Sanders v. Logan

21 F. Cas. 321 | U.S. Circuit Court for the District of Western Pennsylvania | 1861

GRIER. Circuit Justice.

The complainant alleges, in his bill, that he is the original and first inventor and patentee of “a machine for winnowing and cleaning grain of chaff, smut, and other impurities.” His original patent was dated June 19, 1849. It was afterward surrendered and a new patent granted, with an amended specification, on April 10, 1S55. The bill prays for an injunction and an account; and yet admitting the validity of the patent and its infringement by respondents, it is clear that, as a proper remedy for the injury complained of, neither an injunction nor an account is necessary or proper. The invention claimed is for an improvement in the machinery of grist mills, and the only injury to plaintiff's rights exists not in using his invention, for it is his interest that all mills should adopt and use it, provided he is paid the price of a license. Such price or value of a license is the true measure of the “actual damage” suffered, and of the remedy which the patentee can obtain, or has a right to claim in equity. A court of law may treble such a verdict where the defendant has acted wantonly or vexatiously. Where the measure of damage is a certain sum, and does not require an account of profits, the peculiar jurisdiction of a chancellor is not needed for that purpose. The remedy by injunction is neither necessary nor proper to enforce the payment of money. It is true that injunctions are now more liberally granted than in former times, yet the granting or refusal of them rests in the sound discretion of the court A rash or indiscreet exercise of this power may be very oppressive, of no use to the complainant and ruinous to the defendant As a remedy, it should be administered only for prevention or protection. Where it is not necessary for these purposes, it is merely vindictive, injuring one party without benefit to the other. There are many cases of patents where it is the only efficient remedy to protect the patentee, and prevent continuing trespasses on his rights. But there are others in which it answers neither purpose, and is only used for extortion or vengeance. A chancellor who would issue an injunction to stop a mill or manufactory, locomotive or steam engine, because in its construction some patented device or machine has been used, would act with more than doubtful discretion. Stopping the mill or steam engine might inflict irreparable injury, but could not benefit the inventor. The compensation to him for this trespass on his rights is the price of a license. The wrong done him is not the use of his invention, but the non-payment of a given sum of money. To issue an injunction in such a case, where neither prevention nor protection is sought or required, but only compensation, would be an abuse of power. An injunction is not to be used as an execution or for extortion.

The circuit courts of the United States have jurisdiction of controversies arising under the patent laws by direct grant from congress. They do not merely act as ancillary to a court of law, and therefore do not require the pat-entee to establish his legal right in a court of law and by the verdict of a jury. There has been no objection interposed' to the jurisdiction of the court in this ease, nor do I wish to be considered as deciding that the court has no jurisdiction, but rather as suggesting to counsel whether they have chosen the proper tribunal, when the bill exhibits a case where neither account nor injunction is a proper remedy, but only a decree for a certain sum of money, with interest, as fixed actual damage. A court of equity can inflict no exemplary or punitive damages as a court of law may. Hence the patty may have better remedy in a suit at law.

The complainant’s patent gives the following general description of’ the nature of his invention: “The nature of my invention consists, first, in separating the chaff, smut, and other impurities from grain, by subjecting the same to a blast within a vertical spout, as will be hereafter shown, whereby the sound grain, by its superior gravity, is prevented from being carried upward by the blast or current of air, and, at the same time, the impurities, which are light, follow the current, and are drawn through the fan-box and discharged through the longitudinal trunk of the same, the light or imperfect grain being carried upward' and lodged within a hopper at the lowest part of the horizontal trunk. My invention also consists in the combination of vertical blast spouts, screen, hopper, and fan, arranged and operated, as will be hereafter shown and described.”

The claim set forth in the original patent of 1849 is a correct description of the whole invention. The amended patent of 1855 describes the same invention, with immaterial variations, or more minute directions as to size and shape. The chief difference is, that the claim of the last is made broader than that of the original, whether better may be doubted.

The answer of respondents alleges: 1. That complainant was not the original and first inventor of the machine, or combination of devices, claimed as his invention. 2. But admitting him to be so, he had abandoned his invention to the public prior to the application for a patent. S. The invention was in public use, with knowledge and consent of complainant, more than two years previous to his application for a patent. 4. That the machine used by the defendant does not infringe the rights of complainant. If any one of these allegations be established by the evidence, the respondents are entitled to a decree.

I see no reason to doubt that the plaintiff is the original inventor of the device in the first claim, and, also, of the combination claimed in the second, notwithstanding the valuable suggestions and assistance rendered to him by his partner, Justus, in perfecting his machine.

The third claim is too broad. The vertical spout had previously been used, in the same way. in other machines invented and patented for the purpose of cleaning grain from its impurities. It is to be found in Lull’s smut machine, patented in 1843, and in some others.

Sanders made his first machine in 1844. It embodied the ideas of his subsequent patent as to the combination of devices to be used, though differing somewhat in arrangement and form. He had put it in operation in Hugh Hyland’s mill in Virginia. Afterward, iu September, 1855, when he was in the employment of Justus, with whom he had first learned his trade of millwright, and assisting him in his erecting the machinery of Davis’ mill, he informed him of the machine he had put in operation in Virginia. Justus seized upon the ideas suggested by Sanders, made plans and a model, improving upon them, and erected the machine, substantially as it was afterward patented, in Davis’ mill. This was in December, 1845. In July, 1846, Justus erected one of these machines for Crawford. In September, Justus and Sanders entered into partnership as millwrights. Sanders suggested that they should take out a joint patent for the invention. Justus said he thought it did not deserve a patent; there was too little to be patented. They then proceeded to put these machines in every mill which they were employed to erect during their partnership, which was dissolved in 1S48. They considered the machine as completed by their joint invention, and freely gave it to the public till November 30, 1848, when Sanders entered, his claim for a patent.

It is clear, therefore, that assuming that Sanders was the sole inventor of the machine, as perfected in 1843, with Justus’ assistance, yet that he was not entitled to a patent for the same. The evidence established a clear case of abandonment, and, moreover, that the invention was publicly used, with the knowledge, consent, and approbation of the complainant more than two years previous to his application for a patent The allegation that these machines were made and incorporated into só many mills all over the country for the purposes of experiment, is too absurd to be entertained for a moment.

By the act of July 4, 1836 [5 Stat. 117], a use of an invention by a single person, or a sale of the thing invented to a single person, might amount to such a public use, without consent and allowance of the patentee, as would forfeit his right to a patent.

Section 7 of the act of 1839 [5 Stat. 354], provides a remedy for cases where the' conduct of the party does not show an actual abandonment. It secures the rights of those who may have purchased or constructed any newly-invented machine prior to the application for a patent. It provides that “no patent shall be held to be invalid by reason of such purchase, sale, or use prior to the application for a patent, except on proof of abandonment of such invention to the public; or that' such purchase, sale, or prior use, has been for more than two years prior to such application for a patent.” The obvious construction of this section of the act is, that a purchase, sale, or prior use, shall not' invalidate, unless it amounts to an abandonment to the public. Although I am of opinion that the evidence exhibits a clear case of abandonment, as distinguished from the “purchase, sale, or prior use,” which it tolerated for two years, it is not necessary to rest our decision on that point alone, or to attempt to draw a line of distinction which might be applicable to other cases. The prior use has been proved to have existed more than two years before application for a patent.

As I think the respondents have supported this plea, they are entitled to a decree; I need not, therefore, enlarge upon the plea denying the infringement, further than to say, I think the respondents would have been entitled to a decree in their favor on that point also.

The bill must be dismissed, with costs.