Buckeye Incubator Co. v. Boling, 5564.

• Decision Date: 13 February 1931
• Docket Number: No. 5564.,5564.
• Parties: BUCKEYE INCUBATOR CO. et al. v. BOLING.
• Court: U.S. Court of Appeals — Sixth Circuit

46 F.2d 965 (1931)

BUCKEYE INCUBATOR CO. et al. v. BOLING.

No. 5564.

Circuit Court of Appeals, Sixth Circuit.

February 13, 1931.

Newton D. Baker, of Cleveland, Ohio (Baker, Hostetler & Sidlo, of Cleveland, Ohio, Butler & Carlile, of Columbus, Ohio, and Fay, Oberlin & Fay, of Cleveland, Ohio, on the brief), for appellants.

Thomas H. Branaman, of Brownstown, Ind. (C. E. Blanchard and R. D. Tou Velle, both of Columbus, Ohio, on the brief), for appellee.

Before DENISON, MOORMAN, and HICKENLOOPER, Circuit Judges.

MOORMAN, Circuit Judge.

In 1924 the appellants, Buckeye Incubator Company and Samuel B. Smith, sued the appellee, Boling, in the United States District Court for the District of Indiana for infringement of the Smith patent, No. 1,262,860. The defenses set up in the answer were invalidity and noninfringement. Upon the trial the defense of invalidity was abandoned and the cause submitted to and determined by the court upon the issue of infringement alone. Upon that issue there was a decree dismissing the bill. The decree so rendered was never appealed from. Subsequently Boling manufactured and sold incubators to the Nampa Hatcheries at Boise, Idaho, Mortimer P. Lee at St. Michael, Md., and Herbert A. Schimelpfenig in Minnesota. The Nampa Hatcheries also built an incubator of its own which was different in some respects from the incubator which it had purchased from Boling. Thereupon the Buckeye Incubator Company and Smith brought suit in the appropriate District Courts against each of the three mentioned customers, alleging in each case that the defendant had made and/or used and was still using an incubator which was an infringement of the Smith patent. The present suit was brought by Boling to enjoin the further prosecution of those suits on the ground that the defendants therein were his customers and were protected from molestation by such suits by the decree of noninfringement in the Indiana case. Upon the hearing in the court below, a decree was entered perpetually enjoining the appellants from the further prosecution of the cases, 33 F.(2d) 347.

It is conceded by the appellants that the Indiana decree protects Boling and his customers against further suits for the use of machines substantially identical with the machine that was held not to infringe by the Indiana court, and further, that the injunction in the present case was rightly issued if the incubators sold by Boling and involved in the three District Court cases did not embody substantial changes in the Indiana incubator in the direction of infringement. Kessler v. Eldred, 206 U. S. 285, 27 S. Ct. 611, 51 L. Ed. 1065; Hart Steel Co. v. Railroad Supply Co., 244 U. S. 294, 37 S. Ct. 506, 61 L. Ed. 1148.

The Smith patent has been the subject of much litigation.¹ We do not regard a discussion of the several cases dealing with it essential to a decision of the question here presented. In the brief of counsel for appellants there are set out eight structural differences between the Indiana machine and the later machines of Boling which are said to effect a substantial change in the direction of infringement. We put aside all these changes as unsubstantial, except the space slats in the central corridor of the later constructions. The Indiana device had space slats in the central corridor for less than one-fourth of the height of the egg trays. These...