600
FEDERAL
The full assignment was made May 22, 1877. The assignment by Smith to Cipperly and the two others was made June 28, 1877, after the patent was issued. The aStlignment of Randel to Cipperly and the two others was to them individually, and not as copartners. Haslehurst acted for himself and the other two for themselves. Downer's testimony as to what passed between him and Haslehurst does not make. out notice, and Downer is contradicted directly as what he said by Haslehurst. Phelps' testimony as to what Randel said to Haslehurst is contradicted by Randel, and it is wholly improbable that Randel, who was trying to. effect a sale to of an invention wllich he had before sold to another, would inform Haslehurst of such prior sale. Haslehurst was informed by Randel, before purchasing, that the patent papers had been drawn by Mr. Lowe, and he applied to Mr. Lowe and was informed by him that he had drawn an assignment of the patent that had been issued, but had drawn no assignment of the pending patent, and that Randel was the owner, so far as he knew. All this tended to show that the· invention had not been assigned. There is nothing show any notice to Cipperly, Cole, or Smart. The title of the Empire Company is sustained by the title of the prior bonafide purchasers for a valuable consideration without notice, although that company was formed after the notice of July 7, 1871, had been served on three of the persons who afterwards became diJ:ectoli of it. The bill is dismissed, with costs.
DETWEILER V. VOEGE
and others, (No.1.) (No.2.) July 26, 1881.)
SAME 'D. SAME,
(Cirouit (Jo'/l'l't, E. D. New York.
I.
PATENTED MACHINE-SALE BY OWNER OF PATENT.
When the owner of a patent himself sells a machine constructefl for the pur. pose of using his invention, he is understood to have, to that extent, parted with his exclusive right to that invention. 2. SurE-]'OHECJ.OSURE SALE-OWNER OF PA'l'ENTA PARTy-CONSENT TO DECREE FOR SALE-VOLUNTARY SALE-RIGHTS OF VENDEES.
Upon a sale of a factory and its contents, including patented machines, uuder a suit for foreclosure of mortgage, to which the owner of such patents is a party and expressly to the decree for sale without reservation, and with no intimation of any claim on his part that the right to use the patented maehines did not accompany the possession of them, held, so far as such machines are concerned, to be a voluntary sale by the owner of the patents, and, as such, the right to use them passes with their purchase and possession.
601
3.
SAME-SAME-SAME-SAME-EsTOPPEL.
Where, in such a C&Stl, the owner of the patents is interested in increasing the proceeds of the sale of such property, and takes the chance of bemg benefited by the enhancement of the price thereof arising from the presumption that the right to use the patented machines passes with the purchase and possession of them, and stands by and sees them sold without giving notice to the contrary, he will be estopped from thereafter claiming that the purchase did not carry with it the right to use such machines.
r. Van Santvo01'd, for complainant. Cha8. B. Evan8 and F. B. Cozzena, for defendants. BENEDICT, D. J. The first action above mentioned is an action foundee} upon a patent issued to Edward C. Blakeslee for an improvement in machines for threading sheet-metal screws, No. 116,922, bearing date July 11, 187l. The second action above named is founded upon a patent issued to Charles T. Newber and Frank W. Perry for an improvement in machines for forming screw threads on sheet metal, No. 145,898, bearing date December 23, 1873. The bill in the first suit claims that the defendants have infringed the first of the above-mentioned patents by using two machines, which in this case have been styled the Blakeslee threading machines. The bill in the second suit claims that the defendants have infringed the second of the above-mentioned patents by using two machines, which in this case have been styled the Newber & Perry machines. The actions have been tried together, and will be disposed of together. There is no dispute in regard to the identity of the machines used by the defendants, or the circumstances their use. Two points of defence are presented,-one, a want of novelty in the invention described in the patents sued on j the other, that the machines in question were sold to the defendants under circumstances that entitled them to use the machines. The last point is the only point requiring attention on this occasion. The four threading machines in question constitute part of the machinery of a factory in Camden devoted to the manufacture of cans. They, together with much of the machinery, were purchased by the defendants at a judicial sale made under a decree of the court of chancery of the state of New Jersey. The circumstances attending this sale are as follows: In March, 1872, the plaintiff in these suits became the owner of the Blakeslee patent. In January, 1873, he assigned this patent to Henry T. Johnson, who, on April 25, 1873, assigned the same to a corporation organized April 19, 1873, and styled the "Standard Union
602
FEDERAL REPORTER.
