Kennicott Water Softener Co. v. Bain

• Decision Date: 10 January 1911
• Docket Number: 1,701.
• Citation: 185 F. 520
• Parties: KENNICOTT WATER SOFTENER CO. v. BAIN.
• Court: U.S. Court of Appeals — Seventh Circuit

185 F. 520

KENNICOTT WATER SOFTENER CO. v. BAIN.

No. 1,701.

United States Court of Appeals, Seventh Circuit.

January 10, 1911

P. C Dyrenforth, for appellant.

Joseph A. Minturn and Frank W. Woerner, for appellee.

Before GROSSCUP, BAKER, and SEAMAN, Circuit Judges.

GROSSCUP Circuit Judge, delivered the opinion.

The bill seems to have been dismissed because it appeared satisfactorily to the trial judge that, at and before the filing of the bill, appellee had, in good faith, ceased the use of the alleged infringing device, of which the appellant had sufficient notice-- that, at the time the bill was filed appellee was not employing the infringing device designated in the bill, or anything that infringed appellant's patent, and had not been for some three months previously-- and that there was nothing in the attitude of appellee that justified appellant in believing that the discontinuance was not in good faith. The bill, in our opinion, was properly dismissed.

Applications for injunctions in patent cases are not, in this respect different from applications for injunctions in equity generally; that is to say, injunction is not the appropriate remedy to procure relief for past injuries, and is to be used only in the prevention of further injury when further injury is actually threatened. High on Injunctions, Sec. 23; General Electric Co. v. New England Mfg. Co. et al (C.C.) 123 F. 310; Odell v. Stout (C.C.) 22 F. 159. In Odell v. Stout, supra, concurred in by Mr. Justice Matthews, then of the Supreme Court, Judge Sage used the following language:

'If a defendant has, before suit brought, abandoned the manufacture and sale of the infringing machine, and the Court is satisfied that the abandonment was in good faith and final, the injunction ought to be refused, upon the principles of equity applicable to injunction.'

Appellant, however, takes the position that a well-grounded apprehension of infringement may, in a proper case, alone suffice to support a bill quia timet for an injunction, without any established breach; that the patent being valid, the fact of a breach has ordinarily been held sufficient to justify an injunction because of a well-grounded apprehension of a repetition of the infringement; and to sustain this contention cites Woodworth v. Stone, 3 Story, 752, Fed. Cas. No. 18,021; Facer v. Midvale Steel-Work Co. (C.C.) 38 F. 231; Celluloid Mfg. Co. v. Arlington Mfg. Co. (C.C.) 34 F. 324; Brookfield et al. v. Elmer Glass Works (C.C.) 132 F. 312; Sawyer Spindle Co. et al. v. Turner (C.C.) 55 F. 979; Kane v. Candy Co. (C.C.) 44 F. 287; Matthews & Willard Mfg. Co. v. National Brass & Iron Works (C.C.) 71 F. 518; Cayuta Wheel & Foundry Co. v. Kennedy Valve Mfg. Co. (C.C.) 127 F. 355; Potter v. Crowell, 3 Fish.Pat.Cas. 112, Fed. Cas. No. 11,323; New York Filter Mfg. Co. v. Chemical Building Co. (C.C.) 93 F. 827; Winchester Repeating Arms Co. v. American Buckle & Cartridge Co. (C.C.) 54 F. 703; and General Electric Mfg. Co. v. New England Electric Mfg. Co., 128 F. 738, 63 C.C.A. 448. From this position, as a proposition of law, we do not dissent.

Indeed, from the respective positions taken by counsel for both parties, there seems to be no question of law involved. 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 (a fact clearly proven), did appellant, when the bill was filed, have any well-grounded apprehension that the infringement would be repeated?

Appellant's patent relates to an improvement in an old art. The function of the machine is to soften water. One of these machines was installed in the Standard Oil Company's pipe line station at Montpelier, Indiana, where appellee lived. Appellee conducted a laundry, and some time in May 1907, there was put up and put into operation, in his laundry, a machine embodying the appellant's invention-- said machine remaining in operation until the beginning of August of that year. This machine was put up and operated behind closed doors. Early in August of that year, appellant got access to it through a detective,...