KIRBY BUNG MANUE'a 00. V. WHITE.
605
$125,000 or $150,000, instead of granting an injunction in the first instance, which might have closed all the mills in the north-west. If he had stopped all of the mills by the issuance of an injunction simpliciter- it having been finally determined that the complainants' patent was invalid-there would have been a great wrong perpetrated upon the parties defendant. Hence, the rule is this,-and is the true rule in equity, as settled in this court by Justice Oatron, and existing up to the present hour, and I am authorized by Judge McOrary to say that he fully concurs,-that the function of a restraining order is to protect the plaintiff without unnecessarily oppressing or annoying the defendant. Whether restraining orders go out in patent cases, or in other cases, they are framed according to the circumstances of each case, to-wit: In one case there may be such circumstances as require an injunction simpliciter, but ordinarily a bond and order for accounting suffices, and sometimes simply an order for an accounting. Hence, the form of the order varies with the circumstances. I make these preliminary remarks so that parties may understand that an injunction simpliciter is not to be had for the asking. I am very well aware that the practice under the state laws is different, if it now is the same as years ago. Under the state practice there is but one form of a restraining order, to-wit: If an injunction is asked for provisionally, it must issue as an injunction simpliciter. This is not the rule in equity, and has never been the rule in the courts of this circuit. The course in these preliminary matters is to protect the complainant without unnecessarily injuring the defendant. There is a patent presented to the court for a bung-cutting machine. It is a combination patent, and a very commendable patent in itself. The various devices work automatically to effect the desired end. This patent has been before the circuit court of the United States for the district of Indiana, and a decree was ordered by Judge Drummond in favor of the complainant; and not being familiar with the facts of that case we take it for granted-as the law requires-that i. was a correct decree, upholding the validity of the patent.
{i06
FEDERAL REPORTER.
I
By a. reference to the proofs I see that the matter was very fully considered, and the "claims" involved in this suit are said to be valid and subsisting "claims." For the p'lrposes of a provisional injunction under the patent law two things, or either of two things, may exist, to-wit: As in this case, a court, after full consideration of the matter, has rendered a final decree upholding the validity" of the patent, that is a sufficient basis in itself for an injunction or some form of a restraining or accounting order, provided the party defendant in the particular case has infringed the patent; in other words, the court, on a motion for a provisional injunction, does not go into the merits to ascertain the validity of the patent. Prima facie the patent is valid; but under the uniform rulings of the courts of the United States for more than half a century, if there has been no decision as to the patent by a United States court, on the merits, the party is driven to show that his patent went into use undisputed for a sufficient time to raise a prima facie case in his favor. But if the court, after a due consideration of the matter, has reached the conclusion that the patent is valid, on this provisional matter the inquiry is not open. The United States circuit court, sitting in Indiana, Judge Drummond giving the opinion, decided after a fair contest, for from the record it seems to have been a bona, fide contest, that this patent is valid. I make the remark "after a fair contest," because sometimes it has been supposed that a mere decree entered pro forma on the merits is sufficient in itself to require all other United States circuit courts to grant a provisional injunction. Not so. We have held in this circuit that it must have been an honest and not a collusive matter. In a case in the United States circuit court of Alabama a matter formerly arose which illustrates my remark. When one of the most distinguished lawyers of New York was before me, he cited a case which was decided in California, and which, on an examination of the record, I found to be a sham case, the decree being obtained by collusion in order to allow parties who held the patents to put untler restraint parties refusing to submit to their demands; and, of course,
KIRBY BUNG MANUF'G CO. V. WHITE.
