Taylor v. Sawyer Spindle Co.

• Decision Date: 30 June 1896
• Citation: 75 F. 301
• Parties: TAYLOR et al. v. SAWYER SPINDLE CO.
• Court: U.S. Court of Appeals — Third Circuit

75 F. 301

TAYLOR et al. v. SAWYER SPINDLE CO.

United States Court of Appeals, Third Circuit.

June 30, 1896

Edward Q. Keasbey, for appellants.

Frederick P. Fish, for appellee.

Before ACHESON, Circuit Judge, and WALES and GREEN, District Judges.

WALES District Judge.

This is an appeal from the decree of the United States circuit court for the district of New Jersey, made October 19, 1895, sustaining the validity of letters patent No. 253,572, issued to John E. Atwood, dated February 14 1882, for 'improvements in the supports for spindles for spinning machines,' declaring that the defendant corporation had infringed the third, fourth, and fifth claims of the patent, and ordering an accounting of profits from March 23, 1891, the date of the organization of the defendant company. The patented improvements pertain to what are known as 'self-adjusting spindles,' and relate 'to that class of such spindles having step and bolster bearings within a supporting tube. ' The specifications give the following description of the invention:

'The characteristic feature of my present invention is a supporting tube which is flexibly mounted with relation to the spindle rail, and contains the step and bolster bearings for the spindle, so that the latter and said tube may move together laterally in all directions during the self-adjustment of the spindle, while carrying an unequally balanced bobbin and its yarn, instead of relying upon the movement of the spindle and its bearings within, and independently of, the supporting tube, as heretofore in this class of spindles. By reason of my improvement, the means whereby the movable capacity or flexibility of the spindle is afforded are rendered openly accessible, and more easily renewed, if need be, than heretofore; and further, elastic materials may be successfully employed, which would be liable to injury, and rendered inelastic, by oil, if located within the supporting tube, as heretofore. I am also enabled to readily graduate the degree of flexibility of the spindle with relation to the spindle rail, so as to accommodate the self-adjusting capacity of the spindle to the various conditions incident to its use in working with bobbins materially differing in size and weight. All of these advantages are due to the novel, characteristic feature before referred to.'

The claims in issue are these:

'(3) The combination, substantially as hereinbefore described, of a spindle rail of a spinning machine, a spindle, and a supporting tube flexibly mounted with relation to the spindle rail, and containing step and bolster bearings.

'(4) The combination, substantially as hereinbefore described, of a spindle rail, a spindle, a supporting tube containing step and bolster bearings, flexible connections between said tube and the spindle rail, and adjusting devices for varying the degree of flexibility of the supporting tube and spindle therein.

'(5) The combination of the spindle rail, the spindle, the supporting tube, loosely mounted with relation to the rail, and containing the step and bolster bearings for the spindle, the spring, and the nut for compressing it, substantially as described.'

The validity of the complainants' title is admitted. The first defense to the suit is that of laches, which was urged with much earnestness, and is made on the ground that the complainants had deprived themselves of relief in a court of equity by neglecting to prosecute any one for infringement until more than seven years after the date of the patent, and that the defendant had no notice of their claims until more than ten years after that date. It is alleged that the complainants permitted the manufacture and sale of the spindles complained of to be carried on for many years by men who were ignorant of their claim, and allowed the persons composing the defendant corporation to purchase the business without giving them notice; that spindles mounted flexibly, like those now complained of, were made and sold by the Cooke Locomotive & Machine Company, continuously and to a large extent, from August, 1881, until they sold the business to Mr. Taylor, Mr. Shaw, and Mr.

