852
FEDERAL REPORTER.
which braces. midway- of their length, arehfnged an,other series of bralies extending thence obliquely upward at a dilferent angle to a higher and stationary collar.!
In Equity. On motion for an attachment. The suit is by Charles A. Morss against William H. and Charles L. Knapp, to restrain the infringement of a patent. Charles F. Perkins and Paysan E.Tucker, for complainant. John K. Beach and John Dane, Jr., for defendants· . SHIPMAN, J. This is amotion for attachment oC the defendants for contempt of this court, by reason of the alleged violation of its final degranted at the April term, 1888, whereby they were enjoined against the infringement of the second claim of letters patent No. 233,240, to John Hall, dated October 12, 1880, for an adjustable dress-form. In the suit of the present plaintiff against Ufford et al.,upon this patent, before the circuit court for the district of Massachusetts, Judge COLT sustained' the validity of said claim, and granted an injunction against its infringement. 34 Fed. Rep. 37. The defendants in this case were the real defendants in the Massachusetts case. The Uffords were their agents and were nominal parties. When this case for the same infringement was reached in this court,2 (the counsel being the same as in the Massachusetts case,) no argument was made, as it was known that I regarded the questions as already adjudicated between the parties by the final decree in the First circuit. The question of infringement in both caSeS turned upon the equivalence of the defendants' devices with the sliding blocks a.nd the rests of the Hall patent. Thereupon the defendants modifiedtheir form with respect to the braces, which werenot in dispute 'in the original case, and placed the new form upon the market. The plaina bill in equity. in the First circuit against the Domestiff then tic Sewing-Machine Company, which had hecomethe defendants' selling agents for this new alleged infringement of the same claim of the patent,' and upon motion for a preliminary injunction, and after hearing, Judge COLT, on August 4, 1888, granted the motion. s The sewing-machine company was notified of the injunction order on August 25th. In that case, also, the Knapps r.eal defendants, and had knowledge ot
'Same p\tent in"olved in Morss v Mll.Dchester. 32 Fed. Rep. 289'Not reported. See 85 Fed. Rep. 218.
In Equity. On motion for a preliminary injunction. Suit by Charles A. Morss against the Domestio Sewing-Machine Company, to restrain the infringement of letters patent No. 238,240, issued to John Ball, October 12, 1880, for improvements in dress-forms. O. F. Per1Wns and P. E. Tucker, for oomplainant. John Dane, for defendant. COLT, J. This is a motion for a preliminary injunction.' In Morss v. Utrord, 84 Fed. Rep. 87, this court, upon final hearing, sustained the validity of the secona claim of the Hall patent of October12, 1880, for improvements In dreSS-forms, and held that defendants infringed. It does not appear to be denied that the real party in interest as defendant in, that suit was the present defendant, who is the 1lO1e or principal, agent for
(Oircuit Oourt, D. Massachusetts.
'MORSS "'. DOMESTIC SilWING-MAoHINB
Co.
AUgUst 4, 1888.)
MORSS ". KNAPP.
353
said injunction. They continued to manufacture in this to sell the new dress-form; and for the alleged violation of the decree of this court this motion for attachment is made. , As the order in the First circuit for a preliminary injunction,not peing a final decree, does. not work a technical estoppel against the defendants, it becomes necessary to re-examine a,nd to decide the same question which was before Judge COLT. It may be said, however, that when the circuit court for the district of Massachusetts had enjoined against the use of the modified form, in a suit wherein the manufacturers were the real and active defendants, and had an intimate knowledge of the proceedings, the subsequent manufacture by them, in Connecticut, of lhe same form, if it was an infringement, was not an ignorant or a thoughtless or a hasty one. The invention is an improved drel:ls-forni, "by means of which every part of the device is rendered adjustable, so that it may be applied to a dress of any size or style, and fill it out principle of the invention is the expansion or adjustment of a skeleton frame radially, in all directions, from a common center. A central pole, or standard, supports the entire form. In the part which supports the skirt, upright, thin, elastic ribs are held towards the standard byell;tstic bands secured to each rib. There are two series of oppositely inclined braces, one above the other. Those of the uppper series are hung by t4eir inner ends to a collar on the standard, and, extending obliquely hinged to the respective ribs. The braces of the lower downward, series are hinged by their inner ends to a lower collar on the standard, and, extending' obliquely upward, are hinged to the ribs at the point where the members of the upper series are hinged. The two collars, called "sliding blocks," are adjustable. When the form requires expansion, the lower collar is elevated, which expands the lower series, but the expansion is governed by the opposing action of the upper series, which compels the movement of the ribs to be substantially parallel with the central standard. The second claim is as follows: .. In combination With the standard, a, and ribs, c, the double braces, e2 , sliding blocks. fl, f2, and rests, hI, h 2, substantially as and for the purpose set forth." In the modified· form of the defendants, there is a series of braces which are hung by their inner ends to a screw-collar on the central standard, and, extending from the collar obliquely outward, are hinged to the ribs. Above the screw-collar is a second stationary collar, to which wire links or braces are hung, which, extending obliquely downward, but at a different angle from the members of the other series, are hinged to the braces of the other series midway of their length. The double braces of theHall patent are, in fact, oppositely inclined to ,each other; and, by reason of this opposing action, the expansion is not like that of a Japanese urnthe Union Form Company of New Haven, Conn., who man)1factures the infringing dress-forms. I see no reason, upon the papers before me to ohange the oonclusions reaohed in the tlrst case; and under the ciroumstances I think the plaintiff is Clearly entitled to a preliminary injunction. If the opinion in M0'I'88 v. UffO'l'd is wrong, the defendant has the right to have it reviewed by the supreme court on appeal. Injunction granted.
