196 F. 52 | U.S. Circuit Court for the District of Southern New York | 1912
This is an infringement suit relating to patent No. 899,468, granted September 22, 1908, to William R. Petze, for improvements in spring repairers, and by him assigned to complainant. The principal object of the patentee was to provide a device which could be readily applied to the springs of motor cars to reinforce them so> as to permit the car to continue its journey after a spring had been fractured or broken. The device in suit specifically consists of a bow-shaped tie-piece which is shorter than the spring and which can be connected to a break, either at the end or in the center; together with the means for fastening the same to the spring adjacent to the break. The novel feature of the patent, as claimed by the complainant, consists in providing means at one or both ends of the spring repairer for attaching one 'end of the tie-piece to the motor car or vehicle as a substitute for the broken spring.
The defenses are; (1) That the assignment of the patent to the complainant by the patentee does not confer the right to sue and recover damages for infringements prior to its date; (2) that the patent is invalid; and (3) noninfringement.
On motion for preliminary injunction, and later, on motion to amend the answer and dismiss the injunction, it was held, on practically the same showing as here, that the memorandum of delivery constituted an implied license to make the tie-pieces and fastening means so as to use up the different parts that had been sold; and I am of a similar opinion, save that I think the license was without force after the job lot parts were used and sold by the defendants. The permissive right to make parts of an incompletcd structure does not convey the right to make .the article as a whole. Judge Hanci enjoined the defendants from making and selling the devices excepting such as contained some part, or parts, which were sold and delivered by complainant's predecessor on February 13, 1909. and he held the intention of the parties to have been that the right to construct new arches— the main part of the device — as well as the minor parts, was given by the license. Auto Spring Repairer Company v. Grinberg (C. C.) 175 Fed. 799. Such, I think, was the intention of the parties as shown by the evidence. Viewing it in this light, the defendants were not estopped from contesting the validity of the patent as to any spring repairers that were made and sold by them after they disposed of the job lot. H. Tibbe & Son Mfg. Co. v. Heineken (C. C.) 37 Fed. 686; Dueber Watch-Case Mfg. Co. et al. v. Robbins et al., 75 Fed. 17, 21 C. C. A. 198; Rose v. Hirsh, 77 Fed. 469, 23 C. C. A. 246; Wooster v. Singer Mfg. Co., Fed. Cas. No. 18,039a.
As to infringement, the testimony is not entirely satisfactory, though it would seem to indicate that during the existence of the license a large number of additional arches was manufactured by the defendants —a larger number than was required to use up the plates and bolts. The witness Petze testified, and he was corroborated with apparent reluctance by complainant’s witness Cluff, that approximately 100 completed sets of spring repairers were sold to the defendants by the partnership, and that each set comprised) an arch, 4 plates, 4 bolts, 4 nuts, and 1 containing bag; while the witness Gomprecht, defendants’ manager, swears that the incomplete sets far exceeded the completed sets.
The bill must be dismissed, with costs.