49 F. 930 | U.S. Circuit Court for the District of Southern New York | 1892
The complainant is the owner of letters patent No. 401,680, granted April 16, 1889, to Edward S. Boynton for a “new and useful improvement in valves for pneumatic pipes or tubes.” The second claim of the patent is:
“(2) In combination with an external pivoted valve, a self-closing device, consisting of a compressive helical spring held within a tubular guide, formed upon or attached to said valve, between ono end of said guide and a stop at the pivotal point of the valve, substantially as and for the purposes set forth. ”
This claim was sustained by Judge Coxe in Campbell Printing-Press & Manuf’g Co. v. Eames Vacuum Co., 44 Fed. Rep. 64, and disclaimer as to the first claim was duly entered in the patent-office prior to tho bringing of this suit. The bill charges infringement of this second claim, prays injunction and accounting, and expressly waives. answer under oath. A preliminary injunction was refused. Campbell Printing-Press & Manuf'g Co. v. Manhattan Ry. Co., 47 Fed. Rep. 663. The case now comes up for final hearing upon bill, answer, and replication. The answer (unverified) admits the grant of the letters patent, and complainant’s title thereto, and that they arc good and valid as to the second claim thereof. It further admits that since April 16, 1889, (the date of the issue of the patent,) defendant has used couplings émbodying the invention covered by the second claim, and that the number so used is 2,678, on 1,017 cars and 322 locomotives, some of said couplings having boon applied before April 16, 1889, and others from time to time since. It. further avers that the invention is of trifling, if any, pecuniary value; that complainant has never made, used, or sold the patented invention, and has never licensed any one to make, use, or sell the same; that the defendant uses it upon cars constantly employed by it in the transportation of passengers, and that an injunction would be a hardship to defendant, would seriously inconvenience it in its passenger carrying
To the complainant’s application for an accounting before a master it is objected that it has not given specific evidence of damages sustained. B it under the pleadings it is not necessary for the complainant to give such proof. Infringement is admitted, and from infringement damage ar d deprivation of profits are presumed. Wooster v. Muser, 20 Fed. Rep. 162. To what extent, and whether nominal or substantia], is a m itter to be settled on the accounting. Complainant has shown all that is necessary to entitle it to a decree sending the case to a master, when it has shown infringement of a valid patent owned by itself. Brickill v. Mayor, 7 Fed. Rep. 479. The decision of Judge Brown in the case at bar (48 Fed. Rep. 344) did not pass upon this point. It only settled a question of practice, holding that a motion at chambers was not proper procedure.
The contention of the defendant that, because it is willing to pay nominal damages for past infringement, an injunction to restrain future in’ringement should not issue, is unsound. In Birdsell v. Shaliol, 112 U. S. 487, 5 Sup. Ct. Rep. 244, the supreme court held that “an infringer does not, by paying damages for making and using a machine in in ringement of a patent, acquire any right himself to the future use of thi machine. On the contrary he may, in addition to the payment of damages for past infringement, be restrained by injunction from further us3, [citing authorities.]” See, also, Matthews v. Spangenberg, 15 Fed. Rep. 813; Bragg v. City of Stockton, 27 Fed. Rep. 509. The proposition advanced by the defendant is practically this: If an inventor, whose patented improvement in locomotive machinery, although valid, is of but trifling value to a common carrier, himself thinks it valuable, an i therefore demands a license fee for its use, higher than such common carriers as would like to use it are willing to pay, they may nevertheless appropriate his invention to their use, may place it on their cars anl locomotives without his permission, and may continue to use it till it wears out, without interference, on the ground that to remove it would inconvenience the public; and that for such enforced license they should be made to pay, not the fee the inventor asks, but such sum as a master of the.court may think the invention is worth. Baldly stated, the confer tion is that, when a patentee asks a price for the use of his patent higher than users wish to pay, and refuses to license its use except at such price, it may be confiscated and sold to whoever wants it, at a price to be fixed by a United States circuit court. Whether or not such a cualification of the monopoly secured by letters patent would be desirable legislation is immaterial; it is not now on the statute book, nor is :.here found controlling authority in-its support among the cases cited by the defendant’s counsel.
The remarks of Judge Grier in Sanders v. Logan, 2 Fish. Pat. Cas. 16, are purely obiter, the bill in that case being dismissed on the ground that prior use was shown. Besides, the learned judge evidently assui led that the license fee, payment of which would be full compensation to the complainant for future as well as past 'trespasses, was a “fixed suri.” Undoubtedly, where there is a given license fee which is paid by others for .the use of an improvement in some “mill, manufactory, locomotive, or steam-engine,” equity yvill not lend its aid to enable a patéfítee, by an injunction, practically' against the whole apparatus, to extirt a larger sum from some particular infringer who is prejiared to pay the “given sum” for the privilege of using the improvement. But that is not this case. There is no “fixed sum,” for there have, as yet, been no actual sales of licenses, other railroads (as was stated on the arg.unent) having followed defendant’s example, and appropriated the new coupling without payment or permission, expecting, apparently, by that means to be able to compel the complainant to accept much less than he would sell his license for, except under some such constraint, —1 erhaps a merely' nominal sum, — for, although it seems to have kept putting his coupling on its'cars, even after it had tested it by use, defendant yet insists that, it is a wholly valueless improvement.
The decision of Judge Blodgett in Hoe v. Knap, 27 Fed. Rep. 204, full ¡r sustains the defendant’s contention. In that case the owner of the patent was a large manufacturer of printing-presses, which he did not kee i in stock, but made to. order. The patented device was a small part of the entire machine. As matter of fact, complainant had not up to
Defendant also insists that injunction should not issue because the infringing couplings now in use by it are used in the service of the public,0 and to enjoin would bo to work great hardship to the public. In Bliss v. Brooklyn, 4 Fish. Pat. Cas. 596, injunction was refused because the hose couplings complained of were necessary for the daily use of the city-in the prevention of fires; and there is a long line of authorities to the same effect. There is, however, nothing in the case at bar, beyond the bare assertion of the defendant, to show that an injunction properly regulated as to time may not be obeyed without in any way interfering with the service which defendant renders to the public as a common carrier of passengers. It seems to have experienced no difficulty at all in temporarily withdrawing its locomotives and cars from such service at suitable seasons, for a sufficient length of time to affix the complainant’s couplings. Why it may not, in like manner, remove them, does not appear. Complainant may take decree for account and injunction. The terms of the injunction, providing from how many cars and locomotives the infringing couplings shall be removed each week, may be settled on notice; and if defendant will at that time present affidavits showing the character of the work required, the amount of its rolling stock in use and reserve, and its shop facilities, there need be no difficulty about arranging the terms of the decree; or, if it be preferred, defendant, instead of affidavits, may present its superintendent or master mechanic for examination to aid the court in settling the terms.