&6
."
FlllDEB.U.'BEPORTElk ,';'
The inclinedpart,as asupportet,of the tJrClwn of the st!\'P1e, and retreating to give way to the crown as it is forced downward by the driver, was new,.: The cam and lever, are ne<ressary to draw the forming part of the anvil backward until the crown of the staple is brought to the top of the incline; then the downward motion of the driver on the crown will force the inclined portion back while it is giving support. The cam and lever are not brought into the combination of this claim by its terms, neither are they necessary to the 'operation of, the inclined and retreating part of the anvil; therefore they are not brought in by any necessary cation. This claim appears t<>be valid to cover: thil? inclined and retreating anvil, operating to Bupport the crown of the staple in the man· ner described, while the prongs are ,being supported by the bender.foot, and the staple is being driven hom:e by the driver. WhUe these parts work together indhis rnannerthey are the cQmbination of this claim; and all the other parts of the:maehine that make, thesepart:s operate in this way to produce the result required are, for that purpose, equivalents different, they may be in of the parts of any other machine( themselves, which also make these parts operate in the l?ame way to pro. duce the same result. (J[wgn v.Barker, 106 U. S.166, 1 Sup. Ct. Rep. 188, 1 9 8 . , , . In the defendant's machine, what is called in this patent.the "anvil," is,divided,andthe part over which the staple is forDled is, in one piece, and part, which ,supports, the crown of the $taple while being driven, is itt another.. But ,the inelined and retreating portion oper; ates to support ,the crown ,of ,tha.staple while the proQgs are supported by the bender.fOot and the staple is being driven home by the driver, precisely as these parts work: in, the combination of this claim. The forms are soinewhat different, but tM operation and result are the same. In thismaIiner: the defendant appeaJiS to make use of Shorey's invention as it was patehted by, this claill).. Mason v, Graham, 23 Wall. 261; IVe8v.lIamilton, 92 U. S. 426; Val'l!eG'o. v. Valve q,., 113 ,D.. S. 157,5 Sup. ,Ct. Rep.. 513. ' " ' Let there be a decree that the third claim of the is valid ;t1?at the defendal!lt infringes that claim; and, for an injlUlction ap.d an accollnt, with costs. .
.
I
et '1888.) PURCHAB;ERS WITH SUITS FOR,b',"', ' , ,) ','
N.:D;iUinoiB.. Februarr
t. PATENTS' 'l
'FRINGEMiliNT:"'""mJUNcTION."
A court1df equltyha& Jurisdiction tcfrestrain. anatternpted' i'l1tiplidation by one issning cireularsU1reatening tabring suits for infringements against perSC/DS dealing in ,competitQr'sp,ll,teD;tedarticle.the bill charging. and the that the charges of'irift'ingement were not made in good faith, but with'malicious intent to, injure ,complainant's business. : ,
" ,"
,','
EMACK fl. KANE.
47
2.
In a suit to restrain one from issuing circulars threatening to bring suits for infringements against all' customers dealing in, a competitor'S patented, art,i· cle, a court of equity will n,ot pass upon the val,i(lity 0 the patent, but it may consider the state of the art in connection with the defendant's conduct, to the circulars.' ascertain his good faith
OF PATENT-COLLATE&AL' ATTACK.
In Equity.
&; Dicker, for complainant. Banning &; Ba'fl;ning, for defendants.
Matthews
On bill for injunction.
