Tubular Rivet & Stud Co. v. O'Brien

• Citation: 93 F. 200
• Decision Date: 29 July 1898
• Docket Number: 997.
• Parties: TUBULAR RIVET & STUD CO. v. O'BRIEN et al.
• Court: U.S. District Court — District of Massachusetts

93 F. 200

TUBULAR RIVET & STUD CO. v. O'BRIEN et al.

No. 997.

United States Circuit Court, D. Massachusetts.

July 29, 1898

Fish Richardson & Storrow, for complainant.

William A. Macleod, for defendants.

LOWELL District Judge.

The bill makes the following allegations: The complainant is the owner of certain patents for setting lacing studs, which patents are embodied in machines made by it. These machines it does not sell, but licenses their use by a lease which provides that the licensees shall use in the machines only those studs which are manufactured by the complainant, and that, upon violation of any of the conditions of the lease the right to the further use of the machine by the licensees is forfeited, and the complainant may retake possession thereof. The respondent sells, and offers for sale, to these licensees, studs of his own manufacture, well knowing that these studs are to be used in the complainant's machines in violation of the provisions of the lease and of the complainant's rights, and expressly intending that his studs shall be so used. He has induced and persuaded, and still induces and persuades, the licensees to break their contracts with the complainant, and to infringe its rights under the letters patent. Wherefore the complainant asks for an injunction limited in its terms, and for an account. To this bill the respondent has demurred.

The complainant contends-- First, that, by using the respondent's studs in its machines, in violation of the terms of the license, the licensees become infringers of the patent; and, second, that by selling his studs to the licensees, and by inducing and persuading the licensees to use his studs in the complainant's machines, and so to break their contracts with the complainant, the respondent has been guilty of the tort of 'contributory infringement,' so called.

That the first point is well taken I have no doubt. The difficulty is with the second. For both its contentions the complainant relies upon Heaton Peninsular Button-Fastener Co. v Eureka Specialty Co., 25 C.C.A. 267, 77 F. 288, decided by the circuit court of appeals for the Sixth circuit; and for the second contention upon Thomson-Houston Electric Co. v. Kelsey Electric Railway Specialty Co., 22 C.C.A. 1, 75 F. 1005, decided in the circuit court of appeals for the Second circuit. Unless the decisions in these cases are opposed to some decision of the supreme court or to some other decision of some circuit court of appeals, I am practically bound by their authority. Beach v. Hobbs, 82 F. 916.

In the first-named case (Heaton Peninsular Button-Fastener Co. v. Eureka Specialty Co.), the bill was much like that in the case at bar, and the demurrer to it was overruled. It is true that the bill in the case at bar omits one statement made in the bill filed in Heaton Peninsular Button-Fastener Co. v. Eureka Specialty Co., viz. that the studs sold by the respondent were adapted solely to use in the complainant's machines; but in Heaton Peninsular Button-Fastener Co. v. Eureka Specialty Co. the court laid little stress upon this statement, and based its decision mainly upon the allegation, which is found in both bills, that the respondent induced the users of the complainant's machines to infringe the complainant's patent. Upon the authority of Heaton Peninsular Button-Fastener Co. v. Eureka Specialty Co., and especially upon that of Thomson-Houston Electric Co. v. Kelsey Electric Railway Specialty Co., which case will be considered hereafter, the respondent's demurrer must be overruled.

By agreement of parties, the hearing upon the demurrer was coupled with a hearing upon the complainant's motion for a preliminary injunction. From the evidence in the case, I find that the respondent William O'Brien sold to some of the complainant's licensees studs of his own manufacture, well knowing that these studs were to be used in the complainant's machines, and that he sought a market for his studs without regarding whether those who bought them from him bought them for use in the complainant's machines or not. The respondent's studs could be used, and were sometimes used, in machines other than the complainant's, and that use, of course, was legitimate. The studs in themselves were unpatented. The respondent knew the existence of the complainant's patent, and had sufficient knowledge of the terms under which the complainant's licensees operated the patented machines to understand that the use of his studs in them would constitute a breach of the contract of lease. In answer to questions, he told the licensees that, if they got into trouble, he would himself furnish them with a machine of his own manufacture which would answer their purpose quite as well. Further than this, it was not shown that he persuaded or induced the licensees to infringe. For the purposes of this hearing, the validity of the patent in suit was admitted.

The question presented is this: Does one who sells an unpatented article to another, knowing the use to be made of it, become liable as a contributory infringer if the proposed use is an infringement of a patent?

In Thomson-Houston Electric Co. v. Kelsey Electric Railway Specialty Co., ubi supra, the respondent sold 'trolley stands,' so called, an unpatented article, and the evidence showed that he sold them indifferently to those who intended to use them legitimately and to those who intended to use them as an element of the infringing manufacture of a patent article. The evidence of knowledge and intention in Thomson-Houston Electric Co. v. Kelsey Electric Railway Specialty Co. was certainly weaker than in the case at bar, yet in the former case the court held that an injunction should issue, carefully guarded in its terms. 'It sufficiently appears,' said the court, 'from the defendant's advertisements and affidavits, that it was ready to sell to any and all purchasers, irrespective of their character as infringers. ' The injunction 'does throw upon the defendant the duty of careful investigation into the objects of the purchasers of its stands, and of an abandonment of indifference as to whether they are seeking to trench upon the rights of the owners of the patent.'

The doctrine that one who furnishes materials, knowing their proposed use, becomes thereby a tort feasor, if the proposed use is a tort, is certainly novel as applied to most kinds of torts. A lumber dealer who knew that the boards he sold were to be made into a fence to be erected in a particular place could not, I think, be held to be a tort feasor, though the proposed fence constituted an obstruction to a right of way subsequently discovered. In Thomson-Houston Electric Co v. Ohio Brass Co., 26 C.C.A. 107, 116, 80 F. 712, 721, it was said by Judge Taft, who took part in the decision of Heaton Peninsular Button-Fastener Co. v. Eureka Specialty Co., that 'an infringement of a patent is a tort analogous to trespass or trespass on the case. From the earliest times, all who take part in a trespass, either by actual participation therein or by aiding abetting it, have been held to be jointly and severally liable for the injury inflicted. ' With all due respect for the learned judge, it must be observed that the accuracy of the statement just quoted depends altogether upon the meaning attached to the words 'participation,' 'aiding,' and 'abetting.' In a sense, a trespass is aided if the trespasser is fed during the trespass. Yet it can hardly be contended that an infringer's cook is liable as a contributory infringer. Probably she would not be liable even if she knew of her master's wrongdoing. Again, no aid is more potent than money. Is one who lends money to an infringer liable as co-infringer? Many...