77 F. 980 | U.S. Circuit Court for the District of Washington | 1896
Judge. The patent upon which this suit is founded is described in the opinion of Judge McKenna in tin1 case of Bowers v. Von Schmidt, 63 Fed. 572-584. The bill of com plaint and affidavits on part of the complainants show that the Bowers Dredging Company is a corporation organized under the laws of the state of Illinois, and is operating and transacting business in the state of Washington, and, by an assignment from the patentee, has the sole right to use the invention covered by the above-mentioned letters patent, within the boundaries of the state of Washington, except at Gray’s harbor; that said patent; was duly issued to Alphonzo B. Bowers, in the year 1885, and that, since the date thereof, the utility and value of the patented -invention have been recognized and admitted by many persons interested in the use of machinery for dredging and deepening the channels of rivers and waterways, and the invention has been successfully used in numerous places within (lie United States, and large amounts of capital have been expended in the construction of machinery according to the specifications and drawings of said patent, and operated successfully under licenses from the patentee; that a large number of suits and actions have been commenced and prosecuted;
The defendants, without having answered the bill of complaint, have, by affidavits, denied the equities of the bill, by alleging that the said patent is void for want of novelty and invention; and, if valid at all, the same does not cover nor vest in the complainants any right to a monopoly in the use of such machinery as the defendants are using, and they deny that the machinery in the dredging machine called the “Atlas” in any wise infringes the aforesaid patent. It is also shown on behalf of the defendants that the New York Dredging Company is not engaged in making the improvements referred to, nor in the use of the dredger Atlas, but that, having obtained contracts for making sai d improvements, has sublet the work to the San Francisco Bridge Company, the defendant in the action and suit above referred to. The defendants also show that the decision and decree in the case of Bowers v. Von Schmidt, above- referred to, has been, in effect, suspended by the taking of an appeal in said cause to the circuit court of appeals for the Ninth circuit, and that said cause remains undetermined and pending in said appellate court; and they also show that important evidence not submitted upon the trial of said cause in the United States cir
Counsel for the respective parties have been energetic and painstaking in making a full presentation of questions as to the merits of the Bowers patent; and on the part: of the defendants it is insisted that the San Francisco Bridge Company is a necessary party to this cause;. This last point will he first disposed of. I hold that the New York Dredging Company, being the principal contractor, and responsible for making the improvements described, in which the Atlas is employed, and having failed to enter a disclaimer, is a proper parly to the suit, and that said company has no right to complain because the defendants Lockwood and others have been joined as co-defendants, nor should said company be beard to say that its subcontractor, the San Francisco Bridge Company, should he made a defendant in the cause.
I deem it unnecessary at this stage of the case to make a careful and minute examination of the details of the several claims of the Bowers patent involved in this controversy, and to make the comparisons with the numerous specifications and drawings introduced upon the hearing, for the purpose of showing the prior state of the art, which would he necessary to an intelligent decision of the questions affecting the main controversy which counsel have argued. I hold that the court is justified in reserving its opinion upon questions going to the merits whenever there appears to be a recog
From the consideration which I have given this case, I find that the following principles must be applied in making my decision: First. In a suit founded upon a patent, the complainant is not entitled to a provisional injunction pendente lite, unless the patent has been previously established by the final judgment of a court of competent jurisdiction, after a full hearing upon the merits, or unless it be shown by clear and satisfactory evidence that the patent is valid, and that the defendant intends to, and will if not restrained, infringe the same, and. that such infringement, during the continuation of the litigation, will work irreparable injury to the complainant. Second. Judgments and decrees entered by consent, pursuant to a compromise, between the parties in patent cases, do not establish the validity of patents involved. Third. A judgment or decree upholding the validity of a patent cannot be regarded as final, for the purpose of establishing the validity of a patent, if the cause in which such judgment or decree has been rendered has been subsequently removed into an appellate court for review, and remains undetermined and pending in the appellate court. Fourth. In suits upon patent rights, so long as there is a substantial controversy as to the equities of the parties, maintained in good faith, the court will not dispose of those equities on a motion for an interlocutory injunction, and such relief will be refused where the granting of the application might seriously imperil the defendants’ rights, and its refusal will not endanger the plaintiffs’ rights to the same extent. 2 High, Inj. § 939.
• The application of these principles must deprive the complainants at this time of all right to rely upon prior adjudications. They come into this court virtually confessing that the validity of the Bowers patent has never been established by a final adjudication in any litigated case, and that the question whether or not the identical dredging machine complained of in this case as an infringement of their rights under the patent does infringe is the subject of controversy and litigation in another court. So long as that controversy continues, the rules of chancery practice preclude the granting of affirmative relief, until after a full consideration of the evidence upon the final hearing, and a decision in their favor upon the merits.
In the case of Jensen v. Norton, 12 C. C. A. 608, 64 Fed. 662-664, the circuit court of appeals for this circuit gives another rule, in the following words:
“When a plaintiff in a court of equity brings a suit in good faith to obtain preventive relief against a threatened injury, and makes a showing of facts sufficient to constitute a cause of action within the jurisdiction of the court, and shows that his adversary intends to, and will, ere a hearing can be had, commit acts which may work irreparable injury to him, it becomes the duty of the court to exercise its powers at once, by issuing an injunction, so as to maintain .the status quo until the cause can be properly heard and • decided.”
That was a case in which the patent sued upon had been sustained-and given a broad construction by the final decision of the
It is my conclusion that; there must be a decree denying the present application, but with leave to renew the application before the final hearing, upon a further showing, if the complainants shall elect to do so.