SINGER MANUF1G 00."'. SPRINGFIELD FOUNDRY 00.
80S
Spring-Bed CO., 27 Fed. Rep. 299, 31 Fed. Rep. 344,) and has been sustained to the extent of covering such process, "when the springs are kept below red heat." It may be that the patent is sufficiently broad to cover any degree of heat whatever; but that has not as yet been held by the courts which have had it under consideration, and therefore, upon application for preliminary injunction, the patent will be presumed valid only to the extent expressly covered by the decisions referred to. Upon the caSe as it now stands the weight of evidence indicates that the defendants, in the process used by them, heat the springs above this limit. It may be that the defendant's affidavits are disingenuous, and that when the later details of their process, now so briefly described, shall be set forth, it will appear that they do infringe the patent even when given the limited ,construction which would confine it to a heating not above red heat. , This motion, however, can only be decided upon the papers beforetbe, court, and giving due weight to the sworn statements presented py both sides. The, motion, therefore, is denied, with leave to renew should the complainant hereafter be able to produce such further evidence as to the defendant's prqcess pf manufacture as will indicate that the claim'of the patelltis in,fringed by
MANUF'G
Co.
SPRINGFIELD FOUNDRY
Co. et al. PAR..... .
. (Oircuit (fourt, D. Ma88ac1tu8etts. April 2, 1. PATEN'l'SFOB INVENTIONs-:.INFRINGEMENT-PATENTFOR SEPARATE REPAIRS.,
Where different parts of a machine are covered by separate patents, a pilrchaser of such machine from the patentee, who replaces one of the parts or elements covered by an individual patent, when ,worn out, is guilty of an iDfringeDJ.ent. . . It is within, ,the discretiQD of the .court to ,decide whether or nota bill in equity is DJ.ultifarious in its nature,' such question d&periding upon the cil'culnstances <if 'each individual case. - . . . . ' . " :,.
2.
EQUITl'......
In Eq)lity. Action for infringement of patent. C. F. Perki,rtJJ, for complainant. J. L. S. Roberts, for defendant Duckworth. COLT, J .. This suit is brought for the infringement of the sixth claim da.ted October 8, 1878, all the claims of of letters pateJ;lt. No. letters patent No. 229,629, dated July 6, 1880, l:!nd the secondcla.im of letters patent No. 274,359, dated March 20,.1883. These several patents were-issued to the complainant for improvements in sewing-tri'l1chines. The bill has been taken pro confesso as against the Springfield controversy is between the complaiD.Foundry allt and the remain:ing defendant, Duckworth. Duckworth is a machin-
394
FEDERAL' REPORTER.
ist, and has'nlade a specialty offepairing sewing-machines. He admits that he makeB certain parts of the Singer I M machine toreplace worn or brok;en parts in machines s,old by'tll'e e0I11plaimmt" and that he has also made and furnished these part!3to one John: Thornton, 'Jr., of New York, a supplies; and engaged itlthe'business of redealer in pairing sewing-machines. ,parts introduced in evidence are the forked connecting feed':bar, feed-lifting rock-shaft, feed rockHe contends that the making '<,!f these parts does not an infringementbecause-F'irst, they are each but one ormariy '<lther parts constituting an organized second, that the parts so made by the defendant have been made for the purpose of replaCing parts which have been broken or worn 'out ih organized sewing':rilllchiiles sold by the third, that neither he nor any other p'erson hlisassembled the parts so madein one machine, but that eachj>att has been made to replace so' dotresponding part in Some organized machine made and sold by'theplaintiff. He admits, 'nowever, that the' fit no other machine,without considerable, alteration, that! the Singer I M. The position taken by the defendatW'is that he hasal'ightto'tnake and sell these provided the article is not made or sold with the intent to :put it to an unlawful use; that the use here is lawful because the purchaser of a patented machine has a right to repairit,_andtoreplace parts as often as may be necessary, provided he docs not destroy the identity of the machine. The CR\les relied upon defendant are WilsQn v. $impson,9 How. 109; Ofwf!ee'v; Belting 00.,22 How. 217; Gotfjried v. BreWing 00., 8 Fed. Rep. 322." ";,,' " , " ' ; ' , ' \ , ' In Wilson Simpson it was held that an assignee having a right to .us.e Woodworth1s';planing-machine had a right :to.replace ·ne,wcuttera or kniyes forthose which were worn O\lt. says: ' , ,"The,right oUheassignee to replace the not because they are of perishable materials, tiut because the inventor of the machine bas so arranged them as a part of its combination that the machine could' not be COJ)tinued in use without a successidnQfknive", at'lilhort intervals. UnleSs ·. been of' but little. use to tl16 inv6ntotor to The otfier l:!onstitUent parts0f'this invention, though liable to be worn out, are not made with reference to any use of them which will require them to be replaced. ,These, without having a definite duration, are contemplated by the inventor to last so: long Rathe materiaISof "hich they are formed can hold together in use in such acomoination. No replacement of them at iukrmediateinter,vals is meant. or is necessary. ,'They may be repaired as the use may require. With such intentiool:! they are put ioto beyond the duration the structure., ,. So it is understooQ. by, .the 'of a p,urcl,laser the ;has .riot a 10llgel' for them. B,ut,if .another constituent ,part of tl16 is be only temporary 'in the use of the'who}e; and to be frequently replaced, because it will not last -as .long 0.8 theotner parts of the C()mbination, its iuventor cannot complain, if he sells the tUse, of his machine-that the purchaser uses it in the way the inventonueantit to be u!led, 'anlli,utbe ouly way in which the machine can be used. Sucp areplacernent of temporary parts does not alter the identity of tp(l1'e may not be in it every part. of its the . . original mate:rial." .
