Newhall v. McCabe Hanger Mfg. Co.

• Decision Date: 03 October 1903
• Docket Number: 144.
• Citation: Newhall v. McCabe Hanger Mfg. Co., 125 F. 919 (2nd Cir. 1903)
• Parties: NEWHALL v. McCABE HANGER MFG. CO. et al.
• Court: U.S. Court of Appeals — Second Circuit

125 F. 919

NEWHALL v. McCABE HANGER MFG. CO. et al.

No. 144.

United States Court of Appeals, Second Circuit.

October 3, 1903

Thomas Ewing, Jr., for appellants.

F. S Duncan, for appellee.

Appeal from the Circuit Court of the United States for the Southern District of New York.

Appeal from an order of the United States Circuit Court for the Southern District of New York granting an interlocutory injunction in a suit for infringement of complainant's patents Nos. 680,415 and 680,458, granted August 13, 1901, to O. H. Kingsland.

For opinion below see 117 F. 621.

Before WALLACE, LACOMBE, and TOWNSEND, Circuit Judges.

TOWNSEND Circuit Judge.

The patents in suit relate to door-closing apparatus so constructed as to operate automatically in case of fire. They cover generally an ordinary self-closing fire door and thermal fuse, in combination with a sliding catch or bolt so arranged that, while normally holding said door open, the bolt is releasable by heat and permits the door to close by its own weight.

The bill was filed within one year after the issuance of the patents in suit, they have never been litigated, and there is no proof of public acquiescence. Complainant, however, relies upon a decision adverse to the defendant McCabe in interference proceedings between him and the patentee Kingsland, and on alleged bad faith on the part of said defendant in procuring the patent under which the alleged infringing devices are manufactured, and contends that there is no question either as to the validity of the patents in suit or their infringement. In Reed Manufacturing Company v. Smith & Winchester Company, 107 F. 719, 46 C.C.A 601, a case where a similar claim was made on behalf of a recently issued patent which had not been adjudicated, this court said, concerning the effect of a decision in interference proceedings, as follows:

'The patent is a very recent one, and there is no such proof of long-continued acquiescence by the public as would raise a prima facie case in the patentee's favor. Under such circumstances it is the practice in this circuit to refuse preliminary injunction where there has been no adjudication sustaining the patent, if there appears to be any fair question as to invention, anticipation, construction, or infringement. Dickerson v. De La Vergne Refrigerating Machine Co. (C.C.) 35 F. 143.'

The allegations in complainant's affidavits relied on to support said charge of bad faith are to the effect that said Kingsland, being an inspector of fire doors and appliances in the employ of the New York Fire Board of Underwriters, having rejected certain fire-door locks made by the defendant company and applied by the contractor to a certain building told said contractor that he (Kingsland) had devised a new form of lock which obviated the objections to defendant's lock, and explained to said contractor certain features of its construction and operation; and that said contractor thereupon reported said conversation to defendant McCabe, and 'stated that said Kingsland was getting up a fire-door lock which did away with the use of a spring, and that it would be necessary for McCabe to supply deponent with a fire-door lock without a spring in order to pass inspection. ' Said Kingsland alleges that thereafter he again inspected the fire doors in said building, found that they were equipped with locks manufactured by defendant and like those herein claimed to infringe; that he approved the same, and 'was given to understand that James T. McCabe was willing to pay him a royalty on each of the locks that might be manufactured by said McCabe and his company of the same construction,' but that although he (Kingsland) refused to make any such arrangement he received from the defendant company, on ...