Thomson-Houston Elec. Co. v. Kelsey Elec. Ry. Specialty Co.
| Decision Date | 29 July 1896 |
| Citation | 75 F. 1005 |
| Parties | THOMSON-HOUSTON ELECTRIC CO. v. KELSEY ELECTRIC RAILWAY SPECIALTY CO. et al. |
| Court | U.S. Court of Appeals — Second Circuit |
Edward H. Rogers, for appellants.
Betts Hyde & Betts, for appellee.
Before WALLACE, LACOMBE, and SHIPMAN, Circuit Judges.
The circuit court of the United States for the district of Connecticut, after an exhaustive investigation of the validity and alleged infringement of letters patent No 495,443, dated April 11, 1893, and issued to the administrators of Charles J. Van Depoele, decreed that the Winchester Avenue Railroad Company had infringed claims 6, 7 8, 12, and 16 of the patent. The complainant in the suit was the Thompson-Houston Electric Company the assignee of the patentees. 71 F. 192. The combination covered by these claims, and now used generally by the electric railroads of the country, consisted 'generally in an electric railway having an overhead conductor, and a car for said railway provided with a contact device carried by the car so as to form a unitary structure therewith, and consisting of a trailing arm, hinged and pivoted to the car so as to bridge the space between it and the conductor, and move freely both laterally and vertically, and said arm carrying at its outer end a contact device capable of being pressed upward, by a suitable tension device, into engagement with the underside of the conductor. ' The important and distinctive part of the invention was the trailing arm, hinged and pivoted to the car, and moving laterally and vertically, with a contact device at its outer end, capable of being pressed upward, by a suitable tension device, into engagement with the underside of the conductor. The novel element of 'the overhead, underrunning, spring-pressed, laterally swinging contact arm' was of great utility, and has superseded pre-existing attempts at trolley-road equipment. The 'trolley stand,' so called, is the means by which the trailing are is hinged and pivoted to the car with a capacity for lateral and vertical movement, and is pressed upward by some suitable spring. No particular form of stand was included in the Van Depoele invention, for any one of a number of forms would answer the purpose. The defendant the Kelsey Electric Railway Specialty Company manufactures a particular form of trolley stand, for which letters patent have been issued, which it has advertised for sale, and has also, in its advertisements, represented itself as a dealer in trolley poles and overhead trolley equipments. Its trolley stand consisted, in the main, of a base secured to the car roof, a frame revolubly mounted upon the base so as to receive the end of a trolley arm, and springs by which tension upon the arm is produced. The Thomson-Houston Electric Company having brought suit against the Kelsey Company for infringement of this Van Depoele Patent, the circuit court for the district of Connecticut (72 F. 1016) granted a motion for an injunction pendente lite against its making or selling any apparatus embodying the subject-matter of any trolley bases devised or intended to be used in infringement of those claims of said patent which were found to have been infringed in the Winchester Case. The present appeal is from this order.
The question, as presented in the affidavits and briefs, relates particularly to the manufacture and sale of trolley stands. As evidence of an intention to infringe, the complainant relied upon the language of the defendant's advertisement, which offered for sale the stands and overhead trolley equipment generally. The defendant admits that it has sold trolley stands, directly or indirectly, to electric companies which purchased their equipment originally from the complainant's licensees, either by way of repair, or because the purchasers wanted an improved stand. It denies that it has knowingly sold to an infringer of the patent in suit, or to be used for the purpose of infringement. The circuit judge was of opinion that the defendant was selling stands capable of, and designed for, an unlawful use, and that, inasmuch as they are useful only for the purpose of performing functions involved in the operation of the patent, there was a presumption of an intention that these stands should be so used, which was not dispelled by the affidavits. The question being one of contributory infringement, the appellant urges that there was no sufficient evidence that the defendant had concerted, or was concerting, or intended to concert with any person for the infringement of the complainant's patent, and that, consequently, the injunction order either ought not to have been issued, ought not to have been issued, or was too sweeping in its terms.
What contributory infringement is, and why it should be enjoined, was clearly shown in Wallace v. Holmes, 9 Blatchf. 65, Fed. Cas. No. 17,100,-- the earliest case in this country upon the subject, and upon which the subsequent cases of contributory infringement rest. The complainant's patent in that case was for an improved lamp, which consisted of an improved burner, or metallic portion, and a glass chimney. The defendant made and sold the improved burner, which must be used with a chimney, and, in order to make sales, exhibited the burners with chimneys to customers; and the circuit judge thought that a concert with others to use the patented article, as a whole, was a certain inference from the obvious facts in the case, and the efforts of the defendant to solicit sales by showing the operation of the whole patented article. The willingness of the defendant in this case to aid other persons in any attempts which they may be disposed to make towards infringement is also apparent. Its trolley stands are designed to be used in the patented system, and to be the means of enabling the trailing pole to perform its distinctive and novel part in the combination. It sufficiently appears from the defendant's advertisements and affidavits that it was ready to sell to any and all purchasers, irrespective of their character as infringers. A proposed concert of action with infringers, if they presented themselves, is fairly to be inferred from the obvious facts of the case; and an injunction order is the proper remedy against wrongful acts which are proposed, or are justly to be anticipated. But the defendant says, also, that the order which was granted is capable of too sweeping an interpretation, because it has a right to supply purchasers, who have acquired the right to use the patented combination, with its trolley stands, either by way of repair, or because the stands which were furnished to them were not adapted to the needs of the cars upon which they were placed; and it invokes the principle which was stated in Chaffee v. Belting Co., 22 How. 217, as follows:
'If a person legally acquires a title to that which is the subject of letters patent, he may continue to use it until it is worn out, or he may repair it or improve upon...
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