Smith v. Ridgely

• Decision Date: 14 July 1900
• Docket Number: 804.
• Citation: 103 F. 875
• Parties: SMITH v. RIDGELY.
• Court: U.S. Court of Appeals — Sixth Circuit

103 F. 875

SMITH v. RIDGELY.

No. 804.

United States Court of Appeals, Sixth Circuit.

July 14, 1900

This is a bill in equity filed by the appellant, Mark A. Smith, for the purpose of obtaining an injunction against an infringement of certain patents by the appellee, Charles T Ridgely, and to recover for profits and damages. The parties to the suit were originally joint owners of the patents. They were issued to Ridgely for himself, and as assignor of a one-half interest therein to Smith. These patents were issued, the first on the 25th day of September, 1888, and was numbered 389,901; the second was issued on the 30th day of July, 1889, and was numbered 408,193; and both were for improvements in tools used for trimming wall paper and other like purposes. Prior to July 23, 1894, the said parties were engaged in the manufacture and sale of implements constructed upon the patents above mentioned, under the firm name of Ridgely & Smith, and had built up something of a business. On the day last Mentioned, ridgely made a proposition to Smith to buy or sell all the rights of the other in the partnership, including the stock on hand, the good will, and the exclusive right to manufacture and sell the patented inventions at a price therein named. Smith accepted the offer, buying Ridgely out at the price stated in the latter's proposition, and thereupon the parties entered into the following contract in writing:

'This agreement, made this 23rd day of July, 1894, between Charles T. Ridgely, of Springfield, in the county of Clark and state of Ohio, party of the first part, and Mark A. Smith, of the same city, county, and state, party of the second part witnesseth that whereas, letters patent of the United States Nos. 389,901 and 408,193, for an improvement in wall-paper cutters and trimmers, were granted on September 25, 1888, and July 30, 1889, respectively, to the first party, who was the assignor of one-half of each to said second party; and whereas, letters patent of the united States No. 480,516 for an improvement in straight edge, were granted to said parties jointly on the 9th day of August, 1892; and whereas, said parties still own said letters patent; and whereas, the party of the second part is desirous of owning the exclusive right of making, using, and vending paper cutters and trimmers and straight edges containing said patented improvements: Now therefore, the parties have agreed as follows: The party of the first part, for the consideration hereinafter stated hereby grants to the party of the second part and assigns the exclusive right to make, use, and vend within the United States, subject to the conditions hereinafter named, to the end of the term for which said letters patent were granted, and for such additional time as said patents, and each of them, may be extended, paper cutters and trimmers and straight edges containing the patented improvements covered by the letters patent above mentioned. In consideration whereof, the party of the second part agrees to pay to the said first party one hundred ($100) dollars for each and every thousand paper cutters or trimmers containing any of the improvements covered by said letters patent made and sold by said second party or assigns, and further agrees on the first days of January and July of each year to make to said first party full and true returns, under oath, of all the paper cutters or trimmers containing said patented improvements sold by him and his assigns during the preceding six months, and to settle in full for the same. It is further agreed that said second party and assigns shall have the right at any time to purchase the entire interest of said first party in the improvements covered by said letters patent for the sum of one thousand ($1,000) dollars, upon tender of which amount said first party agrees to deliver to said second party and assignment or assignments, in writing, conveying to said second party and assigns the entire interest of said first party in and to said improvements covered by said letters patent, and in and to said letters patent therefor aforesaid. In witness whereof the said parties have hereunto set their hands the day and year first above written.

Charles T. Ridgely. 'Mark A. Smith.'

On the 29th day of January, 1895, Ridgely took out two other patents for improvements in paper-cutting tools,-- one being No. 533,374, upon an application filed December 14, 1894; the other No. 533,375, upon an application filed August 16, 1894,-- and thereupon commenced to manufacture and sell paper cutters and trimmers under his new patents, wherein is the infringement complained of. The defendant, Ridgely, denied infringement, proofs were taken, and the case was brought on for hearing. The circuit court found that, in view of the prior art, the inventions covered by the first two patents above mentioned stood within such narrow limits that the instruments manufactured in accordance with the two later Ridgely patents did not infringe. Accordingly a decree was passed dismissing the bill, and the plaintiff has appealed.

Paul A. Staley, for appellant.

H. A. Toulmin, for appellee.

Before LURTON, DAY, and SEVERENS, Circuit Judges.

SEVERENS Circuit Judge, having made the foregoing statement of the case, .

By his bill in this case, the plaintiff complained of the infringement of both of the patents first mentioned in the preceding statement of both of the patents first mentioned in the preceding statement as having been originally owned by both parties, and of which he holds the license to use the defendant's one-half interest. But the plaintiff has since then apparently ignored the first patent, and now seeks for the establishment of the rights claimed by him under the second patent, No. 408,193. We shall, therefore, in dealing with the case, proceed upon a comparison of the invention embodied in the second of the patents to Ridgely and Smith, with the inventions covered by the two later Ridgely patents. There can be no doubt that a licensee may sue the patentee, who has granted the license, for infringing the patent within the field covered by the license, in the same manner and with like effect as though the patentee were a stranger. Littlefield v. Perry, 21 Wall. 205, 22 L.Ed. 577; Adriance, Platt & Co. v. McCormick Harvesting Mach. Co. (C.C.) 55 F. 288; Walk Pat. Sec. 400. The plaintiff contends that the defendant, having granted the license to him for a valuable consideration, is estopped from denying that the patent is valid, and we are of opinion that he is right in this. In a case recently decided by this court, it was held that the patentee, after having transferred his interest in the patent, was precluded from denying the validity thereof to the same extent, and to the same extent only, that a third person would be, subject to the limitation, however, that he could not allege the total invalidity of the patent; the result being that he is still left at liberty to show that, assuming the patent to be valid, it is nevertheless subject to the limitation just mentioned, its scope is to be tested by the principles which are generally applicable. Noonan v. Athletic Club Co., 39 C.C.A. 426, 99 F. 90, and see Manufacturing Co. v. Scharling (C.C.) 100 F. 87. Adopting these premises, we will proceed to ascertain what are the limitations of the patent alleged to be infringed, and, having ascertained these, will then proceed to the inquiry whether the defendant's manufactures infringe the patent, the scope of which shall have been ascertained.

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The plaintiff's patent, No. 408,193, was for improvements in tools for cutting paper, trimming shades, etc.; and the complete tool contemplated consisted of the combination of a head, B, having a receding face in circular form on one side thereof, in which a disk-formed blade, H, was located, the surfaces of the head, one of which is lettered 'C,' Fig. 1, projecting slightly beyond the blade and on each side thereof to act against the side of the guide-strip, C', shown in Fig. 2. The blade was mounted upon an arbor fixed in the center of the recess of the head, and there was a gauge, O, extending across the head, and having a vertical shank, R, a channel in the head in which the shank was slidingly mounted, and a spring...