V.37F.no. 7-23
FEDERAL REPORTER. hreHa, hut the ribs icontinue' substailtially par!tllel with the standard" and theex'pansion radiates in all directions. The sole question in regard' to modified form is whether its double braces have tbeopposite inclination to each other of the Hall 'braces. There is nothing in the claim orin the specifidation of the Hall'patent which demands that the two sets of braces should continuously hang in absolutely d,ifferent directions. If there was, the defendants' new form would not infringe,' pecauseits two sets of braces hang downwardly. It is necessary that the braces should oppose and control each other by opposing action, so Mto com· pel radial expansion or contraction in all directions from the central' standard; The two sets ofthe defendants' braces hang downward in the same general direction,but,at different angles, and the difference in the is 80 great that the upper setalways operates against and counteracts the movement of the lower set. The outer ends of each set cannot m6ve "tovJa:rds or away from the standardwithotitchanging the distance between the inner endS," and il:s this distance changes, radial expansion in ,all directions changes. The, 'different sets of braces in the two forms perforrif'tpe same function by the. same mechanical means. ,'.. I defendants have beeriguiltyof by continuing a nianufacture and sale which they haq adequate reason to. know was in violation of the decree of this court, IU1d should pay a fine of $50 and the costs of this application and 'of the affidavits, withiti '30 days from ihe date of the order; and, if'notpaid on or before the expiration of said time, ,thedefenaants stand committed until the same be paid; and that. when paid. the sum be paid over to the plaintiff in reimbursement.
REIN 'et
at. 'i1. CLAYTON
et ale isSUE
(Oircuit Oourt, E. D. Michigan. January 12,1889.) PATENTS FOR ENT. ,
oi' PAT-,
. A court of equity ball JIG. jurisdiction to enjoin tbe infringement ()f an tn· been issued. an application for vention before, a the same bas been made, and is still pending in the patent-office. (Syllabus b1l the OOU:t.) , , ' ,
InEquity. ,On motion for. lin injunction. .' This was Ii. bill to, enj?in the: lise of all invention belorigingto plaintiffs, .lor which they had :not 'yetobtaitied a patent. The bill averred the. plaintiffs. to be the jointr inventors and o,"*ners of an invention of an improvemerit>in plu'mbEirs' and jewelers' furnaces, for which they had made llPpljctttion a. patent pn September 11, 1888." A copy, of the application, withthe,specifications, drawings, and claims, was an-' nexed to the bill., l'he ,bil):,,'Which was filed October 11,1888, further averred that the ,plaintiffs hadheen diligently prosecuting their application, which was still pending; that they were the original and, first in':'
V.
CLAYTON.
