Colgate v. Gold and Stock Telegraph Co.

research and zeal, by able counsel. The bringing and pendency of that suit was sufficient notice to all other infringers, that the rights conferred by the patent were to be asserted and maintained. Nothing is presented which tends towards showing any affirmative acquiescence by the proprietors of the patent in the use by the defendant in this case of the invention covered by the patent.

The plaintiff, it appears, exercises the rights conferred by his patent, by granting licenses under it. On the 2d of January, 1879, he offered to the defendant a license under the patent on certain specified terms. If the defendant desires to take a license on reasonable terms, it ought to be allowed to do so. There are no data before the Court from which it can be determined what is a proper license fee in respect to the defendant. The proper order to be now entered in this case, is, that a preliminary injunction issue to restrain the defendant from making the invention described and claimed in the patent, and also from using the said invention, except the identical wires and cables now used by it, and also from selling, transferring, lending, leasing or parting with in any manner, any wires or cables embodying said invention, or conferring upon any other person, persons or corporation, either in whole or in part, or alone or in conjunction or connection with the defendant, any use of, or right to use, any such wires or cables; that the question of the issuing of a preliminary injunction to restrain the further use of the identical gutta-percha insulated wires or cables now used by the defendant, be postponed until the coming in of the master's report of evidence to be ordered, or until such other or further order as the Court may make in the premises, upon the application of either party; and that it be referred to Joseph Gutman, Junior, Esquire, a master of this Court, to take proof to be offered by the plaintiff and any opposing proof by the defendant, on the question as to whether or not the license fees offered to be accepted by the plaintiff in his letter to the defendant, dated December 30th, 1878, are or are not reasonable license fees for the future use of the invention aforesaid by the defendant, and, if not, as to what other sums or rates, either greater or less, are such reasonable license fees; and,

Spring v. Domestic Sewing Machine Co.

also, to take such proof as may be offered by the defendant, and any opposing proof by the plaintiff, on the question as to what, if anything, could be substituted for the gutta-percha covered wires now in use, with equally beneficial results or otherwise, and what would be the expense of such substitution and the time necessary to make the same; and that he take and report the evidence on such questions with all convenient speed, but he is not to report any opinion or decision as to such questions.

Betts, Atterbury & Betts, for the complainant.

Porter, Lowrey, Soren & Stone, for the defendant.

CHARLES SPRING ET AL.

vs.

THE DOMESTIC SEWING MACHINE COMPANY.

IN EQUITY.

A decree sustaining the validity of a patent, entered upon an agreement between the parties, and vacating a decree in which the Court had previously declared the patent void, should have very little weight in any Court, when produced as an adjudication in favor of the validity of the patent upon a motion for a preliminary injunction.

Where the owners of a patent knew of the infringement, and for two years took no steps to stop it: Held, that they were thereby precluded from obtaining a preliminary injunction; held also that the subsequent purchasers of the patent succeeded only to the rights of their assignors, and were chargeable with their laches.

(Before NIXON, J., District of New Jersey, July, 1879.)

NIXON, J.

I am not satisfied that this motion for a provisional injunction ought to prevail. It is asked for on two grounds: (1)

Spring v. Domestic Sewing Machine Co.

on account of a decree of a court of equity, establishing the validity of the complainants' patent; (2) public acquiescence. (1.) With regard to the judicial decree, the opinion of the Circuit Court for the District of Massachusetts was, first, against the patent, declaring it a nullity. Doubtless for proper and sufficient reasons, the decree was vacated and an order entered “that the agreement of the parties annexed to a petition marked B be confirmed, with the same effect as between the parties, as if the parties and things agreed and consented to in said agreement were now ordered, adjudged and decreed by the Court." No criticism is intended upon the propriety of the decree itself, as between the parties, when it is said that it should have very little weight in any court when produced as an adjudication in favor of the validity of a patent.

(2.) As to public acquiescence, the affidavits filed in the case by the complainants to sustain this application, show that many have not acquiesced, and that the owners of the Spring patent have been aware of the alleged infringement of the defendant corporation for two years past.

