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In the case of United States v. Speed, 8 Pennsylvania; Frederic P. Schoonmaker, Wall. (75 U. S.) 77, 19 L. Ed. 449, the Judge. Supreme Court said: “And we do not believe that any safer Steel City Electric Company.

Suit by James M. G. Fullman against the

Decree for rule, or one nearer to that supported by the defendant on counterclaim, and complainant general current of authorities, can be found

appeals. Affirmed on condition. than that adopted by the court, to wit, the difference between the cost of doing the

Winter & Brown and Reed, Smith, Shaw work and what claimants were to receive for & McClay, all of Pittsburgh, Pa. (Frederick it, making reasonable deduction for the less W. Winter, George D. Wick, and Paul N. time engaged, and for release from the care, sel), for appellant.

Critchlow, all of Pittsburgh, Pa., of countrouble, risk, and responsibility attending a full execution of the contract."

Patterson, Crawford, Miller & Arensberg,

of Pittsburgh, Pa. (Green & McCallister, The jury evidently had some basis on which it arrived at a verdict. What profits of Pittsburgh, Pa., of counsel, and C. F. C. were allowed and deductions made for less Arensberg and E. W. McCallister, both of time engaged, release from care, trouble, Pittsburgh, Pa., on the brief), for appellee. risk, responsibility, and use of capital, we

Before WOOLLEY and DAVIS, Circuit do not know. Some amount should have Judges, and RELLSTAB, District Judge. been allowed and perhaps considerable; but since we do not know the profits allowed or

DAVIS, Circuit Judge. This suit was disallowed and the deductions made because brought by James M. G. Fullman, plaintiff, the contracts were not completed, we cannot charging that the defendant infringed letsay that the verdict shows that the dam- ters patent No. 1,251,497, issued to him Janages were assessed upon an erroneous or il- uary 1, 1918, for the improvement in floor legal basis, or that the verdict was arbitrary outlet boxes. The defendant admitted the or the result of a compromise. Under the manufacture, use, and sale of the boxes, but evidence, and instruction of the court, the alleged that it owned the invention and the jury had rather a wide latitude as to the letters patent, and filed a counterclaim or finding of facts. The verdict may be in ex

cross-bill, wherein it prayed that the court act obedience to the instruction and the decree that the invention and patent befacts as it found them.

longed to it, that it order the plaintiff to asTherefore the judgment of the District sign them to it, and dismiss the bill. The Court is affirmed.

case was tried to the court, which entered a final decree in accordance with the prayer of the counterclaim. From this decree the

plaintiff has appealed to this court. FULLMAN v. STEEL CITY ELECTRIC CO. The plaintiff prior to 1904 had been man(Circuit Court of Appeals, Third Circuit. Sep- ufacturing adjustable outlet boxes, under tember 30, 1924. Rehearing Denied his patent No. 899,381, applied for May 6, December 1, 1924.)

1902, and issued April 11, 1904. In or No. 3096.

about the year 1903, the plaintiff became in1. Master and servant Om62-Equitable title to volved in financial difficulties and sold his

patent held to be in employer of inventor business to the defendant, which was incorunder contract.

porated at that time for the purpose of Under a contract between defendant cor

purporation and complainant, then its general man- chasing it. Fullman acquired about oneager, the equitable title to a patent for an in. third of the stock of the new corporation, and developed and perfected in defendant's shop became its general manager, and conducted during working hours, but patented after the its business, from that time until March 15, relation had ceased, held to be in defendant, subject to its payment of the expense incurred 1913, under a license which he had granted in securing the patent.

to it under his first patent. About the year 2. Equity em 66Maxim, "he who seeks eq. 1907 the need of a nonadjustable floor out

uity must do equity,” applicable to defendant, let box was recognized. This type of box asking affirmative relief. The maxim, "he who seeks equity must do

was invented by the plaintiff, and was covequity,” is as appropriate to the conduct of a ered by the patent in suit, which was apdefendant as to that of the complainant, and plied for November 17, 1908. The patent should be applied in every case where its application is necessary in order to do justice.

not being issued, the application was re

newed June 13, 1916, and the patent was Appeal from the District Court of the finally issued January 1, 1918. The nonUnited States for the Western District of adjustable box was put upon the market in 2 F.(20) 4 May, 1908. From that time until the plain- tion belonged to the defendant. On De tiff, as general manager, severed his connec- cember 1, 1908, he wrote, in the name of and tion with the defendant, it manufactured for the defendant, to the Machen & Mayer and sold, under his management, the non- Electrical Manufacturing Company, of Philadjustable boxes, and has continued to do adelphia, and to W. R. Ostrander & Co., of so since he left.

