HAT-SWEAT MANUF'G CO. V. DAVIS SEWING-MACHINE CO.
401
to form the middle bend and the reverse bends, by one and the same operation, substantially as described; in the second reissue, the claim is for the fixed bending-die, movable bending-die. and pins, or projections, fiJ, whereby the middle and reverse bends of the shoe-shank are formed. While the language of the claim is more specific in the second reissue, the elements which go to maJre up the combination are the same as those described in the first reissue. It follows tbat the demurrer to the bill must be overruled; and itis so ordered. Demurrer overruled.
HAT-SWEAT MANUF'G
Co.
'11. DAVIS SEWING-MACHINE
(Oircuit Oourt, No
J). 1{ew
York. October 14, 1887.)
<PATENTS FOR INVENTIONS-bfFmNGEMENT-lNJUNCTION.
On motion for preliminary injunction. it appeared that the utility and value of the patent (letters patent No. 218,220, of August 5, 1879, to John Bigelow, for an improvement insweat·bands for hats and caps) had long been recog· nized by the trade. A large number of licenses had been taken, some volun· tarily, others upon settlement of litigation. The invention had been thorQUt{hly investigated in the patent-office, and there had also been a qua8i adJudICation in its favor in the circuit court of a neighboring circuit. The defendant admitted infringement, but set up want of patentable novelty. The affidavits submitted in support of want of novelty were made, some by licensees, some by affiants who had made contrary statements out of and some by persons who in former litigation had been sworn, but had not pointed out these instances of anticipation. Many manufacturers testified that they knew of no prior use. Held, that these facts raised a presumption that the patent was valid,and, as the loss to the defendant from granting the injunction would be trifling as compared with that which the complainant would Buffer from its refusal, the writ should issue.
In Equity. junction.
Bill fo1' infringement.
On motion for a preliminary in-
John R. Bennett, for complainant. Edmund Wetmore, for defendant.
COXE, J. The complainant is the assignee of letters patent No. 218" 220, granted August 5, 1879, to John Bigelow, for an improvement in sweat-bands for bats and caps, popularly known as the "Concealed in manufacturing and sellStitch Sweat.» The complainant is ing, and in granting licenses to others to manufacture and sell, hatsweats unoer various patents owned by it. One of the most valuable of these is the patent in controversy. . The capital stock of the complainant is $300,000. A large number of workmen find employment in manufacturing its products, and its business is prosperous and extensive. This flourishing industry has been built up and sustained through a long period of years by the enterprise, pluck, and energy of tbe.men who have managed the affairs of the complainant. After the introduction of the "conceale"d stitch sweat» its
402
FEDERAL
REPORTER.
utility and value becarn:e generally recognized. It was received by the public with increasing favor until, the present time, the number annually disposed of is almost fabulous. Its popularity is undisputed. All of the leaning hat manufacturers, witp, possibly,three, exceptions, have directly recognized the patent. There are in all 145 licensees. True, that of these some 21 are stockholders in the complainant corporation; true, that in other instances licenses were taken upon the settlement ofa litigation in which the validity of the patent was disputed, -a settlement which, certainly, was not cruelly oppressive to the defendants. And yet it is not easy to appreciate the argument that the acquiescence here is not controlling because many of the prior infringers found it for their pecuniary interest to cease acting in hostility to the patent by taking a license under The alternative, either to payor defend a suit, is the one usually offered to an infringer, and it would seem that a general recognition, obtained after litiga,tion, is at least as <:ontrolling as when given voluntarily, without investigation as to the merits of the patent or the chances of successfully resisting it. As was said by· J udgeCuRTIS in Sargenty. Seagrave, 2 Curt. 5,58, 556: "An unsuccessful attempt to interrupt a possession strengthens the presumption which arises from it. It tends to show that persons have found it for their interest to question the right;, that they have questioned it, and for a time refused to submit to it; but oninqhiryhave submitted. Such submis8ion,1s the most persuasive kind ,of (' In OaldweU v. Vanvli8sengen, 9 Hare, 415, (9 Eng. Law & Eq. 51,) the vice-chancellor says: . ' . "In a case where there has been long enjoyment under the patent, (tbe enjoyment, of course, including use,) the public have had the opportunity of contesting the patent, and the fact of their not having done so successfully affords at least prima facie eVidenCe that the title of the patentee i.s good; and the court therefore intervenes before the right i.s established at law." Ohase v. Wesson,l Holme.s, 274; Millerv.Pulp Oo.,Id.142; Hill v. Thomp81>n" BMer.622. . , , Without entering into a minute analysis of the maImer. in which it was obtained, the unquestioned fact' remains that to-dayacquiescence in the patent is well-nigh universal. Tliis is a genuine, arid not a spurious or a recognition. " In April, 1880, the patent in controver.sy was sustained by the <lourt .of the district of New Jersey, and an injunction ,issued. wood v. Bracher, 1 Fed. Rep. ,The circumstancesofthat case, how.ever, were such that the decision canhardly be recognized as a controlling precedent; although it is urged, with some loree, that, had 'been any serious doubt as to the validity of the' patent, the court would not, at that,early date, have graI,lteda preliminary injunction. The ,defendant is a corporation which for 15 years. has been engaged 'in manufacturing and selling sewing machines arid their attachments. Its connection with the hat-sweat industry is ofvery recent date. In the latter part of 1886, or the early parlof the present yea,r, it commenced stitching the infringing hat-sweats, In a small way, in the city of New York. This business was begunundercircumstances which; the com-
HAT-SWEAT MANUlr'G,
CO,,,.
