120 F. 260 | 6th Cir. | 1903
The temporary injunction appealed from, entered at the suit of Folger, a citizen of Ohio, restrains Adam, a citizen of Illinois, from continuing to infringe letters patent No. 680,769, August 20, 1901, for improvements in water-heaters, and from using the name “Victor” on or in advertising any water-heater. Folger filed his application on May 31, 1895. Before this he had sold a number of heaters made in conformity to his specifications. He adopted the name “Victor” to denote the heater manufactured according to the specifications and embodying his inventions. Prior rto June 8, 1898, the Victor had become well and favorably known, and very many had been sold, and were in satisfactory use. June 8, 1898, lie gave a nontransferable license to Adam to make, use, and sell heaters containing the inventions set out in his application throughout
1. The validity of the patent had not been adjudicated, and Folger relied upon acquiescence to secure an injunction pendente lite. Without deciding how far, if at all, the use and sale of the Victor heater before the patent was issued should be taken as evidence of acquiescence in the validity of the patent (see Sargent v. Seagrave, 2 Curt. 553, Fed. Cas. No. 12,365; Wilson v. Store Service Co., 31 C. C. A. 533, 88 Fed. 286; McDowell v. Kurtz, 23 C. C. A. 119, 77 Fed. 206; Corser v. Overall Co. [C. C.] 59 Fed. 781; White v. Hunter [C. C. | 47 Fed. 819), we are of opinion, on this branch of the case, that the temporary injunction was not improvidently issued. The purpose of showing adjudication against others or acquiescence by the public is not to foreclose the question of validity, but to aid the.presumption which the patent raises to a point where the court is satisfied that the probabilities of a final decree in the complainant’s favor are so strong that the defendant should be excluded at once from practicing the alleged invention. Three years before the patent issued, Adam took from Folger a license to make heaters according to Folger’s specifica
2. Concerning infringement, the question at the preliminary hearing was limited to the fifth claim, which is as follows:
“The combination of the heating-coils, a water-supply leading thereto, a valve interposed in the water-supply pipe to turn the water on or off from the coils, a supplemental regulating-valve arranged in the plug of the main valve to regulate the quantity of water passing to the coils without moving the main valve, a gas-burner beneath the coils, a gas-supply pipe leading to the burner, a valve in the gas-supply pipe, and connections between the gas-valve and the main valve of the water-pipe by which the gas-valve and the main water-valve may simultaneously be opened and closed, and the supplemental valve may be regulated independently, substantially as shown and described.”
The combination comprises eight elements, — heating-coils, gas-burner, water-supply, gas-supply, water-valve, gas-valve, connections between the two latter whereby one handle operates both valves equally, and a supplemental water-valve adjustable independently of the main water-valve. Grant that each element is old, and that some have been combined in various ways, yet the fact remains, as far as this record discloses, that Folger was the first to perceive that, if it were desired to have the water more highly heated than usual, he might, while leaving the gas burning at its full height, cause the water to flow less rapidly, and still secure the desirable result of having the gas and the water turned on or off by one operation. His invention lay in the concept of a combination that would produce this useful and new unitary result. Adam’s altered heater contains the eight elements, each performing the same function to effect the same combined result as in the genuine Victor heater. In the Victor, however, as the exhibit shows, the construction follows the very letter of the claim, and the supplemental water-valve is “arranged in the plug of the main valve”; while in Adam’s heater, as exhibited, the supplemental valve has been moved from the plug to the side of .the main valve. He has escaped infringement if the words “arranged in the plug of the main valve” are of the essence, and not merely descriptive óf a preferential location. It is well settled that there is no infringement if any one of the material parts of the combination is omitted, and that
4. We do not regard a bill multifarious which seeks to enjoin an unauthorized person from using a patented article, and also from using the generic name of that article. Animarium Co. v. Neiman (C. C.) 98 Fed. 14; Jaros Hygienic Underwear Co. v. Fleece Hygienic Underwear Co. (C. C.) 60 Fed. 622; Weir v. Gas Co. (C. C.) 91 Fed. 940; Dennison Mfg. Co. v. Thomas Mfg. Co. (C. C.) 94 Fed. 651; Harper v. Holman (C. C.) 84 Fed. 222; U. S. v. American Bell Tel. Co., 128 U. S. 315, 9 Sup. Ct. 90, 32 L. Ed. 450; Oliver v. Piatt, 3 How. 333, 11 L. Ed. 622.
The order appealed from is affirmed.