Manufacting,Company." On April 16, 1873, David Hannyan bought of Samuel Croft a factory for manufacturing cans at Camden, alreztdy referred to, including its machinex:y, and gave back to Croft a mortgage, in which, on behalf of himself and his assigns, Hannyitncovenanted that the mortgage should cover "all other tools, machinery, goods, and chattels hereafter used and said building." On April 25, 1873, the day of the transfer of the Blakeslee patent to the Standard Manufacturing Company, that corporation, bya tmnsfer from John L. Mason; came into possession.of the factory, bought of Croft, subject to the above-described mortgage of Croft, and thereupon the Standard Manufacturing Company commenced manufacturing with the machinery so transferred. Hannyan, who had transferred the factory to Ma,son, was one of the incorporators of the Standard Manufac;lturing. Company. Johnson, who transferred the Blakeslee patent to the Standard Manufacturing Company, was one of its trustees. Shortly after taking possession of the factory the Standard Manufacturing Company,' being then owner of the Blakeslee patent, introduced into said factory, and thenceforth used therein as part of the machinery thereof, one of the Blakeslee machines in question here. The Newber & Perry patent was assigned to John L. Mason, one of the incorporators of the Standard Manufacturing Company, and thereafter the two Newber & Perry machines, forming the subject of the second of the above suits, were introduced into the factory and became part of its machinery, were thenceforth there used, and with the knowledge of Mason, the then owner of the Newber & Perry patent, and without objection by him. The Standard Manufacturing Company thus used these three mac,hines in their factory until May 28, 1875, the same having been made and introduced into the factory under circumstances from which a license to use them must be implied. By an instrument dated February 11, 1874, but not recorded until August, 1874, Detweiler, the plaintiff, by an assignment from the. Standard Manufacturing Company, becanieagain owner of the Blakeslee patent, and by assignment dated March 9, 1875, but not recorded until February 21, 1876, Detweiler became also owner of. the Newber & Perry patent. But, as already stated, the Standard Manufacturing Company continued to operate the factory and use these three machines without objection from the plaintiff, or any intimation from him that the right to use them did not a,ccompany their possession until May 28, 1875. At that time Robert Fleming, a person interested in the Standard Company, having obtained judgment against
DETWEILER V. VOEllE.
603
the Standard Manufacturing Company and John L. Mason, caused the machinery in: the factory, including these three machines, to be sold at sheriff's sale, at which sale he bought in the property, and thereafter operated the factory himself, using the said machinery, including these three machines. While so operating the factory Fleming added to its machinery another Blakeslee machine, being the fourth of the machines complained of in this action. It cannot be doubted, I think, that Fleming, when he introduced this last machine, knew of the mortgage on the factory held by Croft, and that the plaintiff was at all times aware of the existence of this mortgage. On December 6, 1876, the plaintiff caused an attachmentto be levied on the machinery of the factory as the property of Fleming, and on June 12, 1877, Croft, who it seems had taken the possession of the machinery of the factory, including these four machines, by virtue of his mortgage, filed his bill in equity to foreclose his mortgage. To this suit both Detweiler and Fleming were made parties; but they made no defence, the bill was taken as confessed, and a decree was ordered directing the sale of the machinery of the factory, including these four machines. After the decree was ordered, Detweiler, the plaintiff here, gave express consent to the entry of the decree. Upon that consent a decree was entered directing the sale of the property, and in pursuance of that decree these four machines, with the rest of the machinery of the factory, were sold, and were bought by the defendants. Detweiler, the plaintiff, not only consented to the decree. but made no objection to the sale of the machinery, and gave no intimation to anyone, at any time, of any claim on his part that the right to use the machines did not acompany the possession of the machines. But now he asks this court of equity to interpose to prevent the further use of these machines by the persons who bought them at the sale above described, upon the ground that the right to use the machines did not pass to the defendants. In my opinion he is not entitled to such relief. As I understand the law, when the owner of a patent himself sells a machine constructed for the purpose of using his invention, he is understood to have to that extent parted with his exclusive right to his invention. The sale made of the four machines in question to the defendants was a voluntary sale, so far as Detweiler was concerned, for Detweiler was a party to the suit and he gave express consent to their sale. The proceeding was against a large amount of property comprising the machinery of a factory. There was no reservation iu the decree of any right in respect to any of the ma-
