*1 -420 Manufacturing National v. Appellant, Company,

The Temco Register Sullivan, L. William Company, Ticket Electric Nevins.* Walter S. Peabody, William L. Nevins, Frank J. (2d) W. S. 21, 1929. Opinion Appeals. June filed Louis Court of St. *2 * Corpus Juris-Cyc Equity, 21CJ, 212, References: p. 212, 48; section n. 32CJ, Injunctions, 620, p. 369, 54; section 885, p. n. section n. 49.

Hugh Wagner K. appellant. for the

Foristel, BVair, & Mudd, Haberdcht of counsel. Pearcy

Smith & and Rodney Bedell for defendants. *3 specific perform equity for the a suit in SUTTON, C. This is 6, 1914. The March was commenced on ance of a contract. The suit 18, 1909. On that date de October contract in suit was executed on by plaintiff employed William L. Sullivan was fendant *4 employed When inventor, and mechanic. capacity draftsman, anof which con employment is the required sign contract, an he was right agreed should have the whereby plaintiff suit, he tract should make relating which he plaintiff’s business to all inventions application he file plaintiff of or which employ while in the on should employment. his after the cessation of patent years within three for which designed mechanisms employ plaintiff, Sullivan While in of the made, by patent applications plaintiff, and executed and sold were plaintiff. Plaintiff assigned them to the mechanisms, and for such Selling through the Automatic Ticket mechanisms marketed these successors un Register Company, predecessors and its and and Cash plaintiff relation with said 1914, terminated its 1, when til October 1911, plain 19, On October Sullivan left the Company. Automatic driven invented an electric motor employ. afterwards He tiff’s of years within three after the cessation issuing machine, ticket July 29, 1912, application for plaintiff, on filed with employment his 712-113, application, which is No. resulted This patent thereon. December, In 1,308,966. 1912, No. Sullivan patent of issuance the with, Register Ticket National Electric organized associates defendant the manufacture Company. company undertook to Said defendant operate make it but could application, machine in said described hence proposition, and reliably enough to be come a commercial failure of After the time in its manufacture some abandoned issuing machine em ticket machine, this another Sullivan invented for application and filed bodying mechanisms, operating different left the after he years three patent thereon, 26, 1914, on October over employ application plaintiff. of This the resulted the issuance of patent 1,145,818. company No. Defendant and sold manufactured following drawings patent the specifications said No. 1,145,818. 1914, In November, Company, which, the Automatic longer above, agency plaintiff’s machines, as stated no had for company a into contract with the defendant to sell entered chines, its ma during and was the exclusive distributor of its machines years 1915, 1916, 1918, and 1917. In relations between de company Company fendant and the Automatic terminated, were Company began issuing the Automatic to manufacture a ticket ma competition chine in with the by machine manufactured and sold company. In action, decree, defendant court, this its ren April 1, 1918, on the assignment plaintiff dered ordered in constituting subject-matter patent vention No. rendered upon condition, however, This decree was 712.113. plaintiff should reimburse 'for outlays per the defendants their fecting patenting invention, appointed said for the referee purpose determining the amount of such reimbursement and the damages, any, amount pay if plaintiff defendants should withholding assignment July invention. 8, on court, 1918, enjoining amade further order directly defendants "from or indirectly making, using subject-matter selling, or of the Sul application, 712,113, livan serial No. for United Letters-patent.’’ States July 15, On 1918, the court vacated said order, and in lieu entered a specific thereof more limited enjoining order, de "from, directly making, fendants machine, or indirectly, selling, using subject-matter application, serial No. 712.113, United States Letters-patent, as said application, and specifications drawings therein, contained now stands in United States On 16, Patent Office.’’ July day after the final injunction made, order was company defendant sought of its counsel as advice to whether or not the manufacture of machines under Sullivan No. 1,145,818 would constitute whereupon violation the order, counsel wrote company defendant *5 up that he taken the judge had with matter judge.had the who made in the junction, distinctly and that the told him that the order was right the meant to affect of defendant company to manufac patent ture Sullivan No. 1,145,818, and counsel advised defendant patent under safely manufacture its machine company it conld receiving this Upon violating injunction. I,l45,818 No. without the company manufacture proceeded to counsel, from defendant advice through selling openly the same patent 1,145,818, machines under No. and in time up large business, States, out the built a United and The of these machines. plant a the manufacture erected to continue company plaintiff fully the activities defendant was advised of eight than manufacturing selling in these machines. For more and years protest steps to cite complaint, and took no plaintiff made no injunction or contempt company for for violation of said defendant had though during period company defendant been der, all this openly manufacturing selling Plaintiff ceased and its machines. manufacturing any 1916, and did no business year machines January Secretary 1918, 1920, 1, 1921, in and the 1917, 1919, or on plaintiff corporation, as and for State Missouri dissolved comply charter, feited and its with the statu cancelled failure to tory requirements corporate July 24, 1924, existence. On Au Register Corporation paid tomatic Ticket York former of New plaintiff seventy-five secretary pur dollars “to used for the be pose reinstating Manufacturing charter of Temco Com pany Whereupon the State of Missouri.” forfeited to the former vice-president plaintiff application procured made for and 8, 1924, plaintiff of its On reinstatement charter. October entered granting Company into a contract with the Automatic to said Auto purchase Company option matic on terms con stated plaintiff’s right, tract all and title, patent interest said No. together right with 1,308,966, past to sue and in recover for rights granted all its other fringement, and interests April 1, decree of circuit court on January 10, 1927, eight years

