44 F. 609 | U.S. Circuit Court for the District of Eastern Missouri | 1890
Lead Opinion
In this case it appears that the roll-paper machine manufactured and sold by defendants is manufactured strictly inaceordancewith the specification and drawings of letters patent of the United States No. 394,121, owned by defendants, and issued to Edward L. Knopp December 4,1888, the application for which was filed September 8,1888, Complainant’s contention is that defendants’ machine embodies substantially the same invention claimed and described in letters patent of the United States No. 409,028, granted to the complainant, as assignee of Leo Ehrlich, on August 13,1889, the application for which appears to have been filed December 2, 1887, and was renewed March 28, 1889. Its contention is also that the machine is an infringement of the Ehrlich pat
Another feature of the case justifies comment. It was admitted at the hearing that the complainant is not manufacturing, and has not manufactured, any machines under the Ehrlich patent, or put them on the market in any manner. It is manufacturing a machine made under a patent granted five years previous to the Ehrlich patent, which it evidently considers superior to the Ehrlich machine, and seems to be using the latter patent merely to keep other manufacturers of roll-paper machines out of the market. Whatever its technical right to make such use of the patent may be, its conduct in this respect evidently deprives the public of whatever advantages the Ehrlich invention possesses, contrary to the true polioy, of the patent laws.
The bill is dismissed.
Rehearing
OR MOTION FOR REHEARING.
(January 3, 1891.)
1. Under the authorities cited, it must be conceded that, in the absence of proof showing the true date of each invention, the presumption is that each invention was made at the time the respective applications were filed. Bates v. Coe, 98 U. S. 33, 34; Pennington v. King, 7 Fed. Rep. 463; Dane v. Manufacturing Co., 3 Biss. 380. According to this view,.as the Ehrlich application was filed December 2, 1887, and the Knopp application on September-8,1888, and as there is no evidence that Ehrlich’s original application was modified or ‘amended
2. But although Ehrlich’s application was first filed, defendants’ patent antedates his by eight months, and defendants appear to be manufacturing paper rollers strictly in accordance with the claims of their patent. Plaintiff’s contention is that defendants’ patent is subordinate to the Ehrlich patent, and that it is for the same invention, covered by the first three claims of the Ehrlich patent. It has accordingly filed a bill in the ordinary form for an alleged infringement of its exclusive rights. In view of these facts, defendants insist that complainant cannot maintain a simple bill for infringement, in view of the priority of their letters, but that it should couple with its bill for infringement a count under section 4918, to have the Knopp patent adjudged void, in whole or in part, because of the alleged interference. The question thus raised seems to be one of first impression; at all events, I have not been referred to any case where the precise point has been considered and adjudicated. It was not considered in the case of Lane v. Soverign, 43 Fed. Rep. 890, for the decision in that case turned merely on a question of pleading, the cause having been submitted on the bill, answer, and replication; nor was the question at all discussed in Johnsen v. Fassman, 5 Fish. Pat. Cas. 471, nor in the case of House v. Young, 3 Fish. Pat. Cas. 335, cited by defendants’ counsel. In the latter case, the defendant was acting under a reissued patent later in date than complainant’s, but defendant’s original patent antedated complainant’s patent. In the ordinary case of a bill for infringement, filed by the holder of a senior patent against the holder of a. junior patent, the claims whereof conflict, it is no defense that the defendant is acting under a patent. The reason of the rule, as I apprehend, is that by the grant of the first letters the government exhausts its power to grant to another person a monopoly of the same invention, hence the holder of the prior patent, is at liberty to treat the subsequent patent as utterly void, in so far as it conflicts with the earlier grant. Rob. Pat. § 370. But there is an obvious distinction between such a case and one where the defendant proceeded against bolds the prior grant, and is operating thereunder in good faith. Ordinarily a prior grantee of a right, privilege, or estate cannot be proceeded against as a trespasser by a subsequent grantee of the same grantor, even though the prior grant is for some reason voidable, until the proper steps have been taken to have the invalidity of the prior grant judicially ascertained and declared. The principle last referred to seems to he applicable to the ease at bar.
It may be that the commissioner of patents erred in granting a patent to the defendants while the earlier application of Ehrlich was on file; hut, he that as it may, if such action was erroneous, it was an error, in my judgment, that merely renders the patent voidable in a direct proceeding brought to establish its invalidity, as the government clearly had power when the grant was made to issue a patent for the invention in question. A suit for infringement which proceeds plainly upon the theory that the defendants are trespassers, although acting strictly within
Under the provisions of this section, the complainant, if its contention is well founded, may obtain a decree determining to what extent defendants’ prior patent is subordinate to its own, and to what extent, if any, the claims of the prior patent are invalid. Upon the whole, therefore, I conclude that in a case like the one at bar, where defendant holds and is operating under a prior grant, it is incumbent on the plaintiff to proceed, in the first instance, under section 4918, to have the invalidity of defendants’ patent, in whole or in part, judicially ascertained and declared. That method of procedure appears to the court more regular, and more in accordance with the analogies of the law, than to permit the complainant to proceed against the defendants merely for infringement.
It has been held that a count for infringement and a count under section 4918 may be joined in the same bill, and I can see no objection to that course of procedure. Leach v. Chandler, 18 Fed. Rep. 262; Holliday v. Pickhardt, 29 Fed. Rep. 853; Swift v. Jenks, Id. 642.
The decree heretofore entered was for the right party,- and will be allowed to stand, but it will be modified so as to show that the dismissal ordered is without prejudice to the right to proceed as herein indicated.