Keystone Trading Co. v. Zapota Mfg. Co.

• Decision Date: 06 January 1914
• Docket Number: 1,109.
• Citation: 210 F. 456
• Parties: KEYSTONE TRADING CO. v. ZAPOTA MFG. CO. et al.
• Court: U.S. District Court — Eastern District of Pennsylvania

210 F. 456

KEYSTONE TRADING CO. v. ZAPOTA MFG. CO. et al.

No. 1,109.

United States District Court, E.D. Pennsylvania.

January 6, 1914

Henry P. Brown, of Philadelphia, Pa., and Briesen & Knauth, of New York City, for plaintiff.

Henry N. Paul, Jr., and Joseph C. Fraley, both of Philadelphia Pa., for defendants.

THOMPSON District Judge.

The bill sets out that the plaintiff is the owner, by assignment from the defendant James D. Darling, of the three following patents issued to him: No. 907,748, issued December 29, 1908; No. 947,635, issued January 25, 1910; and No. 1,005,001 issued October 3, 1911-- for the invention of certain new and useful improvements in the manufacture of chewing gum, and alleges infringement by the defendants of the above patents. It is further alleged in the bill that the inventions covered by patents Nos. 947,635 and 1,005,001 are capable of conjoint use, and that the product obtained therefrom is covered by patent No. 907,748, and that the inventions covered by the three patents are so conjointly used by the defendants; that the defendants claim to operate and manufacture under the protection of and own letters patent No. 1,040,285 issued to Darling on October 8, 1912, for the manufacture of chewing gum; and that the latter patent interferes with the patents owned by the plaintiff. The plaintiff prays inter alia for an injunction against the alleged infringement and that patent No. 1,040,285 be declared void.

In the separate answer of the defendant Darling, he denies infringement either jointly with the other defendant or individually; denies that the inventions covered by patents Nos. 947,635 and 1,005,001 are capable of conjoint use denies that the product obtained therefrom is covered by letters patent No. 907,748; denies that the inventions covered by the three patents have been used jointly by him; and denies that patent No. 1,040,285 interferes with the other patents in suit.

The Zapota Manufacturing Company in its answer denies that Darling was the inventor of or entitled to the patents for the invention covered by the plaintiff's patents; denies the infringement; denies that the plaintiff's patents are capable of conjoint use, and denies that the patents have been used by it either separately or conjointly; denies the alleged interference; and alleges that the plaintiff's patents are void because of prior use and prior art. An ex parte restraining order was issued on motion of the plaintiff November 24, 1913, restraining the defendants from disposing of, selling, transferring, or attempting so to do letters patent No. 1,040,285, or any right, title, interest, or license thereunder, without leave of court first obtained upon notice to the plaintiff's solicitor. The plaintiff in support of the restraining order and of the present application for a preliminary injunction bases its right to the relief prayed for upon section 4918, Revised Statutes (Act of July 8, 1870, c. 230, Sec. 58, 16 Stat. 207 (U.S. Comp. St. 1901, p. 3394)), which provides:

'Whenever there are interfering patents, any person interested in any one of them, or in the working of the invention claimed under either of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice to adverse parties, and other due proceedings had according to the course of equity, may adjudge and declare either of the patents void in whole or in part, or inoperative, or invalid in any particular part of the United States, according to the interest of the parties in the patent or the invention patented. But no such judgment or adjudication shall affect the right of any person except the parties to the suit and those deriving title under them subsequent to the rendition of such judgment.' The plaintiff contends that, in view of the final paragraph of section 4918, the object and intention of the statute will be defeated unless the defendants are restrained from disposing of the patent except upon an order of court granted upon evidence that such disposition is made in good faith. It is contended on the part of the defendants that section 4918 does not apply

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