12 F. Cas. 272 | U.S. Circuit Court for the District of Southern New York | 1868
The motion in the suit against the Hudson River Railroad Company will be first considered. The several acts of infringement alleged in.
The first, second and fourth alleged infringements occurred within the Northern district of New York. The causes of action growing therefrom arose, therefore, within that district, and, under the provisions of the sixth section of the act of April 3, 181S (3 Stat. 415), this court has no original jurisdiction of such causes of action.
In regard to so much of the third alleged infringement as relates to cars marked “New York Sus. Bridge & Buffalo,” and in regard to the fifth and sixth alleged infringements, the Hudson River Railroad Company show that they own, and rim upon their road, cars marked “New York, Sus. Bridge & Buffalo,” and also freight cars known as “White Line” ears, and “Blue Line” cars, and that they cannot say whether the cars so marked, referred to in the affidavit on the part of the plaintiffs, were the ears of the Hudson River Railroad Company or not. If the cars referred to did not belong to the Hudson River Railroad Company, it is for the plaintiffs to show the fact affirmatively, or else, on the evidence, it must be assumed that such cars did belong to that company. The plaintiffs have not shown that such cars did not belong to that company. They should have designated the particular cars by numbers, or other sufficient description, so as to have required and enabled the defendants to show whether such cars were or were not their property. In regard to so much of the third alleged infringement as relates to cars known as “sleeping cars” and “drawing-room cars,” the Hudson River Railroad Company show that the trucks and running gear, including the brakes, of such cars, belong to that company.
The only question for consideration, therefore, is, whether the company, by using the patented brake, within this district, on their own railroad, on cars belonging to them, marked “New York, Sus. Bridge & Buffalo,” and on cars belonging to them known as “White Line” cars, and on cars belonging to them known as “Blue Line” cars, and by using the patented brake, within this district, on their own railroad, on sleeping cars and drawing-room cars, the brakes, trucks, and running-gear of which cars belonged to them, have infringed the patent in question, as extended. It is understood, that all the alleged infringements set up occurred in November, 1867, and therefore since the extension of the patent. The company justify such use,' under a license granted to them by the patentee, April 8th, 1862, whereby he-licenses them “to construct and use said improvement on any and all cars belonging to said company, and to use the same improvement upon the entire length of their road, and upon all parts thereof, extending from the city of New York, in the state of New York, to the city of Troy, in said state, for and during the term for which said letters patent are or may be granted.” Brakes belonging to the company, attached to trucks and running-gear belonging to them, and so used, are, undoubtedly, within the meaning of the license, used on cars belonging to the company, even though the superstructures which are borne upon the trucks do not belong to the company. The license, therefore, covers all that has been thus done by the company, that is, the use of the patented improvement on cars belonging to the company, on their own railroad, so far as the extent of their acts is concerned. As to the duration of the license, nothing is said, in the license, about an extension of the patent. The license is to continue “for and during the term for which said letters patent are or may be granted.” The first question that arises is, as to the meaning of these words, “may be,” and whether they refer to or can be construed to include an extended term of the patent. I do not think there is any thing in the license to indicate that the parties to it had at all in view a continuance of the license during any extended term of the patent. The provision that the license is to continue “during the term for which said letters patent are or may be granted,” is satisfied by holding it to apply exclusively to a reissue of the patent. There is nothing in the language which makes it exclusively or even necessarily applicable to an extension. The presumption of law in regard to every license under a patent is, that the parties deal in regard only
There being, then, in this case, no express stipulation carrying the license into the extended term, the only right which the Hudson River Railroad Company possesses, under the extended term, is that which is given to it by the clause of the 18th section of the act of July 4th, 1830 (5 Stat 125), which provides that the benefit of the extension of a patent shall “extend to assignees and grantees of the right to use the thing patented to the extent of their respective interest therein.” As the thing patented in the present case is a machine, the law is entirely settled, that the only right which the company, as a lawful licensee under the patent, for the first term, of the right to use the thing patented, acquired under the extended term, by virtue of that clause in the 18th section, is the right to continue to use, until they are worn out, or as long as they can be repaired, such brakes as they had lawfully in use, under said license, on the 2d of October, 1863. Wilson v. Rousseau, 4 How. [45 U. S.] 646; Bloomer v. McQuewan, 14 How. [55 U. S.] 539; Chaffee v. Boston Belting Co., 22 How. [63 U. S.] 217; Bloomer v. Millinger, 1 Wall. [68 U. S.] 340. As it is not shown in the papers whether the particular brakes used by the company since the 2d of October, 1863, on their own railroad, on cars belonging to them, marked “New York, Sus. Bridge & Buffalo,” and on cars belonging to them known as “White Line” cars, and on cars belonging to them known as “Blue Line” cars, and on sleeping cars and drawing-room cars, the brakes, trucks, and running gear of which cars belonged to them, were, or were not, lawfully in use under said license on the 2d of October, 1863. it is impossible for this court to decide whether the plaintiffs are, or are not, entitled to an injunction, as respects those particular brakes. The decision of the motion, as regards the Hudson River Railroad Company is, therefore, suspended, to allow the plaintiffs to supply evidence on this point, and with leave to them to do so on notice to the company.
