Miller Hatcheries v. Buckeye Incubator Co.

• Court: U.S. Court of Appeals — Eighth Circuit
• Writing for the Court: BOOTH and GARDNER, Circuit , and SANBORN
• Citation: Miller Hatcheries v. Buckeye Incubator Co., 41 F.2d 619 (8th Cir. 1930)
• Decision Date: 19 May 1930
• Docket Number: No. 8701.,8701.
• Parties: MILLER HATCHERIES, Inc., et al. v. BUCKEYE INCUBATOR CO. et al.

41 F.2d 619 (1930)

MILLER HATCHERIES, Inc., et al. v. BUCKEYE INCUBATOR CO. et al.

No. 8701.

Circuit Court of Appeals, Eighth Circuit.

May 19, 1930.

Charles E. Rendlen, of Hannibal, Mo. (Adam E. Fisher, of St. Louis, Mo., and Harrison White and Branham Rendlen, both of Hannibal, Mo., and Earl E. Fogle, of Lancaster, Mo., on the brief), for appellants.

Albert L. Ely, of Akron, Ohio (Paul A. Staley, of Springfield, Ohio, and Thomas W. White, of St. Louis, Mo., on the brief), for appellees.

Before BOOTH and GARDNER, Circuit Judges, and SANBORN, District Judge.

BOOTH, Circuit Judge.

This is a patent suit brought by appellees involving two patents: No. 1,262,860 and No. 1,263,138, both issued April 16, 1919, to appellee Samuel B. Smith, assignor of appellee Buckeye Incubator Company, for an incubator; the latter patent covering certain improvements in the trays used in an incubator of the type covered by the former patent. All claims of both patents are involved, except claim 4 of patent No. 1,263,138.

The defenses set up were invalidity of the patents, noninfringement, and authority given by the plaintiffs to defendant to make in the incubators the changes later claimed to be infringements. The answer also contained a counterclaim based upon an alleged breach of an agreement by plaintiff Buckeye Company with defendants, that it would pay defendants for the privilege of using certain improvements on the incubators alleged to have been originated by defendants.

After a trial the court entered an interlocutory decree, holding the patents valid and infringed; granting an injunction against defendants, and referring the matter of an accounting to a special master; also holding defendants' counterclaim good, and that they were entitled to recover as damages reasonable compensation for the use of the improvements involved, and referring this matter of accounting to the special master.

Defendants have appealed from that part of the decree granting the injunction against them and ordering the accounting for the infringement by them.

The main questions arising on the appeal are whether the patents are valid; whether the acts of defendants, if without authority, constituted infringement; whether defendants had authority to do the acts.

Validity of the Patents.

Both patents have been the subject of extensive litigation. See Buckeye Incubator Co. v. Wolf (D. C.) 291 F. 253, affirmed (C. C. A.) 296 F. 680; Buckeye Incubator Co. v. Blum (D. C.) 17 F.(2d) 456, affirmed (C. C. A.) 27 F.(2d) 333; Buckeye Incubator Co. v. Petersime (C. C. A.) 19 F.(2d) 721; Boling v. Buckeye Incubator Co. (D. C.) 33 F.(2d) 347; Buckeye Incubator Co. v. Cooley (C. C. A.) 17 F.(2d) 453; Buckeye Incubator Co. v. Hillpot (D. C.) 22 F.(2d) 855, affirmed (C. C. A.) 24 F.(2d) 341.

Both patents have been repeatedly held valid — No. 1,262,860 in the Sixth Circuit in the Wolf Cases and in the Blum Cases, in the Third Circuit in the Cooley Case; No. 1,263,138 in the Sixth Circuit in the Wolf Cases, and in the Third Circuit in the Cooley Case. In the other cases they have been assumed to be valid, or the question of validity was not found necessary to be decided.

We have in comity accorded these judgments of the Third and Sixth Circuits due consideration. We have, however, independently examined the question of validity in the present case, and we find nothing in the record which causes us to differ from the conclusions reached on that question in the Wolf and Cooley Cases. It would serve no useful purpose for us to rediscuss the question so exhaustively treated in those cases. We therefore pretermit discussion and simply hold the patents valid.

Did Defendants' Acts Constitute Infringement?

There is no dispute as to what acts were done. Defendants took the incubators which they had bought from plaintiff Buckeye Company and rearranged the interior, inserting twelve trays in the space where nine had been in the incubators as purchased. This involved numerous alterations, among them, recessing at the under sides the horizontal webs or plates of the end slats of the tilting sections; detaching the side member bars from the tray supporting rails; drilling holes in the side member bars for use in connection with the additional tray rails; making or purchasing additional tray rails; making or purchasing additional trays; attaching the side member bars to the old and new tray rails; enlarging the ventilators. Defendants not only used the incubators so reconstructed, but advertised them to the trade and sold one, at least, before the present suit was brought. The incubators so reconstructed or changed embodied every one of the features of the Smith patents. The purpose of the change, of course, was to increase the capacity of each incubator and thereby reduce the number necessary to be bought. This purpose was frankly admitted by defendants.

