UNION SWITCH
&;
SIllNAL CO."'·. JOHNSOS RAILROAD SIGNAL
co.
867
UNION Swrrcit:'&SiGNA:1.' CO. 11. JOHNSON "';l";:" f; :r" ,
RAILROAD
StaN-At
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'Co.
Wircu(t CcrU"t;:b.Nm,o J'fJr,ey: 1.
Under letters patent No. 2M, 716) issued september l1,l883,to,George W. Blodg-' ettand George R. Hardy,:for "Improvements 'ill railroad signals," lIilioonse 'Wasl to a oortainraUroadcompany til, use" the patented .ar1;iole.! A, , learning that the company erect such signals .at a tail1 junction; submitted a proposal to furnish them complete at a certam p1'l00. Thlp, proposal'was accepted, and the lligualll were made' and accordmgly. B'tlld,that the transaction was that of manufact,1,lr:e, and 1181e on the one side and of JluJ;9base on /lther, and that the manufacturer was guilty ,of infringement, and coUld.' bot eXi1USe Ilimsclf on'the groundthatIn making the signals he Was the mere serVant or emptoye of the liool1see.· ', A licensee to ""make and use" a patented article Is not a necessary party com· plaiIl8nt in a bill,brough.tby the ownerQl thea patent for infringement. '
PATENTSPOR
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I. "S.!M:E-NEOESSARY PA.RTIES.
In Equity. Bill by the Union Switch & Signal Company against the John8on Railroad Signal Company for infringement of a patent. Decree for complainant. J. Snowden BeU, for complainant. GeorgeW., Millet, for defendant. GREEN, Dist!i(}t Judge. The bill of complaint in this cause chQ.rges the infringement by the defendantofJetters patent No. 284,71p,granw1 11, 1883, to GeorgeW. Blodgett and Geol'ge R.Hardy, fOl "improvements in railroad signals," and by them assigned to the complainant. The defendant, in its answer, practically admits the infcing&' merit as charged, but seeks,to avoid any responsibility therefor, upon: tpe ground that the Bostoll & Albany Company, for whom tli'e infringing signals had Qeenmariufa,cture,d by the defendant, had, previ. ously to the assignment of the letters patent to the complainant, been duly and lawfully licensed, by the patentees to make and use the said c'improvedrailroad sigl1 als" protected by said letters patent upon all linea. ,owned or operated by that company to the full end of the term of said letters patent, and .that in thEt manufacture of the. infringing sigIlals the defendant was acting solely as a servant or employe of that companY"and strictly under and in accordance. with the terms of the license. rne important allegations in the answer, are as followa: this furthllr admits that. the said Blodgett and Hardy executed to the cotriplainanta writing purporting to be a transfer of a certain interest,in said alleged patent, but denies that the same granted to the.complainant exclusive rights or privileges, but charges and insists that said rigbtso transferred was not an exclusive right or interest in said alleged letters patent, and dOes not purport to , be 'such, but that they expressly.re-. served to the Bosto,n ,& Albapy RaIlroad Company, itEl servants, agents,1'ssigns, or representatives, the rigbt, license, aqd priVilege to make and ,use said improvements coveted ,by said. Imeged letterS natent upon all lines owned or operated by the said Boston &; Albany .Railroad Company. to the full ehd of the term of the:sald patent: and this defendant denies that said complainant is; or ever has been, in full andexeJ usi ve possession. and enjoyment of the privlIeges
868'
FEDERAL REPORTER "
vol. 52.
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secured, or claimed to be secured, under and by virtue of said alleged letter3 ebarges the truth to be Boston & Albany Railroap Oompany. in pursuance of their right, and by virtue of the certain license made. executed. and delivered saill BJollgett.aQd Hardy, under Ileal, prior to the assignment to said complainant,' M've and now are exercising the privileges of making and using said railroad signals t:!PO? owned it. and tb!lt, wto do. denies using railroad signals in material that it is now in an'd9tu;ration as in Said l;Il'tent pf ferSf'J',6r elsewhere in the or,that it bas eve.tl oonatructed.80ld, ()rused .said railroad BignaM.material parts Bubstantiatltthe same in constructlou'llond operation as tb.ElagElI).t, servant. and of the said Boston & .AJUany H.ailroadCompl},uy;.it tain appliances in material parts similar in construction and operation to thcll!l&;;meotioned in saiddetters :pRtent. but th'at the same were ordered by and tis,d upon 'the ral'lroads oW'tI't\d and operated by, for the exclUSive use the Boston & Albany Railroad Company; and this defendant claims that it 11M .'Ij'y: ,re\l.aon., Qfllaid reservation in the assign'" '.,' The license to the & Albany Railroad Company, referred to by the defendant in its answer, is as followS: "Whereas, letters patent of the United; ,states No.2S4.716 were granted September 11. 1883. to George W. Blodgett and George B. Hardy for an imjD app Railroad foHlieirowIl :Now these 'Witness, that, '111 'af one ddllitr to llii 'pam by said: ctllnpanf j 'and for bthetgood the receipt otallofwbichds 'herebyacknowl" :(}et!rge ,W. ,B.lpll,gett have .80.(1. p,fl;lsmtS do :.se)). grant. l;l.nd traQsfer railrofd S1'gnals upori 'air £llll' hnes 'owned 'or 'operated by them 'to 'the full end of'llbe,telitti 1o:h,laidpate'lIt11" ' ;'c,;, ',,: , ' , . , . .. the Boston' & ·. ;and·tQu:seltfter manttfacttire, upon' all lines owned or opthelli, tlie protebted by the. :reto. Whether' the' lIcense is ra . mere naked limIted hcense, not capable 'O'fiLssrgnmebt'6i. the :Boston'&Albany Railro'adCompany, as wRsargued' oyt:he doul1s,ll1for thecbmplainant, or whether it should receive a broadercon;sti'Udidn, as the de'fendant insists, become immaterild by 'the Murtbfthe matters in issue. Ad4uestions in mitting thewprd I' 4$,signs" in the Jicense demands a, construction of the and would 811thorize the assignment by the railroad of all rights and privileges.secured thereby to any person or corporation wh()ll'l'it might choose to make its assignee, yet such eon'strtibtion"would in no\ivisell.id,the'de'fendant in its attempt to relieve itsltdtnitted . There is not a defendant was either an sigpee Of; .ll.Jl<1lmSee oOhe Albany Railroad Company. No pretense of sUch assignment, or, of snch license is made in the answer of
