NORTON' fl. EAGLE' AUTOMATIC CAN 00.
929
ness in principle. It said: "* * * trhedifferences pointed out are mostly formal, and do not present any substantial differences in the principle of the operation of the respective machines." The defendant's machine differs in some particulars from the Jensen machine, and is probably an improvement, and, being so, properly patented; but I do not think the differences are great enough to avoid the comprehensive construction of plaintIff's patent given by the court of appeals. It is claimed by the defendant that plaintiff changed his claim, in conformity with a ruling of the patent office, so as to make one of its elements a device for forcing the can head into the annular spaces, instead of making it a device for forcing the can head upon the body. There is no doubt that a claim restricted in the patent office cannot be afterwa:rds enl3JI'ged; but what a claim at a:ny time means is a matter of interpretation. It is conceded that in the second of the original claims the annular space is mentioned, and the movement of the can body to the head, and the head to the body, are held by the court of appeals in, Norton v. Jensen to be equivalent, and both movements covered by the language of the claims. In view of this it is not competent for. me to hold that a change in the claims restricted the patent to a' device only which forced the can head into an annular space. ! There were a number of patents introduced in evidence, which itj is not necessary to consider at length. The testimony shows that some were subsequent to Norton's invention, and the others werei not introduced, counsel says in his brief, as anticipation. Decree for plaintiff. NORTON et al. v. EAGLE AUTOMATIC CAN CO.I (Circuit Court, N. D. California. August 16, 1893.)
1.
PATENTS FOR INVENTIONS-CAN-HEADING MACHINES.
Can-heading machines, made in accordance with the specification and drawings of United States letters patent No. 4W,l:i24, granted to Charles B. Kendall on April 21, 1891, are an infringement upon United States let. ters patent No. 267,014, granted to Edwin Norton on November 7, 1882. When a patent has been sustained by prior adjudications in the same circuit, on motion for a preliminary injunctio.n in a subsequent suit against other parties, the oniy question open is that of infringement, and consid'eration of all other questions will be postponed until the final hearing, ex",ept in cases where new evidence is presented, which is, in itself, of such a conclusive character that if it had been presented iii the former case it would have probably led to a different conclusion; but in such contingency the burden of shOWing this is upon the defendant. 'Where, on motion for a preliminary injunction in a subsequent suit against other parties, certain prior patents are set up in anticipation, which were so set up in prior suits in the same circuit, and therein held not to SUIT.
2. SAME-PRELIMINARY INJUNCTION-QUESTIONS OPEN.
8.
I Reported by J. H. Miller, Esq., of the San Francisco bu. V .57 F'.no.8-59
FEDERA:Lij1U!:PORTEB, ,v:01.
57.,',
;,;,anij,e1l1ate, such 4. ,
not be consIdered on such motion, and the wU1 be held.concluSive. I:t:TJUNC,TION-ANTEDATING OF PATENTED INVENTION.
Qn'motIon for a preliminary InjUnction, where a patent Is set up as an· ticiPation which, on Its face, antedates the patent In suit, complainant may show, It he can, , that his patented Invention was actually made prior to th,edate of the anticipating patent, and he will thereby avoid anticipation,and the alleged ,anticipating patent will not be considered.
5. SAME-LACHES.
Wb,.ere, on motIon ,for a prelimInary injunction, it Is shown that six · moJiths prior to commencement of the suit complaInant's attorneys visited the factory of respondent, and there .saw In operatIon respondent's mathat complainant had then pendIng, but unchine, and it further In the cII'(lult a suit against another party upon a machine ·In:volvlng' some, If not all, of the questions involved In the case at bar, ooi:(lplaInant had aright to wait until a: decisIon was rendered in the SultagaInst the other party before ,bringing suit agaInst respondent; and, where complaInant commenced his suit against respondent two weeks decision against such other party In the other case, he Is not gOUtY' of laches such as will disentItle him to apre1lmlnary injunction. Where a patent has been fUlly adjudicated and held valid by the court of last resort, and the 'espondent ,Is aware of this fact, but nevertheless and puts in oIKlration a large number of Infringing machines at larg!l. expehse, and enters into large contracts for operating the same, rel,ylhg upon the opInions of hIs experts, 'as opposed to the decision of the court, that said machInes are not an Infringement, the respondent must be considered as actIng wIth 1).is eyes open to the exact condItion of affairs, and in, :such case cannot avert a prelimInary injunction on the ground of hardshIp; It being clear to the court that, under the prior adjudications, his machines are an In'fringement.
