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fringements of said letters patent; and notifies all persons to abstain from thie use or sale of same, and that all who use or sell infringing tanks will be liable to damages. The second circular, dated October 18, 1906, is addressed to the automobile trade, refers to the former circular of August 1st, above described, and then proceeds to give a list of suits already brought by it, whereby it appears that, aside from the suits brought in this court, ten later suits in eqnity, based upon the complainant's patents, have been brought in other circuits. Then follows a statement that the papers are being prepared for suits against numerous other concerns in different cities, and that the Presto-Lite gas tank is the only one licensed by complainant.
It appears that three or four additional suits were brought by complainants after the petitioin was filed and before the hearing thereon.
F. A. Geiger and Chamberlin & Wilkinson, for the motion.
QUARLES, District Judge (after stating the facts). It is undisputed that the defendants in the ten suits brought by complainant in other circuits are the vendees of the defendant, whom defendant is morally, not legally, bound to protect and defend in this litigation. It further appears that the defendant is manufacturing only one type of gas tank, although of various sizes. So that the issues raised in all the suits will be practically identical. That complainant's patent No. 664,383 was granted on the 25th of December, 1900, which, by mesne assignments, became the property of complainant on the 3d day of June, 1901. The other of complainant's patents, numbered 727,609, was issued on the 12th day of May, 1903, and by assignment became the property of complainant on the 19th day of April, 1904. That, prior to the bringing of the suits in this court, neither of the complainant's patents had been subjected to the test of legal adjudication.
Complainant challenges the power of the court to make the order prayed for. This is naturally the first proposition requiring attention. It is contended that jurisdiction here is limited to the making of such order or decree as may determine the issues raised by the pleadings and that it has no authority to make any order whose purpose is to control the action of either party beyond the territorial limits of the court. The complainant has come into this tribunal seeking equitable relief and has submitted itself to the jurisdiction of the court. The power in such case to proceed in personam against either litigant to protect the jurisdiction, or the subject-matter, or to prevent either party from doing with regard to the subject matter of the suit what is contrary to equity and good conscience has always been assumed and exercised by the chancery courts of England as well as by the several courts of chancery in the states. Either party may in a proper case be enjoined from prosecuting another suit although it may be pending in a foreign state or country. 1 High on Injunction, $$ 106 to 111, and cases cited: Story's Eq. Juris. SS 899, 900; 1 Bates' Federal Eq. Procedure, § 454; Home Ins. Co. v. Howell, 24 N. J. Eq. 238; Cole v. Cunningham, 133 U. S. 107, 10 Sup. Ct. 269, 33 L. Ed. 538; Akerly v. Vilas, 15 Wis. 402; Berliner Gramophone v. Seaman, 113 Fed. 750, 753, 51 C. C. A. 440; Lord Portarlington v. Soulby, 3 Mylne & K. 104.
While the doctrine of exclusive jurisdiction in the court first obtaining jurisdiction of the subject-matter does not apply to a case where
inant brings independent suits in several courts involving the question, it is nevertheless true that the main issue involving idity of a patent and the question of infringement ought to be d between the patentee and the principal infringer in the juris
where such supposed infringement is centered, and, where the it brought is against that principal infringer, such suit is propgarded as a parent suit where the leading issues in controversy I, for obvious reasons, be tried. Other suits may be brought st vendees or users, if that be done in good faith, for the sole se of protecting the rights of the complainant. But if, before djudication, the patentee shall bring a multiplicity of suits for urpose of harassing and annoying a rival manufacturer, for the ose of subjecting him to hurdensome expense, and to destroy usiness by exciting terror among his customers, it would seem that
must reside somewhere the power to intervene and protect the ndant against such a crusade until the validity of the patents aly challenged may be established in the courts. Instances are wanting where patentees make illicit use of the courts as inmentalities of oppression; bring a multiplicity of suits, purposely tered through the circuits, not for the honest purpose of securing
djudication in support of the patent, but to crush a rival manuurer by creating a stampede among his customers; alarming them circulars breathing threats of prosecution, denouncing the product he rival concern as an infringing device, at the same time taking no
to bring any of the numerous suits to final hearing. udge Blodgett refers to this practice in Emack v. Kane (C. C.) 34 d. 46, and cites an instance where a patentee, having excited gen1 consternation in the trade, which he turned to his commercial vantage, dismissed his suits where the validity of his patent had been t in issue. In such a case the defendant is powerless. He may prepared to demonstrate that the complainant's patent is invalid.
that his own structure does not infringe; but, during the conderable period which must elapse before the vital questions can be ought to final hearing, his customers may desert him through fear
litigation, and he may be driven to the wall. It cannot be that court of equity is powerless to prevent such a wrong. In Emack v. Kane, supra, referring to circulars distributed by the patentee among he trade, Judge Blodgett says:
"It shocks my sense of justice to say that a court of equity cannot restrain ystematic and methodical outrages like this by one man upon another's proprty rights."
