WISE
V.
GRAND AVENUE RY.
CO.
277
tached to the several bows and waistband, and the patentee so specifically states in his specification. It is urged, however, that claim 9 is not broader than the claim in the first reissue, and that therefore it is not invalid. Assuming this to be true, I am of opinion that the defendant's bustle does not infringe this claim. The KIous bustle has not the series of uprights which are the main feature of the Thomas invention. The claim says that the series of uprights or braces are united where they come together, which is at the bends. This feature is also absent from the KIous bustle. In the KIous bustle we find a new element, namely, a horizontal bow extending out from the waistband below the other bows. Single uprights are attached to this bow, while their upper ends are attached respectively to the bows and the waistband. The combination of elements which go to make up the ninth claim of the Thomas reissue are not found in the Klousbustle, nor what may fairly be considered their equivalent. The organi$Rtion of the Klous bustle is quite different. For these reasons I think that the bill should be dismissed.
WISE tl.
GRAND AVENUE Ry. Co. January 5, 1888.)
((JirCfJ,it (Jourt, 1.
w: D. Missouri, w: D.
PATENTS FOR INVENTIONs-INFRmGEMENT-INJUNCTION.
It is not necessary for a patentee to establish the validity of his patent at law before he can obtain equitable relief for its infringement; but the chancellor may in his discretion require an action at law to be brought and tried, before awarding an injunction, if he doubts the validity of the patent.
2. 8.
SAME-SUIT FOR lNFRmGEMENT-LAW AND EQUITY.
A patentee may sue either at law or in equity for an infringement of his patent, according to the of the relief demanded.
SAME-SUIT FOR INFRmGEMENT-CERTAINTY IN PLEADING.
A bill to enjoin an alleged infringement of a patent described therein merely as an "Improvement in Cable Railways" is demurrable, as not showing with sufficient certainty in what the alleged invention consists.
In Equity. On demurrer to bill. R. H. Manning, for complainant. D. B. Holmes, for defendant. THAYER, J. In this case the objeotions taken to the complaint are threefold and as follows: First, that the complaint does not contain any matter of equitable cognizance; serond, that the complaint does not show in what the alleged invention of the complainant consists; and, third, that the bill does not show that the validity of the alleged patent has as yet been established at law. The first and third objections to the bill are untenable. The complainant seeks an injunction to restrain an alleged infringement of letters patent, and, as an incident of such relief, he also prays for a discovery 2ud an account of the profits realized by the defendant by the use of the
278
FEDERAL REPORTER.
invention. This is a matter that falls within the equitable jurisdiction· of the court. It is now settled that a patentee may sue either at law orin equity, according as the relief demanded is ofa legal or equitable nature.' If damages for an alleged infringement .are sought, an action at law is the appropriate action; and if the patent has expired at the lime suit is brought, so that an injunction cannot be awarded, it is ordinarily the exclusive remedy. But if the patent has not expired, and the patentee wishes to restrain acts of infringement, he may sue in equity for an injunction, and, as an incident to that form of relief, the couri has power to decree 8I). accounting as to profits realized by the defendant. A patentee is not compelled to sue at law and establish the validity of his patent in that forum as a condition precedent to obtaining equitable relief, although the chancellor may in his discretion require a suit at law to be brought and tried, before awarding an injunction, if he doubts the validity of the patent. But, as a matter of practice, courts of equity rarely, if ever, require a suit at law tobe brought to establish the valid. ity of a patent, preferring usually to hear and determine for themselves all questions that may arise affecting the validity of the same. These questions have all been so well settled that a reference to the authorities is all that is deemed necessary on these points of the demurrer. Root v. Ra.ilway Co., 105 U.S. 189; Cochrane v. Deimer, 94 ·U. S. 780; Goodyear v. Day, 2 Wall. Jr. 296; Sickles v. Gloucester Co., 3 Wall. Jr. 186. The seco:bd objection to the bill, in my opinion, is well founded; that is to say, the bill of complaint