75 F. 1005 | 2d Cir. | 1896
Lead Opinion
The circuit court of the United States for the district of Connecticut, after an exhaustive investigation of the validity and alleged infringement of letters patent No. 495,443, dated April 11, 1893, and issued to the administrators of Charles J. Yan Depoele, decreed that the Winchester Avenue Railroad Company had infringed claims 6, 7, 8, 12, and 16 of the patent. The complainant in the suit was the Thomson-Houston Electric Company, the assignee of the patentees. 71 Fed. 192. The combination covered by these claims, and now used generally by the electric railroads of the country, consisted “generally in an electric railway having an overhead conductor, and a car for said railway, provided with a contact device carried by the car so as to form a unitary structure therewith, and consisting of a trailing arm, hinged and pivoted to the car so as to bridge the space between it and the conductor, and move, freely both laterally and vertically, and said arm carrying at its outer end a contact device capable of being pressed upward, by a suitable tension device, into engagement with the underside of .the conductor.” The important and distinctive part of the invention was the trailing arm, hinged and pivoted to the car, and moving laterally and vertically, with a contact device at its outer end, capable of being pressed upward, by a suitable tension device, into engagement with the underside of the conductor. The novel' element of “the overhead, under-running, spring-pressed, laterally swinging contact arm” was of great utility, and has superseded pre-existing attempts at trolley-road equipment. The “trolley stand,” so called, is the means by which the trailing arm is hinged and pivoted to the car with a capacity for lateral and vertical movement, and is pressed upward by some suita.ble spring. No particular form of stand was included in the Yan • Depoele invention, for any one of a number of forms would- answer
The question, as presented in the affidavits and briefs, relates particularly to the manufacture and sale of trolley stands. As evidence of an intention to infringe, the complainant relied upon the language of the defendant’s advertisement, which offered for sale the stands and overhead trolley equipment generally. The defendant admits that ic has sold trolley stands, directly or indirectly, to electric companies which purchased their equipment originally from the complainant’s licensees, either by way of repair, or because the purchasers wanted an improved stand. It denies that it has knowingly sold to an infringer of the patent in suit, or to be used for the purpose of infringement. The circuit judge was of opinion that the defendant was selling stands capable of, and designed for, an unlawful usé, and that, inasmuch as they are useful only for the purpose of performing functions involved in the operation of the patent, there was a presumption of an intention that these stands should be so used, which was not dispelled by the affidavits. The question being one of contributory infringement, the appellant urges that there was no sufficient evidence that the defendant had concerted, or was concerting, or intended to concert with any person for the infringement of the complainant’s patent, and that, consequently, the injunction order either ought not to have been issued, or was too sweeping in its terms.
What contributory infringement is, and why it should be enjoined, was clearly shown in Wallace v. Holmes, 9 Blatchf. 65, Fed. Cas. No. 17,100, — the earliest case in this country upon the subject, and upon which the subsequent cases of contributory infringement rest. The complainant’s patent in' that case was for an improved lamp, which consisted of an improved burner, or metallic portion, and a glass chimney. The defendant made and sold the improved burner, which must be used with a chimney, and, in order to make sales, ex hibited the burners with chimneys to customers; and the circuit judge thought that a concert with others to use the patented article; as a whole, was a certain inference from the obvious facts in the case, and the efforts of the defendant to solicit sales by showing the operation of the whole patented article. The willingness of the defendant in this ease to aid other persons in any attempts which they may
“If a person legally acquires a title to tiiat which is the subject of letters patent, he may continue, to use it until it is worn out, or he may repair it or improve upon it as he pleases, in the same manner as if dealing with property of any other kind.”
The complainant, which is utilizing its patent rights by the manufacture and sale of trolley-railroad equipments, and desires to compel purchasers to continue to supply themselves with its form of stands, replies that the defendant’s sales are not for the purpose of repair, but are for the reconstruction of the patented combination, and that a reconstruction of a destroyed or worn-out combination is an infringement. This proposii ion is true, and examples of the cases to which it is applicable are found in Cotton-Tie Co. v. Simmons, 106 U. S. 89, 1 Sup. Ct. 52, and Davis Electrical Works v. Edison Electric Light Co., 8 C. C. A. 615, 60 Fed. 276. In the Cotton-Tie Case the continual use of patented ties, which consist of a band and buckle, was purposely destroyed by the purchaser, by cutting the band, after he had received the bale around which the tie was placed, and the parts were sold as waste material. A new purchaser bought the several parts, mended the bands, replaced the buckles, sold them to be used as ties, and was held to be an infringer. In the Edison Case the reconstruction was equally extensive. The infringer made a hole in the bulb of an Edison incandescent electric lamp, in which the carbon filament had been worn out, put in a new filament, having its ends cemented in platinum sleeves, fused a tube of glass into the open end of the bulb, exhausted the air, and sealed the bulb. Inasmuch as “the,filament, duly charged, is the light-giving thing,” the work of the infringer was the manufacture of a new lamp. The complainant, recognizing that the facts in these cases are not analogous to those in the record now before us, urges that, in order to constitute reconstruction of a patented device, it is not necessary that the structure should have been destroyed intentionally, or that the vital and peculiar element of the invention should have been worn out by use, but that the substitution of an important member of a
“We admit — for such is the rule in Wilson v. Rousseau, 4 How. 646 — that when the material of the combination ceases to exist, in whatever way. that may occur, the right to renew it depends upon the right to make the invention. If the right to make does not exist, there is no rigid to rebuild the combination. But it does not fellow, when one of the elements of the combination has become so much worn as to be inoperative, or has been broken, that the machine no longer exists, for restoration to its original use by the owner who has bought its use. When the wearing or injury is partial, then repair is restoration, and not reconstruction. Illustrations of this will occur to any one. from the frequent repairs of many machines for agricultural purposes, also from the repair and replacement of broken or worn-out, parts of larger and more complex combinations for manufactures. In either case, repairing partial injuries, whether they occur from accident, or from wear and tear, is only refitting a machine for use. And it is no more than that, though it shall be a replacement of an essential part of a combination. It is the use of the whole of that which a purchaser buys, when the patentee sells to him a machine; and. when he repairs the damages which may be done to it, it is no more than the exercise of that right of care which every one may use to give duration to that which he owns, or has a right to use as a whole.”
