Dickerson v. De La Vergne Refrigerating Mach. Co.

• Decision Date: 05 March 1888
• Citation: 35 F. 143
• Parties: DICKERSON et al. v. DE LA VERGNE REFRIGERATING MACHINE CO. et al.
• Court: U.S. District Court — Southern District of New York

35 F. 143

DICKERSON et al. v. DE LA VERGNE REFRIGERATING MACHINE CO. et al.

United States Circuit Court, S.D. New York.

March 5, 1888

Dickerson & Dickerson, for complainants.

Banning & Banning, (George Harding, Edmund Wetmore, and William A Jenner, of counsel,) for defendant De la Vergne Refrigerating Machine Company.

A. P Fitch, for defendant Ehret.

This is an application made by Edward N. Dickerson, Jr., trustee, and others, to restrain the De la Vergne Refrigerating Machine Company from manufacturing refrigerating machines alleged to be an infringement of letters patent No. 302,294, granted July 22, 1884, to Julius J. Suckert, under whom the complainants claim.

LACOMBE J.

This is an application for a preliminary injunction to restrain the manufacture and sale of refrigerating machines, which it is contended infringe several of the claims under letters patent No. 302,294, granted July 22, 1884, to Julius J. Suckert, and which have passed by mesne conveyances to the plaintiffs. The defendants qualifiedly dispute the validity of the patent and qualifiedly deny infringement. In other words, if the patent is construed as they insist it should be, they admit its validity, but assert that they do not infringe; if, however, it be construed as plaintiffs insist it should be, then defendants admit that their machines infringe, but assert that the patent is void for want of novelty.

The argument on the physics of the case has been adjourned till after examination of the other questions, but it has been sufficiently developed to show that on this branch of the case there arises a conflict susceptible of elaborate and extended discussion, and not determinable without careful deliberation. By this defense the validity of complainants' patent is questioned with sufficient directness to require them to establish to the satisfaction of the court that there is such a presumption in favor of its validity as will, under the decisions, warrant the issuing of a preliminary injunction.

Patents are granted after examination by, and under the allowance of, officials whose business it is to critically examine the applications therefor in connection with outstanding patents and the state of the art. The letters patent which evidence the favorable decision of these officials in that regard are prima facie valid. The experience of the courts, however, with these patent-office decisions seems not to have been altogether happy, and we find them repeatedly declining to concede that a presumption of validity arises from the unattended letters patent. 'Under the uniform ruling of the courts of the United States for more than half a century, if there has been no decision on the patent by a United States court, on the merits, the party is driven to show that his patent went into use, undisputed, for a sufficient time to raise a prima facie case in his favor. ' Manufacturing Co. v. White, 1 Fed.Rep. 604. And see White v. Manufacturing Co., 3 Fed.Rep. 161; Manufacturing Co. v. Charles Parker Co., 17 F. 240; DeVer Warner v. Bassett, 7 Fed.Rep. 468; Potter v. Muller, 2 Fish.Pat.Cas. 465; Tappan v. Bank-Note Co., Id. 195; Machine Co. v. Williams, Id. 135; North v. Kershaw, 4 Blatchf. 70. Careful search has not disclosed any decision of this circuit repudiating this rule as the guide to be followed upon motions for preliminary injunctions although in other circuits it is not always adhered to. Manufacturing Co. v. Deering, 20 F. 795; Foster v. Crossin, 23 F. 400. In the last-cited case Judge CARPENTER refers to two authorities in this circuit as in accord with his decision, but, upon examination, they will be found not inconsistant with rule above quoted. Thus, in Lantern Co. v. Miller8 Fed.Rep. 315, Judge SHIPMAN, it is true, granted a preliminary injunction. He held, however, that the plaintiffs must, upon such a motion, establish the infringement beyond reasonable doubt, and that, as such question often depends upon the proper construction of the patent, its claims should ordinarily have been construed by a court of competent jurisdiction, or should have been practically construed by the consent and acquiescence of that part of the public which is cognizant of the extent of the monopoly. Such construction he found in the case before him in a decision on part of the claims, and in the fact that in another suit an elaborate argument in support of the patent so impressed the judge who heard it that he required defendants to file a bond as the condition of refusing the injunction, that suit being subsequently settled by the payment of $210,000. 'I am satisfied,' says Judge SHIPMAN, 'that by virtue of all the recited decisions and the circumstances of this case, the question has been so far settled that I ought not to refuse an injunction upon the ground of non-adjudication. ' So, too, in Sugar Co. v. Sugar Co., 10 F. 835, Judge WALLACE speaks of the rule that a preliminary injunction would not be granted unless the right secured by the patent was fortified by evidence of an exclusive or recognized enjoyment, or by former adjudications, as 'relaxed in more recent practice.' Such relaxation, however, he finds only when the validity of the patent is not assailed, and the proof of infringement clear.

In the case at bar it cannot be said either that the validity of the patent is not assailed or that proof of infringement is clear, and there has not been a sufficiently long-continued, recognized, and exclusive enjoyment. Inasmuch, therefore, as the wholesome and salutary rule which has for half a century been followed in deciding applications for preliminary injunction in patent cases stands unqualified by reported decisions in this circuit, it will be accepted as controlling of this motion. To sustain their claim plaintiffs must therefore show an adjudication in their favor, or its equivalent. There is no such adjudication, but the plaintiffs contend that its equivalent is found in an interference decision, to which defendants were parties or privies. The letters patent in suit were issued to Suckert, July 22, 1884, upon an application filed December 3, 1883. Subsequently one Louis Block filed an application for a patent for improvements in refrigerating machines, and an interference was declared and contested in the patent-office between himself and Suckert. Block was in the employ of the De la Vergne Company, which paid the expenses of the interference, and was in fact the contesting party. The complainants claim that under these circumstances 'every question contested and necessary to be contested in that interference is, at least so far as a preliminary injunction is concerned, res adjudicata inter partes. ' The question raised by the interference was whether Suckert or Block was the prior inventor. That question was decided in favor of Suckert, and Block's application for a patent refused. Before the case came on for final hearing, Block moved for the suspension and dissolution of the interference, upon several grounds. The commissioner held that 'the motion could not be sustained-- First, because there was not sufficient showing why the motion had not been filed earlier, as contemplated by the rules; and, second, because the grounds are not such as would justify the approval of the motion. ' Because by this motion Block sought to question the validity of Suckert's invention, it is now claimed that defendants are estopped from denying such validity on this motion upon any defenses advanced, or within their knowledge at the time the patent-office decided in Suckert's favor.

It is not understood that the defendants dispute the entire validity of plaintiffs' patent. On the contrary, they admit its validity if it be construed according to their theory, and contend that only if it be given the construction plaintiffs put upon it, is it void for want of novelty. Therefore they insist that there is nothing in their present position at variance with the decision in the interference case. Whether this be so or not need not now by considered, unless it appears that there has been a decision in the interference case such as the court will accept as equivalent to an adjudication in support of the patent. As stated above, the courts long ago reached the conclusion that the decisions of the patent-office (being in most cases official opinions formed without the illumination derived from the vigorous encounter of private interests) were ordinarily unsatisfactory foundations upon which to base preliminary injunctions. There are cases, however, in which an application for a patent being in interference with some pending application or unexpired patent, a determination of the question of priority of invention is required by statute, (Rev. St. Sec. 4904,) and is made after an examination, in which the contesting parties have abundant opportunity to offer proof, and argue in support of their respective claims; and where, before final action,...