under the patent, .before the present suit, doubtless the records would be evidenoe that he' had brought suits and prosecuted them to final judgment. They are not competent, however, as admissions of third persons, because the defendant oannot be prejudiced by suoh admissions. The effect of such deel'ees is considered by Mr. Justice NELSON in Buck v. Hermance, 1 Blatchf. 322, where he held that, although admissible upon mo,tions for a provisional injunction in which the ordinary rulesof evidence do not obtain, they are proceedings inter alios. and therefore not competent On a trial upon the merits. The motion is granted.
TIlliE TELEGRAPH Uo. v. HIMMER and others.
(Oircuit Court. 8. D. NetD York.
PATENTS-ESTOPPEL. . ,
The inventor,of a certain mechanism assigned. the improv(!ment to his em.ployers, by whom it was patented.. While in the same employ he 'ordered a mechanism to be made which he represented as a modification of the patented invention.. After leaving the service of his employers hemaDufactured machinery identical with what' he had previously ordered to hamade., Held. that he, and those in privity with him, were estopped to deny that the mechanism in question was covered by the patent.
In Equity. B. S. Clark, for complainant. Roscoe Conkling arid E. N. Dickerson, Jr., of counsel Lee « McClure, for Himmer and Uarey. B. F. Lee,'df Munsel. WALLACE, J. ' The peculiar facts of this oase authorize the granting of a preliminary injunction as to Bome of the defendants, although the complainant's patent is of recent date,and has nev.er been adjudicated. The defendant Himmer was the inventor and assignor to the complainant of the improvement in electric clocks, described and claimed in the letters patent of the complainant. While he was in the employ of the complainant as its superintendent he ordered certain clock mechanism to be made, which was identicl;l.l in parts and arrangements with that now sought to be enjoined, respresenting it to be one of the modifica.tions of the invention secured by the patent. Special tools and dies were obtained to construct this mechanism, and the complainant's officers, assuming that the ant was protected by the patent, have embodied this. mechanism in their clocks, nnd introduced them t.o the public. After Himmer left the complainant's employ he induced the manufacture:rswho were then' making this clock mechanism for the complainant, to supply 'him with the various parts sufficient to make a number of complete
cl1ocks. These have been put together by him, (or his wife, in whose name the clock.making business is carded on,) and through the agenoyof the defendant Carey, who seems to have been cognizant of all the facts, and to be the principal prompter of the transaction, are now being introduced to the public in competition with the complainant's clocks. Upon these facts Himmer"is estopped, for the purposes of· a motion like this, from contesting the validity of thepaterit,. or denying that the clock mechanism he employs is covered by the claims of the patept. He cannot be heard to assert either' of these defenses after inducing the complainant to acquire the patent and engage in making and selling clocks under it, such as he now undertakes to make and vend. Carey occupies no better position, than Himmer does. He is Himmer's alte'!' ego in thesoheme of pirating the complainant's rights. His general denial of community of interest with Himmer goes for nothing, in view of the facts and circumstances which are set forth in the complainant's affidavits, and which are sufficient to oall upon him for a full and explicit disclosure of his relations with Himmer, in order to exonerate himself. Np case is made for an injunction against the defendants than Himmer and Carey. As to Himmer and Carey, an injunotion is granted; as to the other defendants, the motion is denied.
GIBBS V. HOEFNER
((JirlJuit (Jourt, N. D. New York. Febrnary I, 1884.)
A patent will not be declared void for inutlIity if it possesses any utUlty 'Whatsoever, even the slightest. .
BAME-LICENSE TO USE NOT ASSIGNAHLE.
A license to .use a patented process at the licensee's place 01 lIuaUlt:il. associate others with him in such use, is not assignable.
COXE, J. The oomplainant, who is owner of a three-fourths interest in letters patent issued for an improvement in the manufacture of soap, seeks to recover the gains and profits which have accrued to the defendant Hoefner by reason of his alleged infringement. The other defendants are thtl owners of the remaining one-fourth interest and were impleaded because they declined to join with the complainant. No personal claim is made against them. The patent expired April 25, 1882. Two defenses are interposed upon the merits. The defendant insists-First, that the patent is void for want of utility; ucond, that he has not infringed.
James S. Gibbs, complainant in person. Adelbert Moot, for defendant.