60'1
I considered it of no force. J usi so in the Alabama case. It was another one of collusion. Perhaps there has been a. more remarkable illustration arising out of the milling cases, concerning what are known as the "new process" patents. An alleged collusive case arising as to these patents went to the supreme court. When one of these matters is presented to the judges of the circuit court they are bound to see whether it was a "consent" or collusive decree, in order to form a basis on which the party obtaining it might go through the country levying tribute. Such is not this case. This is an honest case-has been fully considered, and everything connected with it appears to be a fair and honest contention. In making these remarks I make them in a general way. Here is a case which has been decided after a full and fair contest by parties struggling for their respective interests in the matter. We come now to a. consideration of what the patent is. As already stated the matter in controversy here is as to one of a. number of devices to effect &. particular end. It is a little remarkable that in this case there is no disclaimer. Ordinarily, after the specifications set out the condition of the art, etc., it disclaims cel·tain things. This patent does not. The patentee divides his claims into five parts. It is alleged' that the fourth claim is infringed. Without 80 model of the drawings those who listen to me coulclhardlyunderstand the claims of the patent. We find that the principal object was this: that inasmuch as the old cutting board, which constantly became frayed or chipped when a. fish-mouth chisel was used, and great difficulty and trouble occurred, Mr. Kirby invented an automatic contrivance by which through (or over) the fish-mouth chisel there would be conveyed little square blocks, the diameter of which would be the diameter of the bung desired, with So slide pushing over the mouth of the chisel one block on top of another. But the chisel being fishmouthed of course it would be passed into the upper bloyk a. short distance; and that block thus answers the ordinary purposes of a. cutting board, sliding another on top of that, so that it continued successively to utilize each block and give
608
the bung desired withont the loss of any material. He had a very ingenious arrangement for that, and it operated with the whole machine, automatically. But that involved a cone, eccentrics, varions bars, slats, slides, etc., which it would take too much time to explain. unless I had the model before me. The patentees' claim is described by himself as follows: "]. The chisel or cutter D, with cylindrical cavity, in combination with the plunger C, and feeding bar i, constructed and arranged, substantially as described, for the purpose of cutting bung blanks from separate square blocks of wood. "2. The combination of feeding slide-bar i, feed-box C. guides 00, and spring 01, for feeding successively one of a series or pile of bung-blocks forward in exact line with the cutting edge of the Qaisel of a bung machine, operating substantially as described. "3. The cutter D, feeding slide-bar i, and plunger C, so arranged relatively to each other as that the cutter or chisel shall, when cutting, have at least two blocks or blanks in line with its cuting edge, and that at each stroke of the machine the cutter shall finish cutting one block or blank, and enter and partly cut a second blank, instead of cutting a single blank at each stroke, substantially as and for the purpose hereinbefore described. "4. The cutter and feeding device of a bung-cutting machine, arranged sUbsta:1li:111y as hereinbefore described, as that each block ItS it is fed into the machine shall serve as a cutting board for the next preceding block. "5. The use of the hingcl bar m, in the of the sliding feed bar i, in combination with the vibrating shaft ht, whereby, by raising the bar m, the motion of the feed bar i is suddenly arrested, without stopping the motion of the other parts of the machine." The fourth claim is the one which it is alleged the defend. ant infringes. Now, if the combination for placing one block aiter another on the fish-mouth cutter, whether underneath or sideways, vertical or longitudinal, so as to operate as a cutting board through which that fish-mouth may penetrate,
-
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IURBY BUNG MANUl!"Q CO. t1. WHITE.
609
is an infringement of this patent, the complainant would be correct. But it is not so. It is a particular way of doing a thing. It is a mechanical device wrought out by combinations, which combinations are not in defendant's machine. To support this motion the complainant, Mr. Kirby, gives a general affidavit, which on examination amounts practically to nothing more than his verification of the original bill. On the other hand, we have a. description given of what the defendant's operations are. They are not produced by plaintiff's combination of mechanical devices. The consequence is that the motion must be denied. But it is proper to remark, in this connection, that it is desirable that on these motions for preliminary injunction the court should give no elaborate opinions because the merits are not fairly before it; and this case illustrates it. We have the opinion of the complainant in the bill that the defendant has infringed his patent, but what does that amount to? He ought to give us what the defendant is doing. It is not for him to assume the functions of the court and swear that his case is as he has averred. He should give the facts to the court and let it determine on those facts whether there is an infringement or not. On the other hand, we have from the defendant So description of what he is doing, illustrated by drawings. In this imperfect state of the case, without passing upon the merits, the court decides that there is nothing before it at this stage of the case to show an infringement. That is all the court decides this morning. The motion for a provisional injunction is denied. MCCRARY, J., concurred.
v.1 ,no.S-S9
610
QUIROLO t1. ARDITO
and another. January 20, 1880.) REGARD TO
(Oircuit Court, 8. J). New York.
