WESTINGHOUSE AIR-BRAKE CO. tl. BURTON STOCK-CAR CO.
619
other appliances or their mechanical equivalents, to which he has the exclusive right. He must be held to a fair construction of the combinations set forth by him, and, in view of the patent and the exhibits offered, I do not think that the crossed shoulder straps used by defendants, with their method of attachment and support, constitute an infringement of the second or third claims of the patent. The first and fourth claims, obviously, are not infringed. A decree will be entered dismissing the bill of complaint. WESTINGHOUSE AIR-BRAKE CO. v. BURTON s'rOCK-eAR CO. (Circuit Court, D. MaIne. September 30, 1895.) No. 463.
1.
PATENTS-PRELrnINARY
Although, for the purposes of this hearing, defendant acquiesced In an adjUdication in another circuit in which the patent was held valid, and made no question as to infringement, yet, inasmuch as it appeared than the complainant did not use the patented device, but only made and sold It, and that the defendant did not manufacture, but only used, the patented device, and had no intention of acqUiring additional patented devices, and as It further appeared that there was no difficulty in making full compensation on an accounting for damages, except a possible diffi· culty made by .the complainant itself, interlocutory injunction was refused. Morris v. Manufacturing Co., 3 Fish. Pat. Cas. 67, Fed. Cas. No.. 9,833, and Hoe v. Advertiser Corp., 14 Fed. 914, followed. In determining whether a preliminary injunction shall Issue, public inconvenience is not to be considered, where the result would be to deprive patentee of his property without just compensation. '
OF PRIOR DECISTONS.
B.
SAME-PUBLIC INCONVENIENCE.
This was a bill by the Westinghouse Air-Brake Company aWlinst the Burton Stock-Car Company for alleged infringement of letters patent No. 376,837, granted January 24, 1888, to George Westinghouse, Jr., for an improvement in air brakes. · John F. A. :Merrill (George H. Christy and Frederic H. Betta, of counsel), for complainant. Fish, Richardson & Storrow, for defendant. PUTNAM, Circuit Judge. The patent in issue, so far as it con· . cerns.this cause, has been sustained, after a full hearing on the merits, by the circuit court, and also by the court of appeals in the Second. circuit, in a suit by the present plaintiff against the infrin· ging manufacturer. Westinghouse Air-Brake Co. v. New York AirBrake Co., 59 Fed. 581, and 11 C. C. A. 528, 63 Fed. 962. For the purposes of this motion the defendant is content to rest the Clli3e on that fact, but reserves for the final hearing all questions as to validity of the patent or its scope. There is no issue on the question of infringement. But the defendant is not a manufacturer, and only uses a number of the infringing devices, with no apparent intention of making any additions thereto pending thilS litigation. It also appears that the complainant does not use its own devices, or receive any, royalty from their use, bot manufacturea
620
I'EDERAL REPORTER,
vol. ,10.
them in connection with certain other parts, which are not in1issue here, and that it does not sell them except in such connection; that the price which is demanded and received for each set of connecting parts, including the patented device, is $40 ; that the patented device has not been sold separately; so that there is no fixed price or royalty py which damages or profits can be certainly determined. 1,.'he defendant uses about 1,200 infringing devices, by it from the manufacturer after sufficient which were notice to it of complainant's claims, and of the pending litigation in the Second circuit. The defendant rests its defense to the pending motion upon the claim that on the facts of the case, substantially as we have stated them, it is not one in which equitable principles require or permit an interlocutory injunction to issue. It sets out especially that the defendant is only a user to u limited extent, as we have already explained; that such use, under the circumstances we have stated, cannot injure the complainant except in a way and to an extent which can be fully compensated for by a pecuniary award; that there is no suggestion that the defendant is not entirely solvent, and able to answer any decree which may be entered against it; that on the question of inconvenience the preponderance is very great against the defendant, to such an extent that, with the rest, an interlocutory injunction would compel the defendant to accede to the complainant's terms before its rights can be finally determined; and that the granting of the motion would also involve great public inconvenience. So far as public inconvenience is concerned, while that may, unde], some conditions, be taken into account, yet it should not be under such circumstances as to deprive a patentee of his property without just compensation, or to put him in a position where there is substantial danger of that result. However, in the present case, the nature and extent of the threatened public inconvenience are not of a character to require our consideration. The propositions touching the inconvenience to the defendant, although put with great force, do not suggest to the court anything which could not be obviated by proper limitations in the injunction order, beyond that degree of inconvenience which the defendant assumed when it purchased the infringing devices after notice from the complainant. The complainant maintains that under the later decisions of the supreme court it is impossible to estimate in this case the damages and profits arising from the infringement, and that, therefore, an injunction is the complainant's only available remedy. But the present motion relates (lnly to the value of the use of the infringing devices pending the litigation. We think there will be no serious difficulty in determining that; but, if there is, it is one of the complainant's own making, arising from its refusal to supply the patented devices disconnected from other parts. As we understand the practice in this circuit, and in some other circuits, the general rule. is that, where the validity of a patent has been sustained. by prior adjudication, as' is the case at bar, after a long, arduous, and expensive litigation,the only question open on aniotion for a prelimintiry injunction in a subsequent suit againstJanother defendant is. the question of infringe;"
WESTINGHOUSE AIR-BRAKE· CO. fJ. BURTON STOCK-CAR CO.
