190
nDERAJ, J1E:PORTER ;
vol. 41.
the. work was done-:-it was held that,apipe the bOiler was not the equivalent oLthe(.'exbaust pipe, D.", confirmation of the correctness of our it may be .stated that 'defendant's proOfs. establish the construction and, use;0(ah, engilWthe DaYisengine-prior to the dateofthe plaintiff's invention, in whieh the. cy:linder, piston-,.alve. chamber, and.a live steam passage-way were caat.in one piece; the three mentioned :parts hn\Ting the same relative pol,lS the same parts .in: the defendant's engine. And the plaintiff's expert, Mr. Porter, admits that, inresp.ect to these matters, the defendant'i! engine more nearly. resembles, the Davis eIl:gine .than it does the plaintiff's. This evidence was objected to for want of .the prescribed statutory notice. Butit was not offered to defeat the plaintiff's patent by provihg'anocipation,'but the,p'iior state of thlHut, and we think was admissible' undertlieauthonties. "Brown; v. Piper, '9'1 U. S. 37; Dunbarv.Myers, 94 187; Sla'W8otl v; Railroad 00., 107U. S. 649, 2 Sup., Rep; 663. 'N.ow, the effeot·oHhis proofis 10 preclude a construction of the claims of the, patent Which would take in the defendant's live steam 'passage-way-;;8ndt0 require ,that the term "e,xhaust chamber" shall be accepted .initsmatural and more literal signification. As we have already seen, theexbaustchambeds an element in every claim of the patent, and it mlist. be dreoeived :in the same in aU. The result, therefore, is oo:infringemendLhas been shown, and the bill of complaint must ber dismissed. Let. a, decree be drawn dismissing the
the, ."exhaust pipe, D/' Jor conducting the exhaust steam ma. qox where
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L PA'!'1IWt'a c 'IAltte.-.,patent DOn", foranimprovement in 1,ene frai;Jles of stereOilcllpes, oonsistinl{ iii making the lens-holder itself as large fronts formel'ly used; and mbbetting out its Inne1'Eldge into a groove, to ,the end of the hood, is want B.
,,'in 110 suit torest,1'a,In, the lnfl'i, of a patent; the deu!linp;the preciile thing in,the.patent 'aw,that the patent haB acquiesced in by every on,e except tqe and. even b>;,\lim for a long 'tiinela preUmillary injunction niay issue,·thdUgh there haB been'no p'rior adjudlcaoUbe paWIit., , . . ir ' : ' ;. ., .
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On motion for preliminary: injunction.' " j " James;!{,: BaJ.chdder, for
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J. ,This.suit is brought upon letters patent No. 151,576, 1874jand granted to: (Henry Dorr for an improvement in i ·.. appears to hllive been pat-
· : . , WHITE V.BURDAM.
:791
while the invento.r was employed by the orator and defendant. as partners, in making steorosoopes j and assigned to the orator. The defendant now then supp<?seg (he to be for the benefit of both. '. He'did n'dt, 'bowever, takEf fOsecure the benefit ·of it to himself, and does.not show:butthat the orator is bly ,as well as legally, to the 'p#ent: adjudged ,to be valid in.any.judicial proceed.ing. A suit in the:courts of the state has been maintaineq the balance ofr.oyalties under a license to use' ti;,but that would not'necessarilY'lovolve its 'vs:lidity; White v. Lee; '14 Fed'. Rep. 789; McKay v.Jackman, 17 dft'd. Rep. 641. The cause is now heard upon a motion for a prelimihary injunction, and such ati inJilliction will not .ordinarily be: granted without 'Buch'prioradjudication·... llitbiscase:the patent appears to have been alwaysacquiesced.in by. every' one but the defendant, and by him longtime,by taking. a liCe1ilSe,llnd paying. royalties under it. This sufficiently its ;validiJtyf:for' .thjs'. purpose,· wUhout any express prior adjudication. 8im. Pat. 25L, :" I : No question as to infringement arises. ,The defendant, in his answer, admits use of the precise thing patenteddnmaking, stereOllCQpeS for sale. The principal question made is as to whether sufficient invention was involvedto,upho1d the pllten't!· iLens..holde""fitting itito the. 'outereiid of ·the hoods()f the stereoscopes wetein U$e ,before. .. A separate fronti,having an; opening over ihelenses;and oovering tl1e:endof the hood, wilB .'sometimes .added. The' invention ·oonsist.eQ. 