New York, notifying them that they were As if to prevent such controversies as infringing defendant's invention, and said, have resulted in this litigation, the parties "We send you this letter to advise you that hereto entered into an agreement on May we will protect our rights,” and signed the 1, 1907, wherein it was provided that, if letters, "Steel City Electric Company, J. plaintiff should make, conceive, or develop M. C. Fullman, Manager.” On April 25, any invention while thus employed by the 1913, about a month after leaving its emdefendant company, it should "be his sole ploy, plaintiff wrote defendant, threatening and exclusive property." But the agree to institute proceedings against it unless ment further provided that:

royalties were paid under his earlier patent, “Nevertheless, should the said Fullman but did not say a word about royalties, fees, voluntarily invent and develop and perfect or expenses regarding the invention covered any invention during working hours, upon by the patent in suit. being requested by any officer or the board The learned trial judge, who saw the witof directors of the said company to improve, nesses and heard them testify, found the foldevelop, or perfect any current methods of lowing facts: manufacture, apparatus, device, or article "He made drawings at night for a nonthen being used or manufactured, or for adjustable box, and had the matter up with which arrangements have been made for the Mr. Patterson, president of the corporation, manufacture or use by the said company, and the other directors of the company, exexpending the moneys and materials of said plaining to them the description of the new Steel City Electric Company in such devel- construction. After some conference, they opment, improvement, or perfection, all instructed the plaintiff, as manager, to make such inventions and improvements so per- the box and sell it. fected and developed, and all letters patent “The nonadjustable floor box here in issue that may be obtained therefor, shall be the was invented by the plaintiff, developed and property of the said Steel City Electric perfected while the plaintiff was in the emCompany, its successors and assigns, and ploy of the defendant company, and while the said Fullman agrees to do every act and he was, in fact, manager of that company. thing requisite to vest said patent or pat- The work of development was not only carents in said Steel City Electric Company, ried forward in the shop of the defendant, without any other or additional considera- but was also done during working hours at tion to the said Fullman than herein ex

the

expense of the defendant, while the pressed.”

plaintiff was manager and in full and com[1] The real question, therefore, is the plete charge of the business of the company. ownership of the invention and letters pat- This work was also carried forward with ent. This must be determined from what the knowledge of the other officers of the was done under the agreement. The de- defendant company, in the defendant's tool fendant contends that the nonadjustable room, and was personally 'conducted by one boxes were voluntarily invented and devel- of the company's employees, Harry A. oped during working hours, upon the re- Beltz, the shop foreman

Beltz, the shop foreman of the defendant quest and at the expense of the defendant, company, under the direct supervision of and therefore the invention and letters pat- the plaintiff.” ent belong to it. As evidence of this fact, If the evidence supports this finding, and it points out that, from the date of the in- we think it does, the invention and patent vention until July, 1915, no demand what- belong to the defendant, under the "neverever was made on defendant by plaintiff theless” provision in the agreement. The with regard to this invention, and the de- plaintiff agreed “to do every act and thing mand made then was that he be reimbursed requisite to vest said patent or patents in for the expenses which he had theretofore said Steel City Electric Company, without incurred in prosecuting the application for any other or additional consideration to the the patent.

said Fullman than herein expressed," and Until about the time this suit was begun, this agreement he must keep and perform. his attitude had always been that the inven- The clear implication, however, if not express provision, is that the defendant would lost or destroyed and memories dimmed, finding bear all expenses of developing and perfect- judged the credibility and accuracy of the wit

of poninfringement by trial court, who saw and ing any invention Fullman might make. nesses, held entitled to unusual weight. This includes the expenses incident to secur- 4. Patents 328-No. 445,235, for acid-resist. ing a patent for the invention. While the ing lining of pulp-digesting boiler, held not in

fringed. defendant has the right to have the court de

Russell patent, No. 445,235, for cementicree that title to the invention and letters tious acid-resisting lining for pulp-digesting patent is in it, and to require plaintiff to boiler, held not infringed. assign his right, title, and interest in and