'DAVIS SEWING-MACHINE CO.
403
plainant vigorously argues, indicate bad faith, and was continued for a few months only. This being the situation, it is quite clear that but slight loss and inconvenience other than that occasioned by the delay of a few months can accrue to the defendant by the issuing of an injunction pendente lite; a flourishing business will not be broken up; no large amount of capital will be left idle; few, if any, operatives will be turned out of employment. On the other hand, to deny this motion will paralyze, ifnot irrevocably destroy, the business of the complainant,-a business which has been built up by long and persistent endeavor, but which, from its very nature, rests upon an unusually sensitive foundation. It is not to be supposed that licensees will continue to pay after the door has been thrown wide open to all. Such altruism is not often met with in the course of patent litigation. These considerations appeal strongly to the discretion of a court of equity · It is, thought that this is peculiarly a case in which the court clearly should be satisfied of the rectitude of its position before overthrowing, in limine, a. patent upon which such interests depend. Even where serious doubts exist, if the cogrt can see that these may be removed, and that the withholding of the , junction:will work great injury without corresponding advantage, it should not hesitate to issue the writ. To quote again from Sargent v. Seagrave, 8tLpra, (page 557:) ,. The, court looks to the pll,rticular circumstances to see what degree of inconvenience. would be occasioned to one party or the other by granting or withholding the inju nction; and whether the defendant has vol untarily placed himself in the position to be subjected to that, inconvenience. * * * It W'as argued that inasmuch as the court, upon an exarninaton of the defendarit'sevidence, has some doubt concerning the validity of the patent, there should be no injunction. But I take it to be settled thatsuflicient possession, such as I consider to be proved in this case, will outweigh graver doubts Ientertain." Hannerv. Plane, 14 Ves.130; Isaacsv. Cooper, 4 Wash. C., e. 259, 260.
Infringement is not strenuously denied, but it is argued that the ent is void for want of patentable novelty, and that the device disclosed by it has been fully anticipated. It is not the purpose of the present decision to determine these questions, or to discuss them at length, further than to say that the court is not so clearly satisfied that the defendant's positions have been sustained as to justify the withholding of the relief prayed for. The question of patentable novelty is both important and difficult. It is true that the invention is not a great one, and that in many cases, upon the facts, patentability has been denied; but it is also true that in others it has been sustained. Smith v. Dental Co., 93 U. S. 486,493-495; Loom Co. v. Higgins, 105 U. S. 580; Tilgh'l'nan v. Proctor; 102 U.. S. 707; Crandal v. Watters, 20 Blatchf. 97,9 Fed. Rep. 659; Paper-Bag Co. v. Paper-Bag 00., 30 Fed. Rep. 63; Eppinger y. Richey, 14, Blatchf. 307, 312; Adams v. Howard, 19 Fed. Rep. 317; Hi7l v. Biddle, 27 Fed. Rep. 560. Considering the utility, the long recognition, the thorough investigation of the patent office, (Shaver v. Skirlner, 41Q. p. 232, 30 Fed. Rep.
404
J!'EDERAL REPORTER.
68,) and the qtuzsi adjudication in Greenwood v. BrasMr,'8IJJpra, it is thought that at this point in the litigation, at least, the doubts arising should be resolved in favor of the patent. Upon the question of anticipation, a number of affiants have sworn to prior use, but some of them have made contrary statements out of court; others have recognizAd the patent by taking licenses under it; others still were examined years ago, when their interest to defeat the patent was as keen, and their recollection presumably much keener, and they failed to mention instances of anticipation which they now relate with great elaboration and attention to detail. Many active and enterprising manufacturers, who could hardly have missed learning of these instances of prior use, testify that they never heard of them. It surely is a remarkable fact that, if this valuable improvement was known as early as 1865, it should have been permitted to fall into disuse by the trade, which, after the patent, gave it such a cordial reception. The presumptions, invoked by the complainant, arising from these facts, certainly raise a doubt, which, upon this question, should be absent from the mind of the court, in order to overthrow the patent. Cantrell v. Wallick; 117 U. S. 689,6115,6 Sup. Ct. Rep. 970; Coffin v. Ogden, 18 Wall. 120, 124; Tekphone 00. v. Telephone Co.,22 Fed. Rep. 309, 313. Butthesequestions can best be determined upon the final hearing. It would be most unsatisfactory and unfair to all concerned .to attempt to decide them upon affidavits. A question or two put by the cross-examiner will often destroy the entire force of an ex parte statement. Both parties should be allowed an opportunity to apply this test. Without further comment upon the evidence now presented, it is sufficient to say that the considerations referred to lead to the conclusion that the present status should be preserved until the final hearing, unless the complainant unreasonably delays the prosecution of the cause; and that to this end an injunction shoul? issue substantially in the language of the restraining order now in force.
Ex parte Court, E. D.
BYERS.
October 10, 1887.)
1.
AmURALTY-CRIMINAL JURISDICTION-FEDERAL COURTS.
2: SAME. 8. SAME.
The federal courts of Michigan have no jurisdiction {)f a felonious. assault committed upon an American vessel in t.he Detroit river. .. . The criminal jurisdiction of the federal courts does not extend to the Great Lakes and their connecting waters.
The words "upon the high seas, orin any arm or the· sea, or in any river, haven, creek, basin. or bay, within the admiralty jurisdic.tiQn of .the United States, snd out of the jurIsdiction of any particular state, "used. in.section 6346, ReV'. St. U. S., are limited to the high seas, and to the waters cpnnected immediately with them. ..