WHITE V. LEE.
789
be proved to entitle the plaintiff to recover. Code, § 549, subd. 4. It is therefore within the injunction, and the plaintiff's agent and attorneyare guilty of contempt in disobeying this order by commencing the recent suit without leave of this court, if the injunction order was duly served on them or came to their notice. The proof of service of the order, however, is too. general and loose to warrant the court in imposing a fine; a reference will, therefore, be ordered to take proof as to the service of the original injnnction order. The proceedings in the superior court on the part of the defendant, in answering and in noticing cause for trial, do not purg{'l the plaintiff's agents and attorneys of their contempt in disobeying the order, whatever may be their effect otherwise; nor does the extrardinary delay of the bankrupt in proceeding for his discharg{'l. The remedy of the creditor has long been. open to vacate the stay, Until regularly discharged, Qr modified, it must be respected
WHITE
and others v. LEE. January 20, 1882.)
(Gire'uit Court, D. Massachusetts.
1. 2.
PATF.NTS FOR INVENTIONS-PATENTABLE DIFFERENCES. I\S
In a patent for an improvement 6n shoe-tips, the fact that one takes twice much sole leather as the other is not of itself a patentable difference.
SAME-LICENSE FEES-SUIT FOR ROYALTIES.
In a suit by a patentee against a licensee for licen·se fees, for the use of a patented improvement, something corresponding to an eviction of the licensee must be pleaded and proved if he would defend against an action for royalties. 8. SAME-IMPHOVEMENTS IN SnoE-TIP8- VAMPS DISTINGUISHABLE.
Where plaintiffs' claim must be construed as a "shortened vamp,"-that;isa vamp which cnds substantially where the box-toe begins, as the means of uniting the box toe and tip to the upper, and .defendant's vamp is carried for full length over the toe and lasted with the sole, it cannot be considered the use of plaintiff's shortened vamps.
James E. Maynadier, for complainants. George L. Roberts, for defendant.· "LOWELL, C. J. The plaintiffs entered into a written contract· with the defendant, by which they gave him a license to use the improvements contained in two certain patents to them, of which Hugh White, one of the plaintiffs, was the inventor. Both patents were for improvements in shoe-tips; both have been reissued, and are in the record.· This bill is brought in respect to one of them, No. 190,655, issued May 8, 1877, and reissued January 7, 187:9, as
790
fEDERAL BEPORTED.
No. 8,536. The case, which has been before the court on matters of pleading, (3 FED. REP. 222; 4 FED. REP. 916,) now comes up for final disposition. The contract provided, among other things, that the defendant should pay 10 cents for each pair of shoes which he should make containing the improvements, or either of them, or any material part thereof, but he might buy of tha plaintiffs certain stamps for one cent each, and one stamp affixed to each pair of shoes should be a performance of this condition. One of the defendant's agreements was: "He will not in any way contest the validity of said patents, or either of them, or any reo issue or renewal thereof, nor the sufficiency of the specifications, or the validity of the licensor's title, nor the fact of his infringement in the manufacture and sale of said shoes." One of the mutual stipulations was: "In case of the reissue of said patent, the grant herein shall be good under said reissue, and the foregoing stipulations and agreements, on the part of the respective parties, shall be binding upon them in the same manner and to the same extent as though such reissue had never been obtained." I intimated on a fonner occasion that the stipulation not to con· test the fact of infringement was insensible and repugnant, inasmuch as the agreement is only to pay for such shoes as embody the invention, or some material part thereof, and both counsel agree that thequestion of infringement, or what would be infringement in a patent case, is open. The defendant has introduced evidence tending to prove that thereissue is void for several reasons, and that the original patent, No. 190,655, was void for want of novelty; and there certainly is a very striking likeness between the shoe-tip claimed in this second patent and' one which was described and drawn, but not claimed, in thefirst, No. 159,991. The patentee himself, (page 183,) though hesays there is a vast difference between them, can point out none, except that "one takes twice as much sale leather as the other," which is not, of itself, a patentable difference. The question has been argued whether the defendant can resist an action for license fees, under a. contract, by proving that the patent is void. In his very thorough brief the defendant cites all the important cases; and they in a. cursory examination seem to present a, difference of opinion, which on a. more careful study will be found to, disappear. Many olthe decisions treat a. licensor as a landlord, and a licensee as his tenant, who cannot dispute the title so long as he has the occupancy of the premises. Many of the oases, such as-
/
791
Bowman v. Taylor, 2 Ado!. & E. 278; Smith v. Scott, 6 C. B. (N. S.) 771; Wilder v. Adams, 2 Wood. & M. 329, are actions at law, and