Cocker, and that the latter continued to make and sell the same spindles until the defendant corporation was formed, March 23, 1891,-- the date from which infringement is charged in the bill. The first suit brought against any infringer of the Atwood patent was that of these complainants against W. G. & A. R. Morrison Company, September 2, 1889, in the district of Connecticut (52 F. 590); in which the validity of the patent was sustained, and there was a decree for the infringement of the second, third, and fifth claims, and for an accounting. Subsequently another suit was brought by complainants against the Morrison Company for infringement of the same patent by types of modified spindles manufactured by them, in which, on motion for a preliminary injunction, the patent was upheld. 54 F. 693. The theory of this defense is that there is no absolute right to an injunction on proof of infringement of a patent; that the complainant must present a case for equitable relief, and if it appears by the bill, or by the evidence, that by reason of his delay he is not entitled to the aid of a court of equity, it will be refused on final hearing, as well as on motion for a preliminary injunction. It is insisted that, if the Atwood patent has been infringed by the defendant, the only remedy for the complainants would be by an action at law for damages, and that the only possible relief obtainable in the present suit would be an injunction against future infringement.

It has never been held that mere laches, unaccompanied by circumstances which amount to an equitable estoppel, shut out a party from all relief in a court of equity. Knowledge of and long-continued acquiescence by a complainant in an infringement may, in special cases, be fatal on a motion for a preliminary injunction, but will not, on a final hearing, prevent the court from granting such relief as may be just and equitable. This is the general rule which is recognized in the authorities which are cited in the briefs of counsel. There is a want of satisfactory proof that the defendant acted in ignorance of the rights of the complainants, or that the latter had always had full knowledge of the alleged infringement. Notice was given to the public at large that the spindles were patented, and the defendant could not have been blind to the fact that the new spindles had gone into extensive use. The testimony of Mr. Taylor, of the defendant corporation, had reference to a time prior to the issue of the patent, when, as he says, Mr. Atwood saw the infringing spindles, or ones just like them, in operation in Paterson, and made no claim that the invention was his; but it is not pretended that Taylor, Shaw, and Cocker, or either of them, at the date of their incorporation, in March, 1891, did not know of the complainants' claims, for the suit against the Morrison Company had then been pending for more than a year. In Kittle v. Hall, 29 F. 508, it was held that, while long acquiescence might defeat a bill for infringement, no precedent had been discovered for the dismissal of a bill for so short a period as seven years, and that the defendants had not been misled, but knew of the plaintiff's rights. In McLean v. Fleming, 96 U.S. 245, the court said: 'Equity courts will not, in general, refuse an injunction on account of delay in seeking relief, where the proof of infringement is clear, even though the delay may be such as to preclude the party from any right to an account for past profits.'

To the same effect are the cases of Menendez v. Holt, 128 U.S. 514, 9 Sup.Ct. 143; Price v. Steel Co., 46 F. 107; New York Grape-Sugar Co. v. Buffalo Grape-Sugar Co., 18 F. 638; Gilmore v. Anderson, 38 F. 846; Brush Electric Co. v. Electric Imp. Co., 45 F. 241. In the last-cited case the court remarked that the doctrine of laches is generally applicable to preliminary injunctions only. In Menendez v. Holt, supra, the court, in discussing the question of laches, said:

'Mere delay or acquiescence cannot defeat the remedy by injunction in support of the legal right, unless it has been continued so long, as under such circumstances, as to defeat the right itself. Hence, upon an application to stay waste, relief will not be refused on the ground that, as the defendant had been allowed to cut down half the trees upon the complainants' land, he had acquired by that negligence the right to cut down the remainder (citing Attorney General v. Eastlake, 11 Hare, 2051. * * * Acquiescence, to avail, must be such as to create a new right in the defendant. Where consent by the owner * * * is to be inferred from his knowledge and silence merely, it lasts no longer than the silence from which it springs. It is in reality no more than a revocable license.'

The defendant asserts that the complainants are not entitled to an accounting for profits; but the decree of the circuit court orders an accounting only for the date of the defendants' incorporation, from and after which time there were no laches, as complainants had already begun their suit against the Morrison Company. This was sufficient notice to the defendant that the validity of the patent was...