does not show with any certainty in what the alleged consists. It merely avers that plaintiff is the inventor of a new and useful device described in the specifications of letters patent of theVnited States No. 357,162, and therein named an "Improvementin Cable Railways;" that said letters were duly granted to complainant On February 1, 1887, and were signed and couutersigned, respectively, by the secretary of the interior and commissioner of patents. After reading thebiU, the court has no information respecting the invention further thliln is contained iJ;l the statement that it is called an "Improvement in Cable Railways," and that letters patent have beeil issued for the same. Neither the patent nor the specifications annexed thereto have been made exhibits to the bill, according to the usual practice in such cases. The result is that an expert machinist might make a careful examination of all the machinery and mechanical contrivances employed by the. defendant, and, aft.er such examination, he would be unable todetertnine or even guess, from the description of the complainant.'s invention contained in this bill, whether any such invention as is described is in use by the defendant. The complaint does not even show to what parlof the machinery usually employed by a cable railroad theinvention here in question appertains. Without further comment it. will suffice to say that t.he biB is clearly defective :in the respect herein indicated, and the demurrer will be sustained fodhat reason.
GRAFF V. BOESCH. GRAFF et al, v. BOESCH et cU. (Olrcuit Court,
279
No D. California. October 8, 1887.).:
1.
PATENTS FOR INVENTIONS-PATENTABILITy-INFRINGEMENT.
On the facts disclosed by the proofs, held; that the first claim onetters pat· ent No. 289,571, granted to Carl Schwintzer and William Graff for a lampbutner, shows a patentable invention, and is infringed by the lamp-burners . , sold by respondents. IN A FOREIGN COUNTRY. , .
:2. SAME-RIGHTS OF PURCHASER IN THE UNITED STATES FROM MANUFACTURER
Where an invention was patented in Germany, and subsequently plJ.tented in the United Stl\tes, and. under the German patent·laws a manllfacturer in Germany had a right to practice the invention in Germany, because he had made preparation to do so prior to the issue of the German patent. and for that reason the German patent was of no effect as against him. a purchaser in the United States, purchasing from such manufacturer in Germany, has no - right to sell the articles in the course of trade in the United States without licens6from the owner of the United States patent. {8yllab'U8 oy the Court.)
In Equity. Bill for infringement of patent·. Langlwrne Miller, for complainantei. Scri'lYYl.e1' Boone,for respondents. SAWYER, J., (oraUy.) I have carefully examined this case. lam not satisfied that the first c1aimdoes not cover a patentable invention. It is a combination. The Gerniancourt, which had it under consideraUon, ,evidently held it to be a patentable invention.. It was also Of the opinion that the defendants'instrument is an infringement, and sO'am I. At all events, I am not satisfied that it is not a patentable invention. 'The patent itself is prima fa&ie evidence on this, point which is not satisfactorilyoverthrown. It is claimed, horever, because a man by the name of Heoht has a right to manufacture this invention .in Germany, that these articles which the defendant brought here, having been pur.ehased in Germany of him who had a right to manufacture them, the purchaser can lawfully import and sell them here. I do, not think that be done. I do'not think the case is at all within the range of ,any ·of the cases cited. In fact the first case cited by the defendant is directly the other way. The case that has gone further than any of them is Adams v. Burke; 17 Wall. 453, decided by the supreme court, where the patentee holding an American patent has himself sold his right to a partieular district; free from any restrictions whatever. It was held that a purchaser from an assignee within the district, to which the right was -sold, of an article manufactured in the district, was authorized to use the article in any district. But the decision was carefully limited. to the use. Nothing was said as to the right to sell the article outside the district. The case of McKay v. Wooster,2 Sawy. 373, cited from the decisions -of this court, does not go so far as seems to be generally supposed, because :that is limited, 80 far as the facts and the decision go, to the case where