TOLEDO MOWER & REAPER CO. V. JOHNSTON HARVESTER CO.
where they might be compelled to produce the same in chancery cases; and this power, with the unquestioned right of complainant to examine all the agents and employes of the licensee as witnesses, seems to me to give all the facilities required for a complete remedy at law. The fact that this licensee has, by its president, obtained some kind of settlement with the heirs and legatees of Bramer can, it seems to me, cut no figure upon the question of jurisdiction in equity at the suit of complainants. If the defenaants have, by their dealings with these heirs and legatees, acquired a defense as to this claim for royalties which can only be set up in a court of equity, they are the proper parties to invoke the aid of that court for that purpose. If the relations between the trustees and the heirs or devisees of Bramer were such that the payment to the heirs and legatees might furnish an equitable defense to an action on this license, then the defendant may be obliged to come into a court of equity; but that does not clothe the complainant with the right to do so. The decision of the supreme court of the United States in Root v. Railway 00. 105 U. S. 189, seems to proceed upon the ground that all patente'l3s have an adequate remedy at law in suits against infringers, except in cases where there is a right to an injunction as part of the relief sought; but that in all cases where the only question is as to the amount of profits and damages, and the complainant is not entitled to an injunction, the remedy is at law. This being the rule of jurisdiction as against the infringers, there is certainly less ground for going into a court of equity to recover the royalty stipulated in a license where there is no question of infringement or the validity of the patent to be considered, but the only question is as to how much is due from the licensee under his contract. The demurrer to the bill is sustained, and leave given to the complainants to amend by the next rule-day.
Co. v. JOHNSTON others.
(Oil'cuz't (Jourt, No D. New York.
PATENTS FOR WVENTIONs-JumsDIcTION-INFRIKGEMEKT-PATENT ABOUT TO
Where a bill filed 26 days before the expiration of the patent sets forth that plaintiff has the exclusive right to make and sell the patented article, and is exercising such right and is ahle to supply the market, and that defendants are making and selling machines in large quantities embodying the invention, and threaten to put on the market, after the expiration of the patent, machines made before its expiration, and prays for an injunction restraining the sale, after as well as before the patent expires, of machines unlawfully made before it expires, it states It case within the jUrisdiction of a circuit court and is not demurrable.
In Equity. Parkinson cf Par'kinson, for plaintiff. Oogswell, Bentley Oogswell, for defendants. BLATCHFORD, Justice·. This bill is brought for the infringement of letters patent granted to John S. Davis, March 10, 1868, for an improvement in reapers and mOiVers, for 17 years from that day. '['he bill was sworn to February 9, 1885, and filed February 12, 1885. The plaintiff is alleged to be a corporation of Ohio; the defendant corporation, a corporation of New York; and the other defendants, its officers and citizens of New York. The bill avers that the plaintiff, from December 23, 1881, has been continuously engaged in making and selling machines, under and in accordance with the patent, at Toledo, Ohio, and elsewhere in the United States, and has been and is prepared to fully supply the market therefor, and is the owner of the patent, and has invested and expended large sums of money and been to great trouble in and about the invention, and for the purpose of carrying the business of making, selling, and introducing to the public, in Toledo and elsewhere in the United States, and, among other places, in the Northern district of New York, machines embodying the invention, and making the same profitable to itself and useful to the public; that the invention has been and is of great benefit and advantage, and has, by the efforts of the plaintiti and its predecessors in title, heen made extensively and favorably known to the public, and many machines were made according to the invention, and sold by the plaintiff and its predecessors in title; that it has reserved to itself the entire right to make, use, and sell. under the patent, and has granted no licenses to make thereunder; that the defendants, in infringement, have made and sold machines containing the in vention, and still continue to do so, and are threatening to make the said machines in large quantities, and to supply the market therewith, and to sell the same; that said acts of infringement are being carried on by the defendants jointly in the Northern district of New York and in Toledo, where the plain-. tiff has built up a trade in the machines, and is prepared to supply the market therewith; that the defendants are now, in the Northern district of New York, making large quantities of the machines containing the invention, and preparing and intending to put upon the market and sell for use, during the season of 1885, in said district, and in and about Toledo, and elsewhere in the United States, such machines so manufactured prior to the expira.tion of the patent; that they have large quantities of the m:lchines on hand, which they are offering for sale; and that the use of the invention by the defendants, and their avowed determination to continue the same, encourage and induce others to infringe the patent. The bill prays for an account of profits, and for an injunction restraining the defendants from further constructing or selling or using any of the machines, and from selling or putting into use, as well after as before the expiration of
J. F. PEASE FURNACE CO.
the patent, "any infringing machines unlawfully made or acquired, in whole or in part, during the term thereof; and that all infringing machines now in possession or use of the said defendants may be destroyed, or delivered up to your orator for that purpose." It also prays for a decree for damages in addition to profits, and for an increase of damages, and a provisional injunction. The defendl1nts demur (1) for want of gronnd for equitable relief; (2) for want of equitable jurisdiction; (3) because the bill shows that the remedy, if any, is at law. This case does not fall within the ruling in Mershon v. J. P. Peasc Furnace Go., infra. In the present case, the bill was filed 26 days before the patent expired. There was time to give notice of a motion for a provisional injunction, and to obtain it. Moreover, the bill sets fOl,th special circumstances for equitable relief, in that the plaintiff has retained the exclusive right to make and sell, and is exercising it, and is able to supply the market, and the defendants are making machines oontaining the invention, and threaten to make them in large quantities, and intend to put on the market in the season of 1885 infringing machines made before the patent expires, and have large quantities on hand which they are offering for sale; and the bill prays for an injunction restraining the sale, after as well as before the patent expires, of machines unlawfully made before it expires. Such a case is like that of Crossley v. Beverly, Webst. Pat. Cas. 119, commented on in Smith v. London rf: S. W. Ry. Go. Kay, 408, and like the cases, in this circuit, of American Diamond Rock Boring Go. v. Sheldon, 18 Blatchf. C. C. 50; S. C. 1 FJm. HEP. 870; and American Dimnond Rock Boring Go. v. Rutland Marble Go. Id. 146; S. C. 2 FED. REp. 356. The demurrer is overruled, with costs, and the defendants are assigned to answer the bill by the rule-day in October next.
F. PEASE FURNACE
(Oircuit Oourt, No D. New York.
PATENTS FOR INVENTJONS-JURTSDICTTON-REMEDY AT
L.nv-RI(v. ST. H 723 4921. A bill for infringement of a patent, and for an account of profits and'damand for and perpetual, but setting forth no speClal ground for eqUItable rehef, IS demurrable. where the patent will expire four days after the filing- of the bill, and three days after the service of the subpcena, and where, by the rules of the court, a notice of eight days, of a motion for an injunction, is required.
In Equity. Forbes, Brown J: Tracy, for plaintiff. Duell rf: Hey, for defendant.