Lovell-McConnell Mfg. Co. v. Automobile Supply Mfg. Co.

• Decision Date: 20 November 1911
• Citation: 193 F. 658
• Parties: LOVELL-McCONNELL MFG. CO. et al. v. AUTOMOBILE SUPPLY MFG. CO. et al.
• Court: U.S. District Court — Eastern District of New York

193 F. 658

LOVELL-McCONNELL MFG. CO. et al. v. AUTOMOBILE SUPPLY MFG. CO. et al.

United States Circuit Court, E.D. New York.

November 20, 1911

George C. Dean (Thomas J. Johnston, of counsel), for complainants.

C. A L. Massie and Ralph L. Scott, for defendants.

CHATFIELD District Judge.

The complainants allege ownership of, and right to manufacture and sell under (through various partial and limited assignments by the patentee Miller Reese Hutchison), three patents, No. 923,048, May 25, 1909, No 923,049, May 25, 1909, and No. 923,122, May 25, 1909.

The defendants are charged with infringement. The present motion is for preliminary injunction, but has been complicated by other motions on the part of both defendants and complainants with respect to alleged unfair advertising and threatened litigation. The complainants now charge also unfair competition, in that it is alleged that the defendants' device is an exact imitation of the complainants' in form and design. The scope of the suit disposes of the latter question. The rights involved are those concerned with the patents alone, and the similarity of the product of the complainants and defendants is but a phase of the issue of infringement.

The first motion, brought by the defendants to prevent the complainants from prosecuting a number of actions already started, and the bringing of many more actions against dealers, most of whom were licensees of the complainants, was disposed of without complete determination by an order directing the complainants not to interfere with the future action of this court in the present suit, nor to anticipate the results of this litigation by pushing suits to the point of onerous burden against the trade generally; and by a direction that the present action should be expedited, while the numerous suits threatened should not be carried beyond the point of serving process, where the only result would be to interfere with the complete disposal of the present action.

The next motion had to do with the action of the defendants in publishing a circular and generally notifying the trade that their horns were not infringements of the complainants' patents and that the complainants' patents were not valid.

The circular in question contains sketches purporting to show the devices or principles of the few patents which seem to be really urged against the validity of the complainants' patents in suit. This circular has been attacked as intentionally misleading; and while the use of the patents set forth, in the manner in which they are presented in this circular, would not be objectionable in a brief or if used in an argumentative way to the court, it was held upon the motion that such a circular could not but influence the trade more or less in anticipation of the ultimate decision in the action itself, and that such an attempted trial of the issues before the public should not be had, when the rights of the parties to the action were plainly affected thereby.

On the other hand, it was held that the intervention of equity to prevent multiplicity of suits could not be invoked upon a motion in the patent action, except in so far as this extensive litigation might interfere with the jurisdiction of this court in the suit itself; nor could the action of the defendants in presenting their claims to the public be enjoined in this suit, except in so far as those actions were a contempt of this court's jurisdiction by, in a measure endeavoring to render nugatory its decision when the decision might be made, if the decision should be adverse to the defendants.

For this reason the circular in question was ultimately ordered discontinued, it being apparent that even if the defendants should obtain a decree, either upon the grounds of noninfringement or invalidity of patent, that in the meantime this court's freedom of action and the proper conduct of the parties before it were plainly affected by the contents of the circular above referred to.

Another motion, relating to extensive use by the complainants of a circular setting forth a statement of their position and intentions with respect to the attempted prosecution of infringers, in a manner that would not affect the court unless they were unable to substantiate the statements therein contained, but which was prefaced by a statement that it had already been approved by this court, when, in fact, the court upon presentation merely returned it with an intention of indicating that approval or disapproval, in the absence of the defendants' counsel, could not be expressed; but saying that the circular did remedy the objections found in a certain previous circular already passed on by the court. This resulted in an order directing the suppression of any such statement of approval, and at that point both parties to this litigation were directed to refrain from the dissemination of any new literature. The complainants were directed, if they wished, as they stated, to bring on a motion for preliminary injunction, to do so at once. The present motion is the result, and more than usual effort was expended thereon; some three days being taken for the argument alone.

A reading of the patents in suit indicates the possibility of contention between the parties. These claims number 125, and, with one exception, have to do with the various statements of Hutchison's alleged inventions in the construction of a device for giving a loud, quickly noticeable and effectively impulsive horntone, for a signal to individuals that an automobile was demanding their attention.

The defendants' device is substantially similar in form to one pattern of the...