Celluloid Manuf'g Co. v. Goodyear Dental Vulcanite Co.

| U.S. Circuit Court for the District of Southern New York | Jun 7, 1876

HUNT, Circuit Justice.

This case comes before the court in a double aspect. It is presented, first, in the form of a motion for a preliminary injunction, which is based upon the bill of complaint, and upon affidavits and documents furnished by the respective parties. It is presented, secondly, upon a demurrer to the bill of complaint. The question upon the equity of the bill has been fully argued, as has also the propriety of issuing a preliminary injunction, upon the case made by the additional evidence. The question that presents itself first, in the natural order of things, is upon the sufficiency of the bill; in other words, is the demurrer well taken?

The plaintiff alleges itself to be the owner of a useful invention, in the manufacture of plates for holding artificial teeth. By the general laws of the land, state as well as national, it has the right to sell that improvement to all who think it of sufficient value to induce them to purchase it, subject only to restraint from some party having a conflicting patent So far as its own use or manufacture is concerned, it needs no act of congress to enable it to make, use and vend the article, and it obtains no such right from congress. The benefit of the patent laws is, that the plaintiff may prevent others from making, using or vending its invention. To itself, to its own right to make, use or vend, no right or authority is added by those statutes. When a stranger shall thus make, use or vend its manufacture, the patent laws enable it to restrain such use, and to recover damages therefor. Do the subjects of complaint in the bill set forth fall within this right of action given by the patent laws? Are not the injuries complained of injuries to the trade, the profits and the business of the plaintiff, as carried on by itself, for which it has and needs no patent authority, rather than injuries to the right of the patentee to exclude others from such sale or manufacture? It is to this latter class only that the patent laws apply, and for injury to those rights only that actions under the patent laws can be sustained. See Hawks v. Swett, 4 Hun, 149, 150, where this principle is fully set forth.

The bill contains a prayer that the defendant’s patent may be adjudged to be void and of no effect. On the argument it was, however, conceded, that, for the purpose of the present proceedings, that patent must be held to be valid. It has been adjudged to be valid, in numerous cases in the circuit courts, tried before different judges, and, until held otherwise by the supreme court, must be taken to be a valid patent.

The plaintiff is the owner of certain other patents issued to the Hyatts and to Perkins, for an “improvement in dental plates from pyroxyline.” These are commonly called celluloid plates. In the 24th section of the bill of complaint it is averred that the defendant claims that the use of the celluloid blanks is an infringement of the Cummings letters patent This claim, it is alleged, has no lawful foundation, and it is averred that the true construction of the Cummings patent does not support the same, or give to the defendant any right to interfere with or arrest proceedings under it. Notwithstanding this allegation, the plaintiff insists, and such is the object of its bill, that the court shall decide whether, if the plaintiff or those who hold its licenses shall make or vend its articles patented, it would amount to an infringement of the defendant’s patent In my judgment, such an action cannot be sustained. No case has been cited to me, nor do I think any can be found, sustaining an action by a junior private patentee, who alleges that his patent does not conflict with the prior patent, and who asks the court so to adjudge. It is, in substance, a suit to limit the effect of a patent, to declare that it does not extend to a certain class of cases, and, pro tanto, to have it adjudged to be void and of no force. Such an action can only be sustained by the attorney general, in the name and on behalf of the United States. Mowry v. Whitney, 14 Wall. [81 U. S.] 434.

To allow the action is to reverse the proper position of the parties. Whoever receives letters patent from the United States receives thereby a prima facie right to maintain an action against every infringer of the right given by such letters. While it is true that such right is prima facie only, and that the holder must be prepared to maintain it in the courts when attacked, it is still a right on his part to sue such alleged violators. The present action would convert the right to sue into a liability to be sued, which is quite a different thing. The defendant holds the Cummings patent. It finds that the patent is infringed and its rights injured by A., B. and C., in the state of New York, and E., D. and F., in the state of New Jersey, and so on through the alphabet. The defendant has a right of action against each one of these individuals. It has a right to sue the whole of them. It has the right to sue any one of them, and to allow the others to go undisturbed. While it would not be a high-minded theory, I know of no principle that, as matter of law, would prevent its seeking the feeblest of them all, the one least able to defend himself, and to make a victim of him. If that individual shall appear to have infringed upon this defendant’s patent, he is liable to the damages, although he may be poor, unable to defend himself, although others have offended in a greater degree, and although we may condemn the spirit which selected^ him as the particular defendant. On principle, this cannot be doubted. But, the plaintiff seeks to reverse this action, by making the elder patentee a defendant, at the suit of a particular offender, and to compel him, whether he chooses or does not choose, to assert his rights as against him.

