10 F. Cas. 772 | U.S. Circuit Court for the District of Southern New York | 1879
This is a bill in equity founded on letters patent [No. 21,829] granted to the plaintiff, October 19th, 1858, for 14 years from that day, for a “photographic shield.” The bill was filed in 1873, after the patent had expired. The patent had, in fact, been extended, but the bill does not allege any extension, as the right for the extended term had been assigned by the plaintiff. The bill alleges the unlawful manufacture and sale by the defendants, ever since January 1st, 1864, of photographic apparatus containing the patented improvement. It alleges that the defendants had derived and received therefrom gains and profits to about the sum of $20,000, and prays that the defendants be required “to make a disclosure of all such gains and profits.” It also prays that the defendants be compelled to account for and pay over to the plaintiff all such gains and profits, and, in addition, to pay damages, and for an injunction to restrain the infringement of the patent by the defendants. There are no interrogatories to the bill.
The specification of the patent sets forth that the invention is an “improvement in frames or shields for photographic cameras.” Drawings are annexed. It says: “Fig. 1 is a view of the frame or shield with the back open, to show my improvements; Fig. 2 is a view of one corner; and Fig. 3 is a section through the frame, representing one of my improved corner pieces in place. Similar marks of reference denote the same parts. In taking landscape views, groups and similar pictures, the plate is used in a horizontal position, while in taking likenesses of one person, and similar views, the longest side of the plate receiving the same stands vertical in the camera. To accommodate these two positions in photographic and similar pictures, separate frames have been constructed to receive and shield the plate while being conveyed to and from the camera, or. else the camera has to be turned upon its side, greatly to the inconvenience of the operator, and the loss of time in adapting the plate and camera to take the particular picture. My said invention obviates all the foregoing inconveniences, and consists in what may be termed a ‘turn shield,’ the same being a frame a, adapted to the camera, with the back b, and slide c, in the usual manner. The interior of this frame forms a square opening, of a little more than the longest length of the plate to be used therein; d, d, are my improved corners, that are formed of suitable material, and each corner piece has two recesses for receiving the glass or other plate, the recesses 1, 1, sustaining the same when the longest sides of the plate are vertical, and the recesses 2, 2, receiving the plate when in .position for a landscape or similar picture. Between the recesses 1 and 2, in each corner there is, therefore, a square block or support, 3, measuring along Its side, one-half the difference between the vertical and horizontal sides of the glass or other plate, which, with the present sizes of plates, will be % an inch, one inch, or one and a half inches, for the square of the said block, 3. The frames carrying smaller sizes of plates, adapted to the main frame or shield in the usual manner, can be placed into the corners aforesaid, in either a vertical or horizontal position, and the plate will occupy a corresponding position within said frames.” The claim is: “The corners, d, d, formed with two recesses, and applied at the angles of a square frame, to receive the photographic plate, or its equivalent, in a horizontal or vertical position, as set forth.”
The record contains the following admission: “Counsel for defendants admits that the defendants, before the filing of the bill and since the date of the letters patent herein, have made and sold corner pieces of which Exhibit A is a sample; and, also, that they have sold, within the said period of time, corner pieces of which Exhibit B Is a sample; and that such corners were used and applied at the angles of square frames, used to receive and hold photographic plates in photographic cameras, which frames containing. said corners were also made and sold
The defendants attack the plaintiff’s patent for want of novelty, and several prior inventions are adduced. One is a patent granted to M. J. Drummond, assignee of William Lewis and William H. Lewis, the inventors, October 7th, 1856 [No. 15,854], for a “plate holder for photographic cameras.” The specification of that patent points out two matters as requiring remedy in taking photographs — one, that, immediately after the plate is taken out of the nitrate of silver bath, it is placed in the frame for the camera, and the liquid drops off into the frame, and, in handling, runs on to clothes, or carpet, or floor, and stains; the other, that the moist collodion and chemical substances on the corners of the plate adhere to the edges of the frame and rebate ana prevent the plate coming properly into focus, while such dirt and chemical matter also stains the chemicals on the plate, being often absorbed so as to become a blemish on the background. The specification states, that the nature of the invention consists in “the use of glass or similar vitrified corners in the frame that receives the comer of the glass or other plate, the said corners each being formed of one solid piece of vitrified material, so that there is no chance for the chemicals to come in contact with any material that will cause discoloration.” It further says: “We also introduce a receptacle into the bottom of the frame or holder, that catches any drippings from the plate and retains the same, even if the holder is laid down on its side.” The receptacle is not material. The glass corners are thus described: “h, h are solid corners of glass or other vitrified material, secured into the angles of the frame f, and, as these corners may be attached by different means, we have shown at 5, 5, small screws passing through holes in said corner pieces, into diagonal pieces, 6, 6, attached to the frame, and, over the head of said screws suitable cement is placed, but the same must be below the surface of the glass corners. At 8, 8, we have shown a flanch formed on the back of the glass corner, receiving screws that pass into the frame f. * * * We are aware that pieces of glass have been inserted in the corners of plate frames, to take the face of the glass or other plate, but said pieces of glass are very apt to become loose. The cementing made use of comes in contact with the corners and edges of the glass or other plate, and discolors the same, and there is no chance, for keeping the corners clean. In view of the foregoing, the nature and utility of our invention will be apparent, for, the solid. glass or vitrified corner can always be kept clean, -.and there is nothing that comes-in contact with either the surface or the edges of the glass or other plate, but the said vitrified corners. At 9, 9, small projections are shown on these vitrified corners, which, being slightly elevated, always take the plate, and are wiped off with greater ease, so as to ensure a proper focal position for the plate.” The patent claims: “Forming the glass or vitrified corners, h, with a flanch or rim, in one solid piece, the said flanch or rim taking the edges of the photographic glass or- other plate, substantially as and for the purposes specified, and irrespective of the manner in which the said vitrified corners are attached to the frame.” The testimony of William Lewis; one of said inventors, shows that he made and sold as early as 1856 square plate holders with the glass corners of the Drummond patent. Mr. Hicks, the defendants’ expert, states that he considers the substance of the invention set forth in the plaintiff’s patent to be “a photographic frame, having corners in the corners of the photographic frame, provided with recesses, and the whole, when complete, enabling the operator to reverse from a vertical to a horizontal position an oblong photographic plate, so that it shall be held, whether reversed or vertical, in three
