Hurd v. James Goold Co.

• Decision Date: 10 February 1913
• Docket Number: 117.
• Citation: 203 F. 998
• Parties: HURD et al. v. JAMES GOOLD CO.
• Court: U.S. Court of Appeals — Second Circuit

203 F. 998

HURD et al. v. JAMES GOOLD CO.

No. 117.

United States Court of Appeals, Second Circuit.

February 10, 1913

This cause comes here upon appeal from an order granting a preliminary injunction. The suit is one for infringement of the well-known Grant patent for rubber-tired wheels. The defendant is a dealer in this circuit, who buys his tires from the Goodyear Company at Akron, Ohio, and affixes them to vehicles here. The opinion of the District Judge will be found in 197 F. 756.

H. A Toulmin, of Washington, D.C., for appellant.

W. E Ward, of New York City, for appellees.

Before LACOMBE, COXE, and NOYES, Circuit Judges.

PER CURIAM.

It is unnecessary to recite the history of the litigation under this patent or to set forth in detail the facts of this case. Reference may be made to the opinion in the court below and to our certification of questions to the Supreme Court in the suit of the same plaintiff against Seim and Reissig, December 7, 1911. 191 F.R. 832, 112 C.C.A. 346. The questions certified have not yet been reached for argument in the Supreme Court.

It is manifest that the answers to those questions will have a controlling influence on the determination of this suit. They deal with the rights which complainant may have in the territory covered by his earlier exclusive license, and with the status of tires made in the circuits where the patent has been held invalid under the opinion in Kessler v Eldred, 206 U.S. 285, 27 Sup.Ct. 611, 51 L.Ed. 1065, in view of the fact that the Supreme Court has held this patent valid and infringed by such tires in Diamond Rubber Co of New York v. Consolidated Rubber Tire Co., 220 U.S 428, 31 Sup.Ct. 444, 55 L.Ed. 527. The circumstance that we certified these questions to the Supreme Court indicates that we were in doubt as to the answers to be given. While such a doubt exists as to the fundamental propositions on which complainant must rely, we think a preliminary injunction should not be granted, and for that reason have concluded to reverse the order appealed from. Inasmuch, however, as a favorable answer to those questions might induce complainant to bring the matter again before the District Court, in this cause, we think it desirable to express an opinion on some of the other questions which have been argued here.

Complainant has joined with himself two corporations who hold the legal title to the patent. These corporations have been enjoined in the Sixth circuit from maintaining suits for infringement. These injunctions, of course, bind the corporations against which they were issued; but we cannot see how they can operate to interfere with Hurd's legal rights (assuming that the answers to the certified questions indicate that he has such rights) or with the course which equity practice indicates he should follow in vindication of those rights. That practice authorizes him, as holder of an exclusive territorial license, to present his licensors as co-complainants, even...