280 F. 846 | 2d Cir. | 1922
The appellant is the owner of the Langmuir patent, No. 1,180,159, granted April 18, 1916, which covers a new type of incandescent lamp. It was sustained in this court in General Electric Co. v. Nitro-Tungsten Lamp Co. (C. C. A.) 266 Fed. 994. These are separate suits, one against the Continental Lamp Works, Inc., and the other against United Lamp Manufacturers’ Corporation. The former was organized in February, 1920, after the decision in the District Court in the Nitro-Tungsten Case. It has since advertised the tungsten or vacuum lamps which do not infringe the patent in suit, but it has engaged in business exclusively since its organization in the manufacture of lamps of the gas-filled type, which lamps embody the invention of Langmuir, and it is claimed by the appellant to be identical with the lamps enjoined in the Nitro-Tungsten suit, and in a subsequent suit by General Electric Company v. Alpha, where the District Court again affirmed the finding that the Langmuir patent was valid.
The appellee the United Lamp Manufacturers’ Corporation was organized July 29, 1921. It is said to be a consolidation of interests of companies which were not licensed to use the invention of the patent in suit. It has been engaged in selling lamps of the Langmuir type. It sells vacuum tungsten lamps and vacuum carbon lamps. A patent was issued to Just and Hanaman, which is now owned by the appellant, and which was held valid and infringed in General Electric Co. v. Laco-Philips, 233 Fed. 96, 147 C. C. A. 166. This patent was for a tungsten lamp, and was like the carbon lamp, in that it operated in a vacuum. Both of these inventions were of a high order, and recognized by judicial decision as such. Dr. Langmuir was able to produce a lamp which in large size consumed one-half a watt for each candle power which it produced. It meant one-half of the energy consumed by the
On this application for-an injunction pending the final hearing, the affidavits offered in defense did not plead invalidity or noninfringement of the patent; but a defense was made on the contention that the lamps were sold by the appellees lawfully because of an implied license by reason of the- sale of bases. The lamp base is an appendage which is fastened permanently to the incandescent lamp before it is sold. It costs, at retail, 1 or 2 per cent, of the selling price of the lamp, and it is used as a base for the lamp of the Langmuir patent. When the appellant sold these bases, the contract of sale provided in red letters as follows:
“The sale of bases by us confers on the purchaser no license under any patents of the General Electric Company covering or relating to the structure of Incandescent Lamps, or the materials, machines, or processes used in their manufacture.”
Knowledge by the appellees of this notice, so written on the terms of sale, is conceded. The defense contends that by reason of the purchase of the bases, there was an implied license to use the lamps constructed under the Langmuir patent. The court below sustained the contention of the appellees, upon the theory that the bases which the appellant sold to the appellees were sold with the knowledge that these manufacturers were making the lamps under an implied license from the appellant, and that because the bases which were sold could be used only in constructing a patented article (Langmuir construction), it is presumed to be intended, both by the buyer and seller, to be used for that specific purpose, and, when appellant made a sale, it carried with it to the appellees an implied license. The bases in question were standard articles of manufacture, and were constructed under patent for many years before the Langmuir lamp was invented. It was because the appellant" did-not-wish to license the appellees in the use of the Langmüir patent, or any other patent which had to do with incandescent lamps, that they inserted the notice in the terms of sale.
It is claimed that if the appellant sold the bases without knowledge or .notice of the possibility or probability of the infringing use, no implication of license could have been raised, and the notice 'would have been unnecessary. But the very act by which the appellant is now charged with having waived notice seems to us to be the one means it might have employed in serving notice upon che purchaser that it would not permit the bases to be used in connection with the sale of the Langmuir lamp. The issues in both cases are alike. The lamp base is a device external to the lamp. The Langmuir patent does not show any base. It shows two wires projecting from the bulb. These wires may be connected with an electric circuit, and the lamp will burn without a base. The ordinary way, however, of making such a connection, is through a base, and this consists of a screwed shell adapted to screw' into an Edison type lamp socket and a center contact fastened mechanically to the screwed shell, but electrically insulated from it. The screwed shell' of the lamp socket is connected to one of the terminals of .the electric circuit. The lamp socket contains a center contact,
It is admitted by the appellant that it continued to sell the bases to the appellee Continental Tamp Works, Inc., after it knew or had reason to believe that it was using these bases in the manufacture of lamps infringing the Langmuir patent. Its claim is that in making such sales it was not granting a license under the lamp patents, and felt that it. had good reason for this business conduct. The claim is that in 1911 the government filed a bill against the appellant, complaining of certain practices which it said created a monopoly, in violation of the federal statutes, in relation to its manufacture of incandescent lamps. Tt was claimed that the appellant, by controlling the commercial source of supply of useful or necessary parts of the lamp, were attempting to control the lamp business, including the business in vacuum carbon lamps. It also complained that the appellant had entered into unlawful contracts with the only base manufacturer in the United States, to wit, the Providence Gas Burner Company, which was made a defendant in the suit. As a result of all this, the independent lamp companies were compelled to pay excessive and unfair prices for the bases, and thus were placed at an unlawful disadvantage as competitors. A decree was entered in the government suit, which required the appellant openly to take over its lamp subsidiaries, and enjoined it from utilizing any patents as a means of controlling the manufacture or sale of any type or types of lamps not protected by lawful patents, such as the carbon lamp, or the tungsten lamp, the patents on which had not yet been issued.
Under this decree the General Electric Company took over the factory of the Providence Gas Burner Company and made it the Providence Gasworks of the General Electric Company. It thereafter carried
“The selling of the solution does not authorize, inferentially or otherwise, the use of it for the purpose of nickel-plating, whatever else it may be used for, without also procuring a license to nickel-plate under the first and fourth claims,- which are separate inventions.”
“The limitations upon this is that the things which pas.s by implication only must be incident to the grant, and directly necessary to the enjoyment of the-thing granted. The foundation of the maxim lies in the presumption that the grantor intended to make his grant enjoyable. * * * It is evident, that the extent of an implied license must depend upon the peculiar facts of each case. The question in each case is whether or not the circumstances are such as to estop the vendor from asserting infringement.”
We accept this statement of the law, and with it as a guide we think the parties here did not intend that an implied license be granted. The mere sale imports no license, except where the circumstances plainly indicate that it did, or except where good faith required it, or where it cannot be doubted that the vendee understood that they were getting a license. We are convinced that, in view of what was written in the terms of sale, there was no justification for the vendee’s being thus-
Orders reversed, with directions to grant the injunction pendente lite as prayed for.