Columbia Wire Co. v. Freeman Wire Co.
| Decision Date | 23 December 1895 |
| Docket Number | 3,901. |
| Citation | 71 F. 302 |
| Parties | COLUMBIA WIRE CO. v. FREEMAN WIRE CO. et al. |
| Court | U.S. District Court — Eastern District of Missouri |
John M Holmes, E. H. Gary, and John R. Bennett, for complainant.
R. H Parkinson and W. B. Homer, for defendants.
This is an application for a preliminary injunction to restrain the defendants from making or using certain machines for the manufacture of barbed wire in infringement of complainant's patent, No. 365,723. While I have considered all the questions presented, so far as seems necessary for the purposes of this application, I do not consider it wise to do more now than merely state my conclusions on most of the many phases of the case. To entitle a complainant to a preliminary injunction in a suit for infringement of a patent, he should satisfy the court First, of the validity of his patent. This can be done by producing a favorable adjudication thereon by some court of concurrent jurisdiction, or by satisfactory proof that his monopoly under the patent has been recognized and acquiesced in by the public for such reasonable length of time as to inspire a strong conviction that its validity is not questioned. Second, of clear infringement by the defendants. If there is any substantial doubt on either of these propositions, no preliminary injunction ought, ordinarily, to be awarded. In passing on the application for a preliminary injunction in such case the court should also consider the effect on the business and interests of the parties by withholding or granting the relief prayed for, and any and all other circumstances affecting the equities of the situation.
Applying these principles to the case at bar, I am brought to the following conclusions:
First. There has been no adjudication of the validity of complainant's patent by any court of concurrent jurisdiction, but there has been such acquiescence in the monopoly of the complainant, under the patent, by all manufacturers and dealers in barbed wire and machines for its manufacture, as, added to the prima facie evidence arising from the grant, sufficiently establishes its validity for the purposes of this application.
Second. There is almost conclusive evidence of infringement by the defendants. The machines manufactured by defendants are according to the weight of evidence, substantially a counterfeit of the machines manufactured by and under complainant's patent.
Third. The evidence shows that by denying the application the complainant's business, which is already large and important, would be very seriously interfered with; and the defendants, who have not yet begun the manufacture of barbed wire with the machines which are the subject-matter of this controversy, would not be seriously affected in their present business by awarding the injunctive order.
Fourth. The evidence discloses a secrecy and stealth in the construction of the machines by the defendants which seem inconsistent with the consciousness on their part of entire rectitude in so doing. The evidence also shows that the defendants have no financial responsibility.
Unless, therefore, there are some affirmative considerations presented by the defendants which confer upon them a right to use the device of complainant's patent, or destroy the complainant's equity to maintain this suit, a preliminary injunction ought to be awarded.
Affirmative Defenses.
The main affirmative defense to this application rests upon a supposed right or license existing in the defendant Freeman Wire Company to have or manufacture the machines in question under the provisions of a contract executed by the Bates Machine Company, of date August 19, 1888, whereby it is claimed the last-named company, then or soon after the owners of the patent in controversy, agreed to 'furnish to the Freeman Wire Company,' the complainant herein 'such a number of machines as they desire for their own use at present or hereafter. ' It is very doubtful if this contract has any legal validity. On its face, no duty or obligation is cast upon the Freeman Wire Company to take any number of machines, or to do anything except to pay for such as they might desire. It seems to me to be void for want of mutuality. See Lawson, Cont. Sec. 97, and cases cited. If there were no other considerations, I believe this view of the contract ought to dispose of it as a justification for defendants; but there are other views to be taken of it which bring us to the same conclusion. The defendant company was at the time of the execution of this contract, about to inaugurate a business of manufacturing barbed wire in a shop then being equipped by it in East St. Louis, Ill., and needed machines to equip this shop for business. It was under such circumstances that the contract was executed. Considering these circumstances, and the phraseology of the contract itself, which contemplates furnishing such machines as the defendant desires (that is, then desires), it seems to me that the natural construction to be given the contract would limit the obligation of the Bates Company to furnish such machines as the defendant the Freeman Wire Company required for the purpose of equipping that shop. The defendants claim that under this contract the Freeman Wire Company could, at any time or times after its execution, and can now, demand from the plaintiff, who is the successor to the Bates Company in the ownership of the patent under which said machines were to be manufactured, any number of its machines, for use anywhere; and, if they are not supplied, that it can proceed to manufacture the same. This, in my opinion, is an unreasonable interpretation of the contract. It would be, in effect, a conveyance of the entire monopoly of the patent to the Freeman Wire Company. But there are still other reasons for not justifying the defendants in their present claims under this contract. In June, 1889, the defendant Freeman Wire Company sold and transferred to a newly-organized company by the name of the Freeman Wire & Iron Company all its assets and property, including, presumably, this contract; and discontinued business. It is true that...
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