35 F. 141 -

FREESE 11. SWARTCHILD.

141

FREESE 'V.

SwARTCHILD.

SAME '11. GLICKAUF

et al,

(Oireuit Oourt, No D. lllinoia. May 28, 18BS.)

1.

PATENTS FOR WATCHES.

INVENTIONS -INFRINGEMENT -

ROLLER' ABSTRACTOR

FOR

Reissued letters patent No. 9.467. granted November 16, 1880, to Bernard Freese for "a for watches," the fourth claim of which is "a roller-abstractor, having jaws adapted to receive and grasp the roller. and movable sliding spindle to engage with the staff of the balance-wheel, aud a lever for operating the spindle, " are, as to that claim, by defendant's device, although the latter is not adapted to receive and grasp rollers of different sizes, as is complainant's. The fact that a patentee has given to a third party an exclusive license to manufacture anc sell the tools covered by his patent, throughout the United States, the licensee to pay him a royalty on every tool manufactured, does not prevent the patentee from suing for an infringement by others.

B.

SAME-ACTIONS FOR INFRINGEMENT-INTEREST TO MAINTAIN.

In Equity. Bills for infringement of patent, brought by Bernard Freese against Samuel Swartchild and against Glickauf et al, Charle8 T. Brown, for complainant. KraU8, Meyer &- Stein, for defendants.
BLODGETT, J. In these cases, which, by agreement of the parties, were tried upon the same proofs, complainant seeks an injunction and decree for an accounting by reason of the alleged infringement of reissued letters patent No. 9,467 granted November 16, 1880, to complainant f.... .r "a roller-abstractor for watches," the original patent having been granted April 10. 1877, and the application for reissue having been filed December 5, 1879. The patentee states the object of his invention is to provide an instrument by the use of which the roller can be easily removed from the balance-wheel of a watch, and which can be easily operated with one hand, and in the use of which injury to the parts will not be likely to occur, and states his device to consist "in two rigid jaws, pivoted to a handle, and combined with a sliding-collar and cross-bar for opening and closing the jaws; in pivoted jaws having extensions and combined with a sliding- bar, handle, and spindle; in pivoted jaws having extensions, and combined with a sliding-bar, sliding-spindle, and handle and lever, and in the movable sliding spindle to engage with the staff of the balance-wheel, said spindle being operated by means of a lever." The patent contains four claims, and infringement is only charged as to the fourth, which is: "(4) Ina roller-abstractor having jaws adapted to receive and grasp the roHer, and movable sliding-spindle to engage with the staff of the balancewheel, and a lever for opel-ating the spindle, substantially as specified." The first. second, and third claims of this patent cover the adjustable pivoted jaws, which are described in the specifications and drawings, and which make the tool applicable to rollers of different sizes, the jaws

REPORTER.,

being adjustable by means of rear extensions, and a clamp to hold them fixed at equal distances apat:t, lIS the operator lUa.y req\1irej but the claim in controversy only includes a roller-abstractor, having jaws adapted to receive and grasp the roller, and amovable sliding-sf indle to engage with the staff of the balance-wheel, and does not require the presence of the adjustable jaws covered by the first three 'claims. The defense interposed is non-infringement, and no proof is offered or issue made as to the patentability of the device shown in the claim in controversy, nor is there any direct testimony in the record showing that the defendants' is an infringement of the complainant's device. Complainant, however, has put into the rep-ord his patent, and his tool, or implement made under the patent, and also a sample of the tool suld by the defendants. The tool sold by the defendants contains rigid which are not pivoted so as to adapt them to use on rollers of different sizes, and it is ob.. vious that in the use of defendants' tool the workmen would require two or three different sizes in order to work readily with these implements of defendants'; but it is evident that the rigid jaws of the defendants' tool are adapted, in the language of the claim, "to receive and grasp the roller.» .It is true, they are not adapted to receive and grasp rollers of different sizes, but they are adapted to receive and grasp a roller of the size permitted by the rigid jaws; and it also shows the same movable sliding-spindle to engage with the staff of the balance-wheel, which is shown and described in complainant's patent. I am therefore of opinion that the charge of infringement is clearly made out by a mere i,nspection on the part of the court of the two implements put in evidence. The de.fendants' implement is clearly within the terms of the fourth claim. It has jaws adapted to receive and grasp a roller and a movable slidingspindle to engage with the staff of the balance-wheel, and a lever for oJ>"' erating the spindle. In the Case of Swartchild it is objected that the proof does not show infringement of the patent by the defendants, but I think the proof clearly establishes that this defendant admitted that he had sold three of these Saunderson implements, or the implement with the rigid jaws, and had them on hand in his stock for sale; and it is clear from the proof that the defendants in the other case have sold a 'much larger number. The proof also shows that .the complainant has given to one Kearney an exclusive :license to manufacture and sell the tools covered by his' patent throughout the entire United States, for which Kearney is to pay the complainant a royalty of 80 much on every implement; and it is objected on the part of the defendants that the com:plainant cannot maintain his suit because he has no interest in the patent. The proof does not shoW' that the complainant has assigned the title to his patent either to the whole of the United,States or to any part pUt, but only that ,Kearney ha&8 license to manufacture and sell; and is to pay the-complainant a royalty. Complainant,therefore, is directly interested in . protecting his licensee; 'beenuse, unless' he does so, he will get no royalty, or only a very small amount compared with what he would receive if heshouldmaintaiil his patentaud be entitled to a monopolyof. the implements coV'ered, by it, so :that thecornplainant has a

