Merriam v. Smith
| Decision Date | 17 April 1882 |
| Citation | 11 F. 588 |
| Parties | MERRIAM v. SMITH and others. |
| Court | U.S. District Court — District of Massachusetts |
Benj. F. Thurston, and Fred'k P. Fish, for complainant.
Geo. L Roberts & Bros., for defendants.
This bill is brought for an injunction and account, upon patent No. 49,349, issued August 8, 1865, to Benjamin U. Lyon, the inventor, and to his assignees and partners, all of Stamford Connecticut, for an improved machine for forming welts, by means of pressure rollers and guides, combined and operating as shown in the specification and drawings.
The inventor and his partners were carriage-makers, and the machine was found useful in forming the leather trimmings used in their business, and it was so used by them for about 16 years. Two or three years after the date of the Lyon patent, one Stimpson introduced a machine for making stay-strips for the seams of boots and shoes. This machine improved somewhat from an English model, has gone into very general use, and has become of great value in the important branch of manufacture to which it has been applied.
I have no doubt, upon the evidence, that the Lyon machine was new and useful, and that the Stimpson machine, which has been used by the defendants and a great many others, infringes the Lyon patent. Stimpson, and the manufacturers of boots and shoes, were wholly unaware of the existence of this patent and the patentees were equally ignorant of the Stimpson machine.
An interesting question thereupon arises, how far a court of equity should go in decreeing profits for past infringements under such very peculiar circumstances. The original owners of the patent never introduced the machine into general use, though they found it of some value in their own business. The plaintiff bought the patent of them for a trifling sum, to strengthen his position in the serious litigation between these parties concerning stay-strips for boots and shoes, and the machinery for making and applying them, in which two or three different cases have already been decided in this court. The mere assignment of a patent would give the assignee no right to damages or profits already accrued. Elwood v. Christy, 18 C.B. (N.S.) 494. But these deeds all contain the following words: 'Also, any and all claims which I now have or may have against any person or persons by reason of any infringement of the said patent, or any part thereof. ' I shall, therefore, consider the case as if Lyon and his partners were the plaintiffs.
A practice has grown up in the circuit courts of looking upon a patentee's remedies at law and in equity as concurrent, and upon his right to profits as something which follows necessarily from the establishment of his title. But it has been decided by the supreme court at this term that a court of equity is to proceed under the patent law just as it does in any other case of a violated legal right, and to grant relief only when the remedy at law is inadequate. On this principle the decision in that case was that a bill for an account of profits will not be sustained if brought after the patent has expired, because there can then be no injunction. Root v. Lake Shore, etc., Ry. Co. 11 F. 349, note.
That decision puts this case in the same line with cases upon patents, trade-marks, and copyrights,...
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