Seibert Cylinder Oil-Cup Co. v. Manning

• Decision Date: 05 November 1887
• Citation: 32 F. 625
• Parties: SEIBERT CYLINDER OIL-CUP CO. v. MANNING and others.
• Court: U.S. District Court — Southern District of New York

32 F. 625

SEIBERT CYLINDER OIL-CUP CO. v. MANNING and others.

United States Circuit Court, S.D. New York.

November 5, 1887

Edmund Wetmore, for complainant.

Francis Forbes and Alexander P. Hodges, for defendants.

WALLACE J.

This suit is brought to restrain the infringement of the complainant's patent for an improvement in lubricators. The bill, besides setting out such facts as are ordinarily alleged, showing title and acts of infringement by the defendants, sets out also, by way of anticipating the defense, that the defendants are selling lubricators manufactured by the Detroit Lubricator Company, which sale constitutes the infringement complained of, and pretend that they have a right to sell the same without suit by or molestation from the complainant, because on or about the first day of December, 1883, the complainant and the said Detroit Lubricator Company made an agreement in writing wherein it was covenanted that 'so long as the covenants and agreements to be observed and performed by the parties respectively, are observed and performed, each party agrees not to sue, or directly or indirectly authorize to be sued the other party, its agents or vendees, under any of the letters patent now or hereafter owned by it. ' The bill further alleges that the defendants pretend that the said agreement is still in force, and further alleges that such pretense is unfounded, because the said Detroit Lubricator Company did not observe and perform certain covenants on its part of the agreement contained, and the agreement was annulled and rescinded prior to the commencement of the suit. The defendants have interposed a plea to the bill, in which they set up the agreement between the complainant and the Detroit Lubricator Company as a defense to the suit, and aver that said agreement is still in force. The complainant has moved for a preliminary injunction, and the defendants have moved to dismiss the bill, upon the ground that the suit is not one arising under the patent laws, and the bill does not contain the requisite averments to give the court jurisdiction otherwise.

It is apparent from the affidavits presented upon the motion for an injunction that the real dispute between the parties is whether the covenant not to sue, contained in the agreement between the complainant and the Detroit Lubricator Company is still in force, or whether that covenant, and one other covenant in the agreement, on the part of the Detroit Lubricator Company, to make monthly returns and payments to the complainant for the sale of lubricators, are at an end the contention on the part of the defendants being that the Detroit Lubricator Company was released from its covenant to make returns and pay royalties, because the complainants had previously violated a condition of the agreement on its part not to authorize by license the use of its patents outside of the New England states, and had licensed the Nathan Manufacturing Company to use its patent. No issue is made by the pleadings, nor is any presented by the affidavits respecting the validity of the patent in suit, the complainants' title thereto, or the acts of infringement by the...