DICKERSON V. DE LA VERGNE REFRIGERA1'ING MACHINE CO.

143

directinterestin maintaining his patent, both because he is under obligations to doso, either moral or legal, or both, and also because his own ,!ncome from the royalties w0uld be abridged, as the proof shows it has been, largely by the infringement. A decree may therefore be entered finding that the defendant infringes the fourth claim, and for an accounting.

'])YCJtEll80N

et al.

f1. DE LA VERGNE REFRIGERATING MACHINE

Co.

ef,' al.

«()ircuit (Jourt, 8. D. N6'lJJYork. March 5, 1888.)

1.

PATENTS FOR INvENTIONS-:-INFRINGEMENT-1NJUNCTION'-WHEN GRANTED.

, ,

In an application for a preliminary injunction to restrain the manufacture of machines alleged to infringe letters patent, when the defendants admit the validity of the patent, if, construed, as they insist, but insist that they do not infri'nge; and say that if the patent be construed as plaintiffs insist, theya4· mit that machines infringe, but deny the validity of the patent. for want of novelty,-the complainant is not entitled to an injunction until he shows a f0t:mer adjudication in favor of his letters patent, or an equivalent.
,

t.

,8Alo1E-FoRMER ADJUDICATION-lNTERFERENCEPROCEEDINGS.

The letters patent und'er which the complainants seek to enjoin defendants wereissued July 22, 1884, to one Buckert, fot refrigerating machines. After , the p-ant of this patent, one Block filed an application for improvement,s in , refrigerating machines. and in an interference which was declared and tasted in the patent-office, the defendants in this proceeding were the real parties, paying all the expenses of the interference. In that proceeding Block llled a,motion to dissolvElthe interference, attacking Suckert',s patents on , several grounds, but the motion was dismissed because of (1) laches in filing it; and (2) the insufficiency of the grounds; and the contest was decidildin favor of Suekert. Held, that the only question raised by the interference was as to which was the prior invelltor. and this decision was not equivalent to an ,adjuj:li'cation: in favor of the patent, and would not justify a preliminary in· jUJ;lction in'an action whete' the patent was assailed for want of novelty.

In Equity. On bill for preliminary injunction. This is an application niadeby Edward N. Dickerson, Jr., trustee, and others, to restrain the De la Vergne Refrigerating Machine Company ,from manUfacturing refrigerating machines alleged to be an infringement ofletters patent No. 302,294, granted July 22, 1884, to Julius J. Suckert, under whom the complainants claim. Dickeraoo Ct Dickerson, for complainants. Banning & Eanning, (George Harding, Edmund Wetmore, and William A. ,JP/nner, (jf counsel,) for defendant De la Vergne Refrigerating Machine Company. ' A. P. Fitch, for defendant Ehret.
LACOMBE, J. This is an application for a preliminary injunction to restrain the manufacture and sale of refrigerating machines,which it is .contended infringe several of the claims under ,letters patent No. 302,. 294, granted July 22, 1884, to Julius J. Suckert, and which have passed by mesne conveyances to the plaintiffs. The defendants qualifiedly dis'putethevalidity of the patent, and qualifiedly deny infringement. In