604
chines. The court of chancery had possession of this property. The proceeding was in Tern, and it must be assumed that if the intention of the decree had been to convey merely the wood and iron composing a part of the property sold, without any right to use the same, such an intention would have been expressed in the decree. If Detweiler desired such a reservation, it was his duty, being a party, to apply for such a reservation, instead of which he gave express consent to a decree directing the sale, without any reservation. In my opinion a sale made under such circumstances has, as against Detweiler, the same effect as if he had himself sold the machines to the defendants, and gave to ,the defendants the right to use the machines. Furthermore, those machines were part of the operating machinery of a factory. They long been used in the factory, without objection on the part of the owners of these patents. They were being so used when Detweiler became the owner of these patents, as he beyond doubt knew, and their use was continued without objection on his part; nor did. he ever intimate to any person that the right to use the machines had not been acquired by the parties possessing the same. The defendants purchasing the machines under such circumstances were justified in the belief that, by their purchase, they acquired the right to use these machines as well as the rest of the machinery. It must be assumed that this belief enhanced the price they paid for the machines, for, without the right to use, the machines were nothing but old iron. Detweiler was interested in increasing the proceeds of the sale, for he was to share in the surplus of the proceeds after paying Croft's mortgage, and he took the chance of being benefited by the enhancement of the prico, and stood by and saw the machines sold without giving notice that the right to use did not pass with the right to the possession. If he intended to claim otherwise under the circumstances, being a party to the suit, having can· sented to the sale, and on former occasions having acquiesced in the right of the possessors of the machines to use them, it was his duty to have spoken. Having failed to speak when equity required him to speak, he will not now be heard to speak when equity requires him to be silent. Upon these grounds I am of the opinion that the bill should be dismissed, and with costs.
JUDD V.
BABCOCK.
605
BABOOCK and another. August 6, 1881.)
(Oircuit Oourt, D. Oonnecticut.
A.. Schaefer, for improvement in sash supporters, the original patent being No. 64,910, granted May 21, 1867, held, not infringed by devices constructed under letters patent No. 82,580, granted September 28, 1868, to Franklin Babcock, for sash holder. Complainant's sash supporter, consisting of a cylindrical screw-case secured in position in the window-jamb, with a longitudinally-moving flat-sided plunger fitting into a flat-sided bearing in the case, having a pulley at its outer end bearing against the sash, and operated by a spiral spring, held, not infringed by defendants' sash-holder consisting of a cylindrical screw-case secured to the window frame, a plunger operated by a spring and ha,:ing a shoulder on it outer end to fit ill notches cut in the edge of the sash and support the window at certain heights. 2. INVENTOR-APPLICATION OF OLD DEVICE TO NEW USE. An inventor who first applies an old device to a new use is not entitled to · the exclusive use of such device when applied in other and not analogous mechanisms to produce 0. new effect.
Oharles E. Mitchell, for plaintiff. William E. Simonds, for defendants. SHIPMAN, D. J. This is a bill in equity, founded upon the alleged infringement of re-issued letters patent granted April 15, 1879, to Charles A. Schaefer, assignor to the plaintiff, for an "improvement in sash supporters." The original patent was granted to Schaefer May 21, 1867. In the original specification the invention was styled "a spring and friction roller for regulating sash," and the patentee says: " The object of my invention is to provide means for holding loose sash in window frames in such a manner as to prevent a lateral motion, which frequently renders the common sash spring inoperative, and otherwise produces a disagreeable rattling noise, and its nature consists in the use of a cylindrical screw turned into the jamb casing, and having fitted into its cavity the shank of a pulley-fork operated by a spiral spring. By this arrangement a convenient device is provided for holding sash in position to be easily run up and down in the frame, and also press the sash against that side to which the lock is put on."
The specification, in describing the method of adjusting the iu the window jamb, also says: "A hole, of suitable size, must be made in the jamb casing, after which the cylinder, A, can be turned in. by means of a common wrench, to such a depth as will allow the full force of the spring, I, to press the roller, d, against sash, n, and permit the shank, C, to have a backward longitudinal motion for overcoming the inequality of the width of sash. This call be easily done by turn-
