93 FEbE'RALREPORTEl't. '
','
the inju,nction will not harm it; otherwise, it wi.lJ Qea secpri.ty for the cottlp'lainants that their rights' will not again beinvaded.'Y' The application ;for a preliminally inj.unction ilillgranted.
'RICHARDSON v. D.M. OSBORNE & CO. et at.
(Circuit CO.lirt of Appeals, Second Circuit. April 4, 1899.) No. 55. 1. PATENTS-INFRINGEMENT SUIT-LACHES.' A patent owner who, for about 14 years, witnesses the extensive and increasing manufacture and sale' of an alleged infringing machine, without taking any steps to enforce his rights, is guilty of laches precluding ,l1im from maintaining an·infringement suit. 2. SAME-l.HARVESTERS. The right of the owner of the Fowler patent, No. 181,664, for an improveroellt in machines for bundling grain; to sue for infringement, held to llll;ve, been lost by lllcbes. '
AppeaBrom the Circuit Court of the United States for the Northern Distri'ct'of New York. This was a suit in equity by James G. Richardson against D. M. OSl:lorne ,&,0:1,. andotpers for.. alleged infringement of a patent for an improvement in machines, for. bundling grain. In the circuit court the bill was dismissed because of complainant's laches (82 Fed. 95), andtlw complainant has appealed. HoratioC.){ipg andJteorge Clement, for appellant. and Frederick P. Fish, for appellees. BeforeWALLACE,LACOMBE, aIld Circuit Judges. · :' ..· i " .·
SHIPMAN, Circuit Judge. Lette,rs patent No. 181;664 were grant· ed on August 29, 1876, to Thaddeus Fowler, as ihventor, and to James G. Richardson and hiB two brothers" Wilbur J. Richardson and Isaa,c RRichardson,as assignees of one-half of the patent, for an improvement in machines for bundling grain: A bill in equity, verified on June 8, 1893, Which was based upon the alleged infringement of this patent, was brought in the Northern district of New York by James G. Richardson, who became the owner of the entire patent on October 7, 1890, against D. M. Osbol'ne & Co., a corporation, and its officers. The defenses which were relied upon were the unexplained laches of the owners of the patent in attempting to enforce their alleged rights, the prior invention of the patented structure by John F. Appleby, noninfringement, and nonpatentability. The circuit court dismissed by reason of the laches of the owners of the patent. The invention is a part of a harvester, and was a device which will automaticaHy. qischarge ,the bundle of grain when it certain predetermined quantity has been gathered, and consisted in a beater, which, having pressed the grain into the holder, was combined with a de" liverei', which, When the beater had attained a predetermined pressure Upoh the bundles, was caused to remove the gathered bundle holder, either to the binding machine or to a binding rna· from
RICHARDSON Y. D. M. OSBORNE' & CO.
829
with the device; or to the to be otherwise assigiled 'his interest in the patent to the Richardson brothers Oll Novembel' 21, 1876. The only machine which was e-yer made u,nder this patent was built by the inventor in Seymour, Conn., in the summer of 1876, and is said to have been "shipped West." Whither it is not stated by adequate testimony, what became of it. is unkn,own, no license was ever given to build or to use a mapatent continued to be a mere paper patent. chine, and The grain:binding harvester, patented to John F. Appleby on February 18, 1879, by letters patent No. 212,420, began to be introduced to the public in 1878, and speedily went into universal use in the grain-producing portions of the Western states, and is said to contain Fowler's bundling device. The leading manufacturers of harvesting excessive, it supmachines bought shop rights at prices which planted all previous binders, is still being manufactured, and its widespread use and its commercial success were known by all dealers in machines of this class. Jamel(! G. Richardson lived in Lake City, Minn., from 1863 to 1887, was in partnership with one of his brothers in .tlle sale of harvesters, and binders, and 'the firm acted as agents for the J9hnsonReaper Company, J. Easter & Co., Gammon & Deering, and William Deering & Co., who were manufacturers of this dass of machinery. The particular business of the complainant was the introduction of farm machines into active work upon the farm, and he must have been perfectly familiar with the mechanism anjl the of the use of the Appleby binder. He regarded the infringement as. a palpable one, and, as the use was universal, he thollght that practically all the binders and harvesters made in this COll.:ntry between 1879 and 1893 infringed the Fowler patent. This .suit was brought about 2t months before the expiration of the patent, and after the extensive and expensive manufacture of Appleby machines had progressed at an increasingly active rate, within the com,knowledge and observation, for about 14 years. The defendants say that the owners of the patent were practically silent, permitted this expenditure to go on without interference or any adequate assertion of their alleged rights, and that the suit was barred' by their inexcusable laches. The record shows that nothing was done in the way of litigation, or active attempts to push either the patent or their claims, until May, 1890. No effort was made by either of the owners to make contracts or agreements with manufacturers to use the patent, and no effort was made by legal proceedings to suppress its infringement. The complainant's brothers would not enter into expenses for this purpose, would not consult with his attorneys, and opposed litigation. They were not poor and were not rich, but not only discouraged any litigation, but refused to participate in the expenses of an investigano efficient or action as to the validity of the patent. tive representations were made to the harvester companies of their infringement. The complainant says that he sent notices to the manufacturers, and, among other'S, to the defendant eorporation, in the latter part of 1883, and met the president in Lake (;ity by appointment in January, 1884. He says: "'Ve had some conversation. He
