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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.


(Circuit Court, S. D. New York. June 10, 1904.)

No. 9.


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.


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 à 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 used 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 4897 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.

BRODRICK COPYGRAPH CO. OF NEW JERSEY et al. v. MAYHEW. (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.
Walter H. Chamberlain, for defendant.

SEAMAN, District Judge. The bill is founded on letters patent No. 584,787, issued to Lowe and Cortelyou, June 22, 1897, owned by the complainants, 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

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.

am satisfied that the doctrine for which the defendant contends is inconsistent with the unlimited right of monopoly intended by the patent law. It rests with the patentee to determine the methods for its exercise, and he is at liberty to fix any price for the machine, and reserve as well benefit in its use. The sales in question are not unrestricted, but are plainly limited or conditional in use, and, if the allegations of the bill are sustained by proof, the complainant is entitled to the relief sought.

The demurrer is overruled, and the motion to dissolve the injunction is denied, in conformity with these views.


(Circuit Court, S. D. New York. May 19, 1904.)


Where defendant in a suit for infringement, before any testimony has been taken, offers before the referee to consent to a decree as prayed in the bill, and his counsel makes no further appearance, no costs will be taxed against him for the subsequent taking of testimony, nor for the printing of the record, both of which the offer, rendered unnecessary.

In Equity. Final hearing on pleadings and proofs. The suit is one for infringement of United States patent 623,933, April 25, 1899, to William H. Wiggins, for improvement in bowling alleys.

J. C. Clayton, for complainant.

LACOMBE, Circuit Judge. Issue was joined by service of an answer in November, 1903, and replication was filed. Subsequently defendants asked leave to withdraw their answer. This was denied in the following memorandum:

"No good reason for withdrawing the answer is shown. If defendants decide that further prosecution of the defense is not worth its cost to them. they may offer to submit to a decree in the usual form sustaining title and validity of patent, finding infringement, and for injunction and accounting. This will relieve them from liability for any subsequent costs for taking testimony and printing record. They cannot escape accounting by no longer litigating the main issues. But there seems no doubt, in view of what was said on the argument, that a fixed sum for each alley may be agreed upon, and possibly, also, the number of alleys made or sold which embody the device of the patent as found by the decree."

Thereafter, and on January 18, 1904, in the presence of the examiner, and before the taking of proofs had actually begun, counsel for the defendants announced that defendants had sold on or about January 1, 1904, all the alleys made or used by them containing the construction of the patent in suit, and therefore have no interest to carry on this suit. "They will therefore," he stated, "not contest the case further, and will consent and submit to a decree against them as prayed for in the bill of complaint." He also made an offer to pay $5 per pair of alleys as liquidated damages, stating that the only bowling alleys made or used by the defendants did not exceed eight

in number. Thereafter he did not attend or take any part in subsequent proceedings, nor did he appear at final hearing. Complainant's counsel declined to accept the offer, took testimony, and now presents the cause for disposition. In view of defendants' concession, it may be readily disposed of. Complainant may take a decree reciting that defendants interposed an answer, but did not attend at the taking of testimony, nor appear at the hearing before the court. Except for this recital, the decree will be in the usual form sustaining title and validity of the patent, finding defendants' device to be an infringement, and for injunction and accounting. The granting of this injunction will effectually overrule the order heretofore made denying preliminary injunction, and there is no necessity of going into an examination of proofs when defendants concede all that is prayed for except as to extent of infringement and damages, as to which no proofs are now presented. As indicated in the memorandum filed, when leave to withdraw the answer was refused, there should be no costs taxed against defendants for taking testimony subsequent to the offer to submit to decree, nor for printing of the record, both of which, as soon as offer was made, became unnecessary.


(Circuit Court, S. D. New York. June 4, 1904.)


The Shaffer patents, Nos. 617,942 and 634,838, for acetylene gas burners, if valid, can only be sustained as to minor details of construction shown. As so construed, held not infringed.

In Equity. Final hearing on pleadings and proofs of suit for injunction and accounting. The suit is for alleged infringement of two patents, No. 617,942, January 17, 1899, and No. 634,838, October 10, 1899, both granted to Henry E. Shaffer for improvements in acetylene gas burners.

Frederick F. Church, for complainant.

Louis C. Raegener and S. L. Moody, for defendant.

LACOMBE, Circuit Judge. A full discussion of the art of acetylene gas burners will be found in the opinion of the Circuit Court of Appeals, Second Circuit, sustaining patent No. 589,342, August 31, 1897, to E. J. Dolan, reported 128 Fed. 599. In that suit the present defendant was complainant, and the present complainant defendant. The burners of the defendant are made under the Dolan patent, and burners made under the two patents in suit have been held to be infringements of the same patent. The only material changes suggested in the patents in suit are, first, to arrange the inlet and discharge passages at an angle with each other, instead of in a continuous curve; and, second, to make both tips and the branched burner which carries them of a single piece of refractory material. It is conceded that similar burners were made wholly of metal, and that the refractory material was well known in the art as a sub

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