The several acts of infringement set forth in the suit against the New York and Harlem Railroad Company are: (1) The running, by the New York and Harlem Railroad Company, upon their own railroad, at or near Bedford, in the Southern district of New York, of freight cars belonging to the Hudson River Railroad Company, containing infringing brakes; (2) the running on the tracks of the New York and Harlem Railroad Company, of cars belonging to the New York and New Haven Railroad Company, containing infringing brakes, (it being as
The license to the New York and Harlem Railroad Company was granted on the 1st ■of June, 1804, after the extension. It recites the fact that the patent had been extended, .and that the company “desire the right and license to construct and use said improvement anew and subsequent to the date of, .and during the term of, said extension, as well on cars which may be built or purchased by said company subsequent to the •date of said extension, as upon cars not fitted up with said improvement before the date of .said extension,” and then licenses “said company, and any and all other parties that may hereafter own or operate the said New York .and Harlem Railroad, to construct and use .said improvement anew on any and all cars now, or hereafter, owned by said company, •or by parties that may hereafter own or op-érate said New York and Harlem Railroad, .all such construction and use to extend to and over the said New York and Harlem Railroad, and on, to, and over, the roads where said cars may be employed or run on joint business.” This license extends only to cars owned by the New York and Harlem Railroad Company. It does not extend to •cars belonging to the Hudson River Railroad •Company, or to cars belonging to the New York and New Haven Railroad Company. The New York and New Haven Railroad •Company cannot properly be considered, within the meaning of the license, as operating the New York and Harlem Railroad, in running their own cars on that road, under .a permission to that effect. Therefore, the license to the New York and Harlem Railroad Company does not authorize the use on its road of the brakes which are on the freight cars in question belonging to the Hudson.River Railroad Company.
The license to the Hudson River Railroad Company, which is set up to justify the use, since the 2d of October, 1803, by the New York and Harlem Railroad Company, on its own road, of freight cars which belong to the Hudson River Railroad Company, and which the latter company causes to be run over the road of the former company, and in the running and use of which both of the companies are interested, and from the running and use of which both of the companies' derive pecuniary profit, is. the same license to the Hudson River Railroad Company, dated April 8th, 1862, which has been before referred to, and the provisions of which have been considered in reference to the motion for an injunction against that company. In addition to the clauses before mentioned, the following provision is contained in the license: “I also further authorize and license said company to run, or cause to be run, their said cars, with said improvement thereon, on and over other roads, on joint business, during the term above stated.” This provision, while it is broad enough to cover the use in question of the cars of the Hudson River Railroad Company, on the road of the New York and Harlem Railroad Company, during the first term of the patent, is limited to that term, and does not run into the extended term. There is nothing in this license to justify the use complained of since the extension. Such use must be upheld, if at all, by showing that the brakes on the cars be longing to the Hudson River Railroad Company, which that company have caused to be run on the road of the New York and Harlem Railroad 'Company, on joint business, since the extension, were brakes lawfully in use on the 2d of October, 1803. No evidence is furnished on which the court can decide this point as to those brakes, and the motion in that respect is suspended, to allow the evidence to be supplied.
The license to the New York and New Haven Railroad Company, which is set up to justify the running by that company of its own cars on the-tracks of the New York and Harlem Railroad Company, by the permission of the latter company, is dated April 22d, 1S64. It recites the extension, and the fact that the company “desire the right and license to construct and u§e said improvement anew and subsequent'to the date of. and during the term of, said extension, as well on new cars which may be built or purchased by said company subsequent to the date of such extension, as upon cars not fitted up. with said improvement before the date of such extension,” and then licenses the company “to construct and use said improvement anew, on any cars belonging to them, and during the term of said extension, and not included by law in the former license given by me to said company.” The license