6. SAME-,-HARDSHIP,
7. SAME.
There are cases where the courts have refused a prelimInary Injunction, and allowed defendant to give honds In lieu thereof, on the ground of hardship that would be entailed upon the defendant by an Injunotion, notWithstanding the fact of prior adjudication of validIty of the patent; bUt, upon consideration of the, facts here, it Is held that tws is not such case, and the injunction Is granted, although it may entail a hardshIp on respondent. Although the patentees in this case have elected to enjoy the monopoly of their patent by granting licenses, nevertheless, it appearing that to refuse them a preliminary Injunction would absolutely destroy the value of their patent, a prelirilinlU'Y injunction will be granted.
8. SAME-IRREPARABLE INJURY.
In Equity. .Bill by Edward Norton and Oliver W. Norton .against the Eagle Automatic Can Company for infringement of a patent. On motion for 11 prelimillary injunction. Granted. Munday, Evarts & Adcock and Estee & Miller, for complainants. John L. W. F. Herrin, and N. A. Acker, for respondent. 'HAWLEY, District Judge, (orally.) This cause is presented to me upon a motion for a preliminary injunction, the respondent having been served with notice to appear and show cause, if any it could, why the injllnction should not be issued. The suit is in equity for the infringement of letters patent No. 267,014, dated November 7, 1882, granted to Edwin Norton for a machine for putting on the ends of fruit and other cans. The respondent, in its answer, admits
NORTON t1. EAGLE ,AUTOMATIO OAN 00.
981 '
that it has made and used, and 'is using, can-heading machines which were constructed substantially in accordance with specification and drawings of letters patent No. 450,624, which were granted April 21, 1891, to one Charles B. Kendall. It avers that the invention claimed in said letters patent is a radically new, separate, and distinct invention in machines for putting heads on cans from that described and claimed in letters patent No. 267,014, and that it does not require, use, employ, or embody any of the mechanism described in or covered by letters patent No. 267,014. It is shown in this case that the Norton patent has been upheld in the suit of Norton v. Jensen, in the circuit court of appeals in this circuit, (1 C. C. A. 452, 49 Fed. Rep. 859;) and also in the case of Norton v. Wheaton, in this court, (57 Fed. Rep. 927.) I understand the rule to be well settled that, where the validity of a patent has been sustained, as in this case, by prior adjudication in the same circuit, the only question open before the court, on motion for a preliminary injunction, in a subsequent suit against other parties, is the question of infringement; and that the consideration of all other questions should be postponed until all of the.testimony is taken in the case, and the case is presented upon final hearing. There is, perhaps, an exception to this rule, that in. cases where new evidence is presented, that is itself of such a conclusive character that if it had been presented in the former case it would probably have led to a different conclusion. The burden, however, of showing this is upon the respondent. Without attempting, at this time, to explain the operation, mode, or effect of the respective patents involved in· this case, under the construction which is given to the Norton patent by the circuit court, of appeals in Norton v. Jensen, and the decision rendered by this court in the case of Norton v. Wheaton, it is made perfectly clear to my mind that there has been an infringement of the Norton patent by the respondent in this case. . The patents set up in anticipation by the respondent in it'1 answer are five: (1) Letters patent No. 152,757, issued to George A. :Marsh on the 7th of July, A. D. 1874; (2) letters patent No. 235,700, issued to George H. Pierce on the 21st day of December, 1880; (3) letters patent No. 233,079, issued to P. Dillon and J. Cleary on the 12th of October, 1880; (4) letters patent No. 265,617, issued to George A. :Marsh on the 10th of October, 1882; (5) letters patent No. 238,351, issued to W. J. Clark on the 1st day of :March, 1881. Of these the first :Marsh patent, No. 152,757, was not claimed in the oral argument to anticipate the Norton patent, but was introduced, as stated by counsel, for the purpose of showing the state of the prior art. The Pierce patent is disposed of by the decision of the circuit court of appeals in Norton v. Jensen. The Dillon and Cleary patent and the Clark patent, as well as thl:' Pierce patent and the first Marsh patent, were before this court in Norton v. Wheaton, and it was there decided that they did J\Qt anticipate complainants' invention.