Again, such a suit gives no practical result in the settlement of the question. Suppose it to be decided in this suit, that the celluloid preparation is not an infringement of the Cummings patent. Nothing is settled except as between the two parties present as litigants. If the defendant should afterwards sue a dentist in Michigan for infringing its patent, the judgment in the present case would be no evidence against it, to show that there was no infringement. It would be inter alios acta and not competent; and so, if the judgment should be the other way, the defendant could not have the benefit of the decision, as against another alleged infringer. Each plainüff and each defendant can litigate his own case, and is not bound by decisions in other eases, to which he was not a party, and which he had no opportunity to litigate-Such is the rule of law, and its necessity, to avoid collusive judgments and fraudulent combinations, is too obvious to need de-fence.

The cases of Axmann v. Lund, L. R. 18 Eq. Cas. 330, and Rollins v. Hinks, L. R. 13 Eq. Cas. 335, give countenance to the suggestion that the bill in this case may be sustained, to prevent the publication of libels injurious to the plaintiff’s business. The case of Prudential Assur. Co. v. Knott, 10 Ch. App. 143, is a subsequent case, and is to the contrary. It is to be said further, in answer to these cases: 1st. They were based upon the theory that the defendants made their claim and published their injurious circulars, but refused to bring suits to sustain them. The record here shows that numerous suits have been brought, and that at least four suits, to wit, those against Silliman, Kibbee, Hoopes and Greene, are specifically proved by the evidence, in the first two of which the defendant has obtained decrees that the celluloid is an infringement of the Cummings patent, and in the other two the proceedings are still pending before the masters. 2d. No such action at law or in equity can be maintained unless it is established that the publication is malicious and for the purpose of injuring the other party. If made to advance the publisher’s own sales, and upon a reasonable claim that he has the right which he asserts, the action must fail. Wren v. Weild, L. R. 4 Q. B. 730.

Upon the same point is the case of Hovey v. Rubber-Tip Pencil Co., 57 N.Y. 119" court="NY" date_filed="1874-01-05" href="https://app.midpage.ai/document/hovey-v--rubber-tip-pencil-co-3631920?utm_source=webapp" opinion_id="3631920">57 N. Y. 119, which was an action" to restrain the defendant from publishing notices injurious to the plaintiff’s business. It was a case of alleged conflicting patents, in which the defendant cautioned all persons against using the plaintiff’s invention, alleging his intention to prosecute all infringements. The court held: 1st. That the questions presented arose ■directly upon the patent laws of the United States, and hence were not within the jurisdiction of the state courts; citing Dudley v. Mayhew, 3 N.Y. 9" court="NY" date_filed="1849-12-05" href="https://app.midpage.ai/document/dudley-v--mayhew-3617855?utm_source=webapp" opinion_id="3617855">3 N. Y. 9, and Middlebrook v. Broadbent, 47 N.Y. 443" court="NY" date_filed="1872-02-13" href="https://app.midpage.ai/document/middlebrook-v--broadbent-3607642?utm_source=webapp" opinion_id="3607642">47 N. Y. 443; considering, also, Gibson v. Woodworth, 8 Paige Ch., 132" court="None" date_filed="1840-03-03" href="https://app.midpage.ai/document/gibson-v-woodworth-5548454?utm_source=webapp" opinion_id="5548454">8 Paige, 132, and Burrall v. Jewett. 2 Paige Ch., 134" court="None" date_filed="1830-04-06" href="https://app.midpage.ai/document/burrall-v-jewett-5547804?utm_source=webapp" opinion_id="5547804">2 Paige, 134. 2d. That, to justify the action as a slander of title, the proceedings must appear to have been unfounded not only, and the statements false, but malicious. If the defendant believed its statements to be correct, it merely discharged a moral obligation and •satisfied the demands of fair dealing, in making the publication.

