Hurd v. James Goold Co.

203 F. 998 | 2d Cir. | 1913

PER CURIAM.

It is unnecessary to recite the history of the litigation under this patent or to set forth in detail the facts of this case. Reference may be made to the opinion in the court below and to our certification of questions to the Supreme Court in the suit of the same plaintiff against Seim and Reissig, December 7, 1911. 191 F. R. 832, 112 C. C. A. 346. The questions certified have not yet been reached for argument in the Supreme Court.

[1] It is manifest that the answers to those questions will have a controlling influence on the determination of this suit. They deal with the rights which complainant may have in the territory covered by his earlier exclusive license, and with the status of tires made in the circuits where the patent has been held invalid under the opinion in Kessler v. Eldred, 206 U. S. 285, 27 Sup. Ct. 611, 51 L. Ed. 1065, in view of the fact that the Supreme Court has held this patent valid and infringed by such tires in Diamond Rubber Co. of New York v. Consolidated Rubber Tire Co., 220 U. S. 428, 31 Sup. Ct. 444, 55 L. Ed. 527. The circumstance that we certified these questions to the Supreme Court indicates that we were in doribt as to the answers to be given. While such a doubt exists as to- the fundamental propositions on which complainant must rely, we think a preliminary injunction should not be granted, and for that reason have concluded to reverse the order appealed from. Inasmuch, however, as a favorable answer to those questions might induce complainant to bring the matter again before the District Court, in this cause, we think it desirable to express an opinion on some of the other questions which have been argued here.

[2J Complainant has joined with himself two corporations who hold the legal title to the patent. These corporations have been enjoined in the Sixth circuit from maintaining suits for infringement:. These injunctions, of course, bind the corporations against which they were issued; but we cannot see how they can operate to interfere with Hurd’s legal rights (assuming that the answers to the certified questions indicate that he has such rights) or with the course which' equity practice indicates he should follow in vindication of those 'rights. That practice authorizes him, as holder of an exclusive territorial license, to present' his licensors as co-complainants, even against their will and in spite of their protests. Whether they may say,-in response to his request, “we will not appear” because we are dissatisfied with you, or because a court has told us we must not, is a matter of indifference to Hurd. Despite these objections, he has brought them in as co-complainants. Whether his doing so exposes them to punishment for contempt is a matter to be decided when it comes up; we have a definite opinion about that, but it is not for us now to express it. We think it strains the doctrine of comity beyond the breaking point to contend that, in order to uphold the hands of the enjoining court, we should deprive Hurd, over whom that court never had any jurisdiction, of the regular and orderly equitable procedure to maintain his legal rights, assuming that the deliverance of the Supreme Court on the certified question may indicate that he has legal rights, which he can maintain against users of infringing tires in his territory.

We fully concur with Judge Ray in the finding that the defense of laches is not made out by the proofs.

On.the question of infringement, we think the District Judge did not quite correctly appreciate what was held by this court and by the Supreme Court as to the differences between the Grant patent and the prior art. No court has held that in the Grant structure the tire must be held so loosely that it will rise from the metal channel to any appreciable extent, so that “dust, dirt, and mud” would enter the channel with the natural results of such action. All that is held is that it must yield sufficiently when it strikes a lateral obstruction to prevent being broken and injured by the blow. It is distinguished in this regard from tires of the prior art which were held in the channel by cement, and which were destroyed after a short period of use because they would not yield. There is a model of the alleged infringing tire in this- case, the accuracy of which, as we understand it, is conceded. It is .covered absolutely by the language of both claims; to us it looks like a Chinese copy of the structure we found to infringe in an earlier case. That Goold thinks he has drawn -his wires so tight that there will not be any tilting is of no moment. There is concededly a layer of elastic rubber under the two wires, and, however tightly they' may be drawn, the degree of tilting will necessarily depend on the direction and force of the blow. On the record now before us, we are satisfied that infringement is shown.

For the reason, however, expressed at the outset of this opinion, we think that this order should be reversed, without prejudice to any other application for relief, should complainant be advised to make one, after the decision of the Supreme Court shall have been announced, with costs of this appeal to appellant.