'in' making the lens-holder ·itself as andrabbetting outthe inneredga, ,making a: gt'oove to l'eceivethe end (:If, the hood, whiehwould be covered by the outside ofthe.groove.iRapbetted grooves: 'were old; aodwell known'. Mi:l.kingthem' said in argument. to 'be only a new use ofthern.. But making arabpetted groove on the edge of the old lens.. holder,was'uot all that was done. ': The holder itself had to be contrived into the proper size and ,shape; in proportion and relation to the hood, rabbetted groove on its edge answer the purpose of fixing it ·to into', and covering the end of; the hood. There· was: no room for any great exercise of invention; but no one bad done this before, and when done, the lens-holder produced appears to have immediately superseded all others. The accomplishment of this result was not so clearly within the domain of mechanical'skill aud judgment,andwithout that ofinvention, as to appear to warrant -the conclus.ionthatthe patent-office was wrongindeaiding that what the inventor ·had produced new amounted to ·a patentablerinvention. 8im. Pat.4l:;:&nith v. Vulcanite 00., 93 U. S. .486.. The orator is himself a manufacturer of these things,and his tights under the- patent canDOt well and effectiVely be seCured ·to himwithorit an injunction. Motion forpre1iminaryinjunctiongranted.
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FEDERAL REPORTER,
RAPP 11.' KELLING.
ri ' 1. PIi'1'BNTll I'OB
(C'lrcuit Court, S. D. Ni?W York. February 97, 1890.) ·
. Agrant. of the exclusive right to and sell a patented article dut tlie Unite4 States for the full term 01 the patent is to be treated as an aSSIgn·tnetlt;,enabling the assignee to bring suit in his own name against the patentee for , infrblgement., .' . to SAlIB-AOTION FOB INll'RINGBHBNT-J'muSI)lQ'l'ION. The circuit courts have jurisdiction 01 sUch a suit, as arising under the laws of thl! IJnited States, even though one, issue in the ease is whether the grant is still In , ;' 1
Ih.Eql1ity. ,On motion for preliminary injunction. Suit by John W. Rapp against Max Kelling for infringement ofletters patent ·No. 416,265, issued to defendant, Kelling, December 3, 1889, for improvement in fire-proof doors. Defendant had granted to plaintiff the exclusive right to make, use, and sell doors embodying such improvement for the full term of the patent. JihJnc£BForbea, for complainant· .A; Britto'll Havens, for defendant. . WALLACE, J. It seems quite ,plain in this case that the complainant is.notalicensee of the defendant, but that the instrument by which the defendant transfei'redto him the sole and exclusive right to make, use, and sell the subject of the patent throughout the United States is to be treated as an assignment; Even ifthe instrument did not vest the complainantwith the legal title of the ,patent, it enables him to maintain a suit in his own name against the patentee for an infringement. Littlefield v. Perry,21 Wall. 205; Gaykrv. Wilder, 10 Row. 477. The bill is in the ordinary form of, one brought by' the owner of a patent against an infringer, for an injunction and an accounting. The case which it makes differs from ordinary actions· for infringement only in the fact that the defendant is. the person to whom the patent was originally granted. The bill, therefore, presents a controversy of which this court has jurisdiction, aIld, even though one issue which may be raised in the case is whether the gratit is stilJ.inforce, that circumstance does not pervent the controversy from being one arising under :the laws of the United States. But. although the complainant may have failed to comply with some of the terms of thl'l agreement by which his interest in the patent was ae- , quired,his failure to perform them does not wmk a forfeiture of the grant,and the only remedy of the defendant is an:action for damages for breach of contract. Hartshorn v. Day, 19 How. 211; Mackaye v. MaUory, 12 Fed. Rep. 828. If the complainant has refused to comply with the .eonditionsof the contrae-C; :on his part, and without 8ufficientreason' insists upon ignoring them, the court should not assist him by a preliminary injunction in enforcing rights which at a final hearing it may be constrained to protect. A party cannot ask the court for any extraordinary assistance preliminary to a final decree, if he does not come into court proposing to deal fairly with his opponent.