Kreplik v. Couch Patents Co.

• Decision Date: 03 October 1911
• Docket Number: 930.
• Citation: 190 F. 565
• Parties: KREPLIK v. COUCH PATENTS CO.
• Court: U.S. Court of Appeals — First Circuit

190 F. 565

KREPLIK v. COUCH PATENTS CO.

No. 930.

United States Court of Appeals, First Circuit.

October 3, 1911

Francis J. V. Dakin, for plaintiff in error.

Odin Roberts (Charles D. Woodberry and Roberts, Roberts & Cushman on the brief), for defendant in error.

Before ALDRICH, BROWN, and HALE, District Judges.

HALE District Judge.

On February 20, 1909, a final injunction was issued by the Circuit Court for the District of Massachusetts, whereby the plaintiff in error (of whom for convenience we shall hereafter speak as the defendant) was enjoined from directly or indirectly making, constructing, using, or vending bedsteads, couches or other devices embodying the invention of United States letters patent No. 712,718, granted November 4, 1902, to Adrian De Piniec-Mallet, and especially referred to in claims 1, 2, 3, 4, 5, 6, 7, and 12 thereof. From the specifications the scope and purpose of the invention appear to be:

'To provide an improved bed comprising a main section and a sliding or extensible section, each having a metallic fabric rigid therewith, the structure being so organized that the metallic fabric of one section will slide transversely or crosswise between a side bar and the metallic fabric of the other section, whereby the two sections are nested, and the two fabrics are in such close relation that they are nearly level when extended, the distance between the two being sufficient to permit the proper sliding of one under the other without interfering with such movement, and such sections comprising, when closed, a single, and, when open, a full-sized double bed.'

The thing produced in commerce as the result of this invention is an extensible bedstead or couch, consisting of two separable bed sections or frames, which, when placed upon the market, as the case shows, are of metallic formation, each with four legs, end bars and side rails, with wire fabric attached to the end bars and stretched from end to end of each of said frames; one of the frames being a little shorter and a little lower than the other, the structural elements of each so arranged that the two sections may be nested or slid together, the smaller section under and within the larger, with its wire fabric close under the wire fabric and over the side rail of the larger. The case shows that these bedsteads are sometimes delivered by the manufacturers, nested, namely, with the two sections slid together, and the legs wired or tied to prevent them from sliding apart in transportation; and sometimes in unnested relation, leaving the purchaser to nest and slide the two sections together; that the patented couch is called in the trade a 'sliding couch.'

The case came before the Circuit Court upon petition by the defendant in error (hereinafter for convenience to be called the petitioner) for an attachment for contempt to be issued against the defendant. The alleged contemptuous act is substantially stated by the Circuit Court, namely, that the defendant sold and delivered to one Williams twelve single cots, and to one Meserve four single cots, unconnected and uncombined; and did not nest or combine any two of the cots sold and delivered so as to form an extensible sliding couch; and, though it does not appear that any two of said cots have been so nested or combined, it is left undisputed that six larger and six smaller single cots were sold and delivered to Williams, and two larger and two smaller single cots to Meserve; that the cots sold to Williams were capable of being at once combined into six sliding couches, and those sold and delivered to Meserve into two sliding couches; and that the larger and smaller cots referred to were in all material respects like the two sections, one larger and one smaller. Upon these facts the Circuit Court found that the sale to Meserve was of four cots in pairs, the cots of each pair adjustable as one nested sliding couch, in accordance with the first claim of the patent; that each pair was sold for use as one sliding couch; that this was known to the defendant and Meserve; and that both of them intended this use; that the sale to Williams was of twelve cots in pairs, the cots of each pair adjustable as one nested sliding couch in accordance with the first claim of the patent; that each pair was sold for use as one sliding couch; that this was known to the defendant and Williams; that both of them intended this use; that on May 24, 1910, upon a petition similar to the one before us, the defendant was adjudged in contempt for violating the same injunction, and was fined $100. After a full hearing, the Circuit Court found that the defendant had knowingly and willfully violated the injunction; that the pretense of selling single cots, and not 'sliding couches,' was a mere colorable attempt at evasion on his part. The court therefore adjudged the defendant to be in contempt; and, in view of his former contempt of the same injunction, the court imposed upon the defendant a fine of $500 for the use of the petitioner, and ordered the defendant to be imprisoned for ten days. To review this judgment of the Circuit Court, the defendant has brought his writ of error. And upon this writ of error the case now comes before this court.