tUt'll upon the effect of a recital or covenant in a sealed instrument. The agreement in this case is not under seal, and this is not an action at law. Other cases state the general doctrine in a somewhat absolute and general way, hardly admitting exceptions. See Crossley v. Dixon, 10 H. L. Cas. 293; Clark v. Adie, 2 App. Cas. 423. On the other hand, there are cases in the United States which seem to hold that the invalidity of the patent may always he proved, such as Harlow v. Putnam, 124 Mass. 553. But these were ca.ses on either side which required no nice distinctions. The law is, I think, that a plea or answer that the patent is void, is not, of itself, a sufficient defecse, but thl:\t evidence of what may be cl;tlled an eviction is such defense. The difficulty is to ascertain what amounts to an eviction in a patent case. It is easily discovered whether.& tenant of a certain parcel of land has or has not been evicted; but, if a patent is void, still the licensee may have had all the benefit of a valid patent, because his exclusive title may never have been disputed. In Lawes v. Purser, 6 El. & Bl. 930, 932, the counsel for the plaintiff admitted that if everyone had publicly nsed the patented invention, that might be equivalent to ,an eviction; but contended that a simple plea that the patent was void · might mean merely that t.he pleader, when he began to draw his plea, had discovered a technicai flaw which no one elsa had thonght of; and the judgment pursued this exact line of reasoning. In a case in Massachusetts, the defendants, who were licensees, and had used the patent to keep off competition, were said by THOMAS, J .,to have had all the benefit of a valid patent. Bartlett v. Holbrook, 1 Gray, 114. In New York, in a case which was twice brought before the court of appenls, it was held- F'i.,st, that mere invalidity of the patent was not a defense; and, second, that a repeal of the patent was a defense. Marston v. Swett, 66 N. Y. 206; S. C. 82 N. Y. 526. These cases point to the true distinction, however difficult its application may sometimes be, that something corresponding to eviction must be proved if a licensee would defend against an action for royalties. In the present case I do not see any evidence that the defendant, if he practices the invention, has bAen "evicted," either bycompetition or otherwise, in such a way as to affOrd a defense, in face of his express stipulation not to set up the invalHity of the patent, supposing that to be equivalent to the estoppel which the law implies, which is the most favorable view for the defendant.
192
FEDERAL REPORTER.
I do not find, however, that he has practiced the invention. The only claim in controversy is the first of the reissue: "A boot or shoe provided with an outside box·toe and tip in one piece, ma(le from sale leather, separate from the sale, and united to upper and sole, substantially as descrihed." The description in the specification, the state of the art, and the history of the grant of the patent, make it necessary to construe this claim as including a "shortened vamp" -that is, a vamp which ends substantially where the box-toe begins-as the means of uniting the box-toe and tip to the upper. This is the combination which was described and patented at first, and it is what the first claim must now mean or it is void. I do not consider the defendant's vamp a shortened vamp in this sense; it is carried for the fHlllength over the toe and lasted with the sole; stock is saved by rounding off the the corners, but not in the direction of the length of the vamp; anel the plaintiffs' very narrow claim will not admit of calling this vamp an equivalent for their shortened vamp. Bill dismissed, with costs.
THE WILLIAM LAW.
(District Oourt, D. Delaware. 1882 1. PILOTAGE-REGULATIONs-AUTHORITY OF STATE OF DELAWAR_
The act of 1789 had the effect to confer on the state of Delaware authority over the subject of pilotage on the navigalJle waters withitl her limIts, and while she could not pass any law excluding the duly.qualified pilots of adjoin. ing states on the same waters, she could impose such regula! ions as she deemed conducive to the public welfare upon pilots licensed under her laws. 2. SAME-OFFER OF SERVICES-HALF PILOTAGE.
The breakwater in Delaware bay constitutes, within the act of congress and the usages of navigation, a "port," in the proper and maritime sense of the term, and the offer of a Delaware pilot to take a vessel from sea into the breakwater is the exercise of a legitimate authority on his part, and the refusal of the vessel to accept his services entitled the pilot to half pilotage according to the state law. 3. 8AME-RECOVERy-REMEDY IN REM.
Where thestate law, in a distinct and separate clause, gives the alternative of proceeding to recover pilotage by a libel in admiralty in any United States district court, and where, by rule 14 of the general rules in admiralty adopted lJy the snpreme court of the United States prior to the passage of such state law, it is clearly indicated that the libelant in a snit for pilotage may elect to proceed in rem or in personam, the in rem is propel' in suits brought uuder the state statute.