BLODGETT, J. This is a. bill in equity, in which the complainant seeks to restrain the defendant Kane from sending circulars injurious to thecomplainltnt's tra.de and business. Both complainant and defendants are manufacturers of what 'are known as "noiseless" or "muffled" slates for use of school children. ,The complainant is the owner of a patent issued to one Ebenezer Butler, February 15, '1870, in which the slate was muffled, or rendered noiseless, as it is said, by making a slot the frame ne!1r the outet edge, into which wMspirally wound a Viece ()f listing, clo,tg, ,other fiprous material, which'YQuld deaden or' the sound of tbeslate when it came in contact,with the desk ()ral).Y hard substance; the listing operating to mufile the facesand,the of the frame. is also the assignee of letters patent ,granted .April 3, 1877, to Francis W; Mallett, for a noiseless or muffled slate; the niuffling, being encircling the' outer edge Of,the frame of the slate,with a little larger than the thickness Of ,the frame, whioh strip of wood WaS covered with cloth, or other soft, I1J1l,te,rial, so as to muffle both the edges and the faces of the slate bill also alleges. that the defendants are manufacturers of noiseless or school' their place of in the city of Chi,cago';-:-llndera patent,.l'is they claim, granted Ma'rch 28,18,77, to Harry .C. Goodrich, whi()hwas' reissued September 26,,1882, with. tional claim. It also ,appears that this class of goodf\ is sold extensively 'by both these manufacturers to jobbers, who supply the retail dealers, from whom the slates 's.repurchased for, school use; and that.thecolI)petition between is active and vigorous; that both are seeking to control as much of the trade as possible, or allot, it, if they caD: do so; since August 1, 1883, up;tothe bill" which was 1D March, 1884, the defendants havel:ieJ;lt 0lltto tge tradei7 ,that is, to the jobbers and persons engaged in this class of.slates,-:-:eir,culars threatening all who should buy from theeomplainant1or deal in his slates, with law-suits, upon' the ground that the Mm plainant'.s' sla:te is an infringement of the G.oodrichpatent as reissueq. I dp Ilpt to quote all these circulars,' but extracts from a few will .the of;the attacks which th.e defendants P/:lVe I.P,ade upon the C0111,plainant's business. In a <;:irqu1l:i.r issued Sap,temper 26, 1882" generally to the trade, occurs the following language:! : "WHA.T :r)O"Wil:PROPosE' 'to Do WITH'INtRtNGE:Rs? Nothing'for the present, so fal' as prosecuting Emack is concerned, and for reasons ,that the
42 trade well understand·. We could stop him, of course,but be would open out the next day in another loft or basement, and under another name, and put us to the expense of suit, and soon indefinitely. When we commence suit we want. to be SU1'e of damages. 'fhe language of the original patent was someWhat ambiguous, and hence there was some excuse for those who sold it, believing that it was not an'infringement. There (Jan be no mistake now. The language of the claims could not be made plainer. Any dealer who now sells the Emack slate knows that he is selling an infringement of our patent, and we shall protect ourselves and our friends by holding all who are responsible for royalty and damages." "1;0 OUR FRIENDS: We will say that very few jobbers have handled the Emack slate. Failing to sell to the jobbing trade, he went to the leading retailers;and sold :tbimlallhe could. They, of-course, had heard nothing of QUr. claimj\ as. to infringement, as we sell only to jobbers. . We now know every !Dan in thecoulltry who handles these slates, and shall notify them all promptly of the reissue of the patent. Then, if they continue to sell, we shall be adopt legal measures." .
In "SLAT:!!;
occurs the fqlIowing language:
We advise any who are tempted to bUy the Emackslate to 'gqslow.' Don'.t accept the statement that, because he uses a' bar,' arid we donat, that his slate is not.ari infringement.. We have a straight, squ.are, 'no nonsense' patent On He uses a cord muffler, and hence he irifringes OU1' patent. 'If you doubt it, ask any patent lawyer, and also ask regarding the truthfulness of hIs statement, iIi a late circular, that, if he is infringing, 'the law cOInpe\sus to close his Better pay something to keep out oftrquble than, to pay to flf/t out, and fail, besides. Of course, we know Qf every shipment he, makes, .and the quantity. Shipping to his own address shows, of course; that he those who may buy them al'e afraid of the consequences, but it l"ill dono we shall know who sells them, and royaltywHl be·'deumnded in good time, by the proper·parties,of the proper parties. and ina legal way." ' .
