opinion that it did not embody a primary invention, or one of a broad character, and we referred to the case of Adams Electric Ry. 00. v. Lindell Ry. Co., 40 U. S. App. 482, 23 C. C. A..223, and 77 Fed. 432, as c<mtaining a statement of the prior state of the art. The opinion is a part of the moving papers for present purposes.· The prior patent to Finney discloses the principal features of Sprague'.
aJ!d what' sprague has described' and claimed in the present'ipa1efits,are impro-vements in details of,; construction and ar· · .I: ()ne of; his imptoovementlFconsists in introducing' a flex'l'leconnectioDI between the motor and the car body, or the truck 'frame; at the,:end opposite: the driving :axle. In the, motor of tlie Flhney patent that end rests upon the'crossbar ofa :frame which the axles ufthevehiole. It is rigidly connected with the crossbar; and :the crossbar iSibolted to the frame. In the pres,ent patent that end: of them.otor is "hung from a crosspiece, F,' on the: truck, by 'heavy springs,: b,b, or Ifl'om the car body itself in the 'tla'$e' ,of a; street car or other vehicle having no truck." Another improvement describediri the patent consists in <introducing supporting springs at the axle end of the motor. ''These springs extend to crossbars on truck frame, or to the car body in case no truck is used. Their tension is adjusted by nuts, t, which are locked by other nuts, u.Thisadjustment may 'be such'as to carry wholly 01' partially the weight of this end of the motor, or so as to actually driving.lUle.", The imexert a pressure upon t4elower sid,e9f provements described are apparently contrived to hold the motor in elastic restraint. The specification states that "the connection of the entire motor with the truck is through springs, so that its JlO" sitionts not affected by the! movements of the truck upon its springs." the defendant's,mptor' is "supported' by fi,eXible connections fr6th the body afthe vehicle" at the end opposite the driving, it does not infringe the second claim; and, unless it is "flexibly l1!Qpported from snch.vehiCle?': it" ,does not infringe' the, sixth claim. The defendant's motor is supported at the end opp<)site the driving axle by a crossbar fastened to the frame at each, end ,by a bolt passing through a woooen block, a, lQckwasher, and a,Ilut. The frame is the frame of the Jfinney patent.. The springs ipterposf;ld between the crossbar and the frame, which were a feature of its former motor, have been removed. The theory for the complainant is that inbperation''theblbcks forming the connection become loose, and when loose allow a sufficient movement of the motor at that end to constitute practically a flexible connection. Two questions must be determined·,fn favor of the complainant to support the theory of infringement. Can the claims be construed to cover a flexible connettionor support for the'motor not elastic? Are the bolt connections in the defendant's motor flexible in any sense of the term? The first question has not been tbuched by any of the previous adjudications upon the patent. ,The second question involves the proposition'that "flexibility" and ''looseness'' are equivalent mechanical terms. The normal condition of the connection in the defendant's'motor is infleXible. When it has worked loose, it may, perhaps,with pI'opriety be said to be a yielding con· nection-Weare not :satisfied, however, from the affidavits contained ID,the record, that it is not in, practical 'use, as it is originally, a mechanically rigid one. ; The questions. thUs lluggested are too doubtftl)yto be resolved 'upon a motion for a' prelbninary injunction, and should be reserved until the, final hearing of the cause. The fourth'claim. adjudicated, and the court
PELZER V. CITY OF BINGHAMTON.
below properly refused to determine its validity and scope upon the motion. The part of the order denying an injunction is affirmed; the part granting an injunction is reversed, with costs.
PELZER v. CITY OF BINGHAMTON et at (Circuit Court of Appeals, Second Circuit. No. 140. A license to make and sell a patented article during the term of the license, royalty to be paid on all sales made before its termination, tbough deliver3' should not be made till afterwards, by implication excludes the licensee from the right to make sales after the license has been terminated by his own election, tbough the articles sold were made during the term. 2. SAME-tUlT FOR INFRINGEMENT-INJUNCTION AGAINST Cl'ry. A city which purchased patented combination gas and electric lighting fixtures for use in its city hall, after having been notified that they were being sold in infringement of the patent, and which took.a bond to indemnify it against the result of litigation, has no equity, on the ground of being a public corporation, to claim exemption from the usual temporary injunction against u5ing the fixtures pending a suit for the infringement. .April 4, 1899.)
PATENTS-CONSTRUCTION OF LICENSE.
Appeal from the Circuit Court of the United States for the Northern District of New York. RichardN. Dyer, for appellant. H. T. Fenton, for appellees. Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges. SIDPMAN, Circuit Judge. This is an appeal from an order of December 16, 1898, of the circuit court for the Northern district of New York, denying a motion for an injunction pendente lite against the city of Binghamton's unlicensed use of reissued letters No. 11,478, to Luther Stieringer, as assignor to George Maitland, for improvements in electrical fixtures. The original patent was dated June 6, 1882. The. validity of claim 1 of the reissue was sustained by this court in Maitland v. Manufacturing Co., 29 C. C. A. 607, 86 Fed. 124, and that question did notarise upon this appeal. In July, 1898, the city of Binghamt(lll advertised for proposals for furnishing combination gas and electric lighting fixwres for its city hall. Proposals were submitted on July 19, 1898, by several cO:plpetitors, one of whom was David J. lfalane, the co-defendant, and the common council or its committee were informed that the use of his fixtures would be an infringement of the Maitland patent The contract was given to him upon his furnishing a bond of indeplllity against the sult of lawsuits, and he entered into a written agreement with the city on August 5th. On September 7th formal written notice was given to the city by the plaintiff's attorney of the proposell suit and application for an injunction. There are 240 fixtures in the city hall, of which 123 infringe claim 1 of reissued patent. The question of infringement was. not argued by the defepdant. The points made by the defendant were the impropriety of enjoining a municipal