Consolidated Rubber Tire Co. v. Diamond Rubber Co. of New York

• Decision Date: 07 November 1907
• Docket Number: 131.
• Citation: 157 F. 677
• Parties: CONSOLIDATED RUBBER TIRE CO. et al. v. DIAMOND RUBBER CO. OF NEW YORK.
• Court: U.S. Court of Appeals — Second Circuit

157 F. 677

CONSOLIDATED RUBBER TIRE CO. et al. v. DIAMOND RUBBER CO. OF NEW YORK.

No. 131.

United States Court of Appeals, Second Circuit.

November 7, 1907

Charles K. Offield and Charles C. Linthicum (Philip B. Adams, of counsel), for appellant.

Border Bowman, F. W. Bakewell, and C. W. Stapleton (Paul A. Staley of counsel), for appellee.

Before LACOMBE, WARD, and NOYES, Circuit Judges.

LACOMBE Circuit Judge.

Complainants are manufacturers of rubber tires, and respectively owner of and licensee under the Grant patent of February 18, 1896, No 554,675, for improvements in rubber-tired wheels. Defendant is not a manufacturer, but handles and sells rubber tires for wheeled vehicles. The patent was before this court in Firestone Tire Co. v. Consolidated Rubber Tire Co (C.C.A.) 151 F. 237. It was held that the patent was valid, and that certain tires then before it were infringements. On the application for preliminary injunction in the case at bar, it appeared that defendant had sold tires in all substantial respects the same as those held to be infringements in the Firestone Case. The record does not illuminate the prior art by the disclosure of any important prior patents or prior uses which were not contained in the record in the Firestone Case. Upon such a state of facts, the propriety of issuing preliminary injunction is well settled in this circuit; and it is equally well settled that appeal from such preliminary injunction brings up only the propriety of the action of the Circuit Court. The whole cause is not to be reopened. That is a matter for consideration when the new cause comes to final hearing. Am. Paper P. & B. Co. v Nat. Folding B. & P. Co., 51 F. 229, 2 C.C.A. 165; Consolidated Fastener Co. v. Littauer, 84 F. 165, 28 C.C.A. 133.

The only real question now presented is whether the peculiar history of this patent requires a denial of preliminary injunction in view of the recent decision of the Supreme Court in Kessler v. Eldred, 206 U.S. 285, 27 Sup.Ct. 611, 51 L.Ed. 1065. As we stated in the Firestone Case, the patent was sustained in this circuit by Judge Thomas (Rubber Tire Wheel Co. v. Pneumatic Wagon Wheel Co. (C.C.) 91 F. 978); in the Sixth Circuit (Northern District of Ohio) by Judge Wing (unreported); in the Fifth Circuit by Judge Newman (Consolidated Rubber Tire Co. v. Finley R.T. co. (C.C.) 116 F. 629). It was held invalid by the Court of Appeals, Sixth Circuit, in Goodyear Tire & R. Co. v. Rubber T.W. Co., 116 F. 363, 53 C.C.A. 583, and in Rubber Co. v. Victor Tire Co., 123 F. 85, 59 C.C.A. 215, and by Judge Anderson in the Seventh Circuit, District of Indiana (unreported). A certiorari to review the decision of the C.C.A. Sixth Circuit was denied. 187 U.S. 641, 23 Sup.Ct. 842, 47 L.Ed. 345. The patent was also indirectly involved in the decision of Rubber Tire W. Co. v. Milwaukee R. Works (C.C.) 142 F. 531.

It came before Judge Platt in this circuit in the Firestone Case (C.C.) 147 F. 739, and was again sustained, and upon the appeal from his decision our opinion in that case (151 F. 237) was rendered. The record at that time before this court besides the testimony in the cause contained as an exhibit the record which was before the Circuit Court of Appeals, Sixth Circuit, in the Goodyear Case, and all the opinions above cited were also cited. Commenting upon the entire record then presented, this court said:

'In view of this new aspect of the case, we have no reason to doubt that on the present record the Court of Appeals of the Sixth Circuit would reach a conclusion favorable to the patent.'

In Kessler v. Eldred, Eldred, the owner of a patent, sued Kessler, a manufacturer of electric cigar lighters, in the district of Indiana. The court found noninfringement, and dismissed the bill. Subsequently Eldred sued Kirkland another manufacturer of similar lighters in the Western district of New York, was defeated at circuit, but prevailed in the Circuit Court of Appeals. Eldred next sued Breitweiser, a user of Kessler lighters, in the same district. While this last suit was pending, Kessler filed a bill in the Northern District of Illinois against Eldred to enjoin him from...