It is contended, also, that ground for -filing the bill is found in section 4918 of the Revised Statutes of the United States, in relation to interfering patents. That section is as follows: “Whenever there are interfering patents, any person interested in .any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, .and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in' any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit, and those deriving title under them subsequent to the rendition of such judgment." The sixteenth section of the act of July 4, 1836 [3 Stat. 123], and the act of July 8, 1870 [16 Stat. 207], make corresponding provisions on this subject. To give the plaintiff the benefit of this statute, it must abandon the allegation of its bill, that the celluloid is not an infringement of, or interference with, the Gummings patent. It must assume the ground there imputed to the defendant, that these two patents do conflict and interfere, and there unqualifiedly denied by the plain tiff, and must assume the position there imputed to the defendant, of the identity of celluloid or collodion dental plates with the subject of the defendant’s patent. The argument of the defendant is, that celluloid or collodion was a well known agent when the plaintiff’s patent was obtained, known as an equivalent for vulcanite in the manufacture of dental plates, and that there could, therefore, be no patent lawfully issued for the application of collodion to dental plates. The Cummings patent is upheld upon the theory that the vulcanite possessed qualities not found in any other material used for that purpose, and that the mode of manufacture was different from that in which any other artificial set of teeth had been made. The Hyatt dental patent, it is argued, exhibits no novelty in the quality of the result produced or in the mode of manufacture. Until the plaintiff shall be prepared to assert that the two patents are substantially for the same invention, that its patentee is the real discoverer of the invention therein set forth, and that the defendant has wrongfully and improperly appropriated the fruits of his invention, I do not see how the statute respecting interfering patents can be invoked. See Curt. Pat., last chapter.

In reaching this conclusion, I do not assume either that the plaintiff’s patent is void, or that it is an infringement of the Cummings patent. No opinion is intended to be intimated upon those points. Under this branch of the case, the suggestion is, simply, that a case of interference is not presented, where the plaintiff avers that there is no interference. An averment that the defendant claims an interference, and a denial of such claim by the plaintiff, cannot authorize the plaintiff to ask a settlement as for an interference. The prayers and the relief to be afforded to the plaintiff must be upon the facts as it claims them to exist, not as the defendant claims and which the plaintiff denies.

It is said, lastly, that jurisdiction to sustain the present controversy is found in section I of the act of March 3, 1875 (18 Stat. 470), which provides as follows: “The circuit courts of the United States shall have original cognizance, concurrent with the courts of the several states, of all suits of a civil nature, at common law or in equity, where the matter in dispute exceeds, exclusive of costs, the sum or value of five hundred dollars, and arising under the constitution or laws of the United States, or treaties made, or which shall be made, under their authority, or in which the United States are plaintiffs or petitioners, or in which there shall be a controversy between citizens of different states, or a controversy between citizens of the same state claiming lands under grants of different states, or a controversy between citizens of a state and foreign states, citizens, or subjects.” The jurisdiction of the federal courts, under the constitution and laws of the United States, depends upon two points — First, as arising from the subject-matter of the controversy; and, second, as dependent upon the Character of the parties. Cohens v. Virginia, 6 Wheat. [19 U. S.] 378. See Matthews v. McStea, 20 Wall. [87 U. S.] 646; Littlefield v. Perry, 21 Wall. [88 U. S.] 222. The act of 17S9 made the jurisdiction of the circuit courts dependent upon the character of the parties. The act of 1S75 has altered this rule, and gives to that court jurisdiction in all cases in law and equity arising under the laws and constitution of the United States. It cannot be doubted that controversies arising upon conflicting claims to or under patents issued under the laws of the United States are cases arising under the laws of the United States. It is upon this theory that the circuit courts have, from the foundation of the government, entertained jurisdiction of patent cases. This principle has been assumed in the previous parts of this opinion, and its existence does not relieve from the difficulty now pressing upon us. The objection is not, that, in its subject-matter, the case does not present one of federal jurisdiction, to wit, the adjustment of conflicting claims under the patent laws of the United States, or the awarding of damages for an infringement of such patents, but the question is, whether, in the form in which the facts are presented, the plaintiff can sustain his bill or is entitled to an injunction. The act of 1875 does not touch this point.

Upon the principles already laid down, I am of the opinion that this action cannot be sustained, and that the demurrer must be upheld. It follows, that the motion for the injunction must be denied. A preliminary injunction cannot be granted when it is conceded that the plaintiff must finally fail in his action.