PATENT-WANT OF NOVELTy-BILL DISMISSED WITHOUT
ANSWER.-Ina suitforan infringement, the bill will be dismissed, withregard to the answer, where the patent is void on its face for want of novelty.
Infringement of Patent. J. This suit is brought for relief against an infringement of re-issued letters patent No. 6,557, dated July 27, 1875, granted to the orator for an improvement in stereoscopes, consisting of a combination of legs, with the standard for the stereoscopes to stand upon. The answer denies the novelty of the invention. It is not very clear upon the evidence whether stereoscopes were made to stand upon legs before they were so made by the orator; but, whether they had been or not, such stands had long been in use for surveyor's compasses, theodolites, cameras, telescopes, and other mathematical and optical instruments, as is well and generally known. Stereoscopes had been placed upon stands for a long time. This part of th,e patented invention does not relate to the stereoscopes themselves at all, but only to the mode of mounting them. There could be no invention in putting a stereoscope upon one kind of well known stands instead of another. It was merely putting the old stand to a new use. So, whether the invention was known or used or described in the exact manner, or by the persons, set up in the answer, or not, the patent, in this respect, which is the only one in controversy, is void on its face for want of novelty, within common knowledge, which is sufficient for dismissing the bill without regard to the answer. Brown v. Piper, 91 U. S. 537" Terhune v. Phillips, 99 U. S. 592. Let a decree be entered dismissing the bill of complaint, with costs. WHEELER,
MALONY MALONY V.
V.
CITY OF MILWAUUlll.
611
CITY OF MILWAUKEE, etc. April 3, 1880.)
Oourt, 8. D. New York.
ADMIRALTY JURISDICTION-MA1UTIME TORT ON CANAL-"NAVIGABLE
maritime tort, committed upon an artificial water-way or canal opened by a state for the purposes of commerce, is within the admiralty jurisdiction of the United States courts, where such water-way is in fact used as a highway of commerce between the states of the Utlion and between foreign countries.
WATER OF THE UNITED STATES. "-An alleged
Libel to recover damages caused by a collision. E. D. McOarthy, for libellant. F. A. Wilcox, for claimants. CHOATE, J. This is a libel to recover damages caused by a collision between the libellant's canal boai Oliver C. Gibson and the steam canal boat City of Syracuse, while the lat- . ter was in tow of the steam canal boat City of Milwaukee, which was proceeding under steam and towing the City of Syracuse on a hawser of about 100 feet in length. The collision happened on the evening of November 2, 1877'. The place of the collision was in the Erie canal, about 100 miles east of Buffalo, in the county of Munroe, and l:ltate of New York. The canal boats City of Milwaukee and City of Syracuse were attached by the marshal of this district, on the process issued in this case, in a place called the New Jersey central basin, within the limits of Jersey City. This basin communicates with the bay of New York through the Morris canal basin, and the place of seizure was about half a mile from what is now the open bay, and at a point about 500 feet southerly of the original shore line at high-water mark, and about 150 feet westerly from the westerly side of Henderson street, which is at that place an artificial structure built out into the bay upon the flats. Thirty years ago this basin in which the boats were seized was part of the bay of New York, , and admitted to be below the ordinary high-water line on the Jersey shore. Two defences are made by way of exception, as well as by answer, which it is necessary to dispose of before considering the merits of the case: (1) that the subject-matter of the suii
