146 F. 249 | U.S. Circuit Court for the District of Eastern Pennsylvania | 1906
On the accounting before the master, Alexander H. Miller, one of the defendants, being under examination, and having been interrogated with regard to certain bins, which the defendants had furnished and installed at No. 3,300 North Twenty-Second street, Philadelphia, being further asked what kind of bins they were, made answer, “Well, they are not mentioned in either of these types”; referring to those discussed in the opinion sustaining the patent and finding that it had been infringed. 132 Fed'. 823. He was thereupon asked whether they were counterbalanced, swell front, pivoted bins, to which he answered, “They were neither type 1 nor type 2”; referring again to those so designated in the opinion. The question was then put: “Do you refuse to say whether they were counterbalanced, swell front bins” ? these, as declared by the court, being the distinguishing characteristics of the complainants’ bins. 110 Fed. 649, 651; 132 Fed. 823, 826. This, by the instruction of his coun
“Will you please look at tlie drawing which I now show you, and state whether or not that correctly represents the construction of some of the pivoted, counterbalanced, swell front bins which your firm constructed and sold, and which you say do not fall' within .types 1 and 2.”
Whereupon, upon objection by defendants’ counsel, the master ruled, in substance, that the types of bin which were decided to be an infringement were clearly shown by the drawings already in the case, being designated by the court as type 1 and type 2; that the witness might be examined as to the number of bins of these types constructed by the defendants, but should not be required to answer as to other constructions ; and thát if the complainants contended that other bins constructed by the defendants were infringements, the bins should be produced, and expert evidence given as to their character. With this the objection of counsel was sustained, and the witness directed not to answer the question. The subject came up again, with regard to bins furnished to James Arthur, at Pifty-Seventh and Market streets, Philadelphia, the inquiry being directed as before, to whether they were counterbalanced, swell front bins, and the same ruling was made; the master holding that the witness should only be required to answer as to the two particular types of bins which the court had decided to be an infringement. Counsel for complainants thereupon took an exception, and the rulings of the master have been certified to the court for disposition.
By the proceedings previously had in the case leading up to the accounting, the complainants established the validity of the patent which they held, and that the defendants had infringed it. Two kinds of bins were shown to have been manufactured by the defendants with regard to which this was held, one of which was hinged to the exterior casing, at the lower front edge of the bin body, and the other was pivoted at the same point, but upon links, by which, if desired, it could, as an additional feature, be swung clear of the casing. As already stated, the general character of bin covered by the patent, of which these were infringing types, was declared to be a tiltable or pivoted swell front, counterbalanced bin, by which it was differentiated from other previous forms, and held to comprise a class of its own. So far as the defendants may be shown to have infringed upon the exclusive rights secured to the complainants by their patent by the manufacture, sale, or use of this kind of a bin, they must respond in damages, and it is for the purpose of determining the extent of their infringement that the accounting proceeds. Undoubtedly, as to the immediate forms of bins considered by the court, there can be no question. But the complainants are not confined to this. They are entitled to have the defendants charged with all such bins as embody or adopt the principle, of the invention, even though they may vary from the particular construction which the court has passed upon and condemned, and from this they cannot rightly be cut off.
It was also entirely in conformity with the established practice to bring this matter up by a motion for instructions, in the way that has been done (Coddington v. Propfe [C. C.] 112 Eed. 1016); nor, rightly considered, is there anything to the contrary'' in Hoe v. Scott (C. C.) 87 Fed. 220. All that was there decided was that the court would not give directions to the master to refuse tp take evidence concerning machines which,the defendants claimed were not an infringement until the court itself had had opportunity to determine whether they were or not; it being held that the question was, in the first instance, for the-master. This is exactly the opposite of what we have here; the master, by a misconception of the scope of the inquiry and of his own powers, without passing upon the question presented, having refused to receive what was apparently relevant evidence. The effect of this was too serious to pass over, and his ruling was therefore properly brought here for review, without waiting for the coming in of his report. íhe case of Hoe v. Scott also, as it will be observed, is direct authority for the position already taken that the question of infringement is open, and to be passed upon as to devices and structures outside of those directly considered by the court.
An order will therefore be made requiring the witness to answer the questions which have been certified.
Specially assigned.