Hurd v. James Goold Co.

• Decision Date: 12 July 1912
• Citation: 197 F. 756
• Parties: HURD et al. v. JAMES GOOLD CO.
• Court: U.S. District Court — Northern District of New York

197 F. 756

HURD et al. v. JAMES GOOLD CO.

United States District Court, N.D. New York.

July 12, 1912

Walter E. Ward, of Albany, N.Y., for the motion

H. A Toulmin, of Dayton, Ohio, opposed.

RAY District Judge.

The validity of the Grant patent, No. 554,675, dated February 18 1896, for rubber tired wheel, has been declared by the Supreme Court of the United States in Diamond Rubber Co of New York v. Consolidated Rubber Tire Co. and Rubber Tire Wheel Co. (April 10, 1911) 220 U.S. 428, 31 Sup.Ct. 444 55 L.Ed. 527. Prior to this decision the lower courts had differed as to the validity of this patent, and while in the Second circuit it had been held valid, in the Indiana circuit (Circuit Court) and in the Sixth circuit (Goodyear Tire & Rubber Co. v. Rubber Tire Wheel Co., 116 F. 363, 53 C.C.A. 583), the patent was held invalid. Also in Rubber-Tire Wheel Co. v. Victor Rubber-Tire Co., 123 F. 85, 59 C.C.A. 215, which followed 116 F. 363, 53 C.C.A. 583, the patent was held invalid. In the circuits where the patent was held invalid, infringers (under the decision of the Supreme Court of the United States), relying on the decisions of the courts in their respective circuits, continued to make the rubber tires and wheels, and still continue to do so, and to vend same to parties residing in other circuits, notably the Second circuit, where the patent has always been held valid, and these parties use and sell same, and purchasers from these parties use and sell same. The contention is that the Kokomo Company is protected by the Indiana decree, and that the Goodyear Rubber & Tire Company is protected by the decree of the Circuit Court of Appeals referred to, in making and selling the infringing wheels and tires, as such decrees are valid and in full force, not having been reversed, and that in spite of the decision of the Supreme Court in 220 U.S. 428, 31 Sup.Ct. 444, 55 L.Ed. 527, rubber tired wheels and rubber tires made in such circuits by said companies and sold there f.o.b. to parties residing in the Second circuit and who there use and vend same, are freed from the monopoly of the patent, and that the use and sale of such articles (which otherwise infringe) in the Second circuit by such purchasers and those who purchase from them, is not and cannot be an infringement. The backbone of this contention is that the decision of the Supreme Court of the United States holding this patent valid and the tires and wheels made by the Kokomo Company and the Goodyear Tire & Rubber Company infringements of such patent, if not freed from the monopoly by the unreversed decrees referred to, cannot be invoked by the owner of the patent or his licensee (James D. Hurd being a licensee) as against articles made by such companies, as they are protected by the said unreversed decrees to which full faith and credit must be given everywhere, as to articles made and sold by them by whomsoever used and sold. That is, the contention is that the decision of the Supreme Court of the United States referred to has no force or effect whatever anywhere in the United States as to the wheels and tires made by the companies referred to according to the patent referred to.

I have already held and adhere to the decision that the decision of the Supreme Court of the United States in the case referred to (220 U.S. 428, 31 Sup.Ct. 444, 55 L.Ed. 527) is the supreme law of the land as to the validity of the Grant patent, and that it protects Hurd in his rights against all persons who in his territory, New York, make and sell, or make or sell, infringing wheels and tires or tires, whether made and put on the market by the Kokomo Company or by the Goodyear Tire & Rubber Company. If Hurd, who had his license before the decrees referred to were pronounced, and who was not a party thereto, is not protected by the decision of the Supreme Court, his license is of little value. If the Kokomo Company and the Goodyear Tire & Rubber Company may make and sell and supply the market with wheels and tires made according to the patent everywhere, by virtue of the decrees referred to they are on an equality with the owner of the patent (aside from granting licenses) and have equal rights in New York State with Hurd, sole licensee for such territory. I find myself unable to assent to the contention of the Kokomo Company, the Goodyear Tire & Rubber Company, and the defendant here which uses and sells the tire made by said Goodyear Company.

The James Goold Company presents some new questions as an answer to the granting of the injunction prayed for. First, it says that the James Goold Company has been buying, selling, and using these solid rubber tires since January, 1901, openly and to the knowledge of Hurd, the complainant, and that...