Appeal from the District Court of the to the patent to it, yet, before it can demand that its rights be enforced, it must United States for the District of New discharge its own obligations to the plain- Hampshire; James Arnold Lowell, Judge. tiff, by paying the expenses incurred by Action by the American Sulphite Pulp him in securing the patent.

Company against the Burgess Sulphite Com[2] Pervading the administration of equi- pany and others. Decree for defendants, ty in all its branches are certain broad prin- and plaintiff appeals. Affirmed. ciples, so generally accepted and of such Frank T. Benner, of Boston, Mass. (Rodfundamental character that they have be- ney G. Page, of Boston, Mass., on the brief), come known as maxims. One of the oldest for appellant. and most venerable of these is that "he who Marcus B. May, of Boston, Mass. (Alseeks equity must do equity.” Hanson v. fred H. Hildreth, of Boston, Mass., on the Neal, 215 Mo. 256, 273, 114 S. W. 1073, brief), for appellees. 1078. It applies to one who affirmatively

Before BINGHAM, JOHNSON, and ANseeks equitable relief (Columbus v. Mercan- DERSON, Circuit Judges. tile Trust Co., 218 U. S. 645, 662, 31 S. Ct. 105, 54 L. Ed. 1193), but it is as appro- ANDERSON, Circuit Judge. This patpriate to the conduct of the defendant as to ent infringement suit has an unusual setthat of the complainant (Brown, B. & Co. ting. It was filed on April 30, 1907, for v. Lake Superior Iron Co., 134 U. S. 530, the alleged infringement of the Russell pat535, 10 S. Ct. 604, 33 L. Ed. 1021), and it ent, No. 445,235, dated January 27, 1891. should be applied in every case where its ap- The case was tried before Judge Lowell in plication is necessary in order to do justice May, 1923—15 years after the expiration (Mutual Benefit Life Insurance Co. v. of the patent on January 27, 1908. At Brown, 30 N. J. Eq. 193, 199). Having ju- the end of a 2 weeks trial, the learned Disrisdiction of this case on appeal, it is our trict Judge disposed of the case in a brief duty and in our power to require the pay- oral opinion, as follows: ment of these expenses. Potter v. Beal, 50 “I am going to give my decision on this F. 860, 864, 2 C. C. A. 60.

I have made up my mind, and there Therefore, upon their payment, with in- is no use in waiting. terest, the decree will be affirmed.

"I think that the patent to Russell should be limited to cementitious material which

is acid resistant. The defense that the deAMERICAN SULPHITE PULP Co. v.

fendant's structure was not acid resistant BURGESS SULPHITE CO. et al. was not made in any of the cases to which

I have been referred. It seems to me it is (Circuit Court of Appeals, First Circuit. November 7, 1924.)

proved to my satisfaction that the lining

that is, the layers of material next to the No. 1716.

shell-were not acid resistant, and therefore 1. Patents @312(1) - Plaintiff, alleging In- that they are not covered by the plaintiff's fringement, has burden of proof. Plaintiff

, alleging infringement, has burden patent. of proof.

“As to the contention that the facing 2. Patents Om312(1)-Patentee, unduly delay. course of brick is set in litharge, it seems ing suit, is not entitled to have doubts resolv. to me that that is disclaimed by Russell in ed in his favor.

Patentee, delaying for 15 years before two places. In one place, on page 1 of his bringing his contentions to trial, is not entitled reissue patent, he says: to have questions of fact involving doubt and “ 'I am aware of the use heretofore of a difficulty resolved in his favor.

digester lining comprising a layer or coat 3. Patents ww324(5)-Finding on noninfringe- of masonry or brickwork laid in cement, ment held entitled to unusual weight. Where trial of patent infringement case was

and make no claim thereto.' delayed for 16 years, during which records were "That is one place. In another part of

now.

