Whitney v. Rollstone Machine Works. BAXTER D. WHITNEY ET AL. VS. THE ROLLSTONE MACHINE WORKS ET AL. IN EQUITY. Where the defendants manufactured under the sanction of a patent of prior date to those held by complainants, which prior patent expired before any proceedings were instituted by the complainants to secure or protect their right: Held, that a preliminary injunction should not be granted against the defendants, even though the complainants were able to show that the defendants infringed upon their patents, and that the inventions secured to them antedated the patent under which the defendants had been manufacturing. Where the complainants have submitted for so long a space of time to the manufacture and use by the defendants of the infringing machine, without enforcing their rights by proceedings at law or in equity, they havlost the right to invoke the summary process of the court, by an injunction pendente lite, and must await the decree of the court upon the final hearing. (Before SHEPLEY, J., District of Massachusetts, October, 1875.) SHEPLEY, J. Complainants claim under letters patent granted to William D. Sloan, March 31, 1857, No. 16,936, extended for the term of seven years from March 31, 1871, and also under letters patent to Baxter D. Whitney, August 7, 1860, No. 29,534, extended for the term of seven years from August 7, 1874. Defendants are manufacturing automatic lathes for turning and finishing irregular forms like those described in letters patent granted to Cheney Kilburn, dated November 22, 1859, No. 26, 192. Complainants having commenced proceedings in equity for an injunction and account now ask for a preliminary injunction. The patent of Cheney Kilburn has expired by limitation, and has not been extended. It was prior in date to the patent of Baxter D. Whitney, but from the affidavits and other documentary evidence it would appear that application of Whitney and the invention of Whitney each antedated the invention and application of Kilburn. Whitney v. Rollstone Machine Works. The defendants manufactured machines under the Cheney Kilburn patent, during the term for which the letters patent were granted, and have continued to manufacture the same machine since the patent expired. During the original term of the Kilburn patent no proceedings were instituted by Whitney or his assignees against Kilburn, or the defendants, or any other persons manufacturing, vending, or using the invention described in the specifications of his patent. More than five years since one of the complainants notified a party making use of the Kilburn machine that he should treat it as an infringement of the Whitney patent, and should at some future time endeavor to put a stop to the manufacture. This notice appears to have been communicated to the defendants. They continued the manufacture openly under a claim of rights, and published circulars with an engraved cut of their machine, and a claim that the Kilburn patent antedated the complainants', and have continued, with the knowledge of the complainants, to advertise and manufacture the same machines. No attempts have been made by the complainants to enforce their supposed rights against the defendants until the filing of the bill in this case. From the evidence to be found in ex parte affidavits, and from a comparison of the two machines, I am satisfied, for the purposes of this hearing, that the Kilburn invention embraces all substantial elements and combinations of the Whitney invention, and that the Whitney invention antedated that of Kil. burn; but, upon the state of facts exhibited in the record in this case, after the complainants have submitted for so long a space of time to the manufacture and use of the Kilburn machine without enforcing their rights by proceedings at law or in equity, they have lost the right to invoke the summary process of the court by an injunction pendente lite, but must await the decree of the court upon a final hearing, when the rights of the parties can more accurately be determined, before summarily putting stop to a manufacture, which, commenced under the sanction of letters patent, has so long continued without interruption. The complainants do not show any adjudication sustaining the validity of their patent, nor, as against the Kilburn patent or these defendants, do they Foster v. Lindsay. prove any such public acquiescence or exclusive possession, or any such diligence on their own part, as would entitle them to invoke the festinum remedium of a preliminary injunction. Motion for preliminary injunction overruled. Rice & Pratt, for the complainants. D. H. Merriam and T. L. Wakefield, for the defendants. In a suit under section 4,918 of the Revised Statutes of the United States, concerning interfering patents, a court may declare either one or both of the interfering patents void on the ground of want of novelty, or any other ground which in a suit for an infringement of the patent would invalidate it. In a suit between parties owning interfering patents, if the court should hold that either one of the patents was void, a decree should be entered annulling the patent, and not merely disшussing the bill or entering judgment against the defendant. The case