Crown Cork & Seal Co. of Baltimore City v. Brooklyn Bottle Stopper Co.
|29 July 1913
|206 F. 473
|CROWN CORK & SEAL CO. OF BALTIMORE CITY v. BROOKLYN BOTTLE STOPPER CO. et al. SAME v. AMERICAN CORK SPECIALTY CO. et al.
|U.S. District Court — Eastern District of New York
Philipp Sawyer, Rice & Kennedy, of New York City (James Q. Rice, of New York City, of counsel), for complainant.
Livingston Gifford, of New York City (Robert B. Killgore, of New York City, of counsel), for defendants.
Applications for attachment of the defendants in the above-entitled actions for contempt by violation of the injunctions issued herein, pursuant to decrees of December 7, 1912, have been considered upon affidavits, as well as the record in the cases themselves, and have been elaborately argued and briefed. Appeals from the decrees have been taken, but not yet heard, and it appears that the defendants have, since the entry of those decrees, been using machines which they allege are constructed and operated in accordance with a method patent issued to one A. Bogdanffy, under No. 1,053,898, on the 18th day of February, 1913, and a machine patent to Bogdanffy, issued on the 18th day of February, 1913, No 1,053,565.
Bogdanffy is a mechanician in the employment of a company in Brooklyn whose interests are allied with those of the defendants in these actions. Prior to the actual issuance of his patent the defendants used his form of appliance, with his permission, and knew during the trial of this action of the Bogdanffy suggested changes.
The affidavits in opposition show that the solicitor for the defendants, as well as the solicitor engaged in obtaining Bogdanffy's patents, and other solicitors of great reputation in New York and other places, rendered opinions, prior to the decree in this action, to the effect that the device shown in the Bogdanffy patents was not an infringement of the Painter and Wheeler patents, unless those patents be construed so broadly as to render them invalid. Again, after the decree was rendered herein, other solicitors of like standing expressed to the defendants the opinion that the use of the Bogdanffy device and method would not render the defendants liable for contempt.
Attention has been called by the defendants to the decision in this district in the case of Onderdonk v. Fanning (C.C.) 2 Fed. 568, in which the court said, upon motion to punish for contempt, that issuance of a patent since the decree covering the alterations complained of indicated that the changes were not so plainly colorable as to entitle the plaintiff to an attachment, and that the questions should not be disposed of upon motion.
In Wirt v. Brown (C.C.) 30 F. 187, this court again held that a change of construction, with the obtaining of a patent for the changed form, made it necessary to bring an independent suit.
In Bonsack Mach. Co. v. National Cigarette Co. (C..c) 64 F. 858, Judge Lacombe held that the weight of authority was clearly against the proposition that where a machine differed in some respects from that passed upon in the case, and was made under a patent issued subsequent to the decree, the question of infringement should not be settled upon motion to punish for contempt.
On the other hand, the complainant cites the cases of Blair v. Jeannette-McKee Glass Works (C.C.) 161 F. 355, Queen v. Green (C.C.) 170 F. 611, Lepper v. Randall, 113 F. 627, 51 C.C.A. 337, and Norton v. Jensen, 49 F. 859, 1 C.C.A. 452, as authority for the proposition that where a change is merely colorable, or where the variation is not such as to constitute new discovery, or where the party is merely making use of the doctrine of equivalents, or of immaterial changes, without other purpose than to evade the injunction, the questions raised by such acts should be passed upon in connection with the interpretation of the decree in the original action, and that the complainant should not be put to the expense of an independent suit.
The present case would fall plainly under the decision of Onderdonk v. Fanning, supra, and National Harrow Co. v. Hanby (C.C.) 54 F. 493, which held that the granting of a patent is prima facie proof that the machine covered by the patent does not infringe any other patent within the knowledge of the Patent Office, if it were not for the fact that the Bogdanffy patents are upon their face a claim for improvements over the art which the record makes plain was embodied in the Wheeler and Painter patents considered in this action, and if Bogdanffy's machine patent were not merely a new combination, or a new form of device, dependent upon the methods and the right to use a combination of this nature covered by Painter and Wheeler.
Bogdanffy's method patent presents a somewhat broader question, for it is difficult to see how a new combination of parts, or an improvement in a machine, even if patentable, can of itself furnish a new method, and be more than mere description of the functions performed by the machine in doing work in the new way.
Bogdanffy's method is a claim that he secures better results by changing the order of certain steps and processes, and for the purpose of this motion we need not consider whether he thereby shows sufficient patentable novelty to obtain a patent as for an improved process or method.
The real question is that suggested in Hardwick v. Masland (C.C.) 71 F. 887, and Cantrell v. Wallick, 117 U.S. 689, 6 Sup.Ct. 970, 29 L.Ed. 1017, in which case the Supreme Court said:
'Two patents may both be valid, when the second is an improvement on the first, in which event, if the...
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