It is urged for the defendants, that, as the patent had expired when this suit was brought, and no injunction could then be granted in it, and the bill is not a bill of discovery, the court has no jurisdiction to award, an account, and, therefore, cannot take cognizance of the suit, as a suit in equity. Perhaps the bill is not to be regarded as a bill to' obtain a discovery by answer to the bill, because the defendants are not, under the rule promulgated at the December term, 1850, amending rule 40 in equity, specially and particularly interrogated upon any statement in the bill. The bill states that the defendants’ gains and profits from the manufacture and sale of the invention, in infringement of the plaintiff’s rights, have been about $20,000, and prays “that the defendants may be required to make a disclosure of all such gains and profits.” It does not allege that the plaintiff cannot ascertain, without such disclosure, what such gains and profits are. On the other hand, no disclosure of gains and profits is necessary to establish the plaintiff’s right to a decree for an accounting, such as is usually given on an adjudication in favor of the plaintiff on a final hearing, on pleadings and proofs, in a suit in equity on a patent. Such disclosure is an incident of the accounting, and, in a decree for an accounting a provision is inserted that the defendants attend before the master and produce their books and papers and submit to an examination respecting their gains and profits. Such examination of an accounting party is provided for by rule 79 in equity. The disclosure or dis
In Nevins v. Johnson [Case No. 10,136], in this court, in 1853, before Hr. Justice Nelson and Judge Betts, the bill was filed after the patent had expired. It charged that the defendants had infringed, and “had realized great profits therefrom, and prayed a discovery of the particulars and extent of the use of the improvement, and that an account might be taken of the profits.” It was, in substance, like the present bill. It was demurred to, for want of equity, on the ground assigned, that there was a complete and adequate remedy at law in the case, and that a court of equity had no jurisdiction of it, because the term of the patent had expired before the suit was commenced and no injunction could be granted. But the court held, that, under the statute then existing (Act July 4,1836; 5 Stat. 124, § 17), jurisdiction in equity was conferred upon the court, irrespective of the right of the patentee to an injunction. The present bill was filed in 1S73, when section 55 of the act of July 8,1870 (16 Stat. 206), was in force, the language of which, in respect to the subject in hand, was, in substance, the same as thát of section 17 of the act of 1836, and the provisions of which are now found in sections 629, 711, and 4921 of the Revised Statutes. The cases of Sickels v Gloucester Manuf’g Co. [Case No. 12,841]; Imlay v. Norwich & ~W. R. Co. [Id. 7,012]; Smith v. Baker [Id. 13,010]; Jordan v. Dobson (Id. 7,519]; and Howes v. Ñute [Id. 6,790],— recognize the rule as laid down in Nevins v. Johnson [supra]. In some of those cases the bill was filed before the patent expired and the decree was made after it expired.
In Draper v. Hudson [Case No. 4,069], before Judge Shepley, in 1873, the bill was for an injunction and an account, on a patent. The defendant died pending the suit and his executor was made defendant. No discovery was prayed against the executor, and there was no proof of infringement by him. The case is a difficult one to understand. There were two claims in the patent, which was a reissued patent. The court held that no infringement of the first claim, after the reissue, was shown, and that the second claim was void. A dismissal of the bill would seem, therefore, to have been necessary. Yet the court went on to say, that, as there could be no injunction against the original defendant, who was dead, and none against the executor, because he had not infringed, the right to an account failed, because the’ right to an injunction and a discovery failed. English cases were cited and the court added: “Although the jurisdiction of the circuit court in equity, in patent causes, rests upon statute provisions, it is to be exercised according to the course and principles of courts of equity; and, the supreme court of the United States having decided, in Stevens v. Gladding, 17 How. [58 U. S.] 455, that ‘the right to an account of profits is incident to a right to an injunction, in copy and patent-right cases,’ it would seem to follow, that, in a case like the present, where the title to equitable relief fails, the general rule of equity applies, that the incidental relief fails also.” The bill was dismissed, without costs. The views of Judge Shepley appear to have been based on what he understood to have been decided in Stevens v. Glad-ding [supra]. That was a bill in equity founded oii the infringement of a copyright. The supreme court held that there had been an infringement The bill prayed for an injunction and for general relief, but did not pray for an account, nor was an account stated in the answer. The question raised was, whether there ought to be a decree for an account. Of course, the plaintiff was entitled to a decree for an injunction. The point considered was, whether the plaintiff could have a’ decree for an account, when he had not prayed for it. The court held that, as he was entitled to an injunction, he could have an account of profits, as an incident,‘and, also, that, as the bill stated a proper case for an account, one could be ordered under the prayer for general relief. The case does not decide, nor does it follow from it, that where, as here, the plaintiff states a case for an account, and prays for an account, and the defences are overruled, he cannot have an account, even though not entitled to an injunction. The weight of, authority in this country is in favor of the right to an accounting, in a case like the present.