621
ment; the consideration of other defenses being postponed until final hearing. The rule was so stated by Judge Colt, in February, 1893, in Edison Electric Light Co. v. Beacon Vacuum Pump & Electrical Co., 54 Fed. 678, 679, and he further said, in the same case, that the only exception to this general rule seems to be where the new evidence is of such a conclusive character that, if it had been introduced in the former case, it probably would have led to a different conclusion. Whether this practice is in all respects in harmony with the fundamental principles of equitable jurisprudence, or with the expressions found in the best text-writers and judicial utterances, can only be det{\rmined by an appellate tribunal. Philadelphia Trust, Safe-Deposit & Ins. Co. v. 'Edison Electric Light Co. of New York, 13 C. C. A. 40, 65 Fed. 551 (decided by the United States circuit court of appeals for the Third circuit as late as January, 1895), carries this stringent rule against infringers to such an extent as to sustain a temporary injunction where the facts showed all the substantial features of the case at bar, except only, perhaps, the claim of special inconvenience, which we have already said we do not regard as of importance here. If we are to follow these broad expressions, and the conclusions of the case last cited, we would feel compelled to grant the pending motion. Yet, on the other hand, in cases where the facts relied on by the defendant were substantially the same as at bar, Judge Lowell, in the circuit court for the district of Massachusetts, in February, 1883, in Hoe v. Advertiser Corp., 14 Fed. 914, and previously, in 1866, in Morris v. Manufacturing Co., 3 Fish. Pat. Cas. 67, Fed. Cas. No. 9,833, refused preliminary injunctions. If these rulings of Judge Lowell still stand as law in this circuit, this injunction must be refused. We are of the opinion that the present practice has developed, and the broad expressions we have cited were used, without any specific reconsideration of the earlier rulings, or of a case whose circumstances were like those at bar with reference to the character of the infringement, and of the method by which the patentee avails himself of the profits arising from his patent. In Morris v. Manufacturing Co., ubi supra, Judge Lowell said, on page 69: "In the present case the defendants are admitted to be fully responsible for any profits or damages that may be decreed against them. This is a material circumstance. Another Is that the defendants do not make or vend the patented machine, but only use it, so that the injury to the plaintiffs is a loss of their royalty, and not a damaging and constantly increasing competition."
In Hoe v. Advertiser Corp., he said, on page 915: "Nor would it [meaning a preliminary injunction] be of any advantage to the plaintiffs, except to coerce a settlement, for they do not use printing machines, but make and sell them in the market. Whatever they are entitled to in the way of damages, amounts, in effect, to a royalty. Their real damage was suffered when this machine was bought, and Is not affected by the amount or duration of itsuse."
..In each of these cases before Judge Lowell the validity of the patent had been sustained in another district, and the defendant was a user, and not a manufacturer. The conclusions of Judge Lowell apply directly to the facts at bar. In our judgment, they are in
622
voL 70.
hp,rD)ony with the rules of equity jurisprudence; and we think, under the circumstances, we ought to follow them. The Illotion for a preliminary injunction is denied. .
. . ==-===GOULD COUPLER CO. v. PRATT et all (Circuit Court, N. D. New York. November 19, 1895.J No. 6,184. L PATENTS-,-,-WlUT CONSTITUTES INVENTION.
An In'tl'ention does not cease to be meritorious because It Is simple. The test should be, not whether. the mechanism Is simple or complex, but Whether the patentee has given the worId something new; whether the publlc Is rtcher.for his contribution to the art; whether he has produced no'tl'eland beneficial results. Invention shoUld be determined more by an ascertaInment of what the inventor h!l.S actually accompllshed than by a technical analysis of the means used to accomplish It.
S.
SAME-CAR-COUPLERS.
The Browning patent, No. 254,106, fOr an Improvement in car-couplers, which improvement relates to car-couplers of the Janney type, and provides .a successful means for automatically opening, and holding open, the coupler, so that It Is no longer necessary for the operator to go between the cars for any· purpose, covers a meritorious Invention of high order, and was not anticipated by the Hein patent, No. 190,858, or by the Englfshpatent to Talbot, or by any devices known to the prior state of the art; and the claim Is entitled to a wide range of eqUivalents. A lever used for thro.wlng .out the hookS of a car-coupler is the mechanIcal equivalent of a spring, or gravity devices, which accompllsh the same result.
8.
SAME-MECHANICAL EQUIVA:LENTS.
4. SAME-'-IN1l'RINGEMENT.
I.
SAME-CAR-COUPI,ERS.
6.
SAME.
The Bartles patent, No. 337,650, for an Improvement In car-couplers, Which consists substantially In the addition to the Janney and Browninlr devices of two inclined bearings,-one at the top, and one at the bottom, of the drawhead cavity,-by which the locking and unlocking process is facilitated, by permitting the locking dog to slide down and up these inclines, must be confined, so far as concerns the third claim, to the specific details shown and desclibed, and is not Infringed by a device whichomits--the upper. bearing.
This was a suit inequity by the Gould Coupler Company against Pascal P. Pratt arid otherS for alleged infringement of two patent... relating to car·coupler/3.... . P. Fish, and Ernest C. Webb, for complainant. . ;." . Frederic H. arid,t,., F. H. lk:tts, for .. 1 Rehearing
denied December il. Willi.