This distinction is both natural, and founded upon right reason, and gives to the patentee all the benefits to which he is entitled by the grant of the patent. While it is not intended that a trolley stand should be broken, or should lose its useful capacity, either calamity may befall it; and the right to replace the injured part by a new stand, from any person who can supply the article, should be conceded by the owners of the patent. It is not intended to permit the unauthorized substitution of the vital and distinctively new part of an invention in place of one worn out by use, as the
The defendant also says that, in order to obtain the use of an improved trolley stand, purchasers from the complainant are sometimes willing to discard its stands, and substitute another form, which had its own advantages. For example, the trolley stand which is sold by the defendant is said to be less elevated above the top of the car than the stand of the complainant, and therefore it is said that the Norwalk Street-Railway Company found it necessary to change the stands which were furnished by the complainants, because of the low bridges recently constructed by a steam railroad over the tracks of the street electric road. A refusal to permit such a substitution is equivalent to a declaration that the street-railway company cannot be permitted to improve its stands, except by the consent of the complainant. If a purchaser from the complainant chooses, the day after his purchase, to substitute a stand which is better made, and better adapted to his peculiar needs, he has the right to do so. But it will be urged that such a permission opens the door to infringement, and permits a spoliation of conceded rights of the complainant. It does throw upon the defendant the duty of careful investigation into the objects of the purchasers of its stands, and of an abandonment of indifference as to whether they are seeking to trench upon the rights of the owners of the patent, or else, a liability to suffer the consequences of a violation of the injunction order.
The order is directed to be modified, without costs of this court, by adding the words: “It is not intended to enjoin the defendant against the sale of trolley stands by way of replacement of broken stands, or stands worn bv use, or substitution for trolley stands previously sold by the complainant to purchasers from it, but this permission does not give authority to reconstruct or rebuild a combination which has been sold by the complainant.”
Dissenting Opinion
(dissenting). This case presents in my view an utterly unwarranted attempt on the part of the complainant to enlarge the monopoly which it has acquired as the owner of the patents in suit, and to dominate exclusively the manufacture and sale of articles Avhich its patents do not cover, and which others have a legal and moral right to make and sell. The preliminary injunction by which the defendants are restrained from making or vending their trolley stands was granted without a particle of evidence that they had ever infringed any of the claims of the complainant’s patents, and, as I think, without the slightest evidence that they threaten to do so. They are as much entitled to make and sell their trolley stands as they are to make and sell the rails, the poles, the wires, the screws, the paint, or any other
The injunction was granted upon the theory that a case of contributory infringement had been shown. The only evidence of contributory infringement consists in the fact that the defendants are making, advertising, and selling their trolley stands to the public. That they are concerting with infringers, with a view to assist them in appropriating without compensation the inventions patented by the complainant, there is not a particle of evidence. Being entitled to sell their article, they are under no obligation, before selling it, to inquire whether the purchaser intends to make an illegal use of it. Privity with a wrongdoer is not to he inferred from the exercise of a legal right. The man who sells a gun or a knife would he guilty of an impertinence if he should inquire of the purchaser whether he intends to use it legitimately, and is under no duty to do so. The same rule applies to one who malíes or sells an article which is not patented, but which may he used b,v the purchaser to work an infringement of a patent if lie so chooses. One who assists another to inflinge a patent is, of course, a tort feasor; and whether he is called a contributory infringer, or merely an infringer, is only a matter of nomenclature. But he does not assist or concert with another to infringe merely because he sells him an article which may he used to effect an infringement. In other words, participation in a wrong is not. established by doing a lawful act, without evidence of an unlawful intention.
I think the order granting the preliminary injunction should be reversed.