Seibert Cylinder Oil-Cup Co. v. The William Powell Co.

• Decision Date: 04 May 1889
• Citation: 38 F. 600
• Parties: SEIBERT CYLINDER OIL-CUP CO. v. THE WILLIAM POWELL CO.
• Court: U.S. District Court — Southern District of Ohio

38 F. 600

SEIBERT CYLINDER OIL-CUP CO. v. THE WILLIAM POWELL CO.

United States Circuit Court, S.D. Ohio, Western Division.

May 4, 1889

Edmund Wetmore, J. H. Raymond, and Peck & Rector, for complainant.

George J. Murray, for defendant.

SAGE J.

The complainant sues as assignee for infringement of patent No 138,243, granted to John Gates, 29th of April, 1873, for improvements in lubricators for steam-engines. The validity of the patent, although denied in the answer, is not contested. The lubricators manufactured and sold by the defendant contain the complainant's invention.

The defense rests solely upon the following facts: December 1 1883, the complainant and the Detroit Lubricator Company (which was the owner of patents claimed to anticipate complainant's) entered into a contract that neither party should sue the other, or directly or indirectly authorize suit against the other, or its agents or vendees, under any of the patents then or thereafter to be owned by it; that neither should imitate the styles or shapes of lubricators made by the other; and that, whereas the Seibert Company was the owner, in whole or in part, of certain letters patent granted to Nicholas Seibert for improvements in lubricators and the Seibert Company claimed, and the Detroit Company denied, that the Detroit Company had infringed and was infringing the same, the Detroit Company should thereafter pay royalties, as specified in the agreement, to the Seibert Company, so long as the Seibert Company should perform its covenants and stipulations, and during the life of the agreement, which was to continue in force until the expiration of the Seibert patent; and in consideration thereof the Seibert Company agreed not to molest the Detroit Company, its agents or vendees, by suit or otherwise, for any alleged infringements of said Nicholas Seibert patents outside of the New England states. The Seibert Company also agreed not to authorize the use of the Nicholas Seibert patents outside of the New England states, except as above. This agreement amounted to a license to the Detroit Company, and it included the Gates patent. Oil-Cup Co. v. Lubricator Co., 34 F. 216. The defendant is a licensee of the Detroit Lubricator Company. The license, upon its face, is limited to patents owned by that company. The lubricators manufactured by the defendant, although different in style and shape from that shown and described in the Gates...