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2 k. w. size..
is, approximately, used by defendant. The tremendous advance in the electrical art during the eighteen years since Stanley's invention has placed in the hands of electricians means for ascertaining the correct length of the wire on the primary coil more expeditiously anci accurately than those pointed out in the patent, but this does not enable them to appropriate the invention. They cannot use the Stanley length of wire because modern methods have enabled them to secure that length without applying the tedious and comparatively primitive method of the patent. The defendant's transformers are automatically self-regulating and possess all the characteristics of the transformers held to infringe in the Saranac Case. They have substantially the same length of wire measured in feet as the complainant's transformers, which appear to be constructed in accordance with the provisions of the patent. This is shown by the following table:
Westinghouse. Wagner. 112 k. w. size....
1,490 feet. 1,480 feet.
1,400 1,+16 3 k. w. size...
1,23. 1,296 5 k. w. size...
1,095 1,130 From the maze of contradiction and dispute presented by these papers the court is enabled to extract a few fundamental propositions.
First. Stanley made a valuable invention.
Second. The patent describes the invention with sufficient clearness to enable skilled electricians to practice it without difficulty.
Third. The defendant has appropriated the invention although its transformers were not designed in the manner pointed out by Stanley.
These conclusions render it unnecessary to follow the experts into the realm of speculation, even if the court were sufficiently versed in electrical science to enable it to reconcile their numerous disagreements.
The other questions mooted in defendant's brief were either disposed of at the argument or by the decisions of this circuit in previous litigations.
Stanley's contribution to the art should be judged by the conditions existing when he made his invention over 18 years ago. It is unfair to belittle that invention by comparing his crude recommendations with the scientific methods which have been discovered since that time. His invention remains unchanged, but experience has substituted improved methods of carrying it out. The defendant uses transformers constructed by the improved methods, but they are none the less the transformers invented by Stanley.
The motion is granted.
DIAMOND DRILL & MACH. CO. v. KELLEY et al.
1. PATENTS—DAMAGES FOR INFRINGEMENT ACCOUNTING.
On an accounting for damages and profits for infringement of a patent for a manufactured article, defendants cannot be required to account for the profits on machines manufactured and sold by them, to be used by others in making the infringing article, since, while they may be liable as contributory infringers on account of such sales, the infringement itself consisted in the manufacture and sale of the article made on such machines by the purchasers, and the damages recoverable therefor can
not be measured by the profits made on the machines. In Equity. Suit for infringement of patent. On motion for instructions to the master.
Wm. C. Strawbridge, for complainant.
DALLAS, Circuit Judge. The master to whom this cause was referred by the interlocutory decree entered in favor of the complainant was asked, upon its behalf, to require an accounting not only with respect to the coiled clasps which had been adjudged to infringe the patent sued upon, but likewise, and in addition thereto, to require an account of the profit derived by the defendants, or any of them, from the manufacture and sale of machines and apparatus adapted for use, and which, with their knowledge and connivance, were used, in constructing the infringing articles. The master declined to comply with this request, and, upon careful and mature consideration, I have reached the conclusion that he was right in doing so. I have no doubt that where several persons co-operate in an infringement, as in committing any other tort, they are each and all liable therefor. Nor can it be doubted that all infringers are liable for the profits accruing to them from the infringement. But in what, in this case, does the infringement lie? Certainly not in making, using, or selling machines for manufacturing coiled clasps, but in making, using, or selling coiled clasps containing the patented invention. The two things are quite distinct, and while it is true that the manufacturer or vendor of a machine may, by supplying it for an infringing use, make himself a participant in the infringement, yet it is the thing which the machine contributes to produce, and not the machine itself, which concretely embodies the infringement, for which he who furnishes and he who wrongfully uses the machine are alike responsible.
The decree entered in another circuit in the case of New York Filter Manufacturing Company v. Jackson Filter Company, 91 Fed. 422, cannot be regarded as in any degree authoritative. It may not have been made by consent, but, at all events, it does not appear that the point now under consideration was brought to the attention of the learned judge who signed it, or was at all considered by him.
