Singer Mfg. Co. v. Springfield Foundry Co.

• Decision Date: 02 April 1888
• Citation: 34 F. 393
• Parties: SINGER MANUF'G CO. v. SPRINGFIELD FOUNDRY CO. et al.
• Court: U.S. District Court — District of Massachusetts

34 F. 393

SINGER MANUF'G CO. v. SPRINGFIELD FOUNDRY CO. et al.

United States Circuit Court, D. Massachusetts.

April 2, 1888

C. F Perkins, for complainant.

J. L S. Roberts, for defendant Duckworth.

COLT J.

This suit is brought for the infringement of the sixth claim of letters patent No. 208,838, dated October 8, 1878, all the claims of letters patent No. 229,629, dated July 6, 1880, and the second claim of letters patent No. 274,359, dated March 20, 1883. These several patents were issued to the complainant for improvements in sewing-machines. The bill has been taken pro confesso as against the Springfield Foundry Company. The present controversy is between the complainant and the remaining defendant, Duckworth. Duckworth is a machinist and has made a specialty of repairing sewing-machines. He admits that he makes certain parts of the Singer IM machine to replace worn or broken parts in machines sold by the complainant, and that he has also made and furnished these parts to one John Thornton, Jr., of New York, a dealer in sewing-machine supplies, and engaged in the business of repairing sewing-machines. The parts introduced in evidence are the feed-cam, forked connecting feed-bar, feed-lifting rock-shaft, feed rock-shaft, shuttle-driver, and shuttle-race. He contends that the making of these parts does not constitute an infringement because-- First, they are each but one of many other parts constituting an organized sewing-machine; second, that the parts so made by the defendant have been made for the purpose of replacing parts which have been broken or worn out in organized sewing-machines sold by the plaintiff; third, that neither he nor any other person has assembled the parts so made in one machine, but that each parts has been made to replace a corresponding part in some organized machine made and sold by the plaintiff. He admits, however, that the parts could fit no other sewing-machine, without considerable alteration than the Singer IM. The position taken by the defendant is that he has a right to make and sell these parts, provided the article is not made or sold with the intent to put it to an unlawful use; that the use here is lawful because the purchaser of a patented machine has a right to repair it, and to replace parts as often as may be necessary, provided he does not destroy the identity of the machine. The cases relied upon by defendant are Wilson v. Simpson, 9 How. 109; Chaffee v. Belting Co., 22 How. 217; Gottfried v. Brewing Co., 8 Fed.Rep. 322.

In Wilson v. Simpson it was held that an assignee having a right to use Woodworth's planing-machine had a right to replace new cutters or knives for those which were worn out. The court says:

'The right of the assignee to replace the cutter-knives is not because they are of perishable materials, but because the inventor of the machine has so arranged them as a part of its combination that the machine could not be continued in use without a succession of knives at short intervals. Unless they were replaced, the invention would have been of but little use to the inventor or to others. The other constituent parts of this invention, though liable to be worn out, are not made with reference to any use of them, which will require them to be replaced. These, without having a definite duration, are contemplated by the inventor to last so long as the materials of which they are formed can hold together in use in such combination. No replacement of them at intermediate intervals is meant, or is necessary. They may be repaired as the use may require. With such intentions they are put into the structure. So it is understood by the purchaser, and beyond the duration of them a purchaser of the machine has not a longer use for them. But if another constituent part of the combination is meant to be only temporary in the use of the whole, and to be frequently replaced, because it will not last as long as the other parts of the combination, its inventor cannot complain, if he sells the use of his machine, that the purchaser uses it in the way the inventor meant it to be used, and in the only way in which the machine can be used. Such a replacement of temporary parts does not alter the identity of the machine, but preserves it, though there may not be in it every part of its original material.' In Chaffee v. Belting Co., 22 How. 217, the court says:

'When the patented machine rightfully passes to the hands of the purchaser from the patentee, or from any other person by him authorized to convey it, the machine is no longer within the limits of the monopoly. According to the

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