Bresnahan v. Tripp Giant Leveller Co., 162.

• Decision Date: 14 February 1896
• Docket Number: 162.
• Citation: 72 F. 920
• Parties: BRESNAHAN et al. v. TRIPP GIANT LEVELLER CO.
• Court: U.S. Court of Appeals — First Circuit

72 F. 920

BRESNAHAN et al. v. TRIPP GIANT LEVELLER CO.

No. 162.

United States Court of Appeals, First Circuit.

February 14, 1896

Thomas W. Porter, for appellants.

Causten Browne and Alexander P. Browne, for appellee.

Before PUTNAM, Circuit Judge, and NELSON and WEBB, District Judges.

PUTNAM Circuit Judge.

This is an appeal from the order of the circuit court granting a temporary injunction against the infringement of claim 1 of patent No. 384,893, dated June 19, 1888, issued to James C Cutcheon, as follows:

'A machine for beating out the soles of boots and shoes provided with two jacks, two molds, and means substantially as described, having provision for automatically moving one jack in one direction, while the other is being moved in the opposite direction, whereby the sole of the shoe upon one jack will be under pressure while the other jack will be in a convenient position for the removal of the shoe therefrom.'

In Davis Electrical Works v. Edison Electric Light Co., 8 C.C.A. 615, 60 F. 276, this court suggested that, on an appeal of this class, it probably would not cut down an appellant to the mere question whether the court below had acted within the limits of its discretion. Nevertheless, this court, in the determination of the question of the allowance of a temporary injunction in favor of a patentee, is governed by the same general rules as the circuit court, and must, with necessary limitations, put itself in the place of that court. This observation applies to the extent of requiring us to give their proper effect to prior adjudications establishing the validity of the patent in suit, or determining its construction. The force of such adjudications in connection with applications for temporary injunctions in patent causes has been uniformly stated in substantially the same terms, but nowhere better than by the circuit court of appeals for the Seventh circuit in Electric Manuf'g Co. v. Edison Electric Light Co., 10 C.C.A. 106, 61 F. 834, 836, as follows:

'It may be difficult to formulate a rule that will comprehend all the conditions which could be presented, but we think it safe to say that in general, where the validity of a patent has been sustained by prior adjudication upon final hearing, and after bona fide and strenuous contest, the matter of its validity upon motion for preliminary injunction is no longer at issue, all defense, except that of infringement, being reserved to the final hearing, subject, however, to the single exception that, where a new defense is interposed, the evidence to support it must be so cogent and persuasive as to impress the court with the conviction that, if it had been presented and considered in the former case, it would probably have availed to a contrary conclusion.'

Whether this court will apply the rule in favor of decisions of the various circuit courts, or will limit it to adjudications of the appellate courts, as was apparently done by the circuit court of appeals for the Third circuit in National Cash-Register Co. v. American Cash-Register Co., 3 C.C.A. 559, 53 F. 367, we need not inquire, as the prior adjudication relied on in this instance was our own.

Prior to the filing of the bill in the case at bar, a suit in equity was brought in the circuit court for the district of Massachusetts, charging infringement of the same patent and the same claim as are in question here. The claim was sustained. The opinion of the court was reported in Cutcheon v. Herrick, 52 F. 147. The case involved an examination of the prior state of the art and several alleged anticipations, and the court said:

'The result of this brief review of the prior art shows that, previous to the Cutcheon patent, the operation of clearing the last from the die had never been done automatically. The essence of the Cutcheon invention is that it was the first machine in which both the motions of compressing the last and of clearing the last from the die were performed automatically.'

The case came here by appeal from the usual interlocutory decree for a perpetual injunction and a master, and was here fully argued and carefully considered. It was disposed of by us at the October term, 1893, under the title of Herrick v. Tripp Giant Leveller Co., reported in 8 C.C.A. 475, 60 F. 80. The decree below was affirmed, and the following is the whole of our opinion on the topic now in controversy:

'The court below was right in holding that the first and third claims of the Cutcheon patent were valid, and were infringed by the machine used by the appellants; that the iron last in the appellants' machine was a mechanical equivalent for the jack of the patent; and that there was no sufficient proof that the mechanism of the third claim was in use by others prior to October 28, 1887, the date of the application for the patent. See the opinion of the court below in Cutcheon v. Herrick, 52 F. 147.'

These proceedings were laid before us at this hearing, but, if they had not been, we, probably, would have been entitled to take notice of them, as they appear of record in this court. Butler v. Eaton, 141 U.S. 240, 243, 244, 11 Sup.Ct. 985; Aspen Mining & Smelting Co. v. Billings, 150 U.S. 31, 38, 14 Sup.Ct. 4.

The parties are not shown to us to be the same in the two proceedings, nor to be so far in privity that the earlier decree operates as an estoppel; but the circumstances require us to apply the rule we have cited from Electric Manuf'g Co. v. Edison Electric Light Co., ubi supra. And we may add that no case could afford a better practical illustration than this of the wisdom of the indisposition of courts to try anew the merits of patents on the crude and incomplete class of proofs frequently incident to motions for temporary injunctions.

The main defense in this case is that defendants' machine does not infringe the claim in issue. This machine is the same as the infringing machine in Herrick v. Leveller Co., ubi supra, with certain modifications explained by the defendants as follows:

'Complainants' machine comprises two pairs of toggle joints, each pair having an arm extending from the lower half or member of such toggle; a two-throw crank shaft arranged in rear of the plane of the upper and lower pivots of said toggles; a pitman connected with each of said cranks, and connected with said arm extending from said toggles; a treadle, which, when depressed, locks the driving pulley on its shaft to start the machine, by which starting the treadle is locked down so that the machine goes on to the end of the movement, and so when one shoe is put under pressure, and the other released and lowered, the machine then stops, provided the

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