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,'.e., whIch ron. at la:w ,tp jiliJ}l:ct qJf0wtnt, agamst.tR e l)YhICh was <f91PP;t'OJ:ll'iS¥·. be.fore,.t.r;UJ,ll' ,·.i.,n . . ",. '. '1. 8. 91" b ...Y e' pa.'ylrient: pf money . He, .ID1:IC;h "ff!r$ yahdltJT,of " ,For ltug)j,t. that ,all that the did was to P,lI-Y ,trWtpg, ,We, be, a 'No othe.r }9.e suit. WhICh can be!14;mapg the .as an llf1hve eXerCISe of, the, and ItS out9ow:e 'md; ,sh,ado;w,ytha't it it orfi;n,4baI;ld9ned attempt to.slj:stam the patel;lt , ,The cOIltinulff!; or of owners to iife to it was so that: ica'IJ-¥pl look With upQn. the; present .·e.myt,. .. . PI.qn,' m. '.Hr. .·. all. WhO 1.nv.ested III .the .. !o .. u,nder the, that It ,Il!?' the c?llduct pt the ,qwI1 ers of ,the All; ,the, adJudged .'. eases ,iJ,l;'.!egard to ,la.,. u.pon,. t.h. qU,i.tMle,con.Q.uct o. .the .. an.'. t,and the meql1ity, which res\ljl';,l,tthe stale claim. be an,d the 'elf}lmlU;l;t ,upon" ,tP! ,llWty, to, ,all tnu e , hIS fln amPle }9restablIsh them Ill, RY .reason, ,9f pm;tyhM· IIj:lOd th.e righh. fire w6l.'tp1f:SS .of;. JhN, Of, m be an InjustIce to fils,sed g refere.:nce 1 to. ,d,.eCIded, ,ea,.'. IS un,' ,ec.essl,ll'.:,."lUl..... J.Ud e,G9 .,,.e., ,h.aS <llted m ..' . ·.X .. many of <l'b,inion; (82 ,;F9, f"" , i ' '. ,'):,:", : " , " ,was ,also l,>y. to, the secpnd defense, which was Appleby's The date of the hiflw,itnerlSes In the prIma case Hl.the, of. ]$76, was its actu,al date, a It,1l.o. . ',SU, '3,q.,.e . ( lace ,it in. tlle . ,.,.. . eummerof, :t.&1,p· 'Yas ,at ,the.. factory o.f tl1e ,Parlt;W' in, BelOltIn tbe of 1874;-75, was tried ,summer of fUld ,one of the ;A,. second :W,;:lS ma,de, 1, 18,,?, did the field, il,cciAeJ:).tally .after. the ,. ,this suit. FO. ma c,.b . .... re . ,b.'llih for the ,sa"me own. . t.b,e., .,first one of WhICh in April, 1876, and was.,tried uI1o¥, green rye in June, 1876.;'The written specification o{ the patent was ,executed on October 19, 1876. It IS probabletha:t the machine was the one deAppleby patent. As an entirety, it was not a pedect scribed machine; fo).' the. knotting mechanism and the manner of attachment
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NEALL V. CUHRAN.
831
to,the harvester were subsequently improved. We think that Fowler's invention was probably in the Appleby machine as and when it was tried in June, 1876; but it is unnecessary to analyze the testimony with the' closest care, and to decide the question of the priority of the patents upon which have now expired, for the case Of the co'p:ipl;linant is so defective by re;ason of the laches of himself and his co-owners that the decree of the circuit court must be affirmed', wit.h costs. ' NEALL v. CURRAN et at (District Court, D. Massachusetts. No. 966. ADMIRAI,TV PLEADING JOINDER, DISCRETION OF COURT MULTIFARIOUSNESS AND MIS-
April 21, 1899.)
, . ':I'here'is no rule of admiralty pleading which renders a libel by a vessel owner, to recover freight earned subject to exception for multifariousness and misjoinder because it joins the charterer and another, to whom the bill of lading had been transferred, and asks recovery in the alternative against one or the other, alleging that, by reaS<ln of certain facts set out, the libelant is unable to say which is llable; and the court has discretionto permit such joinder, where it will conduce to its own convenience In the, trial of ,the claims, and will result in no injustice to the parties.
In Admiralty. On exception to libel' Oarver & B.lodgett, fpr libelant. Henry: .M. Rogers, for LOWEtL,District Judge. The libel in this case was brought by the owner of the barge Felix against Ourran & Burton and the Delaware Insllrance Company. It sets out that the Felix was chartered to Curran & Burton to carry a cargo of coal; that she was loaded, and a bill' oflading given to her master, in which Curran & Burton were designated as consignees i that she was wrecked while on her voyage, raised, and a large part of her cargo delivered according to the of the charter and the bill of lading; that. the insurance company had issued a policy of insurance to Curran & Burton on the cargo, had paid to them a total loss, had received the bill of lading, duly indorsed by Ourran & Burton to the insurance company, and had become subrogated to the rights of Ourran & Burton, and subject to their liabilities all consignees and shippers; that the cargo was received by Ourran & Burton, on behalf of the insurance company, without notice to the libelant; that freight was earned thereon, and was demanded both from Curran &. Burton and from the insurance company, and that each of the claimants alleged that the said freight should be paid by the other; "that the said freight as aforesaid is due to your libelant from the said Ourran & Burton, as the persons making the contract of charter and the receivers of the same, and ill also due from the said Delaware Insurance Oompany, as the holders of the bill of lading, and persons receiving the property, they afterwards having sold it." The claimants duly excepted upon the
was