Metropolitan Sewing Machine Corporation v. American Perfect Binder Co.

• Decision Date: 05 April 1921
• Citation: 272 F. 520
• Parties: METROPOLITAN SEWING MACHINE CORPORATION v. AMERICAN PERFECT BINDER CO. et al.
• Court: U.S. District Court — Eastern District of New York

272 F. 520

METROPOLITAN SEWING MACHINE CORPORATION v. AMERICAN PERFECT BINDER CO. et al.

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

April 5, 1921

Edward S. Beach, of New York City, for plaintiff.

Meyers Cavanagh & Hyde, of New York City (J. Granville Meyers and Richard B. Cavanagh, both of New York City, of counsel), for defendants.

CHATFIELD District Judge.

This application is brought on behalf of the plaintiff in the above-entitled action to have the individual defendants Marcus and Bergen, adjudged in contempt of the injunction issued out of this court against the said two individual defendants and the American Perfect Binder Company Incorporated, its officers, and the associates, agents, etc of the several defendants, restraining them from making, using or vending, etc., any article containing the invention described in letters patent No. 1,012,776, issued December 26, 1911, to John P. Weis, and assigned to the plaintiff.

It appears from the record that the above injunction was issued in accordance with a decree entered by consent and covering each of the 12 claims of said patent. The record shows that during the month of July, 1919, the plaintiff's agents purchased from one of the two individual defendants, at their place of business in Brooklyn, a device (marked Exhibit B on this motion), and thereafter the plaintiff and defendants entered into a stipulation by which the consent decree was entered upon the complaint, which charged infringement through the manufacture and sale of a device introduced in evidence upon the present application and marked Exhibit A.

Subsequent to the 18th day of July, 1919, the business of the American Perfect Binder Company, Incorporated, and presumably the business of the individual defendants Marcus and Bergen, had been transferred to 22 West Nineteenth street, borough of Manhattan, and on June 16, 1920, another binder identical with the binder marked Exhibit B was purchased from the servants of the defendants at their New York place of business. It appears from the record that the defendants' charge for the device marked Exhibits B and C was some $2 less than the plaintiff's charge for the device which they put upon the market, and that the defendants are thus making $9 profit on an article costing $1 to manufacture, while the plaintiff's licensees, paying a royalty of $1, make $10 profit gross, but are undersold in the market by the defendants.

The defendants allege upon the present motion that the device marked Exhibits B and C was being manufactured by them prior to the entry of the decree and injunction on consent. In fact, they allege that the reason for the consent injunction was because they no longer desired to manufacture Exhibit A, and they suggest that the plaintiff did not at that time have any reason to consider that the Exhibits B and C infringe the patent in suit, as they made no attempt to bring the device which had been purchased by them some five months previous into the action at the time of the decree. They thus plead an estoppel against the plaintiff on the present attempt to, in effect, enlarge the decree so as to include the additional device. The defendants also present upon the present application the prior art, and urge invalidity of the Weis patent, in the face of their stipulation and the consent decree that, as between the same parties, the Weis patent is valid and infringed by their previous device.

The individual defendants allege, further, that they should not be dealt with in a contempt proceeding, inasmuch as their acts, and the acts of the corporate defendant, for which they may or may not be personally liable, have been for some time committed in another district, and they therefore contest the jurisdiction...