T1 Accounting by infringer of patent for profits, see note to Brickill v. Mayor, etc., of City of New York, 50 C. C. A, 8.
By agreement of counsel, the question which has been briefly discussed was argued as upon motion of the complainant for instructions to the master. Accordingly he is instructed to proceed in conformity with the views herein expressed, and all other questions, if any, arising in the master's office, will be considered, if need be, upon the coming in of his report.
WESTON ELECTRICAL INSTRUMENT CO. v. EMPIRE ELECTRICAL
INSTRUMENT CO. et al.
(Circuit Court, S. D. New York. June 10, 1904.)
1. PATENTS-RENEWAL OF APPLICATION IN CASE OF FAILURE TO PAY FEES
CONSTRUCTION OF STATUTE.
Under Rev. St. $ 4897 [U. S. Comp. St. 1901, p. 3386), which authorizes any person having an interest in an invention for which a patent has been allowed, but who fails to make payment of the final fee within six months after notice of such allowance, to make another application, but provides that "such second application must be made within two years after the allowance of the original application,” but one renewal application may be made; and, even if more are allowable, the final application must be made within two years after the allowance of the first, otherwise a valid
patent cannot issue thereon. 2. SAME--VALIDITY OF REISSUE-ELECTRICAL CONDUCTOR.
The Weston reissue patent No. 10,945 (original No. 381,305), for an electrical conductor, is void because the original was granted on a third aplication, filed more than two years after the first had been allowed, but
which was not issued because of nonpayment of the fee therefor. In Equity. Suit for infringement of reissued letters patent No. 10,945 (original No. 381,305), for an electrical conductor, granted to Edward Weston July 17, 1888. On final hearing.
William Houston Kenyon, William C. Witter, and Richard Eyre, for complainant.
Philip Mauro and C. A. L. Massie, for defendants.
HOLT, District Judge. This is a suit in equity for an injunction and an accounting for the alleged infringement of reissued letters patent No. 10,945, dated July 17, 1888, issued to Edward Weston, and subsequently assigned to the complainant, for an electrical conductor. In my opinion, the proof shows that the invention was novel and valuable, and that the defendants have infringed the patent. The serious question in the case is whether the original patent, of which the patent in suit is a reissue, was invalid because granted upon the third application for the patent, more than two years after the original application.
The first application for the patent was filed in the Patent Office October 13, 1885. The patent was allowed, and notice of the allowance given on November 21, 1885. Section 4885 of the United States Revised Statutes [U. S. Comp. St. 1901, p. 3382) provides that, if the final fee is not paid within six months from the time at which the patent was passed and allowed, and notice thereof sent to the applicant or his agent, the patent shall be withheld. The final fee was not paid within said six months. Section 4897 of the United States Revised Statutes is as follows:
"Sec. 4897. Any person who has an interest in an invention or discovery, whether as inventor, discoverer, or assignee, for which a patent was ordered to issue upon the payment of the final fee, but who fails to make payment thereof within six months from the time at which it was passed and allowed, and notice thereof was sent to the applicant or his agent, shall have a right to make an application for a patent for such invention or discovery the same as in the case of an original application. But such second application must be made within two years after the allowance of the original application. But no person shall be held responsible in damages for the manufacture or use of any article or thing for which a patent was ordered to issue under such renewed application prior to the issue of the patent. And upon the hearing of renewed applications preferred under this section, abandonment shall be considered as a question of fact.” (U. S. Comp. St. 1901, p. 3386.]