The record shows that the defendants put in evidence the record of certain proceedings in a suit brought by them in the supreme court of New York, against the plaintiff. Such evidence was put in in November, 1874. No objection was taken to it at the time, as not put in in season, or as not set up in the answer, or for any other cause. The record states that it was put in evidence, and that the seven papers constituting such proceedings were marked as exhibits for the defendants. On the 30th of June, 1S75, and not before, the record states that the “complainant’s counsel gives notice that he will move, before the hearing, to strike from the record” the said seven exhibits. The record states no reason as a ground for the notice or for the motion. At the hearing such motion was made, on the ground that no de-fence based on such proceedings is set up in the answer.
The proceedings show that the defendants brought a suit against the plaintiff, in the state court, in 1864, to recover a debt. Judgment was had in May, 1866. On the 12th of October, 1866, in proceedings supplementary to execution on said judgment, one Beamish was appointed by said court receiver “of all and singular the debts, property, equitable interests, rights and things in action of
The defendants contend, that, by virtue of said proceedings and said assignment, any right which the plaintiff had to recover against them for an infringement of the patent sued on has become vested in the defendants. Under sections 11, 14, and 17 of the act of July 4, 183G (5 Stat. 121, 123, 124), it was always held, that no one could bring a suit, either at law or in equity, for the infringement of a patent, in his own name alone, unless he were the patentee, or such an assignee or grantee as is mentioned in the 11th and 14th sections of that act The provision in section 36 of the act of July 8, 1870 (16 Stat. 203), in regard to the assignments of patents and of interests therein, now embodied in section 4898 of the Revised Statutes, is not different from that found in section 11 of the act of 1S36. The provisions in sections 55 and 59 of the act of 1870, in regard to suits in equity and at law for the.infringement of a patent, now embodied in sections 629, 711, 4919, and 4921 of the. Revised Statutes, are not different from those found in sections 14 and 17 of the act of 1836. These provisions were considered by this court in the case of Nelson v. McMann [Case No. 10,109]. Under them no person can bring a suit for profits or damages for infringement, who is not the patentee or such an assignee or grantee as the statute points out. A claim to recover profits or damages for past infringement cannot be severed from the title by assignment or grant, so as to give a right of action for such claim, in disregard of the statute. The profits or damages for infringement cannot be sued for except on the basis of title as patentee, or as such assignee or grantee, to the whole or a part of the patent, and not on the- basis merely of the assignment of a right to a claim for profits and damages, severed from such title. Therefore, if, in the present ease, no such assignment or grant has been made to the defendants as the statute contemplates, they could not bring suit, in their own names, under the assignment made to them, to recover any claims, profits or damages for infringement, which belonged to Gordon, nor can they use the assignment as a defence against any such claims existing against themselves in favor of Gordon. In this case there has been no assignment executed by Gordon. The fight claimed by the defendants rests, therefore, wholly on a transfer by operation of law. In Stephens v. Cady, 14 How. [55 U. S.] 528, it was strongly intimated by the supreme court, that an assignment of a copyright by operation of law, unaccompanied by an assignment made by the owner, vests no title. In Stevens v. Gladding, 17 How. [58 U. S.] 447, the same court suggests that there would be great difficulty in assenting to the proposition that patent-rights and copyrights are subject to sale under the process of state courts. In Ashcroft v. Walworth [Case No. 580], it was held, that the title of an insolvent debtor to, or his interest in, a patent, does not pass to his assignee in insolvency, by an assignment of his property made by a
It is held (Moore v. Marsh, 7 Wall. [74 U. S.] 522), that the assignment of a patent does not carry with it a transfer of the right to damages for an infringement committed before such assignment. It is not at all clear that the transfer of the “claims” which the assignment in the present case transfers, can be construed to cover claims for past infringements. Dibble v. Augur [Case No. 3,-879],
If the defence under the receivership were held to be available in respect to the whole or any part of the claim of the plaintiff, the defendants would, probably, on the facts in regard to the putting in evidence of the proceedings in the state court, be held to be entitled now to file a supplemental answer setting up such proceedings; but that question does not now arise. There must be a decree for the plaintiff, for an account of profits and damages.
