Carnegie Steel Co. v. Colorado Fuel & Iron Co.
| Decision Date | 11 November 1908 |
| Docket Number | 2,632. |
| Citation | 165 F. 195 |
| Parties | CARNEGIE STEEL CO. v. COLORADO FUEL & IRON CO. |
| Court | U.S. Court of Appeals — Eighth Circuit |
Mark Breeden, Jr. (Thomas W. Bakewell and Charles MacVeagh, on the brief), for appellant.
Fred Herrington (David C. Beaman and Cass E. Herrington, on the brief), for appellee.
Before VAN DEVANTER and ADAMS, Circuit Judges, and PHILIPS, District judge.
This was a bill brought by the Carnegie Steel Company against the Colorado Fuel & Iron Company for an injunction and account claimed to be the appropriate remedy for the infringement of a patent. The bill was filed in the court below on March 12 1906. It made a showing that the patent would expire by its own limitation on June 3, 1906; that the public generally had recognized and acquiesced in the validity of the patent, and that its validity had been sustained by the judgment of a court of concurrent jurisdiction in a contested action on its merits; that such judgment had been affirmed by the Supreme Court of the United States, and that the defendant was infringing the claims of the patent. The prayer of the bill was for a preliminary and permanent injunction and for the assessment of complainant's damages, including the profits earned by the defendant in the course of its infringing operations. The complainant filed no special motion for a preliminary injunction, and none was granted. On June 4th, the rule day when defendant was first required to plead to the bill, the patent then having expired, a demurrer was filed, challenging the jurisdiction of the court in equity to grant the only relief then available to complainant, namely, a decree for an account of profits and damages. This demurrer was sustained by the court below, the bill was dismissed, and complainant brings the case here by appeal for re-examination.
It appears that in the usual course of practice the complainant if otherwise entitled to a preliminary injunction, might have secured it before the patent expired. In view of the foregoing facts, the decisive question is whether the Circuit Court acquired jurisdiction to proceed with the case and grant complete relief by way of an accounting for profits and damages, notwithstanding the fact that no preliminary injunction had been actually granted, and no injunction preliminary or permanent, could have been granted after June 4, 1906, when the patent expired, and when defendant was first called upon to make its defense. It is well settled that the award of an account for profits and damages is usually incidental to some main equity which gives the patentee his standing in court, like the right to an injunction to restrain continuance of infringement, or some other right distinctly equitable in its nature, and therefore that equity will not entertain a bill for a naked account of profits and damages against an infringement.
Root v. Railway Co., 105 U.S. 189, 215, 26 L.Ed. 975; Deere & Weber Co. v. Dowagiac Mfg. Co., 82 C.C.A. 351, 153 F. 177. If, therefore, the present suit, which presents no other main equity than for injunctive relief against an infringement, had been instituted after the expiration of the patent, the Circuit Court would have had no jurisdiction in equity to take an account; and defendant contends that because, in the due course of procedure, the patent having then expired, no injunctive relief could have been granted at the final hearing, and because no motion was made for a preliminary injunction, and none was actually granted before the expiration of the patent, this suit became one in fact for an account of profits and damages only, and falls within the principles announced in the foregoing cases, denying equitable jurisdiction for such purposes.
We are unable to adopt that view. When this suit was instituted the patent had nearly three months to run, and, as observed by Mr. Justice Brewer, then Circuit Judge, in Westinghouse Air Brake Co. v. Carpenter, 32 F. 484:
'It may be and oftentimes is true that the last years or months of a patent are most valuable to a patentee by reason of the fact that the wide-spread information in respect to its value and general introduction into use has created the largest demand for it.'
In the present case the right to a preliminary injunction according to the course and principles of equity was made to clearly appear by the bill. There had been a conclusive and final adjudication of complainant's title to the patent and of its validity by the Supreme Court of the United States after a lengthy and spirited contest on the merits of the case (Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 22 Sup.Ct. 698, 46 L.Ed. 968), and there was a clear and unequivocal charge of infringement. In such cases a preliminary injunction, on the motion of complainants, and in the absence of new evidence of a controlling character, is granted quite as a matter of course. Electric Mfg. Co. v. Edison Electric Light Co., 10 C.C.A. 106, 61 F. 834; New York Filter Mfg. Co. v. Jackson (C.C.) 91 F. 422. We may therefore confidently conclude that the case made by the bill well warranted the grant of a preliminary injunction, and that one probably would have been granted, had a motion to that effect been made.
The suit was then one of equitable jurisdiction when instituted and under the rules and practice in equity there can be no doubt there was ample time to award a preliminary injunction before the patent expired. These facts, we think, conferred jurisdiction for all purposes, not only for the preliminary injunctive relief, but also for the incidental accounting. Defendant's counsel place special reliance upon the cases of Root v. Railway Company, 105 U.S. 189, 26 L.Ed. 975, and Keyes v. Eureka Mining Co., 158 U.S. 150, 15 Sup.Ct. 772, 39 L.Ed. 929. The former is a leading case establishing the rule that a bill filed after the patent expires cannot be maintained for an account of profits and damages only, and affords...
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