Campbell Printing-Press & Mfg. Co. v. Manhattan Ry. Co.

Decision Date09 March 1892
Citation49 F. 930
PartiesCAMPBELL PRINTING-PRESS & MANUF'G CO. v. MANHATTAN RY. CO.
CourtU.S. District Court — Southern District of New York

Chas De Hart Brower, for complainant.

Davies Short & Townsend, for defendant.

LACOMBE Circuit Judge.

The complainant is the owner of letters patent No. 401,680 granted April 16, 1889, to Edward S. Boynton for a new and useful improvement in valves for pneumatic pipes or tubes. ' The second claim of the patent is:

'(2) In combination with an external pivoted valve, a self-closing device, consisting of a compressive helical spring held within a tubular guide, formed upon or attached to said valve, between one end of said guide and a stop at the pivotal point of the valve, substantially as and for the purposes set forth.'

This claim was sustained by Judge COXE in Campbell Printing-Press & Manuf'g Co. v. Eames Vacuum Co., 44 F. 64, and disclaimer as to the first claim was duly entered in the patent-office prior to the bringing of this suit. The bill charges infringement of this second claim, prays injunction and accounting, and expressly waives answer under oath. A preliminary injunction was refused. Campbell Printing-Press & Manuf'g Co. v. Manhattan Ry. Co., 47 F. 663. The case now comes up for final hearing upon bill, answer, and replication. The answer (unverified) admits the grant of the letters patent, and complainant's title thereto, and that they are good and valid as to the second claim thereof. It further admits that since April 16, 1889, (the date of the issue of the patent,) defendant has used couplings embodying the invention covered by the second claim, and that the number so used is 2,678, on 1,017 cars and 322 locomotives, some of said couplings having been applied before April 16, 1889, and others from time to time since. It further avers that the invention is of trifling, if any, pecuniary value; that complainant has never made, used, or sold the patented invention, and has never licensed any one to make, use, or sell the same; that the defendant uses it upon cars constantly employed by it in the transportation of passengers, and that an injunction would be a hardship to defendant, would seriously inconvenience it in its passenger carrying service, and would be of no benefit to complainant. It offers to submit to a final decree for injunction against the use of any additional infringing couplings. For the past and future undisturbed use of those which it has placed upon its cars, without leave or license of the owner of the patent, and in admitted violation of the rights secured to such owner thereby, it also offers to submit to a judgment for nominal damages.

To the complainant's application for an accounting before a master it is objected that it has not given specific evidence of damages sustained. But under the pleadings it is not necessary for the complainant to give such proof. Infringement is admitted, and from infringement damage and deprivation of profits are presumed. Wooster v. Muser, 20 F. 162. To what extent, and whether nominal or substantial, is a matter to be settled on the accounting. Complainant has shown all that is necessary to entitle it to a decree sending the case to a master, when it has shown infringement of a valid patent owned by itself. Brickill v. Mayor, 7 Fed.Rep. 479. The decision of Judge BROWN in the case at bar (48 F. 344) did not pass upon this point. It only settled a question of practice, holding that a motion at chambers was not proper procedure.

The contention of the defendant that, because it is willing to pay nominal damages for past infringement, an injunction to restrain future infringement should not issue, is unsound. In Birdsell v. Shaliol, 112 U.S. 487, 5 S.Ct. 244, the supreme court held that 'an infringer does not, by paying damages for making and using a machine in infringement of a patent, acquire any right himself to the future use of the machine. On the contrary, he may, in addition to the payment of damages for past infringement, be restrained by injunction from further use, (citing authorities.) ' See, also, Matthews v. Spangenberg, 15 F. 813; Bragg v. City of Stockton, 27 F. 509. The proposition advanced by the defendant is practically this: If an inventor, whose patented improvement in locomotive machinery, although valid, is of but trifling value to a common carrier, himself thinks it valuable, and therefore demands a license fee for its use, higher than such common carriers as would like to use it are willing to pay, they may nevertheless appropriate his invention to their use, may place it on their cars and locomotives without his permission, and may continue to use it till it wears out, without interference, on the ground that to remove it would inconvenience the public; and that for such enforced license they should be made to pay, not the fee the inventor asks, but such sum as a master of the court may think the invention is worth. Badly stated, the contention is that, when a patentee asks a price for the use of his patent higher than users wish to pay, and refuses to license its use except at such price, it may be confiscated and sold to whoever wants it, at a price to be fixed by a United States circuit court. Whether or not such a qualification of the monopoly secured by letters patent would be desirable legislation is immaterial; it is not now on the statute book, nor is there found controlling authority in its support among the cases cited by the defendant's counsel.

In Barnard v. Gibson, 7 How. 657, the parties claimed conflicting interests as assignees of a patent, and there was thus an issue raised in the case which the circuit court had determined adversely to the defendant; but his right to review that decision, by appeal from final decree whenever it might be entered, still remained. The supreme court declared that it was a 'hardship,' sufficient to have deterred the circuit court from granting an injunction that the case was not ended in that court, so that there might be a final decree for the defendant to appeal from, and perhaps secure a reversal of the finding that complainant's title was good. Here no such issue is raised. Title, validity of the patent, and infringement are established, not by the decision of this court, but by defendant's own admissions on the record, and no appeal could possibly result in a different conclusion. In Pullman v. Railroad Co., 5 Fed.Rep. 72, defendants were strenuously asserting prior use and non-infringement. In Hoe v. Advertiser Co.,14 F 914, it was apparent that to make a change in the printing-press on which the daily newspaper of the defendant was printed would greatly embarrass the usual course of its business. Moreover, the defendant was contesting the validity of the patent, and, though the circuit court sustained it, there was a possibility of reversal. In Howe v. Morton, 1 Fish.Pat.Cas. 601, the validity of the patent was vigorously assailed. In Stainthorp v. Humiston, 2 Fish.Pat.Cas. 311, the...

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  • Continental Paper Bag Co. v. Eastern Paper Bag Co.
    • United States
    • United States Courts of Appeals. United States Court of Appeals (1st Circuit)
    • December 24, 1906
    ...... Consol. Roller-Mill Co. v. Coombs (C.C.) 39 F. 803;. Campbell Printing Co. v. Manhattan Ry. Co. (C.C.) 49. F. 930. . . ... involve any question like the one here. In the Campbell. Printing Press & Manufacturing Company Case (C.C.) 49 F. 930,. there was no pretense of ......
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    ...the names of the shippers sending the infringing material. This was a direct aid to the infringers. Campbell Printing-Press Mfg. Co. v. Manhattan R. Co., 49 F. 930 (C.C.S.D.N.Y.), seems likewise to have involved a willful An equitable remedy should be tempered to cause no inconvenience to t......
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    • July 9, 1898
    ...... in New York Paper-Bag Mach. & Mfg. Co. v. Hollingsworth &. Whitney Co., 5 U.S.App. 327, 5 C.C.A. 490, and ...71, and that decision will be followed. here. See, also, Campbell Printing-Press & Mfg. Co. v. Manhattan Ry. Co., 49 F. 930, and Mill Co. ......
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