of Mowry v. Whitney, 14 Wall., 434, commented on and distinguished. (Before TREAT, J., Eastern District of Missouri, October, 1875.) TREAT, J. This is a suit in equity under section 4,918 of the Revised Statutes of the United States, concerning alleged interfering patents. The defendants' patent was prior in date to the plaintiff's, also the application therefor. The plaintiff claims that the invention was by him; that he had, previous to any knowledge thereof by the defendants, not only invented the patent composition, but actually reduced it to a practical and successful test; that he had shown to the defendants the Foster v. Lindsay. manufactured article, and when, as their foreman in the brick business, he was consulted thereafter about manufacturing fire-brick by means of which they could obtain a large and profitable order, he called their attention to the fact that he had exhibited to them, before entering upon their service, a specimen brick of the needed quality; that thereupon he, as their foreman, directed various experiments to be made at defendants' brickyard; that when the defendants suggested subsequently that they proposed to obtain a patent for that mode of making an improved fire-brick, he remonstrated against their doing so, claiming that he was the original inventor, and alone entitled to a patent, if one was obtainable. On the other hand, the defendants claim that it was only after a series of experiments under their direction and supervision, in their own establishment, the success of the mode patented was ascertained. Without analyzing the testimony with the view of determining whether the plaintiff, in his isolated experiments, prior to entering into the service of the defendants, had invented the patented mode of securing the desired result, or had merely experimented so far as to ascertain that the use of sand-rock would furnish the needed glazing in his pottery business, and without inquiring further whether he had not abandoned all purpose of pushing his experiments to ultimate success for fire-bricks, and also without determining to what extent he and the defendants, respectively, suggested the experiment made in defendants' establishment which first resulted in an ascertained and definite value from the compound, whereby the rights of the respective parties as employer and employee would arise, we will first consider the true construction of the act of Congress. The language of the section is peculiar, and the object designed by it is not free from doubt. The section is as follows: "Whenever there are interfering patents, any person interested in any one of them, may have relief against the interfering patentee, and all parties interested under him, by suit in equity against the owners of the interfering patent; and the court, on notice, * may adjudge and declare either of the patents void in whole or part, or inoperative * * * * * Foster v. Lindsay. * * * or invalid in any particular part of the United States, according to the interest of the parties. But no such judgment or adjudication shall affect the right of any person except the parties to the suit," etc. So far as known this section has not received any express adjudication. In Mowry v. Whitney, 14 Wall., 434, an allusion is made to a somewhat similar provision in the Act of 1836. The latter act in the section referred to covered two distinct classes of cases, viz. First, Where there were interfering patents; and, second, where the examiners refused to issue a patent applied for, on the ground of interference with a prior patent. In each of those cases a bill in equity would lie at the instance of either of the parties, and the court could determine in the latter class of cases whether the applicant should have a patent issued to him; and in the former might adjudge either of the patents void in whole or in part, etc. In ordinary cases, where a patentee brings suit for infringement, the defendants can assail the validity of the patent in the manner prescribed; and the decree of the court is binding on the parties. It is contended that, inasmuch as this suit is not for an infringement, the defendant must be confined to the respective merits or claims of the patentees inter se, irrespective of the validity of either. The defendant in this case, among other defences, has set up that the patented compound or process had been anticipated and in use before. either of the interfering patents had been claimed or issued. The evidence fully establishes the fact. In a suit for an infringement, a defense for want of novelty would, under the evidence in this case, be successful, whether the one or the other of the interfering patents was the basis of the action. The case of Mowry v. Whitney goes no further than to hold that if a patent is to be annulled ab initio, the proceeding must be at the direct instance of the government, but it does not decide that the question between conflicting patents may not be fully and finally determined as to the parties to suit for interfering patents. The plaintiff in this case contends that he has the prior and better right, although his application and patent are of subsequent date, and that the court is bound to adjudicate solely |