I'EDEJU,L. BEPQ;aTllIB,. vol.
07·
evidence in this case, as I understand it, is the to George A. Marsh No. 265,617, dated October 10, 1882. This, it.will be noticed,antedates the patent issued to Norton by about one month; but it was shown by the testimony in Nortonv.. Jensen that Norton's. inv:ention was long prior in time to the date of Marsh's patent,-:"""about two years, if I remember rightly.. It is therefore unnecessary on this hearing to construe the Marsh patent, for, unless the ,invention of Marsh is shown to be prior in time to Norton's invention, there can be no anticipation. It will be time enough to «uscuss the construction of the patent if it should be shown that Marsh's invention was prior in point of time. It is chumed that have been guilty of laches, and that was .misled. by the c,onduct of complainants. The affidavit, up.on the part of the respl;)ndent, of Irvin Ayres, presi· dent of tp.e respondent, says: "Afliant. furtlle.r says that he is informed and believes that the ants herein were fully aware tllil.t respondent was using the machines which it now uses long prior to the commencement of this suit, and at least several months before the canning season commenced, and long before any contracts had been made to supply cans to orders for this season's work. Affiant is informed that the attorneys of said complainants personally visited respondent's factory at a time when respondent had only a single line of mao chinery at work, and that said. attorneys then and there examined said machines, and that the delay and failure of complainants to bring suit against respOndent misled respondent into the belief that no action would be brought against it, and, induced respondent to make large investments in machinery and apparatus. 4ifiant further believes that said complainants delayed bring'ing this suit purposely, ,until' ,respondent had entered into such heavy excontraCts above referred to, and was en· pend.ftures, and made its gagEjd in filling the same, and that they now bring this suit hoping to use the power of this, court' to prevent respondent from filling said orders, and to injure responden,t in the eyesot .the public and its said patent."
Thl'l lettenl
Ahd the affidavit of the secretary of respondent sets forth: "That he knows John W. Munday and Edmund Adcock, the attorneys and solicitors for the complainant$ herein; that said Munday and Adcock visited the works of the'defendant herein on or about the month at January, 1893, ,and discussed with affiant the kind and character ot machines for heading cans which was 'USed by respondent at. that time, and affiant is satisfied that they knew what the constnlction of the machines used by said respondent was at that time. Affiant says that respondent was then using the same style of can-heading machines that it is now using, viz. the Kendall machine; that at that time respondent had only a single line of machines constructed and in use, and had no contracts on hand tor furnishing cans to canneries; that, knowing that the complainants herein were aware of the character, kind, and construction of the can-heading machines used by the respondent, and not being troubled by said complainants, respondent was led into constructing other lines ot can·headffig machines of the same kind, at a large expense, and in expending large sums of money to fit up a cannery, and into entering into large contracts to supply cans to cauning factories."
It will be observed that the affidavits do not state that the attorneys for compla'inants infoT'IDed them that the Kendall patented machine, which respondent was operating, was not an infringe-
NORTON
v.
EAGLE AUTOMATIC CAN CO.
