Reece Folding Mach Co. v. Earl & Wilson

• Decision Date: 24 May 1913
• Docket Number: 61-68.
• Citation: 205 F. 536
• Parties: REECE FOLDING MACH. CO. v. EARL & WILSON (three cases). REECE FOLDING MACH. CO. et al. v. SAME (five cases).
• Court: U.S. District Court — Northern District of New York

205 F. 536

REECE FOLDING MACH. CO. v. EARL & WILSON (three cases).

REECE FOLDING MACH. CO. et al. v. SAME (five cases).

Nos. 61-68.

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

May 24, 1913

Rogers Kennedy & Campbell, of New York City (Livingston Gifford and Donald Campbell, both of New York City, of counsel), for complainants.

Kerr Page, Cooper & Hayward, of New York City (Thomas B. Kerr and Drury W. Cooper, both of New York City, of counsel), for defendant.

RAY District Judge.

Ordinarily this court is strongly disinclined to grant an injunction pendente lite in a patent case, where the patent or patents in suit have not been adjudicated, and in some cases where it has been. But in this case, after a careful study of the patents in suit and the patents set up by defendant, as well as his alleged infringing machine, I am led to the conclusion that infringement is so clearly shown that the injunction ought to issue to the extent hereinafter indicated. It is not improbable that the defendant, a licensee of the complainant in order to secure a patent of his own and a noninfringing machine, has improved on the devices of the complainant. Defendant's counsel says:

'Defendant's machine is markedly superior to complainant's machine. It requires less repair and attention, has fewer parts, is stronger and simpler in design and construction, has 10 per cent. greater output, and the output is more uniform and requires less subsequent manipulation.'

All this may be true, and infringement exist. I find it impossible within reasonable limits and without the aid of drawings to give a description of the mechanism and parts involved in this litigation, and hence content myself with stating conclusions.

We have nine suits between the same parties; each alleges infringement, and seeks an injunction and an accounting. Defendant is licensee, and as such is operating licensed machines made by complainant under the patents alleged to be infringed. In its license agreement with complainant, defendant covenanted not to infringe or contest the patents in suit. While accepting and enjoying benefits under this license agreement, and in the face of its covenant therein not to infringe or contest the validity of the patents mentioned therein, it makes and puts in operation in its own plant, in competition with the licensed machine and for the purpose of superseding and displacing it, an infringing machine. Whether this negative covenant may, under the circumstances, be specifically enforced or not (as to which see American Specialty Co. v. Enamelling Co., 176 F. 557, 100 C.C.A. 193, Standard Co. v. Typewriter Co., 181 F. 500, 104 C.C.A. 248, Pope Co. v. Owsley (C.C.) 27 F. 100, U.S. v. Harvey Steel Co., 196 U.S. 310, 25 Sup.Ct. 240, 49 L.Ed. 492, and Pope Mfg. Co. v. Gormully, 144 U.S. 224, 12 Sup.Ct. 632, 36 L.Ed. 414), here is an equity in favor of this complainant, and in any event, the defendant having recognized the validity of the patents alleged to be infringed and taken a license thereunder and covenanted not to infringe or contest the validity of the patents, it ought to be held to its covenant, infringement appearing on the showing made, until it clearly appears that complainant's patents are void or that, properly construed and limited, there is no infringement.

The patents sued upon are: Suit No. 61, Fenwick patent, No. 606,528; suit No. 62, Dixon patent, No. 694,844; suit No. 63, Reece patent, No. 972,916; suits Nos. 64, 65, 66, 67, and 68, Dormandy patents, No. 714,787, No. 904,317, No. 918,023, No. 924,151, and No. 935,783, respectively. (The other suit, No. 69, is on the license contracts referred to.)

These patents relate to the art of folding and pressing blanks for collars and cuffs preparatory to sewing, and this art has had at least three periods: First. Sewing and then turning inside out and pressing by hand; and during that time Boxley, No 199,615, and Norris, Nos. 502,678 and 520,535, were issued. McKinney and Norris applied for patents between 1877 and 1891. Second. Hand-operated apparatus, when the Pine patent, No. 645,871, first came into notice. Third. Automatic machines, when the Reece patent, No. 972,916, and the Dormandy patents, No. 924,151 and...