355
vento,rsof' Si:l>id and "ihat theywereinforme::1 by thefr thaUhesamewas new '. Following thiSwetethe usual Rverments:ofinfringernent. '. ! " Alexander Br(n()n, for. plaintiffs. . George W. 1J4djord, for defendants. ,J. Weare confronted upon the threshold this case witl';. Jl:le important question whether an inventor can ttlaintain'a bill fot ,an injunction before the issue of a patent. The question has been ,directly decided in bula' single case, viz., Butler v. Ball, '28 Fed'; .Rep. 754; and it is upon this case alone that plaintiffs rely for' the :,maintenlitnce of this suit. The learned jndge, who delivered the opinion in this case, does not discuss 'the' question upon principle, but. cites two authorities as settling it itt favor of the jurisdiction. The first case (Evans v. Weiss, 2 Wash. C.' 342) was an action at law ;against a perllpn who had made use ·of plaintiff's invention for some years prior to the passage of a special act granting him a patent for such inventiOl;!., and the question was whether he was liable as an infringer, ;for using the improvement after he had received notice of the granting of plaintiff's patent; and the court held that he was, notwithstanding a pt()o viso in the special act that" no person who shall have used the said improvements, ,or erected the same for use. before the issuing of said ent, shall be liable therefor." In delivering the opinion Mr. Justice WASHINGTON ohserved "that the right to the patent belongs to him who is the first inventor, even before the patent is granted; and therefore any person who,knpwing that another is the first inventor, yet doubting whether thato.ther will ever apply for a patent, proceeds to construct a machine, of wpich it may afterwards appear he is not the first inventor, acts at his peril, and with a full knowledge of the law that, by relatibn back to the.nrst invention, a subsequent patent 'may cut him out ofihe use of the machine thus erected." It is entirely clear that in sayin.g that the right W the, patent belongs to the first inventor,' even before the ent is granted, he refers only to the plaintiff's property in his invention, and his riKht to a patent therefor, and not to his right to enjoin an infringer before the patent is issued. The real question was whether the defendant, who had purchased the patented article before the patent was issued, and was then using it, had the right to eontinue to use it after the patent was granted, and it was held that he had not. The principle of this case was subsequently affirmed by the supreme court in Evans v. Jordan, 9 Cranch, 199. In the other case, also, (Jonea v. Sewall,6 Fish. Pat. Cas. 348.) suit was brought upon letters patent, and in opening his opinion Mr. Justice CLIFFORD made the incidental remark that inventions lawfully secured by letters patent are the property of the inventors, and as much entitled to legal protection as any other species of property. "They are inqeed property, even before they are patented, alldcontinue to be such,' evep. without that· protection, until the inventor abandons the same to the public', .unless he suffers the patented product to be in pub· lie use or on sale, with his consent and allowance, for more than two
of
356
years before he files his application." He is evidently speaking here of the right of an invento; to a patent in case he makes his application within two years after hiR device has been made public; and this right is a species of property which remains unimpaired during the continuance of the two years. But there is no intimation here that the inventor may apply for an injunction before his right is lawfully secured by letters patent; indeed, the intimation is the other way. He is evidently speaking of the same right of property to which Mr. Justice HUNT 0.1lude8 in Manufacturing Co. v. Vulcanite Co., 13 Blatchf. 375, 383: "So far as the plaintiff's own use or manufacture is concerned, it needs no act of congress to enable it to make, use, and vend the article, and it obtains no such right from congress. The benefit of the patent law is that the plaintiff may prevent others from making, using, or vending its invention. To itself, to its own right to make, use, or vend, no right or authority is added by those statutes." We think that neither of these cases is authority for the proposj.tion laid down in the case of Butler v. Ball. Let us now examine the question upon principle. At common law there was no special property in an invention, because the policy of the law was opposed to this as to all other monopolies. Walk. Pat. § 159. Indeed, the inventive geniils of the English-speaking people did not begin to manifest itself to any considerable extent before the middle of the last century, and it is only within the past 60 years that the business of the patent-office has been considered of any great importance. Patents for inventions were at first treated asa royal prerogative, and granted as a matter of favor, and never as a legal right. They were in fact a branch of that extensive system of monopolies which became so odious during the reign of Elizabeth and her successors, the Stuarts. In the reign of James I. a statute known as the" Statute of Monopolies" was passed, declaring all monopolies contrary to law, and void, except as to patents, not exceeding the grant of 14 years, to authors of new inventions, and BOUle others not material to be noticed here. This was the earliest recognition of the right of an inventor too. monopoly of the manufacture, sale, and use of his invention. It still remained, however, a royal prerogative, which was granted or refused at the pleasure of the crown. This statute was followed by others, securing to the inventor a monopoly, as matter of right, and providing the proper machinery for procuring and enforcing it. In this country patents have been recognized as existing only by virtue of positive law. The constitution of the United States conferred upon congress the power "to promote the progress 6f science and useful art by securing for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries." The adoption of the constitution was followed the next year by the first federal statute upon the subject, which became the foundation of the patent law of this country. That the right of an inventor to a monopoly is purely a feature of the statute was recognized by the supreme court in Brmon v. Duchesne, 19 How. 183, 195, in which Mr. Chief Justice TANEY observed:
REIN tI. cI,AYTON.
