Johnson v. Foos Mfg. Co.

• Decision Date: 29 November 1905
• Docket Number: 1,418.
• Citation: 141 F. 73
• Parties: JOHNSON et al. v. FOOS MFG. CO.
• Court: U.S. Court of Appeals — Sixth Circuit

141 F. 73

JOHNSON et al. v. FOOS MFG. CO.

No. 1,418.

United States Court of Appeals, Sixth Circuit.

November 29, 1905

On Rehearing, January 31, 1906.

W. R Wood and R. H. Parkinson, for appellant.

H. A Toulmin and W. A. Scott, for appellee.

Before LURTON, SEVERENS, and RICHARDS, Circuit Judges.

LURTON Circuit Judge.

This is a bill to restrain infringement of two patents granted to W C. Johnson. The first is for certain 'improvements in processes of an apparatus for treating cotton seed and hulls,' and the second for 'improvements in means for separating the fiber from cotton-seed hulls. ' The first patent was issued December 11, 1894, and bears the serial No. 506,268, the second is No. 613,208, and was issued October 25, 1898. The cause came on to be heard in the court below upon the pleadings, exhibits, and a voluminous book of evidence, but the trial judge, without passing upon the merits of the ease, dismissed the bill because he thought that the single machine made, sold, and installed by the defendant company had been subsequently licensed by complainant, upon the user agreeing to pay a royalty, and that no further infringement was threatened. The remedy at law he therefore held to be adequate to recover damages for the single infringement averred to have occurred before the bill was filed and no case made requiring an injunction against further infringement. This result the learned trial court rested upon the authority of Woodmanse & Hewitt Mfg. Co. v. Williams, 68 F. 489, 492, 15 C.C.A. 520, 524, where this court said:

'The ground upon which a court of equity will take cognizance of a suit for an infringement of a patent is the relief through an injunction. There is nothing so peculiar to a suit for damages and profits for infringement of a patent as will, independently of some recognized ground of equitable jurisdiction, justify a court of chancery in assuming jurisdiction. It must appear that the legal remedy at law is inadequate, and if the case is one in which equitable relief by injunction is inappropriate, as where the patent has expired, or where the circumstances are such as to justify a court in refusing equitable relief, the suit will not be entertained for the mere purpose of an account of past damages and profits. Root v. Railway Co., 105 U.S. 189, 26 L.Ed. 975; McLaughlin v. Railway Co. (C.C.) 21 F. 574; Clark v. Wooster, 119 U.S. 325, 7 Sup.Ct. 217, 30 L.Ed. 392.'

The principle there stated is perfectly sound, but, as we think, not applicable to the facts of this case. It is true enough that no injunction can go against the further use of the machine alleged to infringe which was made and set up at Memphis, Tenn., for the Southern Cotton Oil Company in October, 1899, because the buyer of that machine, upon notice from complainants, obtained a license and agreed to pay royalty. But independently of the fact that a patentee may not enjoin his own licensee, an injunction against one charged to have made and sold an infringing device would not operate to enjoin a buyer or user of an infringing device without joining him in the suit or otherwise seeking relief directly against him as an infringer.

We can also agree with the Circuit Court that a single infringement by making and selling a single infringing machine would not justify the interposition of a court of equity for the purpose of restraining further infringement by the making and sale of other infringing machines, if it appeared clearly that there was no reason to apprehend any further infringement. But that is not this case. The principal parts of the machinery constituting the machine of the complainant's patent had been made by the Foos Manufacturing Company, the defendant in this case. Both Mr. Robert H. Foos and Mr. Winchell of that company had visited the complainant's plant at Memphis, and had been consulted about certain matters connected with the operation of the machinery. It may as well be said here as later that all of the parts composing the apparatus covered by the claims of the two Johnson patents were old. The novelty, if any, consists in the combination and new and useful results thereby accomplished. The arrangement of the different parts was therefore of the essence of the invention, and the Foos Company had a legal right to continue to make and sell attrition mills and other parts of the mechanism which were old, provided only that they did so with no purpose to contribute to the plans of one intending an infringement by combining the parts. Heaton Peninsular Button Co. v. Eureka Mfg. Co., 77 F. 288, 25 C.C.A. 267, 35 L.R.A. 728; Thomson-Houston Electric Co. v. Ohio Brass Co., 80 F. 712, 26 C.C.A. 107; German Am. Filter Co. v. Loew Filter Co. (C.C.) 103 F. 303; Loew Filter Co. v. German Am. Filter Co., 107 F. 949, 47 C.C.A. 94.