On than more after the July plaintiff 15, granted, order of was filed its motion for a they punished rule show why on defendants to cause should not be contempt of court for violation of order. said As a basis for the motion, plaintiff charged rule asked for making this with the defendants selling accord with substantial Sullivan embodying patent 1,145,818, subject-matter No. of Sullivan application 712,113, No. which eventuated in the patent Sullivan 1,308,966. they No. return of the defendants admits that manu- machines in with factured and sold accordance alleges 1,145,818, machines so manufactured sold are radically principle different on a from constructed the machines subject-matter of Sullivan 712,113, are practically all the are different therefrom essential features, charges plaintiff January 9, with laches unclean hands. On duly made, quashed court, by its order rule 1928, to show *6 426

cause, discharged plaintiff ap- From order defendants. this peals. urges

Plaintiff here that court below committed error not holding, by under the that the machines made and sold de- evidence, granting injunction July fendants since the 15, 1918, of the on em- body the subject-matter machine, 712,113, of Sullivan and that the manufacture and sale thereof violate therefore said injunction contempt court, constitute a asks we re- view the quashing evidence and reverse order the rule show to discharging cause and defendants. proof

The to injunction burden establish violation rests on plaintiff, and the entitled defendants are to the benefit every questions reasonable doubt. Doubtful are not to be re against the injunction solved defendants. mandate The of the order clearly expressed applied should be so that when to acts com certainty. plained of, appear its violation is made to with reasonable App. 614, v. 220 Mo. 288 Orrick, 966; S. W. Saal v. South [Oliver Brooklyn Ry. 996; N. Co., 106 Halkyard, S. Smith v. 19 Fed. Y. 602; McLaran, General Co. v. 876; Electric 140 Fed. Schlicht v. 137; 121 Aeolipyle, Fed. Bullock v. 129 Fed. Westinghouse, 105.] In v. Westinghouse, supra, Bullock the court announced the doc- trine as follows:

“It is immaterial to consider the distinction sometimes noticed contempts, between criminal and civil inasmuch as both kinds in- authority court, volve vindication of the whether the remedy incidentally party inure benefit of a or not. proceeding punish for a contempt “The is in its nature a partially criminal whether the result be proceeding, remediable or prevail govern not, and same which rules the trial of indict- being ments, the defendant entitled to the any benefit of reasonable doubt.” present