357
"But the right of property whieh the patentee has in his invention, andbis right to its exclusive use, is derived altogether from these statutory provisions; has no right of pi'operty in and this court have always held that his invention, upon which he can maintain a suit, unless he obtains a patent for it, according to the acts of congress; and that his J;ights are to be regulated and measured by these laws, and cannot go beyond them." Still stronger language is used by him in Gayler v. Wilder, 10 How. 477, 493, in which he says: "The inventor of a new and useful improvement certainly has no exclusive right to it, until he obtains a patent. This right is created by the patent, and no suit can be maintained by the inventor against anyone for using it before the patent is issued. But the discoverer,of a new and useful improvement.is vested by law with an inchoate right to its exclusive use. which he mayperfect and make absolute by proceeding in the manner the law requires. '" '" '" The monopoly did not exist at common law, and the rights, therefore. which may btl exercised under it, cannot be regulated by the rules of the common law. It is created by the act of congress; and no rights can be acquired init unless authorized by statute, and in the manner the statute prescribes." And in .the recent unreported case of Marsh v. Nicho18, [9 Sup. Ct. Rep. 168, 15 Fed. Rep. 914,] appealed from this court, in which the point decided was that a patent not signed by the secreta.ry of the interior is void, it is said: "The invention is the product of the inventor's brain, and, if made known. would be made subject to the use of anyone, if that use were not secured to him. Such security is afforded by the act of congress, when his priority of invention is established by the officers of the patf'nt-office. and the patent is issued.The patent is the evidence of his exclusive right to his use of the invention. It therefore may be said to create a property interest in that invention. Until the patent is issued. there is no property right in it; that is, no such right as the inventor can enforce. Until then there is no power overits use, which is one of the elements of a right of property in anything capable of ownership." A similar observation was made by Judge SHEPLEY in Machine C.o. v. Tool Co.,4 Fish. Pat. Cas. 284, 294. "An inventor," says he, "bas no right to his invention at common law. He has no right of property in it originally. The riciht which he derives is the creature of statute and of grant." See, also, Sargent v. Se{tgrave, 2 Curt. 553, 555. ' The power pf a court to deal with patents is now regulated by the fiftyfifth section of the patent act of 1870, incorporated into Rev. St. § 4921, which declares that "the several courts vested with jurisdiction of cases arising under the patent laws shall have power to grant injunctions, ao-' cording to the course and principles of the courts of equity, to prevent violation of any rights secured by patent, on such terms as the court may deem reasonable." It is impossible to deduce from this language any recognition of a power to grant such injunction before the right has been. "secured by patent." Indeed, if it does not absolutely inhibit that power, it points very strongly in that direction. While no court has decided that it would not grant an injunction after application for but prior to the issue of a patent, it has been frequently held that after a patent has been surrendered no action will lie upon it, and all actions founded upon it
l
358 ,.