1. Did the Circuit Court err in adjudging the defendant to be in contempt?

The defendant says that the cot beds which he sold were ordinary articles of commerce; that he had a perfect right to sell them, although certain of them might be combined and made to infringe the patent; that there is nothing in the patent to prevent him from selling single cot beds of any form; that the cot beds sold by him to Meserve and to Williams were not arranged in a nested condition; that, unnested, they did not constitute an infringing device, but that some act was necessary to be performed to change the beds so sold from noninfringing articles to infringing articles; that the act of infringement is not performed until the two cot beds are actually assembled and nested together; that their adaptation for nesting together does not make them an infringing structure; and that, even though the cot beds sold to Meserve and Williams were sold in response to orders for 'sliding couches,' this fact should not induce this court to hold that a sale of single cots in an unnested condition constitutes an infringement. The defendant further says that, even if the sales to Meserve and Williams may be held to be an infringement of the patent, neither of such sales was a direct, but merely a contributory, infringement; and that the only issue raised by the pleadings was that of direct infringement.

The evidence clearly shows that two furniture dealers, Meserve and Williams, ordered of the defendant 'sliding couches'; that the couches were delivered to them by the defendant in unassembled pairs. The Circuit Court properly found that each of these pairs of cots was sold for use as one sliding cot, and that this was known to the defendant and to the purchaser, and that both intended such use. We must hold that this constitutes an infringement of the patent. The inventive act in a combination patent is the making of the component parts, capable of combination, and fit to be united to constitute the combination. The physical putting together of the two parts is no part of the invention. The infringement of a patented combination is complete when the component parts of the combination are made or sold, fitted to be put together and intended to be put together. The infringement in this case was clearly a direct infringement. The facts do not show a partial infringement in aid of a complete infringement. The defendant did not merely aid or contribute in effecting an infringement. He sold both parts of the combination, in a condition ready to be put together to make a completed structure. His offense contained all the elements of a direct infringement. In this circuit, in Goodyear Shoe Machinery Co. v. Jackson, 112 F. 148, 50 C.C.A. 159, 55 L.R.A. 692, in speaking for the Circuit Court of Appeals, Judge Colt has clearly shown the distinction between a direct and a contributory infringement. The learned counsel for the defendant has himself cited a case in which Judge Lurton has quoted the analytic definition by Judge Taft in Bullock Electric, etc., Co. v. Westinghouse Electric, etc., Co., 129 F. 105, 111, 63 C.C.A. 607. This statement is in exact accord with the law of this Circuit announced by Judge Colt in the Goodyear Case.

It may further be said that the injunction against which the offense was committed in the case at bar was an injunction against 'directly or indirectly' infringing the patent. The learned judge who sat in the Circuit Court adjudged that the defendant violated the injunction. We find this judgment free from error, whether the defendant is held to be guilty of a direct or of a merely contributory infringement. Upon the evidence in the case, however, we have no difficulty in coming to the conclusion that the defendant was clearly guilty of a direct violation of the injunction.

2. Did the Circuit Court err in imposing a fine upon the defendant for the use of the petitioner?

The defendant says that, having adjudged him guilty of contempt, the Circuit Court had no jurisdiction to order him to pay a fine for use of the petitioner; but that its action was in excess of its jurisdiction, and void.

Let us look at the precise action which is brought before us. The final decree shows that the Circuit Court did three distinct things: First, the court found that the defendant, Samuel Kreplik, had violated the injunction of the court; second the court ordered Samuel Kreplik to pay a fine of $500 to the clerk of the court for the use of the petitioner within 10 days from the date of the decree; third, the...