Leaving out of view other depositions, the complainants have put in one by George E. Betton, sworn to September 14th, 1877, and one by Levi S. Stockwell, then president of the Howe Machine Company, sworn to October 7th, 1877, in both of which the infringement by the Domestic Sewing Machine Company is fully set forth. Mr. Stockwell affirms that the Howe Machine Company was for several years the licensee of Andrew and Charles Spring, and, that, after its extension, the company had become and was then the owner of one-half of the said patent. The bill of complaint claims that Mr. Betton was at that time the owner of the other half, so that we have proof produced by the complainants themselves that the owners of the patent, in the summer and autumn of 1877, knew of the alleged infringement, and, so far as it appears, took no steps to stop it. The present complainants have succeeded only to their rights, and are chargeable with their laches.

The application for an injunction must stand over to the final hearing; but, upon proof of any unnecessary delay on

Sayles v. Oregon Central Railway Co.

the part of the defendant company to put in their testimony, the complainants have leave to renew the motion.

George E. Betton, for the complainants.

John Dane, Jr., for the defendant.

THOMAS SAYLES

vs.

THE OREGON CENTRAL RAILWAY COMPANY.*

The limitation contained in section 55 of the Act of July 8, 1870 (16 U. S. Stat. at Large, 206), was repealed by operation of section 5596 of the U. S. Rev. Stats., but, as to all actions and suits upon causes arising before said repeal (June 22, 1874), said limitation was continued in force by section 5599 of the Rev. Stats.

The applicability of state statutes of limitation to actions and suits for the infringement of letters patent, discussed.

(Before DEADY, J., District of Oregon, July, 1879.)

DEADY, J.

This action was brought to recover damages for the unlicensed use of a patented railway car-brake.

The complaint states that the invention was patented to one Henry Tanner for the period of fourteen years, on July 6th, 1852, and afterwards, on July 6th, 1866, the patent was extended for seven years; that, on July 13th, 1854, Tanner assigned the patent and extension for certain parts of the United States, including Oregon, to the plaintiff; and that the defendant, between July 6th, 1871, and July 6th, 1873, did make and use said brake in violation of said patent and the assignment aforesaid, to the damage of the plaintiff, four hundred and seventy-five dollars. The defendant demurs to the complaint, and, substantially, alleges that the cause of action is barred by lapse of time.

* 6 Sawyer, 31.

Sayles v. Oregon Central Railway Co.

Section 55 of the Patent Act of July 8th, 1870, 16 U. S. Stat. at Large, 206, provides that the Circuit Courts of the United States shall have cognizance of all actions arising under the patent laws, and that all such actions "shall be brought during the term for which the letters patent shall be granted or extended, or within six years after the expiration thereof." In the R. S. said section 55 is reenacted as section 4,921, less the limitation clause above quoted, which was repealed by operation of section 5,596 of the R. S. Section 721 of the R. S. reënacts section 34 of the Act of September 24th, 1789, making the laws of the several States "rules of decision in trials at common law," except where the laws of the United States otherwise provide. Under this section, it has been uniformly held that where Congress had not otherwise specially provided, the State statute of limitations applies to actions in national courts. It follows from this statement of the case, that unless there is a saving clause in the repealing provisions of the R. S., the only statute of limitation now, or since June 22d, 1874, applicable to this class of actions, is that of the State. Upon the assumption that there is no such saving clause, the defendant contends that this action is barred by subdivision 1 of section 8 of the Oregon Civil Code, which limits the time for the commencement of the actions therein enumerated to two years from the time the cause of action accrued.

But there is a serious question whether the State statute does not give six years in which to bring this action. Originally, the clause in subdivision 1 of section 8 concerning actions for any other" injuries to the person or rights of another," under which it is sought to bar this action, was contained in subdivision 5 of section 6, that gives six years in which to sue upon causes of action therein enumerated. By the Act of October 22d, 1870 (Sess. Laws, 34), it was attempted to amend both sections 6 and 8 of the Code by simply repealing subdivision 5 of the former, and repealing and reënacting the latter, so as to include in subdivision 1 thereof the cases before then provided for in said subdivision 5, and thereby reduce the time within which actions might be brought thereon from six years to two.