52 F. 150 -

150

not

FJl:DERAL REPOR:J:ll:R,

voL 52.

a profit:' .... . Thecl()l:\ipg of , th,E! hE!ad of the spiral springs1?Y passing the top wire around the second before extending it to form a hook cannot be regarded" undel, the specifications, asa material feature of the invention. That is a mode of construction. .The patentee would be entitleQ; IW, (and no doubt would claim ifthere was occasion to do so) use. or a spring with an open head was an infringement of his patent. well the use of a spring with a closed head. Bed bottoms all of material elements of the invention having been in public¥Be and 0;0 sale for more than two,years prior to the application, the patent is void, and the bill must be dismissed.

than two years prior to 0ctober 14, 1882, an experiment, but for the purpQse of realizing

LoRING V. BOOTH

et ale

CC1.rcndt Ccru.rt, N. D. New York. October 11, 18112.}
No.6,OOL

1. PATENTS J'OB INVENTIONS-ASSIGNMENT-INJI'RINGEMENT BY PATJlNTB'I.

A patentee assigned all his interest in a patent, agreeing not to manufacture or sell the patented or make any improvement thj!reon wbich would adapt it to any other ldnd of work. Subsequently the assignee sued him for infringement in making an improvement on the machine. Held, on motion for preliminary injunction, that in the light of the above contract, althoughtbe suit was not based thereon, the patentee was not in so favorable a position before a court of equity as one who infringes ignorantly or inadvertently, and that the patent should be conas aga1nllt him.
,

2. SA.ME-1:NFBIN611KENT-NOTIOE TO DESIST-LAOHES.

The defendants were Jl,oWled to desist from infringement about eight months after knowledge thereof came to the plaintiff, and lIuit was begun within four months thereafter. Beld, that under the circumstances tbe delay did not constitute laches. .

In Equity. Bill by Charles M. Loring against Quentin W. Booth and E. Booth for infringement of patent. On motion for preliminary injunction. Order for injunction unless defendants give bond. George B. Seldtm, for complainant. Boward L. Osgood, for defendants.

COXE, DistriCt Judge. The bilt isin the usual form, alleging infringement of two letters patent, numbered respectively 318,731 and 344,435, for improvements in sho&-upper machines. The validity of both patents is undispUted. 'l'he aefElDdants oppose the motion upon two principal groundsl-noninfdngement and laches. The question of infringement -of ·thethir.Jc1aim of the patent granted to Chades B. Hatfield, No.318,781, was decided at the argument. The device which the complainant prOduces Rsa sampleot the defendants' mallufacture certainly infringes when the irons are stationary, but it is thought this condi-

, LORING V. BOOTH.

151

,tion was produced rather by accident than design. The device which the defendants produce as a sample of their present manufacture does not infringe; and, when operated as defendants insist it always should be operated, cannot be made to infringe. The defendants should not be permitted to' sell devices like the former or prevented frpm selling devices like the latter. The other patent, No. 344,435, was granted to Quentin W. Booth, one of the defendants, on the 29th of June, 1886. The patent was duly ,assigned to the complainant. It is intended to cover improvements l;lpon the machine described in No. 318,731, the other patent in suit. The only claim in issue is as follows: "In a machine for beading shoe uppers. the combination of the arm. thesta· tionary jaw ,secured to the end of the arID. the movable jaw, the rod connected with the movable jaw. and the eccentric for giving motion to the rod, as set forth. ,. ' The machine made by the defendants has all these elements in combination substantially like the combination of the claim, but it is said that an examination of the prior art renders a narrow construction necessary, and, if so construed, the defendants do not infringe the claim. At the time the patents were assigned the defendants also transferred by a written. agreement.. All of their right, title and interest in the automatic shoe bl'ader, i. e., patent. beader lQd.se. on and bead"'r special tools belonginJ,f thereto, as shown in inventory and ledger of the company. The parties of the first part further agree not to manufacture. sell or bandle or cause to be manufactured. sold or bandIed any of said shoe beaders or make any improvement on the same tbat would adapt it to any other kind of work than that for which it is now intended.· without the consent of the party of the second part." It is true that this action is not based on the contract, but the languagequoted, if it has no other signification, certainly throws some light upon the interpretation and scope of the claim as understood by the defendants at the time they sold the patents, the machines and the. for them, to the complainant's predecessors. They appear to have thought at that time that the purchasers of the patents were invested with a broad monopoly of the business in question. If their present contention is correct the complainant obtained nothing of real . value. Parties situated as the defendantsure do not occupy as favorable a position in a court of equity as those who infringe ignorantly or inadvertently. ,As against the defendants the patents must be liberally construoo. Further discussion of this question should be reserved until the final hearing, when it can be determined more satisfactorily than upon the comparatively.crude presentation of a motion of this characI am inclined to think the ter. At present it is sufficient to say claim in question has been infringed. The bill was filed July 15, 1892. Several affidavits tending to . show.that the existence of the defendants' machine was known to Charles .B. Hatfield during the summer, .of 1891 have been read. Assuming these statements to be true, Rlld assuming also that the knowledge