BINGER MANUF'.G CO. D. :SPRINGFIELD FOUNDRY CO.
395
In Chaffee v. Belting QQ. ,r221Io'W; 217, the says: "Whenthe patented rightfully passes to the hands of the purchaser from the patentee, or froma!lY person by him, authorized to convey it. the' machine Is no lunger within the .limits of the monopoly. According. to the decision of this courtin;the cases before mentioned, it then passes outsIde of the monopoly, and is no longer under the peculiaI' protection granted to patented'rights. Bya valid sale and purchase the patented machine becomes the private, individual property of the purchaser, and is no longer protected by. the laws of the United States. but by the laws of the state in which it is situated. Hence it is obvious that if a person legally acquireS a title to that whibhis the subject of letters patent. he may continlle to use it until it is worn out, or he may repair it or improve upon it, as he pleases, in the same manner as,if dealing with property of any other kind." In Gottfried v. Brewing Co., 8 Fed. Rep. 322, the patent was for an improvement in pitching the inside of barrels, and Judge BWDGETT thus states the rule: ' "From the functions of the different parts of machine ifis obvious that some'of them will wear out much faster than others, and I think there can be no doubt that the defendant has the right to replace those partsas often as so long as the identity of the machine is retained. The proof in this case shows to my satisfactif)n that as the grates, pipes, and blowers were worn were renewed, and therefore, the identity,of the machine is retained. If, for instance. this patent had been npona. peculia,rgrate, and there had been no patent upon the other parts of the machine when the grate was worl'lout, the defendant w!>uld have no right to 'put in another like it, because tbe grate was covered by tbe patent; but if the grate is only a part of an entiJ;ecomLJination. I think it has a right to replace the worn-out parts, and it cannot be said to be ,a machine." In Aiken v.' Print· Works. 2 Cliff. 435. the purchaser a knittingmachine with which the vendor Sent a package of needles to be used with the machine. The needles were subject to a separate patent. The court (Mr. Justice CLIFFORD) observes: "H.ight to repair is limited by the same rules that operate in the repair of other property. The owner may rt'pair, but he cannot appropriate the materials belonging to another man in t'ffecting the pllrp08e. Purchasers in this ease may repair the needles they purchased, but they canllot manufacture new ones without license. Ueference is made to the case of Wilson v. Simpson, 9 How. 12a. but a careful examination of the case will show that it atfirms the very rule here maintained. · Wh<'n we speakof the right to restore a part of a deficient combination, we mean,' say the court. ·the part of one entirely original, and not of any otherpatentt'd thing, which has been intl'oducedlnto itto aid it,S intended performance.' . The cutters, andlrnives in th'at case were not subjectto a patent, and of course respondent had a right to use them to repair his machine; but unfortunately fur the defendants in this case, the needle is sllbject to a patent, and in making and using it ,they ha¥e infdngf'd Lhe right of the plaintiff." As illustrated by these cases the rule seems to be that where a patent covers as an entirety a machine. composed of several. separate and distinct parts,. the purchaser of such machine from the patentee will not infringe by )such temporarypa,rts as wear out, so long as the identity of the ,machine is retained; but if the patent is for a distinct partorelement ofth.e maqbine, a purchaser ,will infringe by replacingstlch part or
39B
FEDEttAL nEPORTER.
element. Tested by this rule, t 'think the defendants are guilty of infringement in the present case. The' sewing-machine of complainant is not patented as an entirety, but different parts of the machine are covered by different patents. Claims 1 and 2 of patent No. cover an improved shuttle-driver, and the defendant makes. and sells the same in a Sin/l;er machine. The second claim ofletters patdevice to btl ent No. 274,359 is for a shuttle-race for an oscillating shuttle, provided with an elastic side or flange. The shuttle-race cannot be used in the Singer I M machine without the elastic flange. The defendant makes the shuttle-race for use in such machine. He therefore makes the rnajorpartof the patented combination, intending that it should be provided with an elastic flange. and useo. in complainant's machine.' Claims 3 and 4 of patent No. 229,629, and claim 6 of patent 208,838, are combination Claims. 1'he nlain elements found in these patented combinations are made and sold by defen,dant for use in the Singer machine. Under the authority of Wilson \T. Simpson and other cases this cannot be dorie. . The defense of multifariousness is also relied upon. Tpe defendant Duokworthhas answered, proofs have been taken, and a hearing had upon the merits of the bill. I do not see in what respect the defendant suffers any injury by having these causes of action heard together. All upon relate to one machine, and the defendant is not prejudiced joinder. Whether a bill is multifarious or not must depend upono its own circumstances, and must necessarily be left to the discretion of the oourt. Oliver v. Pratt, 3 How. 333, 412. Upon the whole I think a decree should be entered for the complainantj and it is so ordered. Decree for complainant. .
, THE VIDETTE.
WILSON
et ale
'I).
THE VIDETTE
(DiBtrict Oourt, S. D. Alabama. March 20, 1888.) SHiPPING-STOPPAGE IN TRANSIT-LIABILITY OF VESSE.L TO CONSIGNEE.
.
Where the vendor of goods aboard a vessel has exercIsed his right of stoppage in tramitu while the vessel was out, the vessel is not liable in damages .for refusing to deliver the goods to the vendee upon demand and production of. the bill of lading at the port of destination; and this is especially the case where the vendee, prior to filing the libel, has seized the goods under a writ of statutory detinue issued by the state court.
In Admiralty. On exceptions to libel. Wilson & Lozano, a firm engaged in the retail dry goods business in Mobile, Ala., purchased on credit from Tefft, Weller & Co., of New York, a number of packages of merchandise, and these were shipped by Vidette, of the New York & Mobile Steam-Ship :::ine, in