for a reissue for the same hll ,pending.Moffitt vl'Garr, 1 Black,:2!l3i Peckv. Oollins;103U. S. 664;:1 This 'particular defect has since been'remedied by the. act of mgthat the shtl'endershaHtake'efftlctupori the 'issue 'of the amended 'patent, :?e91sions is'not affected:. Now, if a. bill will not lie upcin a patent surrendered; though an application for a reissue he pending, itJisimpossible to see npon what ground it can be sustained before any patent whatever has been issued. "There are alsocertain practical diffioulties in the way of assuming jurisdiction of a bill like the one linderconsideration. Courts of justice have 'riqoriginal of the s«bject of inventions. Congress has pro:V,ideq,: a commissioner of pateIlts, has furnished him .with a library 01 such scientific works and periodicals, both foreign and American, as may aid ,him il}. the discharge of his duties, with oopies of models of all patents beretoforegranted, together witb a large corps of i?telligent and experiencedassistalHs, whose dutyit is to ,examine avery.application; to compare it with patents' previously issued', (that two may not be issued for the same invention;) to correct the specifications and claims; togivenotice to the patentee of illterferences; and to determine questions of priority between rival'inventors of the same device. It is a matter of common knowledge that the commissioner is in the habit of limiting, altering, and claims, and that it is impossible to say, after the specifications and claims have been filed, in what shape, and with what limitations, they will emerge from the patent"office. It is absolutely impossible for courts of justice to deal with questions of this description. Weareasked i 11 thi8 case to assume that a patent will be issued covering five different cl{lims, yet we have no assurance \yhatever that, if a patent be issued, anyone of these claims will be allowed in the language in which it is couched. Besides, t.he effect of assuming cognizance of a patent before the patent is granted would be to extend the life of the patent beyond the statutory period of 17 years, by the tirpe. which may be months, and eyen years, during which the application is pending in the patent-office· · The jurisdiction of courts t<;> determine the validity of patents is purely appellate. It is conferred upon the theory that, application for patents being made ex parte, in the pressure of business, patents may be granted by inadvertence or mistake, or rival claimants nlsy not have an opportunity of being heard; and because there'is no other method pro.. vided bylawof determining whether persons using similar devices are are not infringers upon the rights of the patentee. It is obvious that when parties are represeJ;lted by experienced counsel, and witnesses are examined with that care and peliberation which is onlyattainableinjud,icial proceedings, a correct result is much more likely to be reached upon the hurried examination of an eXltminer in the patent-office. considerations, however,do not by any menns justify us in anticip!lting his decision, or in any way with his action before it has been consummated by the issuance or refusal of the patent. .,' A,decree will therefore be entered denying the injunction, and dismissiqg, for want of juris<1iction.
LICHTENSTEIX 'V. GOLDSMITH.
359
LICHTENsTliriietal. 'IJ. (Oircuit (Jourt, D.
January 28,1889;) . ,
1.
TRAPE·MARKS-WHAT WILL BlilPROTECTED.
a
A label consisting- of the head of an elk, with the word "Elk" printed in b .. letters upon t):J.e face of the label, together with the words printed on it, Patented by the Elk CilZar Factory, June 15, 1875, " sufficiently indicates origin and ownershjp, to be a valid trade-mark, when applied to a box, of cigars. Which is also stamped with the district in which tiie cigars are manufactured. 1
The fact. that the owner of the trade-mark also allows the boxes to be lab· eledwith the names of the dealers to whom the cigars are sold, does not amount to a deception or false representation, so as to invalidate the trade.; mark. ' 8. SAME. " , , The fact that such labels are put on different brands of cigars is alsolmmaterisl. it appearing, that these brands are designated by soinethiirg'whichdia· tinguishes one from another, so that no deception is practiced. f "
SAME.
In Equity. Bill for infringement oftrade-mark. GeCYl'ge L. Huntress, for complainants. Edward,H. Pierce" for defendant·. CoLT, J. The complainants are the owners of a consisting of the head of an elk, with the word "Elk" printed in large th,e face of the label, and this mark has been by them fbi' Ii number of years upon boxes of cigars. The defendant, brands certain boxes of cigars made by him with substantially the same device. In view of the close identity of the two devices, the defendant cannot deny infringement, but he places, his defense on other grounds. I will, consider those which are most important. . It is said that the trade-mark is invalid because it doelJ not desigtlate or ownership. This is manifestly unsound. ,The original design contained· the letters "A. L. & Bro. ," stauding for A. Lichtenstein & Brother, and, as now used, it has the words printed on it, "Patented.by; the Elk CiPiar Factory, June 15, 1875." There is also stamped upon' the box the district in New York in w,hich the factory is loca.ted.Since 1875 these cigars of the Elk brands have been made br A. Lichtenstein & Bro., or their successors, A. Lichtenstein, Son &00. i and their factory has been known as the "Elk Cigar Factory." It seems to me that the trade-mark sufficiently indicates origin and ownership. Again,itis.sat9. ,thl1t thecom'plainantsdeceive thepl!tblic, in that they allow thebo.xes to be labeled ,witbthenames of deaJers,tow.hotn the' cigars are sold, !Or for whom they ai'emade. But this isshowntc> bEl'" ClliH tom in trade, and I do notthillk it results,in any'deception.or f.use .repraElentl.ltion;. All these: ·cip;ars 'are· in fact made at' the Elk Factory, and they are so stamped, and when the public buy them, they are
lConcerning whatwUl be· protected as a trade-mark,se8 ManufactUring Co. v. stone Co.,85 Fed. Rep. 896, and note; Brown Chemical Co. v. Stearns, post, 860, and cases oited;,