UNION SWITCH &: SIGNAL CO. 11. JOHNsON RAILltOAD sIGNAL
00.869
the defendant. The defendant puts its defense upon entirely different grounds. It assUmes to bean employe or an agent of theB08ton&Albany Railroad Company, and, as such, it claims that in the manufacture of the railroad signilJs in question it was directly working under the license, and hence its action is not amenable to the law. A defense of this charfound1;ld,would have great weight. But, unfortunately for acter, the defendant, the testimony wholly fails. to justify the assumption. No evidence has been offered tending to show an agency between the defendant and the railroad company, or a contract of employment, in the legal sense of those terms. What the testimony does clearlyshow'Vithout any contradictionis this: The defendant, being informed that the railroad company intended to erect at a !ltation upon one of its lines known as" Athol Junction" the signals in question, submitted a proposal to furnish themcomplete at and for a certain price. This proposal was, after consideration, accepted by the railroad company, and the nals wllre consequently erected by the defendant. This is the ",hole transaction. The defendant was manufacturer lind seller. The railroad company was buyer. No other or different relationship existed between the parties to this transaction. To assert that the defendant was' the agent or employe or servant of the 'railroad company, in the sen,sein which it uses those descriptive terms in its answer, is simply to perv'ert their'distinctive and legal 'meaning. The defendant was neithet,"in such sense as would enable it to find any justification for its infringirlg Besides, the act in the license to the railroad "to make"arid "to use" ina .limited way only. The and" sold" to others to '. It can hardly be contended tbat liberal construction of the license would authorize tlie licensee ;'to the signal's to others: The rights "to make," "to use," aridtCtosellll'a patented article are S6verable and distinct. Each right is subject veyanc6, in exclusioll of the others. The license to do the oQe'(Ioes'n{)t include, 'except,'p Jthaps, under special circumstances which ha1Te':h6 existence here; the right to do the other. ' " It was urged upon the argument that the bill of complaint Was murrable for waItt' bf necessary parties, it being insisted that the Boston & Albany Railroad 'Company, because of the interest vested in it by the license, should have been made a party complainant. It is only nebessary to say that the rule is otherwise. Notwithstanding the license, the legal right in the monopoly created by the letters patent remains in the patentee, and he alone can maintain an action against a third party, who commits an infringement upon it. Gayler v. Wilder, 10 How. 495. There must bea decree for complainant in accordance with the prayer of the bill.
870
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, Claim 8 b'tletters pil.tent No. 2::l0,45!l; i'ssued October 1, 'l879. to WIard & Bullock, for ali ,iilllProvemepll of··11> "reversible double mold· boa/.'d in, with a J;ElyersU>le moldboard plow, "dl!:!clo!:!e!:!,patenm, , bllHll1veltY,1 alId is 'vaUlf. ',.' " " ,,' .,! 'J:
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, ',A.double laud!:!lde Wid the the furrow , 'side, lSan'6s!:!enthdele'mllilt of the cIll,1lli, ai:l(1 a jointer lacking thi!:! feature,does"DOt' inf!'Uige, although, the wovd!:! "doUble ,moldboard" were iD!:!erted, by the l\Ia.tellto:Oice, without !:!uflicient rea!:!on.
SyrucuseOhilled 'Plow Oompany against of a dismissed. . , ',(1eo. W. lIey,' for ., ' . '.. ,B: Belden, for dlilferidant. ',.WALLME, Infringement ifialleged of the third claim of letters Pl1tent to Wiard, & Bullock October 7, j'879, for an .improvetnElIlt insule-hill plows. ,The claim reads as folThe 'do,uble moldboard joilder, in combination constructe4. apd arranged substl,l.n:tially as and for A ble jointer is of. no ,exceptl?n,a. .; Such plo\Vsoontai'n a reversible moldboard. T4e, invention Qf :tbe .qlaim resides in combining the, double of the plow, and capable of being ;reversedwhe:qthe main moldboard is shifted, with a reversible main moldboard. 'l'he, function ()La, jointer is to turn lL small furrow in advance qf the furrow made by main moldboard., A reversible jointer is . reversible main moldboard of the plow, ,capable ofa<ijustment, so as to turn a furrow to the: right or left .hand, at. th,e will of the operat,or. ''fhe, (;lxpert c6ncedes. that there is not found in any prior patent exhibiting tpeprior state of the l;lrt a plow having a J9inter combined with! a reversible mold.board. ,I have no reasontoclo,ubtthat such a com,bination involved pa.tentable; lJ,Qvelty, ana aO,ew and' useful result; nor thl'l£ the ljlpitation inserted a double moldboard is made element, wall, .an 90e,8nd. required by the patent office without sufficient rElaspns. . ,": ),1 that fuEl defendants have not infringed the claim in controversy, and that their plows do not have the double moldboard jointer of the claim. The file wrapper of the application for the patent shows that the patentees' original claim was as follows: "The reversible jointer, in combination with the reversible moldboard plow, constructed and arranged substantially as and for the purposes specified." The applicants were required by the patent office to
XnEqqity. ,Strait
S'uit