196 F. 47 | S.D.N.Y. | 1912
This is an application for a preliminary injunction to enjoin the defendants from infringing claims 1, 2, and 3 of United States letters patent numbered 963,905, dated July
The defenses in the present case are, in substance, the same as those passed upon in the case before Judge Ward, with the exception that the defendants urge that the structure they proposed to install in the hotel of the Greeley Square Hotel Company does not infringe the patent now in suit. It is unnecessary to discuss at length the legal effect of the agreement of September 13, 1902 (Exhibit C), for that agreement has been construed by Judge Ward, and with his construction I agree.
It is claimed, however, that, although Earsson was in the. employ of the complainant corporation when the patent in suit was applied for on August 1, 1904, yet that he made the invention prior to his employment by the complainant, and therefore that the complainant is not entitled' to the; benefit of the provisions of' the agreement of September 13, 1902, in respect 'thereof. This contention is not sustained either by the intent of the parties as gathered from the instrument -or by the particular language employed. The agreement provides that Earsson grants to the complainant company the exclusive' license to use “all other future patents and inventions devised or acquired by him with relation to elevators and their appliances.” What was manifestly in the minds of the parties as borne out by their contemplated. relations was that the complainant company should have the exclusive right to use all inventions devised or acquired by Larsson during his employment and all patents, whether the invention had been previously devised or was devised during the term of employment. From any point of view, therefore, the complainant is the exclusive licensee of the patent in suit No. 963,905. The defendants are estopped from questioning the validity of the patent; but, so far as the question of infringement is concerned, the defendants are in the same position as any third party, and they are entitled to a consideration of what the patent covers, and to assert that their structure is not tributary to the patent in suit.
It is also claimed that it was old to relieve the water pressure, but it is insisted that in the old construction there was no guide at the lower end of the plunger, and therefore that without such guide on a long run elevator the plunger will vibrate to such an extent as to render the operation dangerous.
It is also claimed that there were installed in the Ansonia Hotel prior to September, 1902, under Uarsson patent No. 781,435, devices having flexible guides, but not having pressure relieving means whereby, when the working part of the plunger exceeds its normal upward travel, the pressure will be relieved without allowing the plunger to escape from the control of the guiding mechanism. In the exhibits referred to by the defendant- (Uarsson "Exhibits 2 and 3) rigid guides and channels are shown, but those channels cannot become operative until the guides have been torn off by the stuffing box or the stuffing box damaged by the guides. In the construction shown in Uarsson Exhibit No. 4, there are evidently no. means for relieving pressure before the guides strike the stuffing box.
The complainant urges that the defendants have not pointed out. any construction where there has been a combination of a guide for
“1. The combination with a cylinder, plunger and stuffing box of a hydraulic elevator, of a guiding means connected to the lower end of the plunger and arranged to engage the stuffing box, the connection between the guiding means and end of the plunger being constructed to allow the water to escape through the stuffing box when the plunger exceeds its normal travel.
“2. The combination with a cylinder, plunger and stuffing box of a hydraulic elevator, of a guiding means for the lower end of the plunger, and a reduced connection between said guiding means and the end of the plunger, whereby water is allowed to escape through the stuffing box.
“3. The combination with a cylinder, plunger and stuffing box of a hydraulic elevator, of a guiding means for the lower end of the plunger, the lower end of the plunger having a reduced connection to the guiding means.”
Examining defendants’ structure as illustrated in Larsson Exhibit No._ 5 and described in the affidavits, it appears that that structure consists of an ordinary cylinder plunger and stuffing box. The plunger slides up and down the stuffing box, and on the bottom of the plunger are arranged four guiding wings. Eight holes are bored through the plunger, and, if the plunger exceeds its normal run, these holes will run above the stuffing box, and the pressure inside of the cylinder will be relieved by water flowing out of these holes in the plunger. The guides are not constructed to go up to or engage the stuffing box. When the water pressure in the cylinder is released, the guides are several feet below the stuffing box, and the escape of water does not take place through the stuffing box, but through the holes in the plunger. The plunger is made of the same smooth diameter its entire length, and the seal between the plunger and the stuffing box is never broken.
The defendants claim that these relief holes in the plunger are an old and ordinary feature which has been used for many years by Robert Wetherill & Co., Incorporated, the employers of the defendants Jones and Larsson.
Comparing, therefore, the defendant’s structure with the claims, it is apparent that the guiding means are not “arranged to engage the stuffing box,” and that there is no connection between the guiding means and the plunger constructed so as to allow, the water to escape through the stuffing box. ' Further, the reduced connection specified in claims 2 and 3 is not to be found in the defendants’ structure. There is a good deal of discussion as to how broad the patent is, and as to the limitations in the claims. It may be here remarked that the complainant does not contend for a broad construction of its patent such as would include the devices in elevators installed in the Ansonia Hotel, but, on the contrary, states that the Ansonia devices do not disclose the invention of the patent in suit. This brings us, then, to the limitations.
It is true that the dt. ice shown in Larsson Exhibit No. 5 performs
I am inclined to think, however, as above stated, that what the inventor had in mind in claim 1 was to accomplish the result by the engagement with the stuffing box therein described, while in the defendants’ structure it is not expected that the stuffing box will be engaged except in some extraordinary situation. So, too, I think the inventive thought described in claims Nos. 2 and 3 was the reduced connection which obviously is not employed in the defendants’ structure.
The complainant urges, however, that, in any event, the defendants come within the authority of Time Telegraph Co. v. Himmer & Carey (C. C.) 19 Fed. 322, and similar cases, but I am of the opinion that they have not shown facts sufficient to sustain satisfactorily the burden in this regard upon this application. Certain of the features employed in defendants’ structure are concededly old, and, within well-known restrictions, the defendant Tarsson had the right, after his contract had expired, to use his inventive genius in any direction or manner which did not conflict with the licenses granted to and the contractual relations engaged in with the complainant company.
Whatever may be the result on final hearing, the complainant’s case on this application for preliminary injunction is not complete to the point of reasonable certainty, for it is by no means clear that the defendants’ structure infringes, and admittedly there has not been a prior adjudication or a complete recognition by acquiescence.
The motion for preliminary injunction is denied.