Stearns-Roger Mfg. Co. v. Brown

• Decision Date: 21 April 1902
• Docket Number: 1,650,1,651.
• Citation: 114 F. 939
• Parties: STEARNS-ROGERS MFG. CO. v. BROWN. PORTLAND GOLD MIN. CO. v. SAME.
• Court: U.S. Court of Appeals — Eighth Circuit

114 F. 939

STEARNS-ROGERS MFG. CO. v. BROWN.

PORTLAND GOLD MIN. CO. v. SAME.

Nos. 1,650, 1,651.

United States Court of Appeals, Eighth Circuit.

April 21, 1902

Leonard E. Curtis and Lucius M. Cuthbert (Henry T. Rogers and Daniel B. Ellis, on the brief), for appellants.

Douglas Dyrenforth and Philip C. Dyrenforth, for appellee.

These are appeals from an order granting a motion for a preliminary injunction to restrain the Stearns-Roger Manufacturing Company, a corporation, from manufacturing or selling the Pearce turret ore-roasting furnace until the final hearing of this suit. After a spirited and protracted litigation, Horace F. Brown, the complainant, had established the validity of the first claim of letters patent No. 471,264, for improvements in ore-roasting furnaces, which had been issued to Mary C. Brown on March 22, 1892, and assigned to him. Extraction Co. v. Brown, 104 F. 345, 43 C.C.A. 568; Id., 110 F. 665, 49 C.C.A. 147. The Stearns-Roger Manufacturing Company had long been engaged in manufacturing and selling the Pearce turret ore-roasting furnaces, which were constructed in substantial conformity to the description contained in letters patent No. 488,797, issued to Richard Pearce on December 27, 1892. Brown had notified Pearce in 1893 that these furnaces were infringements of his patent and had requested him to cease infringing, but Pearce had denied that his furnaces constituted infringements of Brown's patent, and had continued their manufacture and sale. The Portland Gold Mining Company is a corporation engaged in mining and milling ore. It is not a manufacturer or vendor of furnaces. In July, 1900, the Stearns-Roger Manufacturing Company made a contract with the Portland Gold Mining Company to construct in a large mill for the reduction of ore which the mining company was about to build, three Pearce turret ore-roasting furnaces for the sum of $45,000. The manufacturing company was engaged in performing this contract, and the mill, which was to cost about $600,000, and the furnaces, which were indispensable to its operation, were approaching completion when the complainant, Brown, exhibited his bill in the court below, alleged that these Pearce turret furnaces infringed upon his patent, and prayed for the usual injunction and accounting. The defendants answered that the Pearce turret furnaces were not infringements upon the complainant's monopoly; that the Stearns-Roger Company was manufacturing and selling them, and that it was building three of these furnaces for the mining company, which the latter was about to use in its new mill. The mining company also pleaded that a preliminary injunction would compel it to install other furnaces in its mill; that this would delay the completion and the commencement of the operation of the mill for several months, and would entail upon it a loss of $1,200 a day during this delay. Upon these pleadings and upon affidavits a motion for a preliminary injunction was heard and decided by the circuit court, and the order of that court was that upon the filing by the complainant of a bond in the sum of $10,000 a temporary injunction should issue restraining the Stearns-Roger Company until the final hearing of this case from manufacturing or selling any Pearce turret ore-roasting furnaces except the three furnaces in process of construction for the Portland Gold Mining Company. No injunction was granted against the completion of these furnaces or against their use by the mining company.

Before CALDWELL, SANBORN, and THAYER, Circuit Judges.

SANBORN Circuit Judge, after stating the case as above, .

The primary question on an appeal from an order granting a temporary injunction is whether or not the injunction evidences an error in the exercise of its sound judicial discretion by the court which issued it. There are established legal principles for the guidance of that discretion, and where they are violated the action of the court below should be corrected. But, unless there is a plain disregard of some of the settled rules of equity which govern the issue of injunctions, the orders of the courts below on this subject should not be disturbed. The law has placed upon these courts the duty to exercise this discretion. It has imposed upon them the responsibility of its exercise wisely and has left them much latitude for action within the rules which should guide them; and, if there has been no violation of those rules, an appellate court ought not to interfere with the results of the exercise of their discretion. The right to exercise this discretion has been vested in the trial courts. It has not been granted to the appellate courts, and the question for them to determine is not how they would have exercised this discretion, but whether or not the courts below have exercised it so carelessly or unreasonably that they have passed beyond the wide latitude permitted them, and violated the rules of law which should have guided their action.

The complainant applied, upon an adjudicated patent, for an injunction to restrain the Stearns-Roger Manufacturing Company and the Portland Gold Mining Company from constructing and using their Pearce turret ore-roasting furnaces which the manufacturing company was building under a contract with the mining company, and which the mining company intended to use when they were completed. He also asked for a general injunction against the manufacture, sale, or use by the defendants of any of the Pearce furnaces. The court refused to issue any injunction against the mining company. It refused to enjoin either company from constructing and using the three furnaces in process of erection. But upon the execution and filing of a bond in the sum of $10,000 to indemnify the manufacturing company for any damages it should sustain if the preliminary injunction was subsequently dissolved or modified, it enjoined the manufacturing company from making or vending any more Pearce furnaces until the final determination of this suit. This does not seem to be an unjust or an unreasonable course of action. The mining company took and has prosecuted a separate and independent appeal from the order granting the injunction against the manufacturing company. But as the injunction does not restrain the mining company from doing any act either alone or jointly with the manufacturing company, the mining company could not have been legally aggrieved by the order, and it had no right to appeal from it. Its appeal is accordingly dismissed.

The remaining question is whether or not the order enjoining the manufacturing company during the pendency of this suit from building and selling more Pearce furnaces after it installed the three that were contracted to the mining company was an unlawful exercise of the discretion of the circuit court. Counsel for the manufacturing company insist that this order was violative of the established rules of equity jurisprudence, because the Pearce furnace was not an infringement upon the patent to Brown, because the complainant had been guilty of such laches that he was not entitled to an ad interim injunction, and because there was no proof that the complainant would sustain such injury from the continued infringement as would warrant an injunction. The crucial question in this case-- the question which must ultimately determine it on the merits-- is whether or not the manufactur, sale, and use of the Pearce furnace is an infringement upon Brown's monopoly. There are cases in which the question of infringement may be finally determined on appeals from orders granting temporary injunctions, and where this can be done it is always competent, and often prudent, for an appellate court to consider and decide it on such an appeal. But this is not one of those cases. The complainant properly joined the manufacturing company and the mining company as defendants in this court, because they were jointly making and...