Thomson-Houston Elec. Co. v. Ohio Brass Co.

• Citation: 78 F. 139
• Decision Date: 18 July 1896
• Docket Number: 5,511.,5,510
• Parties: THOMSON-HOUSTON ELECTRIC CO. v. OHIO BRASS CO. et al. (two cases).
• Court: U.S. District Court — Northern District of Ohio

78 F. 139

THOMSON-HOUSTON ELECTRIC CO. v. OHIO BRASS CO. et al. (two cases).

Nos. 5,510, 5,511.

United States Circuit Court, N.D. Ohio, Eastern Division.

July 18, 1896

Frederic H. Betts, for complainant.

Frank T. Brown, for defendants.

RICKS District Judge.

These two cases are before the court upon a motion for a preliminary injunction. Case No. 5,511 involves a motion for preliminary injunction to restrain the infringement of the Van Depoele patent No. 495,443, dated April 11, 1893 application for which was filed in the patent office on March 12,1887. Case No. 5,510 involves a similar motion for preliminary injunction on patent No. 424,695, dated April 1 1890, application for which was originally filed on March 12 1887, being a part of application for patent No. 495,443, but was divided in the application upon which the patent finally issued, which was filed October 27, 1888. Both of these patents have been previously adjudicated to be valid. Patent No. 495,443 has been adjudicated valid in the case of Thomson-Houston Electric Co. v. Winchester Ave. Ry Co., 71 F. 192; and patent No. 424,695 has been adjudicated valid in the case of Thomson-Houston Electric Co. v. Elmira & H. Ry. Co., 69 F. 257, and, on appeal, in Id., 18 C.C.A. 145, 71 F. 396. The claims of patent No. 495,443 which are alleged to be infringed by the defendants herein were claims Nos. 6, 7, 8, 12, and 16, all of which are sustained by Judge Townsend, in the case above referred to, in 71 F. 192. The defendants were duly served with notice of these decisions, and with requests to desist from further advertising the infringing devices, and further offering them for sale. Complainant has filed an affidavit of Mr. Coffin showing that they are fully equipped and ready to supply all demands from the electric railways for all necessary parts.

The defenses to these motions are based upon two propositions: First, that the defendants have not infringed, because they have only sold certain parts of the patented combinations claimed; second, that the patents are void, because the inventions claimed in the claims in suit have been previously described in prior patents to the same inventor. The complainant contends that it is no defense for a party sued for infringement of patented combinations that the infringer has only made and sold a part of said combination, if the proof shows that he made and sold those parts for the purpose and with the intention that the purchaser should utilize it by supplying the other parts. This proposition is well sustained by Judge Townsend in the case of Thomson-Houston Electric Co. v. Kelsey Electric Railway Specialty Co., 72 F. 1016, a copy of which opinion is filed and annexed to the affidavit of one of the witnesses in this case.

The patent No. 424,695, in its third, eleventh, and nineteenth claims, covers a combination of overhead suspended wire conductor, the switch plate having depending flanges in an upwardly pressing contact device, which is claimed as an invention. This contact device is named in the eleventh and nineteenth claims as a grooved wheel carried on the end of an upwardly pressed arm. The trolley arm and groove passes under the frog where the electrical contact is with the tips of the roller, instead of by wire to the bottom of the groove. The defendants make this switch device, advertise it for sale in their catalogue, and offer it as an independent device; but, as constructed and sold, it is, in and of itself, of no use, and can only become valuable and useful when attached to the other...