Perhaps the leading 'case cited by complainant is Kelley v. Ypsilanti Dress Stay Company (C. C.) 44 Fed. 19, 10 L. R. A. 686. A careful perusal of this case discloses that the application for the injunction was there made in one of the later cases to enjoin proceedings in the earlier case. The learned judge says that he never before heard of such a case, for presumably the earlier case had been brought against the principal infringer. Although holding that relief should be withheld in that particular case, Judge Brown in his opinion says:
"In this view of the law it was held that to prevent a multiplicity of suits the court might, in a proper case and on a proper showing, require the prosecution of suits between a patentee and a mere user of a patented machine to be suspended, to await the result of the suit between the patentee and the principal infringer from whom the user purchased this machine a doctrine in which we fully concur, although we think the application should be made to -the courts in which these suits are pending."
In Allis v. Stowell (C. C.) 16 Fed. 783, 787, Judge Dyer says: -"But apart from this phase of the question, I am of opinion that to prevent a multiplicity of suits the court may, in a proper case and upon a proper showing, require the prosecution of suits between the patentee and a mere user of a patented machine to be suspended, and await the result of a suit between the patentee and the principal infringer from whom the user purchased the machine. Undoubtedly the court has the power to exercise restraining control over the litigation where the principal parties are before it."
The learned judge also in his opinion refers to an unreported case, Barnum v. Goodrich, decided in the Northern District of Illinois by Judge Drummond, Circuit Judge, wherein it was held that complainant should be enjoined from prosecuting numerous suits until the principal controversy in Illinois between the patentee and the manufacturer should be first determined.
In Ide v. Ball Engine Co. (C. C.) 31 Fed. 901, 904, the court holds that public policy would seem to favor the rule that litigation for the purpose of ascertaining and sustaining the validity of a patent should be between the patentee and the alleged infringing manufacturer.
The same doctrine was held in National Cash Register Co. v. Boston Cash Co. (C. C.) 41 Fed. 51, the opinion being by Judge Colt.
In New York Filter Co. v. Schwarzwalder (C. C.) 58 Fed. 577, Judge Lacombe, though denying the relief sought, says:
"As to the proposition that the court will interfere on any theory of preventing multiplicity of suits, there is nothing now submitted to show that such multiplicity is to be apprehended, even if a motion of this kind be the proper remedy. There is only one suit now pending, and nothing to indicate that suits are about to be brought against other users until there has been some adjudication of the rights of the owner of the patent in its suit with the manufacturer. If, when complainant has prevailed in that suit (should he so prevail), has established the validity of bis patent and shown that the infringing apparatus which defendant makes and sells is an infringement, users of such infringing machines refuse to accept that result and individually insist upon continuing their use, complainant may sue each and all of them, though they number 10,000, without thereby instituting such a multiplicity of actions as the courts will enjoin."
See, also, Birdsell v. Manufacturing Co., 1 Hughes (U. S.) 64, Fed. Cas. No. 1437, citing two unreported cases.
In Farquhar v. National Harrow Co., 102 Fed. 714, 42 C. C. A. 600, 49 L. R. A. 755, the Circuit Court of Appeals for the Third Circuit held that equitable relief might be granted against a party who was in bad faith sending notices and trade circulars among the customers of a rival, solely for the purpose of destroying the business of such manufacturer. The same doctrine was held in Adriance Platt v. National Harrow Co., 121 Fed. 827, 58 C. C. A. 163, by the Circuit Court of Appeals, Second Circuit.