2 F.(20) 6 the specification, on page 2, he refers to of those claims is that Russell was able to the lead paste of Reynolds. So that it seems get rid of everything except the shell of the to me that infringement has not been made digester and the lining of cement. That out in this case.

is the very pith of his invention. Second. "Now, that really disposes of the case; I have doubts whether this digester really but I suppose it will go to the higher court, shows anything more than is shown by the and possibly it may be worth while to in- Pierredon patent, lava bricks laid in a dicate my opinion on the rest of it.

heavy course of cement; and what is shown "If I had held that this defendant were in that patent the public has the right to infringing, I should not allow this bill to use, independently of any question whether stand on account of the delay. It seems to Pierredon saw all the advantage coming me that a person, even after filing his suit, from having a heavy cement course under his who delays for 16 years to bring it to trial, lava bricks. Third. The testimony with ref15 years of which was after the patent has erence to the substantial advantages and comexpired, has not used that due diligence parative relations of the various parts of which should induce a court of equity to the lining of digester 10 are too conflicting give him its aid.”

to justify the court in basing an interlocuThe validity of the patent is not in ques- tory injunction upon it. On the whole, it is tion. As the case was on the merits fully enough for me to repeat that the question tried before the District Court, as that court of infringement as to digester 10 is too found as a fact on all the evidence that there doubtful to justify this court in using the was no infringement, and as we think this power of a temporary injunction with refconclusion was right, we need not consider erence to it.” the other defense of laches or equitable es- Shortly thereafter this first suit was settoppel.

tled by the payment by the defendant to The Russell patent was construed by this the plaintiff of about $32,000, and the grant court in American Sulphite Pulp Co. v. of a license by the plaintiff to the defendant, Howland Falls Co., 80 F. 395, 25 C. C. A. covering the Russell patent, and another 500, decided April 16, 1897. For most, per- patent not now material, for use in the dehaps for all, present purposes, the validity fendant's "ten (10) digesters now erected and scope of the patent are agreed on both and in use in its mill at Berlin, N. H., at sides to be determined by that opinion. the present time, or their equivalent in

The pending case is the second suit cubical contents." brought by this plaintiff against this de- This suit was by agreement discontinued fendant for infringing this same patent. without costs on November 5, 1900. There The first suit was brought on November 3, was therefore never any complete dicial 1899, for using the patented linings in 10 determination of the question of infringedigesters. A motion for a preliminary in- ment as to the tenth digester. Perhaps by junction was heard by Judge Putnam, whose implication the plaintiff abandoned its conopinion is found in (C. C.) 103 F. 975. His tention as to that infringement, thus conconclusion was that the defendant infringed ceding that the lining in No. 10 was not as to nine of the digesters, and that as to covered by the Russell patent, but was, as No. 10 the question was too doubtful to jus- Judge Putnam tentatively thought, "a puretify the issuance of a temporary injunction. ly bona fide composite lining, fairly, so termAs to that digester, Judge Putnam said: ed."

“Without undertaking to go at length in- About five years later, the defendant, to the nature of the lining of the tenth di- desiring to increase its digester capacity, gester, and reserving my views about that lengthened certain of its old digesters, numuntil å final hearing, all I need say with bered 1 to 6, inclusive, and built eight new reference to it is that it involves too much digesters, numbered 11 to 18, inclusive. In doubt on the question of infringement to lining the extensions of the old digesters, 1 justify me in issuing an injunction against to 6, and the new digesters, 11 to 18, the it. The points of doubt are: First. defendant claims that it employed substanWhether, after all, the real substance of this tially the same lining as that used in digestconstruction is not that described by the er No. 10, against which Judge Putnam respondents as a purely bona fide composite had refused to issue an injunction. lining. If it is a purely bona fide com- The plaintiff, on the other hand, contendposite lining, fairly so termed, it certainly ed and contends that the linings used were does not come within the claims of the pat- covered by the Russell patent, and that, as ent in suit, because the very essence and gist they were concededly not covered by the license, they infringe. After some prelimina- of the patent and to the evidence will be ry correspondence and negotiation in 1906, enough to indicate in a general way the basis the present suit was brought, as above stat- of our accord with the court below. ed, on April 30, 1907.

