Palmer Pneumatic Tire Co. v. Newton Rubber Works

• Citation: 73 F. 218
• Decision Date: 14 March 1896
• Docket Number: 415-417.
• Parties: PALMER PNEUMATIC TIRE CO. v. NEWTON RUBBER WORKS (three cases).
• Court: United States Courts of Appeals. United States Court of Appeals (4th Circuit)

73 F. 218

PALMER PNEUMATIC TIRE CO. v. NEWTON RUBBER WORKS (three cases).

Nos. 415-417.

United States Circuit Court, D. West Virginia.

March 14, 1896

Dyrenforth & Dyrenforth, for complainant.

Leonard E. Curtis and Parker W. Page, for defendant.

GOFF Circuit Judge.

The Palmer Pneumatic Tire Company, a corporation organized and existing under and by virtue of the laws of the state of Illinois, on the 2d day of November, 1895, instituted three separate suits in equity against the Newton Rubber Works, a corporation organized and existing under and by virtue of the laws of the state of West Virginia, and said suits are now pending in the circuit court of the United States for the district of West Virginia. It is claimed in the bills that the complainant is the owner of three certain letters patent of the United States, to wit, No. 489, 714, No. 493,220, and No. 532,902, issued, respectively, on the 10th day of January, 1893, the 7th day of March, 1893, and the 22d day of January, 1895, to one John F. Palmer, and by him duly assigned to said Palmer Pneumatic Tire Company. The first of said letters patent relates to a 'new and useful improvement in bicycle and other tubing'; the second, to 'a new and useful improvement in fabric'; and the third, to 'a new and useful improvement in textile fabric for tubing envelopes.' The bills allege that the complainant has invested large sums of money in manufacturing, introducing, and securing the sale of said patented articles, and that thereby they have become known and in general use throughout the United States; that the defendant, since the granting of the said letters patent, in infringement of the same, and in violation of the complainant's exclusive rights thereunder, has made used, and sold the said articles and improvements described and claimed in said letters patent; and that defendant persists in so doing, to the great and irreparable loss and damage of the complainant. The relief asked is that defendant be restrained from further infringing said patents for an accounting, and for damages. The cases are now before the court on motions made by the complainant for preliminary injunctions.

It must be conceded that the mere patent itself is an unsatisfactory foundation on which to base a preliminary injunction. The rule is now well established that the patent alone does not create a sufficiently strong presumption as to its own validity to justify a court in granting a preliminary injunction. It must be established either by prior adjudication, or a strong presumption of its validity must exist because of continuous public acquiescence, or it must have successfully withstood an action by interference in the patent office. White v. Manufacturing Co., 3 Fed.161; De Ver Warner v. Bassett, 7 Fed. 468; Steam Gauge & Lantern Co. v. Miller, 8 Fed. 314; Bradley & Hubbard Manuf'g Co. v. Charles Parker Co., 17 F. 240; Edward Barr Co. v. New York & N.H Automatic Sprinkler Co., 32 F. 79; Dickerson v. Machine Co., 35 F. 143; Standard Elevator Co. v. Crane Elevator Co., 6 C.C.A. 100, 56 F. 718; Machine Co. v. Williams, 2 Fish.Pat.Cas. 135, Fed. Cas. No. 5,847; Toppan v. Bank-Note Co., 2 Fish.Pat.Cas. 195, Fed. Cas. No. 14,100; Mowry v. Railway Co., 10 Blatchf. 89, Fed. Cas. No. 9,893; George Ertel Co. v. Stahl, 13 C.C.A. 31, 65 F. 519.

It is admitted that neither one of the patents in question has ever been in litigation; so that there is no adjudication as to their validity. Then, has the complainant alleged or shown any circumstances in the nature of an estoppel precluding the defendant from denying the validity of the patents, or either of them? The insistence of the complainant on this point is that the validity of its patents has been established by public acquiescence. In neither one of the bills has public acquiescence been alleged, although, by general statements in affidavits filed by complainants, universal acquiescence in the validity of its patents is claimed. This is not sufficient. Edward Barr Co. v. New York & N.H. Automatic Sprinkler Co., 32 F. 79; Hurlburt v. Carter &amp Co., 39 F. 802; Johnson v. Aldrich, 40 F. 675; George Ertel Co. v. Stahl, 13 C.C.A. 29,65 F. 517; Orr v. Littlefield, 1 Woodb. & M. 13, Fed. Cas. No. 10,590; Toppan v. Bank-Note Co., 4 Blatchf. 509, Fed. Cas. No. 14,100; Guidet v. Palmer, 10 Blatchf. 217, Fed. Cas. No. 5,859. ...