The purchaser of a patented device has the right to repair the device by replacing unpatented worn-out parts; he may also, within certain limits, change the device so as to make it adapted to his particular use. Thomson-Houston Electric Co. v. Kelsey, etc., Co. (C. C. A.) 75 F. 1005, 1010; Aiken v. Manchester, etc., Works, Fed. Cas. No. 113; Wilson v. Simpson, 9 How. 109, 125, 13 L. Ed. 66.

On the other hand, he may not remake the patented device. In Leeds & Catlin Co. v. Victor, etc., Co. (C. C. A.) 154 F. 58, page 61, the court said: "The true inquiry is whether the owner of a patented combination, the elements of which are durable, unbroken, and in good repair, may buy from the patentee one specimen of a single element, from an outsider an indefinite number of identical specimens of the same element, and keep and use them all, under cover of the word `substitution'; it further appearing that the element so procured and used is useful and commercially known only in respect of the said combination. We think this cannot lawfully be done."

In affirming the Leeds & Catlin Co. Case, the Supreme Court said (213 U. S. 325, at page 336, 29 S. Ct. 503, 507, 53 L. Ed. 816): "The license granted to a purchaser of a patented combination is to preserve its fitness for use so far as it may be affected by wear or breakage. Beyond this there is no license."

The syllabus of the case reads (page 326 of 213 U. S., 29 S. Ct. 503): "The right of substitution or resupply of elements of a combination extends only to repair and replacement made necessary by deterioration so as to preserve its fitness; license goes no further and does not extend to furnishing such elements to increase effectiveness or variety of the results of the combination."

Walker on Patents (6th Ed.) § 350, states: "A purchaser may repair a patented machine which he has purchased, by replacing broken or worn-out unpatented parts, so long as the identity of the machine is not destroyed, provided the machine itself is not an infringement. * * * And he may improve such a machine for his own peculiar use, by substituting for an unpatented part thereof, a corresponding part originally purchased, or not purchased, from the patentee. But no unauthorized person can lawfully engage in the business of reconstructing patented machines for their owners, by omissions and substitutions of parts, where those machines do not require any repair, but are thus changed with a view to their improvement. * * * Nor can even an owner of a patented machine lawfully replace any part or combination thereof, which is patented to another person alone."

Hopkins on Patents, § 267, states: "* * * We reach the general rule that the test of the limit to which the owner of a patented machine may go, by way of replacement, repair or improvement, is that of the identity of the machine as altered with the machine as it left the hands of the original vendor."

48 Corpus Juris, p. 295, § 495, states the rules thus: "The purchaser of a patented machine has a right to repair it or replace lost, broken, injured, or worn-out parts, not separately patented, so long as the identity of the machine is not destroyed. He may not, however, under the guise or pretext of repairs, and without the consent of the owner of the patent, reconstruct or rebuild a worn-out machine, replace parts or elements which are not worn out, or replace or reconstruct a part or element which is patented separately. Where none of the parts or elements are quickly perishable or consumable, no one can be replaced without infringing the patent."

In Cortelyou v. Johnson & Co. (C. C. A.) 145 F. 933, page 935, speaking of the sale of articles as constituting contributory infringement, the court said: "We incline to the opinion that the line should be drawn to include those articles which are either parts of a patented combination or device or which are produced for the sole purpose of being so used and to exclude the staple articles of commerce."

In Pyle National Co. v. Oliver, etc., Co., 281 F. 632, page 633, this court said: "It goes without saying no one, under the guise or claim of merely furnishing needed repair parts to a patented article or machine, may in fact make or remake the patented device or machine in competition with or in violation of the rights of the owner of the patents under which the same was originally made."

In Goodyear, etc., Co. v. Jackson (C. C. A.) 112 F. 146, page 150, 55 L. R. A. 692, the court said:

"A purchaser, then, may repair, but not reconstruct or reproduce, the patented device or machine. Repair is `restoration to a sound, good, or complete state after decay, injury, dilapidation, or partial destruction.' Reconstruction is `the act of constructing again.' Reproduction is `repetition,' or `the act of reproducing.' These definitions are instructive in bringing home to the mind that repair carries with it the idea of restoration after decay, injury, or partial destruction, and that reconstruction or reproduction carries with it the idea of a complete construction or production over again. * * *

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