St. Louis Street Flushing Mach. Co. v. Sanitary Street Flushing Mach. Co.

• Decision Date: 06 April 1908
• Docket Number: 2,652.
• Parties: ST. LOUIS STREET FLUSHING MACH. CO. et al. v. SANITARY STREET FLUSHING MACH. CO. [1]
• Court: U.S. Court of Appeals — Eighth Circuit

161 F. 725

ST. LOUIS STREET FLUSHING MACH. CO. et al. v. SANITARY STREET FLUSHING MACH. CO. ^[1]

No. 2,652.

United States Court of Appeals, Eighth Circuit.

April 6, 1908

In 1904 the Sanitary Street Flushing Machine Company exhibited its bill against the St. Louis Street Flushing Machine Company William Ratican, Stephen J. Ratican, and James C. Wilson, to secure an injunction and accounting for an infringement of letters patent of the United States Nos. 736,134 and 736,135 granted to Thomas M. Murphy as inventor, and William Ratican as assignee of some interest, and by them assigned to complainant, for improvements in nozzles and street washers respectively. The prayer of the bill was for an injunction and for the recovery of profits earned and to be earned by the use of the improvements, which the complainants allege the defendants intended to continue using. An amended bill was afterwards filed; but the averments of threatened and continuing infringement remained practically as in the original bill. In May, 1907, a supplemental bill was filed wherein it was averred that Murphy and Ratican, before the patents were granted to them in the year 1901, made an agreement with complainant or its promoters to convey to it any inventions or patents relating to the cleaning, sprinkling, or flushing of streets which either of them might thereafter make or acquire; that defendant Ratican, acting in the name of the defendant corporation, which, it is averred, he largely owned and controlled, afterwards acquired United States patent No. 777,053 for adjustable flushing nozzles from the defendant Wilson, the patentee thereof; and that complainant was entitled in equity to a conveyance of that patent in accordance with the terms of the agreement of 1901. The supplemental bill also showed that in 1901 Ratican and Murphy solicited a license from the complainant to permit them to build within the United States nine certain machines embodying the invention of complainant's patents for exportation and use abroad; that complainant conformed to their request and gave them a verbal license as solicited, with the condition, however, that the machines should not be used or sold within the United States; that the machines were built, exported to London, and afterwards brought back to this country, and in violation of the condition of the license put into use here by the defendants. The prayer of the supplemental bill was that the defendants be required to assign and convey to complainant letters patent No. 777,053, and that a preliminary and ultimately a final injunction restraining defendants from selling or using the nine machines in the United States in violation of the license agreement be awarded to complainant. A motion for a preliminary injunction as prayed for accompanied the supplemental bill. The motion was supported by affidavits tending to show the license as pleaded, and was resisted by affidavits tending to show that no such license was ever given to or accepted by defendants. The trial court sustained the motion and awarded a preliminary injunction, restraining defendants until further order of the court from using or selling all or any of the nine machines in question. From this order the present appeal was prosecuted.

Henry W. Allen and James A. Carr (John D. Johnson, on the brief), for appellants.

James L. Hopkins (John M. Holmes and Alfred A. Eicks, on the brief), for appellee.

Before HOOK and ADAMS, Circuit Judges, and CARLAND, District Judge.

ADAMS Circuit Judge (after stating the facts as above).

Neither the original nor the amended bill warranted a preliminary injunction. They contained no showing that the patents charged to have been infringed had ever been admitted to be valid by the defendant, or held valid by any court of competent jurisdiction, or that their validity had been generally acquiesced in by the public. Without a showing of one or the other of these facts, no preliminary injunction ought to be granted in a patent case. Recognizing this rule, no attempt was made to secure an injunction on the strength of the showing made in the bill or amended bill. It must therefore be justified, if at all, on the showing made by the supplemental bill; and if the fact that defendants threatened to use or sell the machines in question in violation of the condition of the license did not justify the injunctive order it was improvidently made.

By sections 629 and 711 of the Revised Statutes (U.S. Comp. St. 1901, pp. 503, 577) the courts of the United States are given exclusive jurisdiction of all cases at law or in equity arising under the patent or copyright laws of the United States, irrespective of the citizenship of the parties to the action. To constitute such a suit a complaint or bill must disclose that some right, title, or interest under the patent laws of the United States is asserted, or that some right or privilege will be defeated by one construction or sustained by the opposite construction of those laws. Pratt v Paris Gaslight &...