264 F. 107 | 7th Cir. | 1919
The opinion sustaining the validity of letters patent No. 1,076,418 and finding infringement of claim 1, but not of claim 2, thereof, is reported in 249 Fed. 876. In a prior suit by appellee against R. Williamson & Co., both claim 1 and claim 2 were found valid and infringed. 241 Fed. 265, affirmed in this court 245 Fed. 988,-C. C. A. -. The facts, except those hereinafter set forth, bearing upon the making of appellant the Reflectolyte Co., a party defendant, will be found fully stated in these opinions.
We have, however, in view of the earnest appeal of counsel, re
Giving the claim only the most limited range of equivalents, in holding it to cover, as an element in the combination, a reflector not absolutely flat, but deviating therefrom only to an extent that no substantial change whatsoever in function, result, or operation is thereby involved, defendants clearly infringe.
The copy, however, was not introduced, and was not used for the improper purpose of bringing into this case, as evidence bearing upon the merits of the controversy, the testimony there given; the sole purpose was to show on what matters the decision in the former case was or might have been based, so as to make clear the extent and the bearings of the conclusions there reached.
But counsel did not thereupon consent to the jurisdiction of the court over this appellant; his objection to its being made a party defendant, as distinguished from a privy remained, and the objection, in our judgment, was valid. Without its consent, the court was powerless to compel this appellant to submit to an accounting in Illinois, for all infringements committed in the course of its business in Missouri. While as privy it was bound by the decision as to validity and infringe
The employment of counsel by A. to defend a suit brought against B. alone, and the frank statement of the facts, is in no sense a general appearance by .the employer as a defendant; especially is this so, when, as here, counsel, while conceding the effect upon his employer as a privy specifically objects to having it made a party to the suit.
It is unnecessary for us to consider what the effect of a surrender and a reissue not modifying in any manner the claims in suit, but adding another claim, would be, if the suit on the original patent were undetermined or a decree therein were interlocutory in the true sense as to the merits of the patent in controversy; in the case before us, the surrender and reissue were effective only after the entry of the decree determining validity and infringement and granting a permanent injunction; and in National Brake & Electric Co. v. Christenson et al., 258 Fed. 880,- C. C. A. -, decided April 29, 1919, we held, on full consideration, that such a decree was final in essence, even though interlocutory in time relation.
The rights of the parties are determined as of the date of such a decree; a subsequent surrender of the patent does not involve an abandonment of such rights (Mevs v. Conover, 125 U. S. 144, 145, 23 L. Ed. 1008), the recovery on the accounting will not he based upon the surrendered patent, but upon that decree, which itself is based upon a patent in full force at the date of its entry.
All costs in the District Qaurt and in this court will be awarded against appellant Freeman-Sweet Company. The decree as to appellant Breeman-Sweet Company is affirmed; as to appellant the Re-flectolyte Company it is reversed, with costs, with directions to dismiss the suit as against it, and to modify the decree in accordance with the views here expressed.
On Motion for Specific Directions in the Matter of Costs and for Cancellation of Bond.
The decree granting the injunction against both appellants provided for a stay, if the Refiectolyte Company gave a bond for damages and profits “which it may be finally decided the plaintiff is entitled to recover from either defendant.”