The quite definitely order case describes enjoined which the machine the defendants are from making, sell- clearly using. It ing, specifica- is the machine described in the drawings application 712,113. tions and contained application, part in the of course, claims contained constitute a Patents, on secs. specifications. [Robinson 504.] infringement Though suit, is question this not an and the of in- fringement question is not determinative of may it here, involved general helpful by to examine some rules be announced courts infringement cases. principle said that of a Thus, properly it is machine is defined peculiar operation, or that be its mode combination devices distinguishes it from other machines. That two justify will they assertion same effect produce are devices substantially same, or that the used one are therefore A for described the other. equivalents of those of the mere limited end must accomplish desired be mechanisms to means or clear or their specifications, particular means described to the any cover other embrace or equivalents, and does not mechanical substantially different in its construc which is mechanical structure *7 accomplish patent to certain operation. grant The aof tion or patent considered the means office specified indicates that the results ac the means of different from accomplishing of such results to be patent, a former specified in complishing the same results as substantially they in fact different. presumption that are raises consisting congeries in well-known me device, In a combination liberality is accorded it to appliances, no of construction to chanical descriptive it is limited to the elements monopoly, create a but liberality great expressed specifications, and no combination as indulged equivalents mechanical can be in its of the doctrine of positions parts of a machine Changing favor. the relative parts infringement, perform where transformed does not avert respective change before, after the but the same functions as such infringement changing changing posi avert does where parts changes parts tions of the so the functions of the that acquires substantially machine different mode of operation, even though grant the ultimate result remains the same. The of letters patent’ presumption raises the infringe the invention is not an patent. improvements ment of an earlier The first inventor of can equivalents not suppress invoke the doctrine of all other im provements. An improvement inventor who an has made in a ma chine, and thus effects the desired result in cheaper a better or man before, ner than previous cannot include all inventions and have a art, discovery claim to the improved. whole or machine which has he All equal right others have an improved make machines, pro to they embody vided substantially do the same or the same devices or combination of which peculiar devices constitute the characteris previous tic of the invention. Duryee, 531; v. 68 U. S. [Burr Jones Munger, v. 49 61; Fed. Union Diamond, 148; v. 162 Fed. v. Portland Hermann, 91; Simplex 160 Fed. Hauser, 919; v. 248 Prouty Fed. 336; v. 16 Ruggles, Ajax Pet. v. Morden, 591; 156 Fed. Central v. Coughlin, 91; 141 Boyd Fed. v. Janesville, 260; 158 U. S. Mc Clain v. Ortmayer, 419; U. S. Bonsack Machine Co. v. National Cigarette Co., 64 Fed. 858.]

The inventions described in application Sullivan 712, 113 which eventuated in the patent issuance of 1,308,966, No. the later Sullivan eventuated the issuance of patent No. 1,145,818, pioneer are not inventions, but are mere im- provements. necessary

It is not to decide whether or not the manufacture and sale defendants machines accordance patent 1,145,818 with No. infringement

amounted an in applica- to of the invention described 712,113. question tion infringement The is not to be determined punish punish on motion contempt. enough to for will It be time contempt adjudged infringe- defendants for an when court has ment, enjoined manufacturing selling from defendants patent 1,145,818, under No. have violated defendants injunction. such respect rule with to this is announced in Cigarette Bonsack v. Co., supra, National follows: as punish “This contempt. is motion When the suit was originally brought, using a machine which defendants were has, argument, infringement complain- court after an held to be patents. using ants’ The defendants are now a machine which in respects already infringing passed some differs from the machine upon, appears it it is made under a issued subse- quent weight clearly against authority to the decree. The is proposition infringement question that in such a case the is be punish contempt. on a settled brought motion to The new machine is prima-facie proof opinion with that,

into court *8 patent office, patentably it is different from the machine of com- plainants. infringement Whether it is an or not should be settled by application for for injunction, contempt.” not for commitment purpose

It would serve useful to in no describe detail the ma- proceeding. chines involved in this All the evidence concedes that machine in No. 1,145,818, the described in accordance with which defendants have manufactured and period sold machines for a eight years following of than entry injunction order, more the the of protest plaintiff, many respects in without from the from the differs application 712,113 machine described in referred to in the order. expert thirty-nine forty-four Plaintiff’s that witness admitted application in 712,113 claims contained do not read on the by and sold defendants. remaining machine made As to the five- opinion fairly the claims the of witness is at least debatable, under the also admitted evidence. that the elements and He mechanisms in described over four lines of six hundred the hundred lines of the description of the machine in Sullivan 712,113, and tweii- ty-foui' mechanisms, parts mounting elements of and numerous for operatively connecting and mechanisms, these elements illustrated drawings specifications in application, and described the of said in machine by are not found the manufactured defendants. of evidence, Under this state the we think court the below was well justified declining in hold that the machine manufactured and by machine, subject-matter sold is “the the defendants of the Sulli- application, No. 712,113, van serial for letters-patent, United States application, specifications drawings as and the said contained therein, in now stands the United Patent Office,” States referred to in injunction the order. opinion We also of proceeding contempt are that this for should ground barred on

be of laches. equity Courts of have always demands, refused their to stale parties slept aid have upon where rights, length acquiesced great their for a of In time. Mathe years son v. Hanna-Schoellkopf, delay Fed. four in mov punishment ing for for contempt, was held be a bar. In the present already case, as said, delay eight there was a of more than years. During period, entire defendants, with knowledge plaintiff, engaged openly manufacturing were in selling says plaintiff the machines which the now amounted to a violation injunction only knowledge Plaintiff order. had of this violation, violation, if there was but a the Automatic Company, which, under its promotion contract with is interested in plaintiff, litigation this and other plaintiff, party was name violation, company, period such for years, said for a of three as agent order, defendants, knowledge with full engaged selling the machines the defendants manufactured. De fendants, during period eight said expended of more than years, large money building sums of up their business the manu facture sale of said and in machines, the erection of plant, and purchase making equipment only dies and suitable the manufacture of said machines.