In a still later circular occurs the following paragraph: "Wehave, jointly with the patentee, placed the matter in the hands of attorneys of this'city and New York; who have for many years had an extensivealld very successful practice in iaw, and especially in prosecuting infringement cases. We instruct them to give the entire trade fair .warning, and make veryfavol'ableterms with any who have been deceived, and propose to stop selling 'the so-called' E.£, Slate;' but parties Who want a lawsuit can have again we ,annqu!lce ou.r purpose not to sue Emack, and here agai)l We state that every' man in the trade knows why., No one of you would dO and if iIi our place you would do just as we are doing; We ex1'>ed tOcbmp}ence some suitsirr Augustand September, selecting parties whose sales we think have amounted to enough so that the royalty and damages wil. -pay at least apart of our expenses. If others want their suits laterthis or next seaeon,all.they have to dQis to seU infringillg slates until their sales aggl'egate a;sufficlent sum to j uBtify us, and we will try to accommodate ants wrote:
And in astill.later circular; addressed to the jobbing trade, defend . .
"fna· np'" ('mce' more wEl sa:ywe shaUnot sue Emack. If this be libel, we take' theconsequenceB;' but we· do ellJplict and fully intend to' bring suits against those who sellinfdnging slates: * . . * 'Phe longer we wait, the m.ore roy,alty and we will those",.,,\) copthlUe to sell infringing sll:\otes,"..
EMACK
'D.
KANE.
49
Many more extracts might be made from these circulars, which appear in the proof, but this is enough to show the spirit in which the defendant attempted to intimidate the complainant's customers from dealing with him, or dealing in the slates I\lanufactured by him; and the proof shows abundantly that much business has been diverted from the complainant by these threats and circulars; that the complainant's business has been seriously injured, and his profits very much abridged by the course pursued in sending out these circulars. The proof in this case also satisfies me that these threats made by defendants were not made in good faith. The proof shows that defendants brought three suits Emack's customers, for alleged infringement of the Goodrich patent by selling the E;mack slates; that .Emack assumed the defense in these cases, and,.after the proofs were taken, and the s\lits ripe for hearing, the defendants voluntarily dismissed them,-the dismissals being. entered under such circumstances as to fully show that the defendants knew that they cq1;lld not sustain the suits upon their merits; that said su;its. Were brought in a mere spirit of bravado or intimidation, and oo.t with:a bona intent to submit the question of infringement to a decision. , . The defense interposed is-First, that these circulars were mere friendly notices to the trade of the claims made by defendants as to what was covered by the Goodrich patent; second, that a court of equity has no jurisdiction to entertain a bill of this character, and restrain a party from issuing circulars, even if are injurious to the trade of another. In support of this latter point defendants rely upon the opinion of Mr. in Kidd v. Horry, 28 Fed. Rep. 773, and Wheel Co. ,v. Fed. Rep. 95, decided by Judges COL'f and CARPENTER in the district ,court of Massachusetts. Kidd v. Horry was an application for an defendant from. publishing certain circular letters alleged to be injurious to the patent-rights and business of the complainant, and from making and uttering libelous and slanderous statements, written or oral, of, or concerning the business of. complainant, or conyerning the validity of their letters patent, or of their title thereto, pending the trial and adjudication of a suit which had been brought to restrain the infringement of said patents; and Mr. Justice BJl.ADl£Y in deciding the case said: "The application seems to be altogether a novel one, and is urged principally upon a line of recent English authorities, such as Dixon v. Holden,L. R. 7 Eq.488; Food Co. v. Massam, 14 Ch. Div. 763; Thomas v. Williams,ld.864; and Loag ,v .