933
ment on the Norton patent. Upon this point the affidavits are silent, and the only reasonable inference that the court could draw from the affidavits would be that the officers of respondent were at that time notified that it was an 'infringement, because, if this were not so, it is evident to the court, upon an application of this kind, that that fact would be affirmatively stated; but I do not understand that respondent relies upon that ground in these affidavits. It is argued, because the complainants knew that respondent was operating machines of this kind in January last, and because they did not, with that knowledge, bring suit against it, that respondent was thereby misled into the belief that no suit would be brought against it, and that it had a right to go on, and that the complainants in this case were guilty of such laches in their failure to bring a suit against respondent that they ought not to be allowed to have an injunction against it. From the record before me, and from the arguments of counsel, and the judicial knowledge that the court has as to pending cases, it appears that the complainants in this case had instituted a suit against l\L A. Wheaton upon a if not all, of the questions involved machine involving some, at in this case in this circuit, and that that suit had been pending for some months prior to the date of the conversation, and that at that time, or about the time of the conversation, the counsel for compla:inants, who live at Chicago, were here in San Francisco, to attend the final hearing and argument of the case of Norton v. Wheatan. It appeal1's to me that, with the knowledge which both parties have been shown to possess in tlhis case, thecompl'ainants having established the of the Norton patent and its in·' fI"'ingement by Jensen in the case of Norton v. Jensen, and b,aving commenced the suit against Wheaton, they had a right to wait until that suit was determined before bringing suits against other parties, and especially as against parties who had full knowledge of all of the facts with reference to the adjudications with respect to the respective patents. I do not think that complainants can be charged with laches for waiting until that suit was decided, which was only about two weeks, or thereabouts, before the commencement of this action. The parties had a right to wait until it was determined by the court whether or not the 'Wheaton patent was an infringement of the Norton patent, because, as I said, it involved many, at least, of the same questions that are involved in this case, and it also appears to me plain that the respondent could not have been misled by their delay. . The record shows that respondent, prfor to the time of operating its machines, had submitted the matter of its infringement to several experts. It shows that it was informed by experts, many of whose affidavits were presented in this case, that the Kendall patent was not an infringement upon the Norton patent. It is therefore claimed that the respondent acted in good faith in pro· ceeding to erect expensive machinery and enlarging its business. It is unnecessary, in this proceeding, to question the good faith of the respondent. If it relied upon the opinion of experts as opposed
FED·ERAL REJ;lORTER,
vol. 57.
,deci§fon of the court in Norton v. Jensen, it shows that respondchances of having that matter determined by the court. In. other ,words, the affidavits offered in this case clearly showed that the respondent, in erecting its machinery, acted with its eyes wide open as. to the &lact condition of affairs concerning those patents, and, If;ookthe chances of having it determined by the court in its favor that the Kendall patent was not an infringement of the Norton Dlachine. I believethat,Ihave noticed all the points relied upon by counsel except the one where it is claimed that, this suit having been brought by Qomplainants, and 'it appearing that they themselves had' not used the monopoly of their patent, they were not entitled to an injunction. I do not think that point is well taken. The action is necessarily for the benefit of their licensees, and it is their duty to protect their licensees by suits against parties who were infringing the same; otherwise, the value of the patent would be absolutely destroyed. ' It was contended that this was a case ,of special hardship, and that for this reason a preliminary injunction ought not to issue. There are cases where the courts have held, on account of the peculiar facts of the case, that the court O'Ilght not to issue a preliminary injunction on account of the l;lardship that might result by such action to, innocept parties. It is enough to say that I do not consider that this case comes within the rule that has been announced in deC-isions of that character. My conclusion, therefore, is that the complainants are entitled to the preliminary injunction, and that orqel' will be entered.
SMITH et al. v. VULOAN IRON WORKS OF SAN FRANOISOO. (Oircuit Oourt, N. D. Oalifornia. December 5, 1892.) 1. PATENTS F()R INVENTIONS-INFIUNGEMENT-:--BAND-SAW MILLS.
Letters patent No. 442,645, granted to Samuel R. Smith on December 16, improvements in band-saw mills are valid; and claims 1, 2, 3, 1890, 4, 6, 6, and 10 held to, be infringed by mills made under and according to the specification of letters patent No. 468,303, granted to the Vulcan Iron Works,' as assignee ot Oharles J. Koetoed, on February 2, 1892-
2. SAME-CONSTRUCTION OF CLAIM-FORMAl, CHANGES.
Where a patentee, in his specification, describes his device as being cast in one piece, and claims it in that form, but does not by express words disclaim other forms, it will be deemed that the specification specifies the single casting merely as the best form in which the patentee has contemplated embodying his invention, and accordingly the claim will be construed to cover a device performing the same function and similar in constrnction to that of the patentee, except that it is cast in two pieces, and together.
8. SAME-INVENTION.
Where there is doubt as to the presence ot invention, the presumption arising trom the grant Of the patent will control, and the defense of noninvention will fail.
In Equity.
