W.W. Sly Mfg. Co. v. Central Iron Works

• Decision Date: 08 October 1912
• Docket Number: 1,861.
• Citation: 201 F. 683
• Parties: W. W. SLY MFG. CO. v. CENTRAL IRON WORKS.
• Court: U.S. Court of Appeals — Seventh Circuit

201 F. 683

W. W. SLY MFG. CO. v. CENTRAL IRON WORKS.

No. 1,861.

United States Court of Appeals, Seventh Circuit.

October 8, 1912

The bill was dismissed for want of equity jurisdiction, and complainant appeals. It is a suit brought December 12, 1910 on two patents, one having 56 days to run, and the other several years. Defendant was charged with infringing the claims of patent No. 514,097, expiring February 6, 1911, and the single claim of patent No. 703,313, expiring June 24 1919. Service of subpoena was made December 13, 1910 appearance of defendant filed before the expiration of the earlier patent, and answer filed February 6, 1911, being the last day of the patent term. The answer denies novelty and usefulness of the alleged inventions, alleges anticipation prior knowledge, and use, and denies infringement.

It is stated in the bill that the improvements claimed in the two patents are capable of being conjointly used, and have been so used by complainant in the making, use, and sale of machines covered by the first patent. A prior adjudication of the federal Circuit Court for the Northern District of Ohio sustaining the second patent is also averred. Temporary and permanent injunctions and an accounting and damages are prayed. The case was put at issue February 16, 1911, and on August 4, 1911, an ex parte order was put at on motion of complainant, extending the time to take testimony 90 days. Defendant filed a motion August 9, 1911, to set aside this order, but on August 8th complainant served a notice that it would examine witnesses on August 11th. It was stipulated that the time for hearing the motion to set aside the extension order should be postponed to September 11, 1911. The motion was heard on affidavits, showing that the delay in taking testimony was due to the pendency of the suit in Ohio referred to in the bill, in which suit the bill of complaint had been dismissed by the circuit court, but was decided in favor of complainant by the Circuit Court of Appeals of the Sixth Circuit July 12, 1911.

The motion to set aside the order of extension was heard September 20, 1911, when the court vacated such order, and made a final decree dismissing the case for want of jurisdiction. The present appeal was taken from this decree.

J. B. Hull, of Cleveland, Ohio, and Robert H. Parkinson, of Chicago, Ill., for appellant.

Thomas A. Banning, of Chicago, Ill., and Howard G. Cook, of St. Louis, Mo. (George F. Haid, of St. Louis, Mo., of counsel), for appellee.

Before SEAMAN and KOHLSAAT, Circuit Judges, and SANBORN, District judge.

SANBORN District Judge (after stating the facts as above).

The ground upon which the bill was dismissed is thus stated in the brief for appellee:

'The court below became convinced that appellant was not entitled to equitable relief by way of a preliminary injunction, and that it could not, under the usage and practice of courts of equity, properly assume jurisdiction of the cause, especially as to claim 1 of patent 514,097, with which the remaining claims of said patent and patent 703,313 were inseparably joined by the thirteenth

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