·Bean, 26 Ch. Div. 306. An examination of these and othetcases .relied on'convince/:i \1S that tbey depend on certain ·acts of the parliament of .Great ;Britain, and not on the general princip,les of equity jurisprUdence. * * ,* But neither the statute law of this country, nor any Well-coDSiueredjudgment of a court, has introduced this new branch of equity into OU1 . There may be a case or two looking that way, but none that we deem, ·ohmfflcient authority to justify us in asSuming the jurisdiction. * · .,: We do not think that the existence of malice in pUblishing a libel, pr uttering slanderous words, can make anY di!fei"ence in the jurisdiction of ,the C01Irt. Malice is charged in almost every case of libel; and no cases or v.34F.no.1-4
autbo'titr canbe fdund, we,tMlik, independent of inwbfchthe power to issue an' injunction to restrain a 1m-el: or slanderous wordsbas::ever been whether qharged or n()t." :Theiprinciple of this case, eOI1cisely stated, is that a: oourt of equity has 'no jurisdiction to restrain the 'publication of a libel Of slander. But it seems to me the case now under cOnsideration is fairly different and distinguishable from the case$telied upon 'by thedefendalits in what seems tome a material and vital featUre. In Kidd v. Harry the owner of a patent sought the intex:fererice of a court of equity to restrain the defendants from publishing and putting in circulation statements challenging the validity of his pltten.t, and of his title thereto, on the ground that such 'p,ublications were libeldus attacks upon his property. Here the complainant seeks to reatrain the defendants {rom' tnaking threats intended to intimidate the complainant's customers 'under the pretext goods infringe ll. patent owned otcontrolled by dethat fendants, 'and: 'threats that if such customers deal' in goods they will sUbject themselves 'to ,such infringenie'rit;the bill charg. ing, and "the proof showing, that!tliese charges of irifririgement, are not made in good faith ,but with a maliciousintent to inNreand'destroy the cottlplainant's busih'ess. While: it may be that the 'owner of a patent canndtinvokethfl aid of a courtofeqtlity, to prevent another person from .publishing statements .denying the validity of such patent by circulars to the trade; or 'otherwise, yet; if the owner of a patent; instead of resorting to the' courts to'obtain redl'68s for alleged infringements Of his patent, threatens aU who deal in the goods Of It competitor with' suits fot'infringe'ment, therilb,Y'intiinidating such frou\ wHh . competitor, arid deattdying his competitor'S' business, it would seem to h)ak'e a widely different,case from Ilidd v. Horry, andtnatsucha:6ts 'of intim:.idation sh0\11rl fall within the .preventive reach of Ii'. of 'equi . It may not, for the owner of a patent to an article' madepy Ilnothetmanufacturer infringes of an alleged'infnngement may; if given in good faitH, bea'.d6nsiderateand kind act on the-part of the owner ofthe patent; but of 'this -case is, .intitl1idittfl6n.bY defendants' of:cbirlplairumt's cUstomers bY;threateningthemwithsuits which intend to prosecute; and this feature was not involved iri Kidd v: Horry. TcaI1not believe, a man is, against persiste:nt and contil1,lled attaCks upqn rights in business, such as pll-ve beenperpet.rated by $6se defendants against,the-complainant, as showuby.theproofs in this case. !: It shocks my sense-of justice to. say outrages that a court of itlquity cannot restrain systematic and likethis, byone!fuanupOll' another'sproperty rights: :.Jf'ltconrlof equity a man's party at law in.lUO$t cf\.ses would do ,no good. ,'",rid:rUbl.Would 'accOI;npnshed .before .an adjudication would be; reached. ,True, it may ,besaid:thaMhe injured party has a remedy at law, but that might implyamultipH:oity of suits which equity ofWP. 'interposes tbrelieve fromj but the 'still more seerns tctbe
:00
i;MACK V·.:\tANE.
