265 F. 669 | 9th Cir. | 1920
Upon an appeal from an interlocutory decree, holding that Wilson patent No. 827,595, for an underreamer, was valid as to certain claims, and was infringed as to claims 9 and 19, •and awarding an accounting, this court affirmed the decree of the District Court. A full history of the case is given in Union Tool Co. v. Wilson, 249 Fed. 736, 161 C. C. A. 646. Thereafter, in contempt proceedings instituted in the District Court, the Union Tool Company was held to have violated the injunction issued in Union Tool Company v. Wilson, supra, by having manufactured, offered for sale, and sold two types of underreamers, neither of which was substantially or even colorably different from the respective devices described in the injunctive order of the court, the manufacture, sale, and use of which underreamers were inhibited, and that the Tool Company, since the issuance and service of the injunction, had offered for sale and sold extra, spare, and repair parts and elements for and to be used with its device, sold prior to the issuance and service of the injunction.
The court, however, purged the corporation of contempt in the matter of sales of repair parts, but made the order without prejudice to the .right of Wilson to renew his application. The company was fined $5,000, out of which sum, wheñ paid, the clerk of the court was authorized to pay over to the complainant (Wilson) $2,500 as a reasonable portion of the expenses incurred by the complainant in the contempt proceeding, and the court ordered that if, upon execution, the'fine was not paid,.the president of the. Tool Company, Double, should stand committed to jail and be confined until the fine was paid.
Writ and cross-writ of error were sued out, and upon the writ brought by the Union Tool Company and Double, to review the judgment of conviction, this court reversed the clearly punitive portion of the decree of the District Court, but affirmed that portion which imposed a fine and directed that the fine imposed should be paid to the complainant to cover his costs. Union Tool Co. et al. v. United States et al., 262 Fed. 431, - C. C. A. -. By the cross-writ now before us we are to review that portion of the judgment of the District Court whereimthe Tool Company was purged of contempt.
“No court having power to review a judgment or decree rendered or passed by another shall dismiss a writ oí error solely because an appeal should have been, taken, or dismiss an appeal solely because a writ of error should have been sued out, but when such mistake or error occurs it shall disregard the same and take the action which would be appropriate if the proper appellate procedure had been followed.”
We therefore deny the motion to dismiss.
Upon the merits: The position of Wilson is that the District Court erred in the order purging of contempt, because in the trial upon the contempt proceeding it was stipulated that, before and since the service of the injunction already referred to, the Tool Company not only had manufactured and sold, and intended to continue to manufacture and sell, the double pocket type of underreamer and the double type U underreamer, together with extra, spare, and repair parts therefor, but also had manufactured and sold, and intended to continue to manufacture and sell, cutters, springs,' rods, cotter pins, and all parts except bodies, as extra or repair parts for and to be used with the underreamers, particularly referred to and described in the interlocutory decree and injunction which had been issued in the case, and which were sold by the defendant to dealers and users prior to the service of the injunction. By the writ of injunction the Tool Company and its officers and agents were enjoined from — -
“manufacturing, using, leasing, selling, or causing to he sold in any manner, underreamers like or embodying the construction or interrelation or formation of parts of complainant’s double reamer and extras or type D (in exhibit) or a reamer, type E, or a reamer type F, and from manufacturing, selling, using, or leasing any part or parts or elements calculated and intended to be combined or used as a part of or feature of any underreamer or device in infringement of letters patent No. 827,595, being the letters patent sued on in this case, that is, claims 9 and 19 thereof, in any manner whatever, or from manufacturing or causing to be manufactured, using or causing to be used, selling or leasing or causing to be sold or leased, either directly or indirectly any combination of parts or elements or features capable of being assembled together or used in infringement of said letters patent No. 827,595, that is, of claims 9 and 19 thereof.”
It is plain that in the light of the finding, and considering the injunction order of the District Court, the only legal conclusion to be reached is that there was a deliberate violation and a contempt, and that it was error to- purge of such contempt, unless there is merit in the contention that the order of the District Court was not a positive injunction against the manufacture of all parts of elements of the device, but only as against the manufacture or use or sale of—
“any part or parts or elements calculated and intended to be combined or used as a part of or feature of any underreamer or device in infringement of said letters patent No. 827,595; that is, of claims 9 and 19 thereof.’’
The rule of contributory infringement, however, does not uphold the contention. In Thomson Houston v. Ohio Co., 80 Fed. 712, 26 C. C. A. 107, it was held by the Court of Appeals that it was settled that, where one makes and sells one element of a combination covered by a patent, with the intention and for the purpose of bringing about its use in such combination, he is guilty of contributory infringement, and is equally liable to the patentee with him who in fact organizes the complete combination. Judge Taft, for the court, said:
“Many of the most valuable patents are combinations of nonpatentable elements, and tbe only effective mode of preventing infringement is by.suits against those who, by furnishing the parts which distinguish the combination, made it possible for others to assemble and use the combination, and who, by advertisement of the sale of such parts and otherwise, intentionally solicit and promote such invasions of the patentee’s rights.”
Under the findings by the District Court, we believe that the only conclusion is that there was a willful disobedience of the injunction, and that it was an abuse of discretion on the part of the court to purge the defendant in error of contempt. The judgment is therefore reversed, and the cause is remanded to the District Court, with directions to impose such punishment as may seem proper.
Reversed and remanded.