Accumulator Co. v. Consolidated Electric Storage Co.

• Decision Date: 17 January 1893
• Citation: 53 F. 796
• Parties: ACCUMULATOR CO. v. CONSOLIDATED ELECTRIC Storage CO. et al.
• Court: U.S. District Court — District of New Jersey

53 F. 796

ACCUMULATOR CO. v. CONSOLIDATED ELECTRIC Storage CO. et al.

United States Circuit Court, D. New Jersey.

January 17, 1893

F. H Betts, for complainant.

Thomas W. Osborne, William H. Kenyon, and C. L. Mitchell, for defendants.

GREEN District Judge.

The bill of complaint in this case was filed to enjoin an infringement of certain letters patent now owned by the complainant, dated January 3, 1882, and numbered 252,002, and granted to C. A. Faure, for secondary storage batteries. The first claim of this patent has been upheld and sustained as a valid claim by the United States circuit court for the southern district of New York in several contested cases. Electrical Accumulator Co. v. Julien Electric Co., 38 F. 117, and Electrical Accumulator Co. v. New York &amp H. R. Co., 40 F. 328. The defendant company in the first-named case,-- the Julien Electric Company,-- and who was practically the defendant in the second case also, has been absorbed by the Consolidated Electric Storage Company the present defendant. Mr. Bracken, the president of the defendant company, was the president of the Julien Electrical Company, and it is not denied that the defendant company has taken over all the plant and business of the Julien Electrical Company to itself, and is practically its successor. The letters patent having been declared valid by a judgment of a circuit court of the United States, this court will adopt such adjudication on well-established principles and accept the conclusions there arrived at, especially as the parties are the same, or practically so, and the infringing acts are substantially identical in character.

The complainant now comes into this court to ask for a preliminary injunction against the defendant, and as it appears that the acts which the complainant alleges to be infringing acts have been adjudged so to be in a court of competent jurisdiction in another circuit, and that the predecessors of the defendant have been enjoined and prohibited by the decree of such circuit court from the commission of such infringing acts, ordinarily the motion would be granted. The comity which exists between the federal courts would justify such action on the part of this court without further investigation into the merits of the case.

But the defendants allege that they have a new and valid defense to the charges made against them by the complainant. Admitting, they say, that the letters patent now owned by the complainant were valid when granted, and that the claim alleged to be infringed has been sustained by the circuit court in the jurisdiction mentioned, yet that since that adjudication it has been made known to them that Faure obtained a patent in Spain for the same invention covered by the letters patent in the United States; that the patent in Spain, being limited to a term of 10 years, and having been issued in 1881, ipso facto expired in 1891, which date was previous to the alleged infringing acts committed by the defendant corporation; that, the expiration of the Spanish patent necessarily ending by force of the statute the life of the American patent, the monopoly which had been secured to Faure by the American letters patent has ceased and determined, and that there is no longer any hindrance to the manufacture of storage batteries as invented by Faure in this country. They further declare that this defense has never been raised and determined by any court, and is now made for the first time, on this present occasion, and hence they contend that no preliminary injunction should be granted.

The rule is well settled that where a patent has been declared valid by a decision of a circuit court of the United States in one circuit, such decision will be followed by the federal courts in other circuits, unless it shall be made to appear that new evidence has been discovered, or a novel defense is to be presented, of such a character and of such significance that, if it had been introduced at the hearing in the other circuit, it would have led the court there to a different conclusion. Does this case fall within the exception? The complainant here is entitled to all the protection that can be justly claimed from the result in New York. The patent in question has been sustained there after an unusually long arduous, and expensive litigation; not only once, but twice, and thrice. To deny to the complainant the fruits of its legal victory, except for causes which necessarily compel such a result, would be to make judicial proceedings a travesty of justice. Nor is it true that alleged new defenses will always work a suspension of the granting of an injunction based upon the adjudication in another circuit. Such statement of the rule is too broad. The defense, to be effective, must be so potent in its character as to carry conviction almost to the degree of being beyond a reasonable doubt, that, if it had been made in the original cause, and upon the first hearing, the court would have arrived at a totally different result. Now, in this case it appears that after the granting of the injunction upon final hearing in New York application was...