The claims of the first Johnson patent cover both a process and an apparatus. The Foos Company is charged, not simply with having made and sold attrition mills and separators to the Southern Cotton Oil Company, but that they made and combined these and other parts according to a plan which was intended to employ the process of the patent and which infringed the mechanical claims of the Johnson patents as well. For the purpose of this branch of the case we shall assume that the apparatus thus installed, combined, and put in operation was an infringement of the patents owned by complainants. That Mr. Foos and Mr. Winchell of the Foos Company were familiar with the arrangement and mode of operation in the mill of the complainants is satisfactorily established. Thus under date of March 25, 1895, the defendant wrote as follows:

'Tennessee Fiber Company, Memphis, Tenn.-- Dear Sirs: We note yours of the 22nd and are pleased to note your faith in both Mr. Winchell and the mills. We are quite sure, now that he has seen you and the machines in operation, that everything will be all right as soon as we get the pulleys. We will crowd the work to the utmost, and hope to make shipment in a very short time. As they are ordered, it will require some special work, which necessarily makes more delay than the ordinary run of stock.

'Yours truly,

Foos Manufacturing Co., H.S.B.'

Subsequently complainants heard something of a purpose by defendants to put up similar machinery for others, and therefore wrote about it. To this the defendant replied under date July 8, 1895:

'Tennessee Fiber Company, Memphis, Tenn.-- Gentlemen: We note yours of the 6th, and cannot make any definite answer, as our Mr. Winchell is in Texas at present; but we will communicate with him and advise you just as soon as we can get word. We can assure you, however, that there is some misunderstanding, as Mr. W. we know appreciates the value of your combination, and would do nothing that would interfere in any way with your plans, knowing as he does that our interests are just the other way. You appreciate this of course. We hope to be able to write you more definitely upon the subject in a few days.

'Yours truly,

Foos Manufacturing Company, H.S.B.'

The admission of appreciation of the value of the Complainant's combination ' and promise not to interfere with their plans is significant. In June, 1899, complainants wrote to defendant company, in which, among other things, they said:

'We understand that Memphis parties are figuring with you for machines similar to ours, for the purpose of making fiber and bran from cotton seed hulls. We are perfectly willing to give these parties the use of our patents and the benefit of our experience on payment of a fair royalty for the same. We will very promptly prosecute any infringements of our patent rights. We do not wish to make you any trouble, and would warn you against making or selling any machines to be used in our process. We have kept your Mr. Foos posted as to the developments of this business and he has had our assurance that we would push same as fast as we saw that it could be done profitably, and that we would use your mills. We are now in a position where we will either double the capacity of our plant or build for some one else a similar plant, and we will soon be in a position to figure with you, provided, of course, you respect our patents and the confidence we have always reposed in you as to the development of this business.

yours very truly

(Signature not copied.)' To this the defendants replied as follows:

'Mr W. C. Johnson, General Manager Tennessee Fiber Company, Memphis, Tenn.--Dear Sir: We have yours of the 6th inst. with order for two sets of plates with bolts, and same shall have our prompt and careful attention. We note what you say in regard to parties at Memphis who are figuring on mills for grinding cotton-seed hulls, and in reply would state that such is the fact. Our business, you understand, is the manufacture and sale of machinery, and it would be impossible for us to dictate for what purpose or how such machinery was to be used. You certainly cannot expect us to decline to sell our machinery to anyone who might give us an order for same. We are rather surprised at your statement that you have kept the writer posted as to the development of your business, and think you must have some one else in mind. The fact is that, while he has called at your office quite a number of times during the last five years, he has never been inside of your plant, except once, and that was soon after you started and remembers very little, of anything, about your system which you stated to him the last time he saw you was now entirely different from what it was then. Further than this, we know nothing as to your method or system of doing this work nor have you ever imparted to us any information on the subject. If there is going to be any business in this...