Gamewell Fire Alarm Telegraph Co. v. Hackensack Improvement Commission

• Decision Date: 20 May 1912
• Citation: 199 F. 182
• Parties: GAMEWELL FIRE ALARM TELEGRAPH CO. v. HACKENSACK IMPROVEMENT COMMISSION.
• Court: U.S. District Court — District of New Jersey

199 F. 182

GAMEWELL FIRE ALARM TELEGRAPH CO. v. HACKENSACK IMPROVEMENT COMMISSION.

United States District Court, D. New Jersey.

May 20, 1912

Edmonds & Edmonds, for the motion.

Charles K. Offield and Albert H. Graves, opposed.

CROSS District Judge.

The application for a preliminary injunction in the above-entitled cause is founded upon a bill of complaint which alleges that the defendant is about to install and use in connection with its fire alarm system, certain fire alarm or signal boxes which infringe complainant's patent to one Ruddick, No. 553,873, recently sustained by this court after an arduous and protracted contest in a cause between the complainant herein and the mayor and common council of the city of Bayonne. 194 F. 147. That action was admittedly defended, as is also the present one, by the Star Electric Company, the manufacturer of the alleged infringing boxes. The complainant's patent will expire within a few months. The rule to show cause why a preliminary injunction should not issue, pursuant to the prayer of the bill, was supported by a number of ex parte affidavits, to which opportunity was afforded the defendant to reply. No direct reply thereto was made, but it was agreed by counsel, at the argument of the rule to show cause, that certain affidavits and exhibits used by the defendant in the case above mentioned, wherein the complainant's patent was sustained, on an application by it for a rehearing, might be considered on this application as fully as if the same were made and entitled herein.

The defendant relies upon a prior use to invalidate the patent in suit, and in doing so sets up a defense which was not presented in the case wherein the patent in suit was sustained. The rule applicable to this case in its present situation is that the only matters which can be considered are the question of infringement and whether the evidence of prior use is of such a conclusive character that, had it been before the court in the case in which the patent was sustained, the court would probably have reached a different conclusion. The burden of proof in this respect is upon the defendant, and every reasonable doubt must be resolved against it. Elite Pottery Co. v. Dececo Co., 150 F 581, 80 C.C.A. 567. The rule just referred to is fully stated and confirmed by numerous authorities in Edison Electric Light Co. v. Beacon Vacuum Pump & Electrical Co. (C.C.) 54 F. 678, wherein Judge Colt says:

'The general rule is that where the validity of a patent has been sustained by prior adjudication, and especially after a long, arduous, and expensive litigation, the only question open on motion for a preliminary injunction in a subsequent suit against another defendant is the question of infringement; the consideration of other defenses being postponed until final hearing. Brush Electric Co. v Accumulator Co. (C.C.) 50 F. 833; Robertson v. Hill, 6 Fish.Pat.Cas. 465 (Fed. Cas. No. 11,925); Cary v. Domestic Co. (C.C.) 27 F. 299; Coburn v. Clark (C.C.) 15 F. 804; Mallory Manufacturing Co. v. Hickok (C.C.) 20 F. 116; Green v. French, 4 Ban. & A. 169; Blanchard v. Reeves, 1 Fish.Pat.Cas. 103 (Fed. Cas. No. 1,515); Goodyear v. Rust, 6 Blatchf. 229 (Fed. Cas. No. 5,584); Cary v. Manufacturing Co. (C.C.) 24 F. 141; Sargent Manufacturing Co. v. Woodruff, 5 Biss. 444 (Fed. Cas. No. 12,368); Kirby Bung Manufacturing Co. v. White (C.C.) 1 McCrary, 155, 1 F. 604; Putnam v. Bottle Stopper Co. (C.C.) 38 F. 234; Consolidated Bunging Apparatus Co. v. Peter Schoenhofen Brewing Co. (C.C.) 28 F. 428; Newall v. Wilson, 2 De Gex, M. & G. 282; Davenport v. Jepson, 4 De Gex, F. & J. 440; Bovill v. Doodier, 35 Beav. 427.

'The only exception to this general rule seems to be where the new evidence is of such a conclusive character that, if it had been introduced in the former case, it probably would have led to a different conclusion. The burden is on the defendant to establish this, and every reasonable doubt must be resolved against him. Ladd v. Cameron (C.C.) 25 F. 37; Cantrell v. Wallick, 117 U.S. 689, 6 Sup.Ct. 970 (29 L.Ed. 1017); Winans v. Eaton, 1 Fish.Pat.Cas. 181 (Fed. Cas. No. 17,861); Machine Co. v. adams, 3 Ban. & A. 96; Spring Co. v. Hall (C.C.) 37 F. 691; Lockwood v. Faber (C.C.) 27 F. 63; Glaenzer v. Wiederer (C.C.) 33 F. 583; Cary v. Spring Bed Co. (C.C.) 26 F. 38.'

The above rule was followed by ...