61
that a court of equity can, by its writ of injunction, a wrongdoer, and thuspreventinj\uies;yhich could. not be fully redressed by a verdict and judgment for damages at law. Redress for a mere personal slander or libel may perhaps properly be left to the courts of law, because no falsehood, however gross and malicious, can wholly destroy a man's reputation with those who know him; but statements and charges intellded to. frighten away a man's customers, and intimidate them from him, may wholly break up and ruin him financially, with remedy if a court of equity caunot afford protection by its restraining writ. . . The. effect of out by .the defendant Kane certainly must,have been to intimidate dealers from buying of the complainant, or dealing jn slates of his ,manufacture, because of the alleged infringement oLtha Goodrich patent. No business man wants to incur the dangerso.f a lawsuit for the profits which he may make as a jobber in handling goods charged to be an infringement of another man's patent. The incljnation of most business men is to avoid litigation, and to forego even certain profits, if threatened with a which would be elDbarv-exatious, alldrnight mulct them in damages far beyond and hence.such persqns, although hav.ing full faith ill a man's integrity, ,and in the merit of his goods, would naturally ,avoid dealing with him for fear of possibly becoming involved in the threatened litigation. The complainant, as I have already stated, was engaged in the manufacture of school slates under the Butler and Mallett patents; the Butler patent being much ,older than the Goodrich, and the Mallett patent being nearly contemporaneous 'in issue with the Goodrich patent, under which the defendant was manufacturing. B1.lt the proof in this case shows a stilloldel" patent, granted to Olle Munger, in 1860, fur a muffled or noiseless which most clearly so far antici pm tes the pa tents of both complainant and defendants, as to limit them, respectively, to theif1lpecific devices. ButI,do notthink the fact that complainant ,vas the of patents or operating under them. material to the questions in this case. The defendants claim that complainant's slates inGoodrich reissue patent, and threaten complainant's cnstolners ,The state of the n,rt to with·suits if they deal· in which the Goodrich patent pertains may be examined for the purpose of aiding the court in passing upon the question of defendants' good faith in making such threats, and the state· of the airt is only material, as it seemsto me,forthis purpose. The court will not attempt, in a collateral <ilhis, to pass· upon the validity of the Goodrich patent, but will consider, in the light of the proof as to the state of the art, and the proof as to defendant's conduct"whether the defendant made these threats against complainant's customers because he in good faith belhbved cOUlplainanrs, infringed his patent, anf! intended to prose.<mte such ()1' wliether such threats were niade solely to inHmifrighten"customers,liway from and with nO,ipteii'tion 'of vindica.tingihevaHdity of his patent by suit or suits. 'In!3'tead of going into the courts tq the validity of the or the right
a
FEDERAL REPORTER.
of complainant to make the kind of slates' he was putting upon the market, the defendant, in a bullying and menacing style, asserts, to the trade by these circulars that complainant is infringillg the Goodrich patent, and threatens all who deal in complainant's slates with lawsuits, and all the perils and vexations which attend upon a patent suit. The average business man undoubtedly dreads, and avoids, if he can, a lawsuit of any kind,blita suit for infringement of a patent is so far outside of the comIllon man's experience that he is terrorized by even a threat of such a suit.' There seems to me certainly good grounds for doubting the validity of the Goodrich patent in the light of the state of the art at the time he entered the fieldj and that any lawyer in the law of patents would surely hesitateto'advise that the the Goodrich patent, either before 'or after the reissuejandtheconduct of the defendant in dismissing his suits for such alleged inf'ringement without'trial,shows that he did not believe that such infringement could be established. :' ' , IRm'i of opiniot. that the complainant has made a case entitling'hiin to the interposition of a court of equity to prevent the issue of c:ifQulars, or other written or oral assemons, that the slates made by tbe:complainant are an' infringement upon the defendant's patent; and be entered aspraJ'ed in the bill. a
THE SEA LARK.! HUDGINS
et al. v.
THE SEA LARK.
(DiStrict Oourt, E. D. Virginia. January 14, 1888.) When the time fixed by the rules of court for makmg dllfensellas :elapse<t. and the libel has been taken for confessed,'but the formal decree, of condemnation8nd sale 'has not been entered, on account of the absence of the judge, any maritime clalmant who comes in by petition subsequllnt thereto" dO,es so subject to the libel, and cannot be paid till the libelant is paid in full, although his claim' was'originally prior to the libelin dignity.' ,,' CLAIM.. · "." .' I .,
In A d m i r a J t y . , , , Libel by Hudgins and Hurst for the cost of sails fUrlJ;isaed-ihesloop Sea at issue is whether,the claim of libelantsishould the claim of one ¥itchell, a seamM1r, fo.t:w:a,gea ,accruing prior ,110 the <llaims of libelants. Whitehurst for libelan'ts. W. A.Swank, for the seaman· . libelants, having a claim of $63 for sails furnished' the Sea Lark ill January, 1887, filed a and issued process C?f,.arres,t on the of December, last. The libel duly served, l:J,nd 1
M. Hughes, Esq., of the Norfolk bal'.