In Manufacturing Temco Co. v. National Register Electric Ticket Co., which was infringement brought an action for in the United States District Court Eastern Division of the Eastern Ju- Missouri, plaintiff charged dicial District of in which the the dnfend- infringement ant with patents by plaintiff, by of certain owned manufacture sale of the same involved in present Judge plaintiff Faris held suit, barred In holding, laches. so jurist that able said:

“Here, bar, at already partially case as disclosed, the facts knowledge alleged are full plaintiff, with infringement, *9 delayed day its suit herein from twen.ty-sixth at least the of October, day October, until the seventh of In the meantime, patents corporate in plaintiff, suits, death; the owner of the suffered words, voluntarily relinquished in other its corpora- it charter as a years plaintiff three and a half tion. After was raised from the immediately dead, brought almost thereafter and this action, with Register active financial assistance of the Automatic Ticket the poration, Cor- already said, in interim, the as defendant and had made alleged thousand, of more, infringing sold some five or devices, many, or perhaps many, persons to as almost as different or con- During period complainant’s of death, suspended cerns. or ani- expended fifty mation, than defendant more thousand dollars in erect- ing large a plant factory, additional sums in has.invested infring- alleged making the only

machinery, tools and dies useful ing structure. a making device under a was however, defendant Here, “. . . ap- of the dates after the patent applied to Sullivan for issued dispute, here defendant patents of plications and issuance of presumption rely right on had to nevertheless, defendant but, Sullivan, so grant patent of validity fact from the knew existed, that it if one presumption, far, least, at as to rebut defendant existence whose infringed patents accused device its knowledge. . . . had a held to be ought to be laches “I that defense of conclude peculiar facts here.” complete bar, under the that infringement, such as for bars a suit If the of laches defense proceeding a stronger bars such defense then a reason was, suit for contempt, this. such as delay in plaintiff its We have examined the contention its on account of moving punishment of defendants resulted for the by defendants manu- poverty, which was caused acts patent 1,145,818, No. and we selling facturing machines under facts of the law or the do contention sustained either not find the a meritorious cause action Ordinarily, who has the case. one prosecute a suit difficulty finding means to ought little to have just.” Moreover, hath his “Thrice armed is he who cause therefor. case, able to find the means obtain present plaintiff was by which it now claims was violated the defendants. order, enjoined de- contends, that the order true, plaintiff If it is as the manufacturing selling in accordance with from fendants showing of the manufacture of 1,145,818, No. to the court brought by upon down them single defendants would machine have eight contempt. Yet, plaintiff and a waited punishment openly and sold years, while manufactured half the defendants machines, of these without throughout United States thousands attention of the steps bring to the court the taking any whatever to poverty think upon. now We do not contempt it insists plaintiff delayed delay. Moreover, such mov- plaintiff can excuse years for two and punishment defendants one-half ing for Company. amply by the Automatic provided with funds it was after plaintiff’s poverty shows that the was think the evidence Nor do we defendants, but shows it re- rather the acts caused attempt to manufacture plaintiff’s unsuccessful from sulted acceptable foot treadle machines were put market on the practicable. because not the trade court, recommends that the order of the circuit The Commissioner discharging quashing defendants, its rule to show cause be af- firmed. *10 foregoing opinion

PER CURIAM:—The of Sutton, C., adopted is opinion the court. order court, quashing as the of the circuit discharging show cause and defendants, accordingly its rule to is JJ., concur; Nipper, J., sitting. affirmed. Becker and P. Hwid, Lafayette-South Corporation, Bank & Trust Company, Side Respondent, Siefert, v. Alice Executrix the will Appellants.*

Katharina and Emma S. W. Rose, Dippel, (2d) 572. July 2, Opinion 1929. filed Appeals. Louis Court

St. Error, * Corpus Juris-Cyc 323, Appeal p. References: 3CJ. section 493, 82; Interpleader, 33CJ, 2, p. 420, 12; 452, n. p. section n. section n.