A pulp digester is a huge steel boiler, 40 In May, 1907, before the filing of an an- or more feet high, and perhaps 15 feet in swer and in connection with the motion for diameter. It is used for cooking or rea preliminary injunction, plaintiff took and ducing wood chips to fiber suitable for maksubsequently filed the deposition of Eliphlet ing paper. This cooking is done by filling E. Decker, whose employment as superin- the boiler with chips and bisulphate of lime, tendent of the defendant was terminated in and subjecting the mass to steam heat and June, 1906, when, as the evidence indicates, pressure. In the bisulphate liquor is sulDecker, with "about three dozen of his phurous acid, which, if it reaches the steel relatives" were “disengaged from the com- shell, eats and destroys it. Hence the necespany by Mr. Burgess at that time.” There- sity of lining these steel shells with acidafter, and until May, 1923, the litigation resisting material. Formerly the shells were slumbered, although somewhat fitfully, for in lined by sheets of lead,-unsatisfactory, be1913 the plaintiff took the depositions of cause the lead would expand under heat William E. Jolbert and George F. Jolbert. and would not contract evenly with the

[1-4] Apart from these ancient deposi- contraction of the steel. This noncoordinattions, the record is made up of nearly 500 ing contraction caused the lead to creep, pages of parol evidence before the District buckle, and crack. Russell's invention conCourt, including the transcript of many let- sisted, roughly speaking, of lining these ters, besides an addendum of over 150 pages shells with cementitious material, “put on of exhibits, largely dealing with the prior as one would plaster a wall.” 80 F. 398, art. This bulky record relates simply to 25 C. C. A. 503. the narrow question whether the linings put The patent has only two claims : in defendant's digesters in 1905 and 1906, "1. The improved pulp digester herein and continued in use therein prior to the ex- described, having an outer shell A and a conpiration of the patent on January 27, 1908, tinuous lining or coat B of cement, as dewere covered by the patent, and to the de- scribed, applied to the interior of the said fendant's present contention of equitable shell, for the purpose set forth. estoppel. Of course, after January 27, 1908, “2. The improved pulp digester herein the defendant was free to use the linings cov- described, having an outer shell A, a conered by the Russell patent. The dates on tinuous lining or coat B of cement, substanwhich the linings were installed and used, tially as described, applied to the interior therefore, become important. The burden is of the said shell, and an interior lining of throughout on the plaintiff. Plainly a pat- tiles C, all substantially as set forth." entee, indulging in 15 years of delay be- In the specification Russell says: fore putting its contentions to trial before I am aware of the use heretofore of a the court, is not entitled to have questions digester lining comprising a layer or coat of fact involving doubt and difficulty, either of masonry or brickwork laid in cement, as to the kind of construction, or as to the and make no claim thereto.

I date thereof, resolved in its favor. Theo- mean to be understood that the digester dore P. Burgess, one of the original defend- linings comprising a layer or coat of maants, and other witnesses claimed by the de- sonry or brickwork laid in cement, to which fendant to be material for the defense, have I have just referred, have always been, so died. Records have been lost or destroyed. far as I know, supplemented by a lining The memory of those once conversant with of sheet lead interposed between the brick the facts has grown dim. If the issue were or tile lining and the digester shell." otherwise doubtful, as we think it is not, the The specifications contain other references question is one in which the judgment of to the disclaimed prior art. In the Howland the trial judge, who saw and judged the Falls Case, 80 F. 395, 25 C. C. A. 500 (the credibility and accuracy of the numerous original opinion sustaining and construing witnesses who testified before him, en- this patent), Judge Aldrich said: titled to unusual weight. The prompt and “We look at this as an invention of an imconfident decision of the trial judge should proved structure, with a devised and denot be reversed, unless plainly wrong. Care- scribed process for creating it and putting it ful examination of the record constrains us in operation in connection with a new and to the view that that court was plainly right. pressing emergency, and not for any partic

A brief reference to the subject matter ular ingredient or composition. It is true,

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