Thomson-Houston Elec. Co. v. Kelsey Elec. Railway Specialty Co.

• Decision Date: 02 March 1896
• Docket Number: 869.,868
• Citation: 72 F. 1016
• Court: U.S. District Court — District of Connecticut
• Parties: THOMSON-HOUSTON ELECTRIC CO. v. KELSEY ELECTRIC RAILWAY SPECIALTY CO. SAME v. BILLINGS & SPENCER CO.

72 F. 1016

THOMSON-HOUSTON ELECTRIC CO. v. KELSEY ELECTRIC RAILWAY SPECIALTY CO.

SAME v. BILLINGS & SPENCER CO.

Nos. 868, 869.

United States Circuit Court, D. Connecticut.

March 2, 1896

Frederick H. Betts, for complainant.

Charles R. Ingersoll and E. H. Rogers, for defendants.

TOWNSEND District Judge.

This hearing was had upon a motion for a preliminary injunction restraining defendants from infringing certain claims of patent No. 495,443, granted April 11, 1893, to the Thomson-Houston Electric Company, assignees of the administrators of Charles J. Van Depoele, the validity of which have been sustained in this court, upon final hearing in Thomson-Houston Electric Co. v. Winchester Ave. R Co., 71 F. 192. The affidavits show that the defendants respectively, make and sell certain trolley stands, adapted to be used with the pole and wheel of the overhead underrunning, trolley system; that they have advertised the same for sale to the general public, and have sold them to jobbers in the open market. In some instances, defendants have sold said stands to repair or replace other stands purchased from the General Electric Company, which is alleged to control this complainant; and in the case of the Norwalk Street-Railway Company, equipped by said General Electric Company and this complainant, defendants sold their trolley stands, by reason of certain advantages in their construction, to replace those of the General Electric Company. It further appears that defendants have used a trolley pole, in connection with their stands, in their show room; and that they sold to one Hammer, representing himself to be an electrical contractor, one of said stands, equipped with a pole, harp, and wheels, which they had theretofore used in their experiments in their shop. The following facts, also shown, have a bearing upon the questions to be hereafter discussed: The entrance of defendants into the field as dealers in this class of electrical apparatus is recent, and with notice of the claims of said patent. Said trolley stands are adapted only for electric railways, and can only be used to effectuate the construction covered by the patent in suit. The advertisements thereof contained no limitation to sales for repairs, or to persons having the right to use said invention, and it may fairly be inferred from the affidavits that sales have been made to persons not having such right. The trolley stand is probably the most substantial, if not the chief, element in the patented combination. It does not appear that it wears out quickly, or breaks frequently, as do poles, wheels, and harps,-- other elements in said combination.

The bill charges defendants with actual infringement and threats to infringe. Such infringement, if any, is contributory only, inasmuch as defendants only deal in a part of the patented combination. Contributory infringement has been well defined as 'the intentional aiding of one person by another in the unlawful making or selling or using of the patented invention. ' Howson, Contrib. Infringe. Pat. p. 1. Counsel for defendants rightly claim that the burden of proof is on complainant to show an intention on the part of defendants to aid others in such infringement. Coolidge v. McCone, 1 Ban.& A. 78, Fed. Cas. No. 3,186; Saxe v. Hammond, 1 Ban.& A. 629, Fed. Cas. No. 12,411; Snyder v. Bunnell, 29 F. 47. The question, however, as to what evidence is sufficient to prove such intention, has been considered in several cases where the facts were somewhat similar to those herein presented. Thus, in Wallace v. Holmes, 9 Blatchf. 65, Fed. Cas. No. 17,100, the court said:

'The complainants having a patent for an improved burner in combination with a chimney, the defendants have manufactured extensively the burner; leaving the purchasers to supply the chimney, without which such burner is useless. They have done this for the express purpose of assisting, and making profit by assisting, in a gross infringement of the complainants' patent. They have exhibited their burner furnished with a chimney, using it in their sales rooms to recommend it to customers and prove its superiority, and therefore as a means of inducing the unlawful use of the complainants' invention.'

In Richardson v. Noyes, 2 Ban.& A. 398, Fed. Cas. No. 11,792, it is said that the defendants

'Make only the standards for children's carriages; but it is admitted that they are made and sold to the carriage builders for the express use to which they are put,-- that is, for children's carriages,-- and it is not denied that this makes them, in law, infringers, if their standards, when combined with the carriages in the mode in which they are designed to be combined, infringe the patent.'

To the same effect is Renwick v. Pond, 10 Blatchf. 39, Fed. Cas. No. 11,702, where Judge Blatchford held that the defendant would be an infringer if he sold an arm capable of being, and designed to be, used to effect the result of the patent by the means specified in its claim. It seems to me that this case falls within the rule as stated by Judge Wallace in Travers v. Beyer, 26 F. 450, where the court said:

'Defendants cannot escape liability for infringement. They are

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