Goshen Mfg. Co. v. Hubert A. Myers Mfg. Co.

• Decision Date: 14 April 1914
• Docket Number: 2027.
• Citation: 215 F. 594
• Parties: GOSHEN MFG. CO. v. HUBERT A. MYERS MFG. CO. et al.
• Court: U.S. Court of Appeals — Seventh Circuit

215 F. 594

GOSHEN MFG. CO. v. HUBERT A. MYERS MFG. CO. et al.

No. 2027.

United States Court of Appeals, Seventh Circuit.

April 14, 1914

Rehearing Denied May 12, 1914.

Fred L Chappell, of Kalamazoo, Mich., for appellant.

V. H Lockwood, of Indianapolis, Ind., for appellees.

Before BAKER, KOHLSAAT, and MACK, Circuit Judges.

MACK Circuit Judge.

The first and decisive question raised in this appeal from a decree dismissing a bill in equity after a full hearing is whether a court of equity or a court of law is the proper forum in which to determine complainant's rights.

The bill, filed October 3, 1910, charged that defendants infringed letters patent for hoisting pulleys, No. 876,991 that they 'still continue so to do,' and that notice thereof and request to desist were given and disregarded. Defendants, after setting up, among other defenses, invalidity of patent and noninfringement, state in their answers that defendant Myers had not been connected with the defendant company in any way, as director, officer, stockholder, or employe, since December, 1909, that defendant company 'has not manufactured any hoisting device of any kind whatsoever since the month of October, 1909, and that since the month of March, 1910, this defendant has not sold or had for sale any hoisting devices of any sort whatsoever, and that the complainant had knowledge of these facts prior to the bringing of this suit for an injunction. ' They further deny that they had avowed any determination to continue to manufacture or sell any such hoisting machines.

It is elementary that for infringement of a patent, as for any trespass, damages are recoverable by action at law; that, as this remedy is ordinarily adequate, a court of equity will not lend its aid to enjoin further infringement, unless such further infringement be either actually threatened or reasonably apprehended. Kennicott Water Softener v. Bain, 185 F. 520, 107 C.C.A. 626; Chadeloid Co. v. Jackson, 203 F. 993, 122 C.C.A. 293. As this court said in the Bain Case, supra:

'The question is a question of fact, viz.: Assuming that the patent is valid, and that appellee had infringed, and that the infringement had ceased before the bill was filed, * * * did appellant, when the bill was filed, have any well-grounded apprehension that the infringement would be repeated?'

The letters patent in question were applied for in 1906, were issued on January 21, 1908, to one Boyer, complainant's president, as assignee of defendant Myers, and were assigned, together with all rights of action for infringement, in September, 1910, to complainant, after the action by defendant company against Boyer, hereinafter referred to, had been begun.

In 1907, defendant Myers induced some business men of Warsaw, Ind., to join with him in organizing defendant corporation for the manufacture of swings, ladders, and hay carriers. At that time he showed a hay carrier with a hoisting device, which he stated was an invention different from and superior to that theretofore sold by him to Boyer. In 1908 he applied for letters patent on this hoisting device. They were issued in December, 1909, No. 942,735, and are owned by the defendant company.

This company began manufacturing only ladders and lawn swings. It made its first hay carriers, 25 in number, in the spring of 1908. In the fall of that year it prepared to make 500 more. Three hundred of these were sold that winter and spring; the other 200 were never completed by defendant company, but were disposed of as hereinafter stated. In August, 1909, it contracted to manufacture and sell to one Diedrich 500 additional carriers for the season of 1910.

In October, 1909, however, complainant published a newspaper advertisement and sent direct notice to the defendant company, claiming that its carriers infringed upon the complainant's patent rights. As a result of this notice and the publication of the advertisement, defendant company was unable to obtain additional capital from parties with whom negotiations were then pending, or to secure bank loans thereby rendering it impossible for it to go on in the business. It settled its contract obligations with Diedrich by permitting him to use its shop and materials to...