| U.S. Circuit Court for the District of Eastern Pennsylvania | May 3, 1897
The bill sets forth that the complainants are now endeavoring to become active competitors of the defendants in the sale of incandescent lights, etc., and that one of the defendants manufactures such lights, etc., and the other of them is engaged in selling goods made by the former. It states that the Welsbaeh Light Company has brought suit against these complainants, in this court, for alleged infringement of a certain patent, and that the complainants have duly appeared in that suit. It avers that the patent so sued upon is solely for a process, and that the complainants cannot be held to be infringers thereof, because, as alleged, they are not manufacturers, but are exclusively engaged in selling the products of a certain manufacturer, against whom the Welsbaeli Light Company has brought suit, in the Southern district of New York, for alleged infringement of the same patent,, and which suit the said manufacturer, who is amply responsible, is vigorously contesting. The bill also avers that the patent referred to is now invalid, under section 4887 of tlie Revised Statutes, by reason of the expiral ion of a certain Spanish patent for, as alleged, the same invention. The foregoing is the substance of paragraphs 1 to 8 of the bill. The gist of the complaint is presented in the paragraphs which follow7. and may, I think, be fairly reduced to the statement that the defendants in this suit, with knowledge of the matters already mentioned, and with intent to destroy the complainants’ business, have conspired to threaten, intimidate, and prevent the customers, present and prospective, of the latter, from dealing with them, “by the systematic and formulated plans, methods, and concerted conduct and action, in manner and form following,” namely, by publishing and distributing “false, injurious, malicious, scandalous, threatening, and intimidating circulars or printed letters,” containing intimidating threats of suit on the patent before referred to; by distributing such circulars among the customers and prospective customers of the complainants, and among the trade and the public generally; by spying upon the complainants’ business, with the aid of detectives and others, and thus ascertaining their customers; by causing the defendants’ attorneys to write letters to the complainants’ customers (so ascertained), threatening suit against them on the patent aforesaid;
The allegation that the patent under which the defendants justify is invalid, and, even if valid, is not infringed by the complainants, is one which, of course, might be made in defense of the suit which it is admitted the defendants have brought against the complainants. However impregnable that defense may be thought to be, it must be maintained in that proceeding before its availability can be assumed or adjudged in another. It is a mistake to suppose that, by demurring, the defendants have conceded its sufficiency. The demurrer avérs that the bill does not show title to the relief sought, but this averment involves néither admission nor denial of invalidity or of noninfringement, but simply challenges the right of the complainants to have either of those questions tried in the manner they propose; and, in my opinion, it is clear that they are not entitled to have them tried in this suit. Accordingly, the only legitimate inquiry now is: Are the acts and conduct of the defendants, as alleged in the bill, such as a court of equity should restrain the owner of a presumptively valid patent from doing and pursuing? The allegation of conspiracy is of no potency. If whar has been done is wrongful, its repetition or continuance should be enjoined quite as surely if done .by only one of the defendants as if done by both of them in co-operation; and it is also true that, if that which has been done or is anticipated is not wrongful, the fact that the defendants may have combined to do it would not make it so. I attach no importance to the circumstance that the defendants have informed themselves respecting the customers of thé complainants, or to their method of doing so. It is not asserted that this, in itself, has worked any injury to the complainants.' It is the use made of the •information so obtained, and not the obtaining it, which is the real ground of complaint. What, then, does the bill allege that the defendants have actually done to the injury of the complainants? If nothing more were alleged than that the defendants have given notice, in good faith and in temperate language, of their purpose to proceed against alleged infringers, I would have no hesitation in holding that they had not exceeded their right. But the bill goes somewhat further. It alleges the intent of the defendants to be, not to protect and maintain their own rights, but, under color and pretense of that object, to destroy the complainants’ business, in advance of any adjudication of the question of their right to maintain and continue it, and that, in pursuance of such intent, the circulars or letters complained of have not been properly framed, but are “false, injurious, malicious, scandalous, threatening, and intimidating.” It is not manifestly impossible that this allegation may be sustained, and in such manner as to entitle the complainants to relief, though I may say that it does not seem to me to be probable, in view of the fact that the complainants have themselves been sued on the patent, that the defendants’ good faith in notifying their purpose to proceed against other alleged infringers