A renewal of the application for the same patent was made June 18, 1886, and it was allowed a second time on June 30, 1886. The final fee was not paid upon this new allowance within six months thereafter. A third renewal of the application for the same patent was made December 14,1887, and the patent granted April 17,1888. The patent was, therefore, granted more than two years after the first application, and less than two years after the second application. The defendants claim that the Commissioner of Patents had no authority to issue this patent under section 4897; that it was, therefore, void; and that, therefore, its reissue was void. The complainant claims that the true construction of section 4897 is that a party who has failed to pay the final fee within six months after the allowance of the patent can make a new application for the same patent within two years; that such new application then becomes an original application; that, if this second application is allowed, and default again made in the payment of the final fee within six months, the party can again make another application within two years, and so on indefinitely; that, therefore, Weston's third application was in time, and the patent granted on it valid. I think that the question of construction involved is a nice and difficult one, but my conclusion is that a party proceeding under section 4897 can only make one renewal application, and that, even if more than one application could be made, the final application must be made within two years after the allowance of the original application; the term “the original application,” as iised in this section, meaning the first application. This is the construction given to the section in an opinion of the Attorney General (69 Patent Office Official Gazette, 639; 70 Id. 493), which opinion has since been acted on by the Patent Office. In my opinion, this was a correct construction of the section. The fact that Mr. Weston might have made an application under section 4886 seems to me immaterial. He did not apply under that section, but under section 4897. If a patent had been issued, without the payment of the fee, after the expiration of six months after it had been first allowed, the patent would have been void. Walker on Pat. § 125. Section 1897 provided a remedy in such a case, and if an applicant proceeds under that section he must comply with its terms. I regret to hold a patent for a meritorious invention invalid for so technical a cause, but I am unable to reach any other construction of section 4897.
My conclusion, therefore, is that the original patent was void, and therefore that the reissued patent was void. The bill, therefore, in my opinion, should be dismissed, with costs.
DRODRICK COPYGRAPH CO. OF NEW JERSEY et al. V. MAYIIEW.
(Circuit Court, E. D. Wisconsin. May 10, 1904.) 1. PATENTS-LICENSE RESTRICTING USE-CONTRIBUTORY INFRINGEMENT.
It is within the right of the owner of a patent for a machine to sell the machines under a license containing a condition that they shall be used only in connection with patented materials, also made by such owner, and one who makes and sells to users other materials specially designed and intended to be used with such machines, and which are so
used, is liable as a contributory infringer. In Equity. Suit for infringement of patent. On demurrer to bill and motion to dissolve preliminary injunction.
S. O. Edmonds, for complainants.
SEAMAN, District Judge. The bill is founded on letters patent No. 584,787, issued to Lowe and Cortelyou, June 22, 1897, owned by the coniplainants, under which they manufacture a machine known as the "Rotary Neostyle." These machines are sold with the restriction that they are “licensed to be used only with stencil paper and ink (both of which are patented) made by the Neostyle Company," and the defendant is charged as a contributory infringer, with making a “Rotary Neostyle Ink” specially designed for use with such machines, and sold to the purchasers thus licensed, to be so used in derogation of the rights reserved to the patentees. On behalf of the defendant it is contended, in substance, that no such limitation of the use of the patented machine exists when thus sold, and none can be imposed by the patentee. Both demurrer and motion rest solely upon this view, notwithstanding the consensus of recent controlling decisions that it is untenable. In Victor Talking Machine Co. v. The Fair (C. C. A.) 123 Fed. 424, the general doctrine is settled, for this circuit at least, that the patentee is clearly within his right in imposing any terms, not unlawful per se; and his provision thus made by way of monopoly in any form will be enforced. In the Circuit Court of Appeals for the Second Circuit (Cortelyou v. Lowe, 111 Fed. 1005, 49 C. C. A. 671) and at the circuit (Id., 114 Fed. 1021) a like rule is adopted in respect of the present patent and "license agreement," wherein the present defendant was involved in the adjudged contributory infringement. Not only are these rulings controlling, and well supported by the cases there cited, but I
s 1. Power of patentee to control his invention, see note to Heaton-Peninsular Button Fast. Co. v. Eureka Specialty Co., 25 C. C. A. 280.
Contributory infringement of patents, see note to Edison Electric Light Co. et al. v. Peninsular Light, Power & Heat Co. et al., 43 C. C. A. 485.
See Patents, vol. 38, Cent. Dig. $ 401.