152

FEDERAL REPORTER,

vol.. 52.

6fSlltfieid, who assigned his patent in May, 188.5, can be imputed to ,t}le complaillunt, still the proOf is insufficient. The time which elapsed b,efore the defendants were notified to desist from infringing was only 'apout and the suit was commenced within four months th'erellfter. In the circumstances of this cause the delay was too short to 'constitute laches. Collignon v. Hayes, 8 Fed. Rep. 912, 916; Kilbourn v;'Sunaerland, 130 U. S. 505, 518, 9 Sup. Ct. Rep. 594. The testimony seeking to fasten knowledge upon the complainant himself as as the autumn of 1889 is too vague and uncertain to prevail against his positive denial. Fo'l' the reason!'! stated at the argument the defendants should have an opportuhity to give a bond if they so desire. 'An injunction may issue, unless within 10 days from the date of the .i:!erviM of a copy ofthe order elitetedupon this decision, the defendants a bond in the sum of 86,000, conditioned, substantially, as in Swift v. Jenks, 19 Fed. Rep. 641. If a bond is given the complainant ban at any time move to increase the amount upon sufficient proof that 'ill·isinadequate. '

UNION

INs.

CO. OF SAN FRANCISCO 11. DEXTER.

(Disfirict yO'Urt, S. D. Nm,o York. July 13,
SmpPJNl!J;+-MASTBh-NEGLIGENOB-'-AppROAOHtNG DANGEROUS. CoAST.

is a dapgerous CORstat allliduncertaincul'"rents a,nd In a atmosphere, it is the master's¢luty to make use at the first opportunity of all his available means provided for correoting by observation the errors of dead reckoning; and for either to ship or cargo, resulting, from his neglect to do so, the master is directly responsible to the persons injured. In this case the'inailter was held. negligent (illor not making such change of course as was necessary UP01;1 .his own estimate of his position; (2) noli th,e using the alidade in order to correct his erroneous estimate of position.

10._

In Admiralty. Libel against the master of the City of Para for damages caused by the stranding of the vessel. Decree for libelant. George A. Black, for libelant. Hoadley, Lauterbach & Johnson, for respondent.
BROWN, District Judge. The above libel was filed by the insurers of a part of t4Ei cargo on board the steamship City of Para, which stranded on a reef about H miles off the southwesterly 'point of Old Providence island. at 10:24 P. M.ofMay 17, 1888, while on a voyage from Aspinwall to New York. Having paid the loss, the libelant sued the respondof the steamship, on the ground that the stranding was ent, caused by the master's neglect to take proper precautions to keep away from that dangerous coast. The question of negligence in navigation was amonK the issues presented to this court upon the trial of the petition of the Pacific Mail StealTIship Company, as owners of the steamer, for a limitation of their liability to cargo owners in respect to this stranding. On that trial the present defendant was a witness fOr the petitioners to