In Warren Featherbone Co. v. Landauer et al., 151 Fed. 130, there is an opinion by Judge Bunn, then District Judge of the Western-Disof Wisconsin, concurred in by his honor, Judge Seaman, wherein octrine of Emack v. Kane, supra, Farquhar v. National Harrow pany, and Adriance Platt v. National Harrow Co., are cited with val. mplainant cites the case of Rumford Chemical Works v. Hecker, latchf. 552, Fed. Cas. No. 12,132. While an excerpt from the on might seem favorable to complainant's contention, an examinaof the case will differentiate it in two important particulars, -, there had been in March, 1873, a final adjudication holding cerclaims of the complainant's patent valid, and an accounting had
completed in the main case before the other suits were brought, earlier of which was commenced in September, 1873. Second, court concludes the opinion with the suggestion: (oreover, the application, to be entertained at all in respect to the New y and South Carolina suits, should have been made before plaintiffs had
put to the trouble and expense of taking their proofs for final hearing." he complainant contends that these several authorities above cited overruled by the Supreme Court in Birdsell v. Shaliol, 112 U. S. , 5 Sup. Ct. 244, 28 L. Ed. 768. A question arises how far the trine of that case is applicable to the case at bar. In Birdsell v. liol the question for determination was the effect of a prior judgit for nominal damages, and no reference is made to the effect of omplete recovery by a patentee of gains and profits as well as dams. In the present bisl. complainant charges that defendant has n guilty of making or causing to be made, using or causing to be d, selling or causing to be sold, the alleged infringing devices, in lwaukee and elsewhere within the United States. In its prayer the
asks that the defendant may be decreed to account for and pay er the gains and profits realized by the said defendant by its unful acts, and, in addition, the damages sustained by the complainant. is contended that an accounting under such a bill will completely mpensate the complainant for the invasion of the three elements of
monopoly, and that, such decree having been complied with, the innging device would be released from the monopoly. In support of is position, defendant cites United States Printing Company v. Amerin Company (C. C.) 70 Fed. 50, 53. I shall not now stop to consider is question, because in my judgment Birdsell v: Shaliol, even as conrued by complainant, is not decisive of the present application. If mplainant's interpretation of the Birdsell Case be correct, it has mply demolished one of the principal grounds upon which injunctive d has been granted in the earlier cases; but it does not exclude the wer of the court in a proper case to prevent oppression wrought by eans of multiplicity of suits brought for a commercial advantage ther than honest adjudication. In my judgment no additional suit, ither at law or in equity, should be brought by complainant against the urchasers or users of the defendant's tanks, for infringement of omplainant's patents, until the validity of such patents and the quesion of infringement have been adjudicated. I direct that an order e prepared to that effect.
I am asked to restrain the further prosecution of the 10 suits brought by complainant in other courts. In view of the decision in Birdsell v. Shaliol, I think the better practice is to allow the defendants in those suits, or this defendant in their behalf, to make suitable application to the courts where such suits are pending, to stay proceedings until these principal questions have been adjudicated. There may be urgent and proper reasons why some further proceeding may justly be had in some of them. I therefore decline to enjoin complainant from all further proceeding therein.
Complainant insists that the injunction asked for will not prevent the running of the statute of limitations against actions to recover damages. That is undoubtedly a sound proposition, and on that account I deem it my duty to speed this case, and to that end I direct the clerk of this court to enter an order giving the complainant 10 days after January 1, 1907, within which to make its prima facie proofs. Thereupon the defendant may have 40 days to submit its proofs, and thereafter the complainant to have 30 days to present its proofs in rebuttal. I will hear the case promptly as soon as the proofs have been taken, so that a conclusion may be speedily reached.
As to the circulars distributed by the complainant, I do not think they disclose upon their face any evidence of bad faith or malice. The language is temperate, and I do not think they have thus far exceeded the extent to which the patentee is permitted to go in advising the public of the complainant's rights under his patent, and to warn them of the consequences of infringement. One clause in the second circular is open to criticism, but complainant's counsel assures the court that it was inserted without his knowledge or advice. If, however, the complainant shall continue to memorialize the trade with further literature, a new application may be made for suitable relief, and this decision is without prejudice to a renewal of such application.
WESTERN WHEELED SCRAPER CO. V. GAHAGAN et al.
(Circuit Court, E. D. New York. March 30, 1907.) 1. PLEADING-AMENDMENT-EFFECT OF GENERAI. APPEARANCE BY DEFENDANT.
The rule that the filing of a notice of appearance or of a general pleading, such as an answer, is equivalent to a general appearance for all purposes of the case, is limited in its application by the scope of the action in which such appearance or pleading is filed ; and such an appearance does not authorize an amendment of plaintiff's pleading, so as to state a new or different cause of action upon which the defendant could not orig
inally have been sued in that jurisdiction. 2. EQUITY-PLEADING-AMENDMENT OF BILL-PATENTS-SUIT FOR INFRINGE
In a suit in equity against two defendants, one of which was a nonresident corporation, for infringement of patents, the bill alleged a conspiracy and a joint infringement by defendants within the district of suit; the corporation by selling to its codefendant, and the latter by buying and using the infringing article in said district. Both defendants appeared, and filed a joint and several answer, denying the alleged infringement. Held, that such appearance by the corporation was limited to the cause of action stated in the bill, and did not empower the court to permit