7 F.2d 837 | 2d Cir. | 1925
(after stating the facts as above). Since defendant had good right to terminate the license granted to it at any time, it had the right also to identify the Mathieu patent with its own trade-mark, and then throw the patent aside and take the risk of infringing under its favorably known trade-mark. There was no estoppel created by the fact that defendant was once an exclusive licensee; but the morals of the situation above depicted neeii no comment.
The only substantial defense pleaded is that design 55,296 and structural or mechanical patent 1,354,262 constitute a ease of double patenting within Miller v. Eagle, etc., Co., 151 U. S. 186, 14 S. Ct. 310, 38 L. Ed. 121. This means that a question of fact must be decided, viz.: Does the structural patent show anything more than or different from the design patent?
It was pointed out by the court below that the design patent does not indicate the material for the globe; and, if some kind of glass be assumed, the design does not show what kind — whether (e. g.) translucent, transparent, or opalescent. Neither does the design patent indicate how the globe is to be made; whether unitary or in parts. In short, the design, as always, appeals to the eye alone; it indicated an artistic result, and gives no direction as to how that result is to be reached.
But the structural patent claims a combination of members described in mechanical or mathematical terms; so that (e. g.) the elaim above quoted, read in the light of the disclosure, plainly puts forward as invention a unitary globe responding to certain laws of optics regarding the reflection and diffusion of light. The proposition here is in a true sense the same as that treated by us in Bayley v. Standart, etc., Co., 249 F. 479, 161 C. C. A. 436. For there might be a globe presenting the optical situation of the structural patent, which did not have the shape of its copending design patent. Indeed, the history of this invention goes to prove this very thing, for the plaintiff’s proposition is that defendant is infringing with a globe that corresponds to design 64,122, and which is exactly the same globe as it made when licensed under 1,-354,262.
There is no evidence that the optical combinations embodied in defendant’s T. R. B. unit are not the same combinations as those covered by the structural patent in respect of which defendant has been enjoined. For the reasons now stated, we are satisfied that said structural patent is not a case of double patenting over the earlier design. Defendant’s present position is an afterthought, for otherwise it would never have paid tribute under the structural patent for an object which externally did not look like that design patent, which is now asserted to have invalidated the patent in suit. Nothing except this alleged double patenting is set forth in support of this appeal.
We have not found it necessary to consider the effect, if any, of the copendeney of design 55,296 and No. 1,354,262; nor have we overlooked the fact that the patent in suit is as yet unadjudieated. It is enough to note that for many years lack of adjudication has not prevented injunction pendente lite in a proper case, and we think this is such a case.
Order affirmed, with costs.
